TOPICS

“Vehicle Guidance System”

Overview:

This case relates to a court decision to uphold a JPO trial decision to dismiss an invalidation trial request.

▶See “IP Force: IP Case Bulletin/Court Digest” for the court decision (Japanese)

Main Issue:

This main issue in dispute is whether the application of this case satisfies the divisional requirements.

Summary:

The trial decision reached the determination that, since the matters contained in feature B and the like of the patent for this case (the 7^th-generation divisional patent application) were all described in the original specification and the like, there was no support for adopting the filing date of the 5^th-generation divisional application (December 2, 2014) as the filing date of the patent for this case, and it cannot be said that Plaintiff’s Exhibit 7 (the patent gazette of the original base application) was published prior to the filing date of the patent for this case, and thus it cannot be said that the patent was granted in violation of the provisions under Patent Act Article 29(1)(iii).

In response, the plaintiff argued that the filing date of the patent for this case should be that of the 5^th-generation divisional application (December 2, 2014) because the original specification of the 4^th-generation divisional application does not describe “means for detecting a vehicle exiting a tollgate”, “means for detecting a vehicle entering a service area or parking area” and “means for detecting a vehicle exiting a service area or parking area” of feature B of the patent for this case.

The court reached a decision as follows.

The claims according to each of the inventions of the present case defines that each invention is “a system for guiding vehicles entering/exiting from an entrance/exit for an ETC vehicle installed in a tollgate, service area or parking area” (feature A), and according to feature B that is subject to this, recites detecting means for detecting “a vehicle entering and exiting the tollgate, service area or parking area” as “the”. According to such description of the claims, it is natural to interpret “vehicle entering and exiting” in each of the claims as meaning attempting to “enter and exit” between a toll road, service area or parking area and a general road by passing through an “entrance/exit for an ETC vehicle”, such as that recited in feature A, and the “first detecting means for detecting a vehicle entering and exiting the toll gate, service area or parking area” of feature B should be interpreted as a detecting means for detecting a vehicle attempting to pass through an entrance/exit for an ETC vehicle in order to “enter” a toll road, service area or parking area from a general road, or in order to “exit” onto a general road from a toll road, service area or parking area. As such detecting means, reference number 2a (vehicle detecting device) described in para. 0033 and FIG. 4 for the entrance toll booth, para. 0050 and FIG. 6 for the exit toll booth as well as FIG. 11 for the smart interchange, respectively, in the specification and the like for this case can be said to be equivalent; therefore, the descriptions of the original specification and the like do not substantively differ in terms of these points from the descriptions in the specification and the like for the present case, and the matters described in feature B can be said to be described in the original specification and the like as well, are not lacking in terms of the divisional patent application requirements, and thus the application for this case is deemed to have been filed on September 13, 2004, which is the original filing date of the base application.

Comments:

The plaintiff argued that, since each of the inventions of this claim is directed to solving a problem arising in a “toll booth”, toll booth forms the starting point from which the wording of the claims should be interpreted. However, the court decision found, when finding the gist of an invention, that there were no grounds to always interpret the matters defining the invention as reciting positional relationships and the like from the starting point of the place in which the problem arises, and given that the gist of an invention should be based on the description of the claims, the natural interpretation of feature B arrived at from the claims is as described above. The descriptions of the specification and the like for this case are also found to support the abovementioned interpretation; therefore, even if each of the inventions of this case is directed at solving a problem arising in a toll booth, that would not be a reason to arrive at a different interpretation from the one described above, and the plaintiff’s argument was not accepted.

Hiroshi ABE