Recent IP Case in Japan Construction of Functional Claim Chihiro Onishi YUASA and HARA IP in Japan Committee Meeting AIPLA Annual Meeting 2013 1

Case name : 2012 (Ne) No. 10094 Appellant（Patentee, Plaintiff of the first instance） KYT Corporation Appellee（Defendant of the first instance） Sanwa Supply Corporation Judgment awarded on May 23, 2013 Intellectual Property High Court 2

1. Explanation of Functional Claim Functional claim under Japanese Law is… 3

1. Explanation of Functional Claim Functional claim under Japanese Law is… a claim defining an invention is (partially) expressed by means of the operation, function, property or characteristics of such invention. 4

1. Explanation of Functional Claim Functional claim under Japanese Law is a claim defining an invention is (partially) expressed by means of the operation, function, property or characteristics of such invention. Such expression is lawful if the claim meets other written description requirements such as… 5

(1) Support requirement （Section 36, Para. 6, Subpara. 1 ） 1. Explanation of Functional Claim Functional claim under Japanese Law is a claim defining an invention is (partially) expressed by means of the operation, function, property or characteristics of such invention. Such expression is lawful if the claim meets other written description requirements such as… (1) Support requirement （Section 36, Para. 6, Subpara. 1 ） 6

(2) Clarity requirement (Section 36, Para 6, Subpara. 2) 1. Explanation of Functional Claim Functional claim under Japanese Law is a claim defining an invention is (partially) expressed by means of the operation, function, property or characteristics of such invention. Such expression is lawful if the claim meets other written description requirements such as Support requirement （Section 36, Para 6, Subpara. 1 ） (2) Clarity requirement (Section 36, Para 6, Subpara. 2) 7

(3) Enablement requirement (Section 36, Para 4, Subpara. 1) 1. Explanation of Functional Claim Functional claim under Japanese Law is a claim defining an invention is (partially) expressed by means of the operation, function, property or characteristics of such invention. Such expression is lawful if the claim meets other written description requirements such as (1) Support requirement （Section 36, Para 6, Subpara. 1 ） (2) Clarity requirement (Section 36, Para 6, Subpara. 2) (3) Enablement requirement (Section 36, Para 4, Subpara. 1) 8

1. Explanation of Functional Claim There has been a general antipathy for functional claims in Japan because … 9

Such claims tend to be unclear and as a result … 1. Explanation of Functional Claim There has been a general antipathy for functional claims in Japan because … Such claims tend to be unclear and as a result … 10

1. Explanation of Functional Claim There has been a general antipathy for functional claims in Japan because such claims tend to be unclear and as a result… the inventions are not understandable to persons skilled in the art and … 11

1. Explanation of Functional Claim There has been a general antipathy for functional claims in Japan because such claims tend to be unclear and, as a result, the inventions are not understandable to persons skilled in the art and … the claims have a tendency to become too broad (which sometimes includes conventional art, etc.) 12

1. Explanation of Functional Claim There has been a general antipathy for functional claims in Japan because such claims tend to be unclear and, as a result, the inventions are not understandable to persons skilled in the art and the claims have a tendency to become too broad (which sometimes includes conventional art, etc.) Therefore construction of a claim language is an important issue at infringement suit in which a functional claim is involved. 13

1. Explanation of Functional Claim Is a functional claim under Japanese law the same as means-plus-function claim under US Patent Law Section 112 Para.6? 14

Yes, to some extent. No, in some points. 1. Explanation of Functional Claim Is a functional claim under Japanese law the same as means-plus-function claim under US Patent Law Section 112 Para.6? Yes, to some extent. No, in some points. 15

1. Explanation of Functional Claim Is functional claim under Japanese law as same as means-plus-function claim under US Patent Law section 112 Para.6? Difference (1) Words such as “means,” “mechanism” and ”element” not needed under Japanese law. (2) Claim containing element(s) using language showing something other than structure tends to be seen and treated as a functional claim. (3) No limitation to invention having a combination 16

2. Claim of the Patent Concerned A connector designed to protect against the theft of a personal computer (80), to be inserted into a slit (82) opened on the casing of a PC characterized in that 17

2. Claim of the Patent Concerned A connector designed to protect against the theft of a personal computer (80) to be inserted into a slit (82) opened on a casing of a PC, characterized in a main plate (20) and an auxiliary plate (40) are engaged in a manner allowing each plate to slide against the other in the direction towards insertion into the slit (82), and the both plates (20) (40) are inseparably maintained, 18

2. Claim of the Patent Concerned A connector designed to protect against the theft of a personal computer (80) to be inserted into a slit (82) opened on a casing of a PC, characterized in that a main plate (20) and an auxiliary plate (40) are engaged in a manner allowing the each plate to slide against the other in the direction towards the insertion into the slit (82), and the both plates (20) (40) are inseparably maintained, Wherein, the main plate (20) comprises a base plate (22), a plug (24) extending outward from the base plate (22), and a stopper (28) placed horizontally at the distal end portion of the plug (24), 19

2. Claim of the Patent Concerned … wherein the auxiliary plate (40) comprises a slide plate (42) engaged with the main plate (20) in a manner allowing the auxiliary plate to slide against the main plate in the direction the plug protrudes, and a rotation stopper (44) which superposes with the plug (44) when the slide plate (42) is moved in a direction the plug protrudes and de-superposes with the plug (44) when the slide plate (42) is moved in an opposing direction, 20

2. Claim of the Patent Concerned … wherein an engaging portion (28)(48) is formed by the main plate (20) and the auxiliary plate (40) at a position corresponding to each other when the auxiliary plate (40) is moved forward and the plug (24) and the rotation stopper (44) are superposed. 21

3. Function of the device When the auxiliary plate is placed in the slit, the device cannot rotate any further and cannot be pulled out because stopper (26) is hooked to the cabinet of the PC. 22

an auxiliary plate (40) with rotation stoppers (44) 4. The accused product (1) A connecter having a main plate (20) with a plug (24) having a stopper device (26) at the distal end portion of the plug, and an auxiliary plate (40) with rotation stoppers (44) The plug (24) with a stopper device (26) is inserted into a slit (82) in the casing of a PC. 23

Once the plug (24) has been inserted, the device is turned (rotated). 4. The accused product Once the plug (24) has been inserted, the device is turned (rotated). 24

4. The accused product Then the rotation stoppers (44) are inserted into the slit. The device cannot be rotated and pulled out any longer. The drawing shows when the rotation stoppers are applied to the slit.   25

4. The accused product A wire and lock are secured to the hole (30). A computer is firmly connected by wire to a heavy and solid object such as a shelf to make it secure in a store. 26

5. Issue (1) The meaning of the words “in the direction toward the insertion into the slit (or the direction the plug protrudes)”, “engaged in a manner allowing the each plate to slide against the other” and “[the plates are] inseparably maintained” (2) The rule of construction of functionally described element in a claim – what structure could be included in the technical scope? 27

6. Court opinion as to issue number (1) ”In the direction toward insertion into the slit (or the direction the plug protrudes)” means the direction the plug is being pushed. “Engaged in a manner allowing the each plate to slide against the other” means that the plate moves to the front and rear linearly. Whether a plate is allowed to slide or not is not restricted to only when the plug and the rotation stopper are superposed. “ [The plates are] inseparably maintained” means such structure that slots extending in the direction the plug protrudes are made in one plate, and pins are fixed on the other plates, and the pins are fit into and coupled with the slots in a manner whereby the plates are allowed to slide against each other. 28

7. Court opinion as to issue number (2) If we construe, in the event that a structure is described functionally or abstractly in a claim, that any structures that have function and/or effect of the invention are all included within the technical scope, we may erroneously allow a structure that is a part of a technical idea not disclosed in the specification to be included in the technical scope of the claim. 29

7. Court opinion as to issue number (2) If we construe, in the event that a structure is described functionally or abstractly in a claim, that any structures that have function and/or effect of the invention are all included within the technical scope, we may erroneously allow the structure that is a part of a technical idea not disclosed in the specification to be included in the technical scope of the claim. But, in such case, the technical scope of the patent is expanded beyond the scope that is understandable to a person skilled in the art from the description of the claims and the specification. This goes against the purpose of the patent system under which a patent is awarded in exchange for the disclosure of an invention. 30

7. Court opinion as to issue number (2) If we construe, in the event that a structure is described functionally or abstractly in a claim, that any structures that have function and/or effect of the invention are all included within the technical scope, we may erroneously allow the structure that is a part of a technical idea not disclosed in the specification to be included in the technical scope of the claim. But, in such case, the technical scope of the patent is expanded beyond the scope that is understandable to a person skilled in the art from the description of the claims and the specification. This goes against the purpose of the patent system under which a patent is awarded in exchange for the disclosure of an invention. Accordingly, in the event that the claim is described in the manner above, the technical scope cannot be determined by the description in the claim itself. The court should also refer to the description in the specification, and determine the technical scope based on the technical idea specifically shown in the specification. 31

7. Court opinion as to issue number (2) If we construe that, in the event that the structure is described functionally or in abstract in a claim, any structure that has function and/or effect of the invention are all included within the technical scope is adopted, we may erroneously allow the structure that is a part of a technical idea not disclosed in the specification to be included in the technical scope of the claim. But, in such case, the technical scope of the patent is expanded beyond the scope that is understandable to a person skilled in the art from the description of the claims and the specification. This goes against the purpose of the patent system under which a patent is awarded in exchange for the disclosure of an invention. Accordingly, in the event that the claim is described in the manner above, the technical scope cannot be determined by the description in the claim itself. The court should also refer to the description in the specification, and determine the technical scope based on the technical idea specifically shown in the specification. This does not mean that the technical scope of an invention shall be limited to specific embodiments shown in the specification. If a person skilled in the art can utilize a structure based on the description disclosed in the specification, such structure shall be included in the technical scope. 32

8. Application of the court opinion to the case In this case, no structure is disclosed with regard to the words “engaged in a manner allowing the each plate to slide against the other” in the specification other than the structure in which the plates move (or slides) to the front and rear linearly. 33

8. Application of the court opinion to the case In this case, no structure is disclosed with regard to the words “engaged in a manner allowing the each plate to slide against the other” in the specification other than the structure in which the plates move (or slides) to the front and rear linearly. No structure is disclosed with regard to “ [the plates being] inseparably maintained” in the specification other than the structure in which slots extending in the direction of sliding are made in one plate, and pins are fixed on the other plates, and the pins are fit into and coupled with the slots in a manner so that plates are allowed to slide against each other. 34

8. Application of the court opinion to the case In this case, no structure is disclosed with regard to the words “engaged in a manner allowing the each plate to slide against the other” in the specification other than the structure in which the plates move (or slides) to the front and rear linearly. No structure is disclosed with regard to “ [the plates being] inseparably maintained” in the specification other than the structure in which slots extending in the direction of sliding are made in one plate, and pins are fixed on the other plates, and the pins are fit into and coupled with the slots in a manner so that plates are allowed to slide against each other. 　　↓ The structure is restricted to the structure above and the ones to which a person skilled in the art can work based on the description in the specification. 　　 35

8. Application of the court opinion to the case In this case, no structure is disclosed with regard to the words “engaged in a manner allowing the each plate to slide against the other” in the specification other than the structure in which the plates move (or slides) to the front and rear linearly. No structure is disclosed with regard to “ [the plates being] inseparably maintained” in the specification other than the structure in which slots extending in the direction of sliding are made in one plate, and pins are fixed on the other plates, and the pins are fit into and coupled with the slots in a manner so that plates are allowed to slide against each other. 　　↓ The structure is restricted to the structure above and the ones which a person skilled in the art can work based on the description in the specification. The court found that the defendant’s accused product has different structure and determined that the product was not infringing. 36

9. Comment The relevant section in Patent Law (requirement of claim description) was amended in 1994, and the requirement has been changed. There has been no cases after the amendment. 37

10. What was the amendment of the law 10. What was the amendment of the law? Before Amendment : Only those that are indispensable for the structure of the patent should be written in the claim. 38

Addition of language not necessary to define structure: not allowed 10. What was the amendment of the law? Before Amendment : Only those that are indispensable for the structure of the patent should be written in the claim. Addition of language not necessary to define structure: not allowed 39

Omission of language necessary to define structure: not allowed either 10. What was the amendment of the law? Before Amendment : Only those that are indispensable for the structure of the patent should be written in the claim. Addition of language not necessary to define structure: not allowed Omission of language necessary to define structure: not allowed either 40

10. What was the amendment of the law? Before Amendment : Only those that are indispensable for the structure of the patent should be written in the claim. Addition of language not necessary to define structure: not allowed Omission of language necessary to define structure: not allowed, either You have to write no more than and no less than what you need to show the structure of the invention. Functional language tends not to show structure-such language is permitted on limited occasions only. 41

10. What was the amendment of the law? After Amendment: “In the patent claim(s)… there shall be set forth… all matters which an applicant for patent considers necessary in defining an invention for which a patent is sought.” 42

11. What is the influence of the amendment of the law 11. What is the influence of the amendment of the law? Is construction of a functional claim in an infringement action the same or different under the new law? 43

Precedents under the law before amendment 11. What is the influence of the amendment of the law? Is construction of a functional claim in an infringement action the same or different under the new law? Precedents under the law before amendment Case 1:Rental Locker Case (Tokyo High Court, July 22, 1977) At issue was the construction of the languages of the claim stating (i) to open the slit (8) which is made to insert a coin into by inserting a key (2), (ii) to close the slit (8) by pulling off the key (2) 44

11. What is the influence of the amendment of the law? Is construction of a functional claim in an infringement action the same or different under the new law? Precedents under the law before amendment Case 1 Rental Locker Case (Tokyo High Court, July 22, 1977) At issue was the construction of the languages of the claim stating (i) to open the slit (8) which is made to insert a coin into by inserting a key (2), (ii) to close the slit (8) by pulling off the key (2) This language was shown in the claim but the structure for opening and closing the slit was not shown in the specification. 45

11. What is the influence of the amendment of the law? Is construction of a functional claim in an infringement action the same or different under the new law? Case 1 Rental Locker Case (Tokyo High Court, July 22, 1977) At issue was the construction of the languages of the claim stating (i) to open the slit (8) which is made to insert a coin into by inserting a key (2), (ii) to close the slit (8) by pulling off the key (2) This language was shown in the claim but the structure for opening and closing the slit was not shown in the specification. ↓ The court determined the structure to open and close the slit was the same as the structure shown in the embodiment. 46

11. What is the influence of the amendment of the law? Case 1 Rental Locker Case (Tokyo High Court, July 22, 1977) At issue was the construction of the languages of the claim stating (i) to open the slit (8) which is made to insert a coin into by inserting a key (2), (ii) to close the slit (8) by pulling off the key (2) This language was shown in the claim but the structure for opening and closing the slit was not shown in the specification. The court determined the structure to open and close the slit was the same as the structure shown in the embodiment. When structure described in functional language shows only the objectives of the invention and does not disclose any specific structure of a subject, the technical scope is the same as the one described in the embodiment. 47

11. What is the influence of the amendment of the law? Case 2 Apparatus with Automatic Parts Selection and Assembly Function Case (Tokyo High Court Dec. 20,1978) There, language “assembly means which cooperates with measuring means” was used. The meaning of “[to] cooperate” was argued, but there was no explanation on it in the specification, and no specific meaning was found in the technical field.　 48

11. What is the influence of the amendment of the law? Case 2 Apparatus with Automatic Parts Selection and Assembly Function Case (Tokyo High Court Dec. 20, 1978) Language “assembly means which cooperates with measuring means” was used. The meaning of “[to] cooperate” was argued, but there was no explanation on it in the specification, and no specific meaning was found in the technical field.　 　　↓ The court held that the meaning should be determined by the specific structures described in the embodiments, and found that it meant that “the measuring means and assembly means are controlled by each other in their operation and there is an inseparable relationship between the two, meaning that there was a 1 to 1 correspondence between the two.” 49

11. What is the influence of the amendment of the law? Case 2 Apparatus with Automatic Parts Selection and Assembly Function Case (Tokyo High Court Dec. 20, 1978) Language “assembly means which cooperates with measuring means” was used. The meaning of “[to] cooperate” was argued, but there was no explanation on it in the specification, and no specific meaning was found in the technical field.　 　　↓ The court held that the meaning should be determined by the specific structures described in the embodiments, and found that it meant that “the measuring means and assembly means are controlled by each other in their operation and there is an inseparable relationship between the two, meaning that there was a 1 to 1 correspondence between the two.” When the structure described by functional language was abstract and the technical meaning could not be found from the language, the technical scope may not be limited to the embodiment, but it should be restrictively construed based on the embodiment. 50

11. What is the influence of the amendment of the law 11. What is the influence of the amendment of the law? Case 3 Reader of Magnetic Media Case (Tokyo Dist. Court, Dec. 22,1998) The language, “when magnetic head is in the bottom, the rotation of the magnetic head is controlled…,” was used but the structure to control was not explained in the specification. 51

11. What is the influence of the amendment of the law 11. What is the influence of the amendment of the law? Case 3 Reader of Magnetic Media Case (Tokyo Dist. Court, Dec. 22,1998) The language, “when magnetic head is in the bottom, the rotation of the magnetic head is controlled…,” was used but the structure to control was not explained in the specification. ↓ The court found that no specific structure was shown for the means to control the rotation in the specification, and that there was one in the embodiment, and it held that the structure for the means to control should be restrictively construed to the one shown specifically in the embodiment and that which a person skilled in the art of this field could understand based on that disclosure. 52

In sum, there were two kinds of holdings in the precedents: 11. What is the influence of the amendment of the law? In sum, there were two kinds of holdings in the precedents: 53

11. What is the influence of the amendment of the law? In sum, there were two kinds of holdings in the precedents:] the technical scope is confined within the specific structure shown in the embodiment, and … 54

11. What is the influence of the amendment of the law? In sum, there were two kinds of holdings in the precedents: the technical scope is confined within the specific structure shown in the embodiment, and … (ii) the technical scope is confined within the specific structure shown in the embodiment and the ones which a person skilled in the art of this field could understand based on that disclosure. 55

This case: the Court adopted the construction (ii) above. 11. What is the influence of the amendment of the law? In sum, there were two kinds of holdings in the precedents: (i) the technical scope is confined within the specific structure shown in the embodiment, and the technical scope is confined within the specific structure shown in the embodiment and the ones which a person skilled in the art of this field could understand based on that disclosure. This case: the Court adopted the construction (ii) above. This is the first judgment on this issue at high court level under the law after amendment. (The court of first instance adopted the construction (i) above, but it was denied.) 56

12. Doctrine of equivalents 57

12. Doctrine of equivalents The court held that the application of the doctrine of equivalents is not denied in a claim using a functional description. 58

12. Doctrine of equivalents The court held that the application of the doctrine of the equivalents is not denied in a claim using a functional description. The court did not find infringement based on the doctrine in this particular case because an essential element of the invention was replaced. 59

13. Comparison with American Law US Patent Act Section112 Paragraph6 “An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” 60

13. Comparison with American Law US Patent Act Section112 Paragraph6 “An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” →US：The technical scope covers the corresponding structure, material, or acts described in the specification and equivalents 61

Is technical scope under the Japanese law the same? 13. Comparison with American Law US Patent Act Section112 Paragraph6 Is technical scope under the Japanese law the same? 62

13. Comparison with American Law US Patent Act Section112 Paragraph6 Is technical scope under the Japanese law the same? Probably yes, because the Japanese courts construe that (1) the structure specifically shown in the specification (= corresponding structure …described in the specification) and (2) those understandable to a person skilled in the art (≒equivalents to the corresponding structure) are included in the technical scope. Some Japanese argue the technical scope could be wider under Japanese law. 63

E-mail: onishi@yuasa-hara.co.jp Thank you very much! Chihiro Onishi YUASA and HARA E-mail: onishi@yuasa-hara.co.jp 64