Practice of IP High Court in Infringement Cases involving Doctrine of Equivalents April 19, 2012 Intellectual Property High Court Judge, Hideko Takemiya

Outline 1. Court Precedent 2. “ The Essential Part of Invention ” 3. Recent IP High Ct. Judgments 4. Conclusion

1. Court Precedent “ Ball Spline Bearing ” Case S. Ct. 1994(o)No.1083, Feb. 24, 1998  Supreme Court held that whether an element of claims that is different from the accused product falls within a technical scope of the patented invention under doctrine of equivalents (DOE) shall be determined by tests as follows.

 Tests (1) Non-Essential Part The element that is different from the accused product shall be non-essential part of patented invention (2) Capacity of Replacement Replacement of said element with the corresponding part of the accused product cannot affect ability to achieve the objectives and effects of patented invention (3) Obviousness of Replacement Person of skill in the art could readily conceive such idea of replacement at the time of manufacture

 Tests (Cont’d) (4) The accused product was novel and not obvious from the prior art by a skilled person at the time of patent application for the patented invention (5) There was no circumstance such that the subject matter had been intentionally removed from the scope of claim by the applicant in the process of patent prosecution

2. “ Non-Essential Part of Invention ” 2-1 Definition of “Essential Part of Invention”  Specific element described in claims which brings function/effect characteristic to the patented invention  Specific element described in claims which gives a basis for solving the problem characteristic to the patented invention  Specific element which is characteristic to the patented invention

2-2 IIP Study in 2003  During Feb to Mar. 2003, courts rendered 116 judgments in which DOE were considered, and found DOE infringements in 9 (8%) of them.  Decisions on Each Test found unsatisfied Test(1) 67/116 (58%) Test(2) 26/116 Test(3) 18/116 Test(4) 2/116 Test(5) 28/ Criticism “Courts incline to examine only Test(1) and deny equivalent infringement.”

3. Recent IP High Ct. Judgment 3-1 “Hollow Golf Club Head” Case Tokyo District Ct. 2007(wa)No.28614, Dec. 9, 2008 Dismissed the plaintiff’s claim. IP High Ct. 2009(Ne)No.10006, Jun. 29, 2009 (Interlocutory Judgment) The defendant’s product fall within the technical scope of the plaintiff’s patented invention under DOE. IP High Ct. May 27, 2010 (Final Judgment) The court ordered the defendant to pay approx. \43,330,000 to the plaintiff as compensation.

3-1-1 Issue 1) Whether “short strip 8 made of carbon fiber” literally corresponds to “stitching member”? 2) Whether the defendant’s product without “stitching member” is equivalent to the patented invention?  Plaintiff’s Patented Invention (Patent No ) “stitching member”  Defendant’s Product “short strip 8 made of carbon fiber”

3-1-2 Defendant’s Product & “Stitching Member”

3-1-3 Judgments A) Tokyo District Ct. Denied both literal and equivalent infringements.  Non-Essential Part Test (Test(1)) The objective of the patented invention is. to enhance bonding strength between an outer-shell made of metal and an outer-shell made of fiber reinforced plastics (FRP) by bonding them with “stitching member” Thus, “stitching member” is a characteristic part of the invention which gives a basis for solving the problem, and should be decided as essential part of the invention.

B) IP High Ct. Denied literal infringement. But, ruled that the defendant’s product infringed plaintiff’s patent under DOE.  Capacity of Replacement Test (Test(2)) The objective or function/effect of the patented invention is to enhance bonding strength between an outer-shell made of metal and an outer-shell made of FRP. “Short strip 8 made of carbon fiber” of the defendant’s product and “stitching member” have common objective or function/effect.

 Non-Essential Part Test (Test(1)) In light of such object or function/effect of the patented invention, the important part of it for solving problem is that an outer-shell made of metal and an outer-shell made of FRP are united by a certain material “through the through hole”. “Stitching member” is not so much an important part that characterizes the invention. Therefore, “stitching member” should be recognized as non-essential part of the invention. The court found that the defendant’s product also satisfied the other three tests.

3-2 After “Hollow Golf Club Head” Case IP High Ct. found infringement under DOE in following cases.  IP High Ct. 2010(Ne)No.10014, Mar. 28, 2011  IP High Ct. 2010(Ne)No.10089, Jun. 23, 2011

4. Conclusion  IP High Ct. is developing its practice in finding equivalent infringements If the court interprets “essential part of invention” flexibly, patents may be protected strongly. However, flexible interpretation could make technical scope of patented invention vague and harm legal stability. How to balance ?

5. For Further Information  T. Tsukahara, “Development of Doctrine of Equivalents in Japan” 2_Tsukahara-outline.pdf  Anderson Mori & Tomotsune, “Japan IP Enforcement & Transactions Newsletter”  Tani & Abe IP Information, “Case Decision of the IP High Court of Japan (Interlocutory Decision)  J. Yamazaki, Y. Ohtsuka, Y.Sakata, “Recent IP High Court Decision Involving Infringement under Doctrine of Equivalents”  T. Takenaka, “The Doctrine of Equivalents”  “Hollow Golf Club Head Case” Case.pdf

Thank you very much for your attention!