1. IP High Court in 2011 –Doctrine of Equivalents & Rice Cake Hirokazu Honda, Attorney-at-Law Abe, Ikubo & Katayama Pre-Meeting AIPLA MWI at Caesar’s Palace, Las Vegas, NV Jan. 23, 2012

2. Rice Cake: mochi Jan. 23, 2012Abe, Ikubo & Katayama 2  A cake [block] made of gluey [sticky] rice  first the rice is cooked; then, it is pounded into paste; lastly, it is molded into shape.  can be pounded by hand with big mallets  can be manufactured; sold in dry & hard shape; baked, broiled or in soup to be made softer & sticky again  eaten all year round, but also traditional New Year’s food  ---very sticky and can stick in the throat: every year some elderly people die at New Year’s from eating mochi  Two major manufacturers have been disputing in a patent infringement lawsuit  Judgment on Nov. 30, 2010, Tokyo Dist. Ct.: Not infringed  (H21 (wa) 7718)  Interlocutory Judgment on Sep. 7, 2011, IP High Ct.: Infringed & Valid  (H23 (ne) 10002)

3. Jan. 23, 2012Abe, Ikubo & Katayama3

4. Interlocutory Judgment Jan. 23, 2012Abe, Ikubo & Katayama 4  Art. 245 of Code of Civil Procedure  The court, when the suit is ripe for making a judicial decision with regard to an independent allegation or evidence or any other interlocutory dispute, may make an interlocutory judgment. The same shall apply with regard to the statement of claim where the statement of claim and the number or amount concerned are in dispute.  IP infringement litigation  1) Infringement or non-infringement / Validity  2) Damages  In some cases the court decides to render an interlocutory judgment on issue 1)

5. Patent at issue Jan. 23, 2012Abe, Ikubo & Katayama 5  JP 4111382 “mochi”  A: Rice cake cut into a small rectangular block which is baked on a toasting gridiron and eaten  B: Single or plural indentation or groove on the side; not on the bottom or surface  C: Said indentation or groove is around all of the side or on two facing sides  D: When baked, upper side of the indentation or groove is going up in order for the rising content to be kept between bottom and top like sandwich so that the content is not broken out  Issue on infringement argument  Element B means indentation must not be on the bottom or surface? Or indentation may be on the bottom or surface as well as on the side?

6. Judgment by Both Courts Jan. 23, 2012Abe, Ikubo & Katayama 6  District Court found the defendant’s mochi with indentation on the surface does not meet Element B.  Element B means “indentation is not on the bottom or surface, but on the side”   IP High Court found Element B means “indentation is on the side which is not the bottom or surface” and B is satisfied even if indentation is on the surface as well as on the side.  Grammatical interpretation of the claim  Specification  Effect of this invention: 1) Control of breaking-out of the content by sudden swelling; 2) Maintenance of the fine view of indentation; 3) uniform baking; 4) user-friendly and tasty baking  Specification does not say that any indentation prevent such effects of the invention  Specification just excludes irregular interpretation on the place of groove; does not exclude additional groove on the surface  Process of patent prosecution  First OA  Tried to amend to “indentation not on the bottom or surface but on the side”  But rejected due to “new matter”  Withdrew the amendment

7. Doctrine of Equivalents Jan. 23, 2012Abe, Ikubo & Katayama 7  No case in Dist. Courts where they found Equivalents in 2010 & 2011  IP High Court found Equivalents in 2 cases in 2011  H22 (ne) 10014; Mar. 28, 2011  Chief Judge: Judge Nakano  Shape of the depressed part of the frame receiving a cover  Claim: curved surface  Product: two flat surface  H22 (ne) 10089; Jun. 23, 2011  Chief Judge: Judge Takizawa  Which of two parts approaches the other part

8. “Ball Spline Case” in 1998 Jan. 23, 2012Abe, Ikubo & Katayama 8 Judgment on Feb. 24, 1998, Supreme Court (H6(o)1083) (1) Non-Essential Part  The part of the claim that is different from the structure of the accused product or process (“accused embodiment”) is not an essential part of the patented invention. (2) Interchangeability  The accused embodiment, even with the existence of the different part, achieves the same purpose and produces the same meritorious effect as those of the patented invention. (3) Obviousness of Interchangeability  The interchangeability in the second requirement must be obvious for a person of ordinary skill in the art at the time of manufacturing the accused embodiment. (4) Accused Embodiment Not Falling Within Public Domain  The accused embodiment is not the same as, nor is it obvious from, the prior art at the time of filing of the patent application. (5) No Special Circumstances  There are no special circumstances to deny the infringement, such as intended exclusion of the accused embodiment from the scope of the claim in the prosecution history, etc.

9. Non-Essential Part  An essential part of the patented invention shall mean, among the structures described in the claims, a distinctive part that supports the means for solving the problem peculiar to the patented invention or, in other words, a part that, if substituted for by other means, would render a different technical idea, as a whole, from that of the patented invention.  Jan. 28, 1999, Tokyo Dist. Ct. (H8(wa)14828, 14833)  Elements A & B are not essential; elements C & D are essential?  Important to consider the identity of a principle for solving a problem Jan. 23, 2012Abe, Ikubo & Katayama9

10. H22 (ne) 10014; Mar. 28, 2011 Jan. 23, 2012Abe, Ikubo & Katayama10

11. H22 (ne) 10014; Mar. 28, 2011  Meritorious Effect of This Invention  When closing a cover, enable to smoothly put the cover into a receiver  Based on the specification and the technical idea supporting the means for solving the problem of this invention, it is clear that each convex curved surface of the cover and receiver plays the most important role for the meritorious effect of this invention.  The receiver does not need “concave curved surface” but “concave surface.” Concave curved surface of this invention is not an essential part. Jan. 23, 2012Abe, Ikubo & Katayama11

12. H22 (ne) 10089; Jun. 23, 2011 Jan. 23, 2012Abe, Ikubo & Katayama12

13. H22 (ne) 10089; Jun. 23, 2011  Technical Idea of This Invention  Based on the specification, the shutter for wrapping, which is already installed, also adjusts the place of outer cover; such important process is achieved by such a simple structure without additional means  Positioning of “Shutter and part for placing” and “nozzle and part for holding dough”  It’s important that both are approaching each other, but not important which side should go up/down. Jan. 23, 2012Abe, Ikubo & Katayama13

14. Thank you for your attention! Hirokazu Honda, Attorney-at-Law Abe, Ikubo & Katayama E-mail: hirokazu.honda@aiklaw.co.jp URL: http://www.aiklaw.co.jphttp://www.aiklaw.co.jp Phone: +81-3-3273-2600 Fax: +81-3-3273-2033