1. Trends Relating to Patent Infringement Litigation in JAPAN
- Five Good Reasons to File Lawsuits in Japan -
January 27-28, 2015
AIPLA Mid-Winter Institute
IP Practice in Japan Committee Pre-Meeting Seminar
Shimako Kato

2. Contents Background Current Status
Five Good Reasons to File Lawsuits in Japan

3. 1. Background

4. Court system in Japan (for patent cases)
Supreme Court
Supreme Court
Final instance
Final instance
IP High Court
IP High Court
1st instance
2nd instance
Osaka
Tokyo
Tokyo/Osaka
District Court
JPO
(Board of Appeal)
Patent Infringement Lawsuit
Appeal/ Invalidation Trial

5. IP Divisions in Courts Court Division Judge IP High Court 4 18 11
Judicial Research Official
(Chosa-kan)
IP High Court 4 18 11
Tokyo District Court 16 7
Osaka District Court 2 6 3
At the date of January 1, 2015

6. Characteristic 1 - Technical support for patent cases
Judicial research official
(Chosa-kan)
Technical adviser
Expert witness
Status
Full-time court official
Part-time court official
Not a court official
Term of office
No statutory term in general 　
Two years
No term
Remuneration
Salary paid for full-time official
Allowance paid for each case
Fee for an expert opinion
Nature of explanation or opinion
Carry out research on necessary matters as ordered by the court and report the research results. The research results may not be adopted as evidence.
Provide easy-to-understand explanations on scientific matters as the court’s adviser. The explanation may not be adopted as evidence.
Provide expert opinion on specific matters as requested by the court. The opinion may be adopted as evidence and relied on in the judgment.
Source:

7. Characteristic 2 – Validity Challenge
Validity Challenge is possible both before the infringement courts and JPO (invalidation trial).
Infringement court
JPO
Invalidity defense
Invalidation trial
So called “Double track system”

8. Characteristic 3 – Procedure (More rely on written argument)
Technical Presentation
Model timeline of patent infringement lawsuits
(Based on the Osaka district court’s model)
Settlement
Preparatory
Hearing (5)
Technical Presentation
Preparatory
Hearing (3)
Preparatory
Hearings for settlement
Preparatory
Hearing (1)
Oral
Hearing (1)
Preparatory
Hearing (4)
Preparatory
Hearing (2)
Preparatory
Hearing (6)
Judges opinion revealed
Oral
Hearing (2)
Complaint
Filed
Judgment
40days
40days
40days
40days
50days
40days
30days
Defendant
-Answer
Plaintiff
-Infringement argument
Defendant-Rebuttal to Infringement
Invalidity defense
Plaintiff
Rebuttal to Invalidity
Infringement arguments
…….
Preparatory
Hearing (7)
Preparatory
Hearing (8)
Damage Calculation Stage
30days

9. 2. Current Status

10. Patent litigation filings (1997-2009)
[JAPAN]
Filed　　　 2,789
Decided　
[US]
Filed　　　34,214
Decided　 1,269
[GERMANY]※
Filed　　　 9,200
Decided　 3,660
※ Estimate of invention patent infringement litigation filings.
Total for 2009 estimated at 1400, including utility model and inventorship/ownership
Source :”Where to win – Patent friendly courts revealed –” Managing Intellectual Property , www. Managingip.com September 2010

11. How do cases end? Japan (2013) Judgment (43%) Settlement (38%)
Patentee’s Winning Rate (District Court)
Withdrawal (13%)
Others (4%)
US (2009)
( )
( )
( )
Trial Judgment (3.5%)
Source: JPO
Summary Judgment (8%)
Settlement (88.5%)
Source: JPO

12. 3. Five Good Reasons to File Lawsuits in Japan

13. 1st Reason: Reliable Factual Finding on Technical Matters
Research result
Judicial research official:
Full-time support
Opinion of experts,
examined by jury.
Explanation
Technical Advisor :
Mostly at technical presentation
Judge
Expert Opinion
Expert Opinion
(Paper)
Written opinion of expert,
examined by Judges

14. 2nd Reason: Climate Change (1)
(1) Changes in courts
Actual winning rate of patentee (29th division of the Tokyo District Court)
Increasing
Source: Hanrei Times No.1324 (2010) p.58
Upholding rate by the IP High Court regarding Invalidation Trial Decisions
Pro-patent tendency : :
Source: JPO

15. 2nd Reason: Climate Change (2)
(2) Discussion for enhancing stability of patents
Recent discussion in the government (Intellectual Property Strategy Headquarters)
- How to undermine effects of challenging validity of the patents?-
Proposed ideas:
- Introduction of “the clear and convincing evidence” standard
- Restriction of reasons for invalidity
- Introduction of “clarity requirement” in case of judging validity of the patents before infringement courts.
- Abolishment of Art.104 ter of the Patent Act (Abolishment of double track system)

16. 3rd Reason: Speed (1) Average duration of IP cases in district courts
Number of incoming cases
Average duration (month)
Incoming cases
Average duration
1992
1994
1996
1998
2000
2002
2004
2006
2008
2010
2012
Source:”Report for study on acceleration of proceedings” Supreme Court of Japan

17. 3rd Reason: Speed (2) Duration of IP cases in district courts
within 6 months
from 6months
to 1 year
from 1 year
to 2 years
from 2 years
to 3 years
from 3 years
to 5 years
more than 5 years
1996
1998
2000
2002
2004
2006
2008
2010
2012
Source:”Report for study on acceleration of proceedings” Supreme Court of Japan

18. 4th Reason: Reasonable Cost
Source: AIPLA “Report of the Economic Survey 2013”
Cost for a small to medium-scale patent litigation in the 1st instance
Cost for a small to medium-scale patent litigation in the 1st instance
Around $ 80,000 to $250,000
(by supposition)
Around $ 59,000 to $236,000
Source: EPO "Assessment of the impact of the European patent litigation agreement (EPLA) on litigation of European patents" February 2006

19. 5th Reason: Attractive Market
Size of the market
＄953
billion
＄ 1,010
billion
Mobile communication (2012)
Pharmaceutical products (2011)
Source: “White paper on Information and Communications in Japan 2013” , Ministry of Internal Affairs and Communications, Japan
Source : “DATABOOK 2013”, Japan Pharmaceutical Manufacturers Association

20. E-mail: shimako.kato@aiklaw.co.jp
Thank you!
Shimako Kato
Patent Attorney
Abe, Ikubo & Katayama 20