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Notes
See Ball Spline Bearing Case (the doctrine of equivalents) Supreme Court Case H6 (O) No. 1083 (24 February 1998) at www.jpaa.or.jp/english/court_decisions/35-case_h6_o1083.pdf.
For a comparative overview, see D. Koo, “Comparison of the First Requirement of the Doctrine of Equivalents between Korea and Japan”, 44 IIC pp. 178, 182 (2013).
Kei, Iida, “Kintōron ni kansuru saikin no saibanrei no keikō ni tsuite” (“Trends in Judicial Precedents on the Doctrine of Equivalents.”), in: 1 (Patent Law 1) The Theory and Practice of Intellectual Property Law p. 177 (Toshiaki Makino et al. eds., Shinnippon-Hoki Publishing Company, 2007); the author provided research performed on more than 150 lower court precedents between 1997 and June 2006.
Toshiaki Iimura, “Tokkyoken no kintōshingai no seihi ni kansuru ni, san no ronten” (“Several issues on success of patent infringement under Doctrine of Equivalents.”), 67 Patent pp. 128–137 (2014).
Tomokatsu Tsukahara, the former Chief Justice of the IP High Court writes: “… Judges in Japan feel that, basically, they do not want to admit infringement under the doctrine of equivalents. Judges in Japan emphasise consistency with the statement of the claims without showing any substantive, rational grounds. They should not, however, depend solely on grammatical considerations when interpreting the [Ball Spline Bearing Case] judgment of the Supreme Court with regard to the first requirement [essential element]. … Judges in Japan should start understanding the doctrine of equivalents from the original point; they should not start from the wording of the Supreme Court precedent. If judges examine and determine infringement under the doctrine of equivalents based on that idea, they will notice easily that it was wrong that they were relieved in their hearts by denying infringement under the doctrine of equivalents based on the first requirement. With regard to the first requirement, judges in Japan should cease to examine initially and determine the first requirement through comparison with the distinctive matters of the claimed invention as they did in the past. Instead, they should examine and determine infringement under the doctrine of equivalents mainly based on the second and third requirement in almost the same manner as in the United States and Germany. … In order to increase the number of patent lawsuits in Japan, … the content of the first requirement of the doctrine of equivalents, which has been a source of confusion since the Supreme Court’s decision, must be reviewed.” Tomokatsu Tsukahara, “Current Situation and Activation of Patent Infringement in Japan”, 36 AIPPI Journal of the Japanese Group (English Edition), p. 3 (2011).
E.g. the first instance decision Tokyo District Court, 9 December 2008, Hei 19 (wa) No. 28614 – “Hollow Golf Club Head”, the court denied the application of doctrine of equivalents on the ground that the first requirement was not fulfilled. See below for more details of this case.
This interpretation is consistent with the one earlier on advocated by the (then) assistant judge at the Supreme Court, Ryoichi Mimura. He writes: “Among the features of the patented invention stated in the claims, its characteristic feature should be determined by the characteristic principle taking into account prior art at the filling date and means of solving the previous problem, not by superficially choosing one feature from the statement of the claim.” (Ryoichi Mimura, “Saikō saibanshō hanrei kaisetsu minji hen” [Comments on Supreme Court Precedents in Civil Cases] 1998, pp. 112, 141).
This approach was basically taken by the second instance decision “Hollow Golf Club Head”, Intellectual Property High Court, 29 June 2009, Hei 21 (ne) No. 10006 (Japan), http://www.ip.courts.go.jp/app/files/hanrei_en/147/000147.pdf (English translation) = 43 IIC p. 476 (2012). The IP High Court held:
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(1)
In this case, the problem is whether the short strip of the defendant’s product (8) is equivalent to the “stitching member” of the patented invention. The difference between the short strip and the “stitching member” is that (1) the short strip is passed through a through hole made in the metallic shell member only once and (2) it is bonded at one point to both the upper and lower FRP shell members, respectively (on the upper side and the lower side of the metallic shell member).
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(2)
According to the specification of the patent, the purpose and advantageous effect of using the “stitching member” is to increase the bonding strength between the metallic shell member and the FRP shell member. By passing the short strip through one through hole and bonding it at one point to both the upper FRP and lower FRP shell members, respectively, the short strip also increases the bonding strength between the metallic shell member and the FRP shell member. As the “stitching member” and the short strip have the same purpose and advantageous effect, they are interchangeable.”
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(1)
Ryoichi Mimura, supra note 7, p. 156.
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For a translation of the “Maxacalcitol” decision by Hirotaka Nonaka, see this issue of IIC at doi:10.1007/s40319-016-0527-0.
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Nonaka, H. Comment on the Japanese IP High Court Decision “Maxacalcitol”. IIC 47, 994–998 (2016). https://doi.org/10.1007/s40319-016-0528-z
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DOI: https://doi.org/10.1007/s40319-016-0528-z