Patent Japan

Wednesday, July 19, 2006

From Archives - First Grand Panel Case of IP High Court, “Ichitaro Case” (2)

(1) As for the first issue (i.e. scope of claims), the Court affirmed the District Court's findings that the term “icon” in the claims should be interpreted simply as “a picture or pictograph on the screen displaying various data and processing functions,” and there are no reasons to require additional limitations, such as movable or arrangable on the desktop. Therefore, the Court concluded that a computer on which Justsystem’s products are installed meets all the elements and thus falls within the scope of the claims.
(2) As for the second issue (i.e. indirect infringement), the Court found Justsystem liable for indirect infringement provided in Section 101 (ii) regarding claims 1 and 2 (i.e. product claims), by holding; that Justsystem’s products are used to manufacture “a personal computer” which meet all the elements of claims 1 and 2; that Justsystem’s products are exclusively used for manufacturing a product corresponding to claims 1 and 2, thus they should not be deemed as “widely and generally distributed staples” as provided in Section 101 (ii); and that, at the time of the service of complaint, Justsystem had been aware that Matsushita was the patent holder and that their products used the patent.
The Court rejected, however, indirect infringement regarding claim 3 (i.e. process claim) in accordance with Section 101 (iv), by holding that Justsystem was manufacturing and selling only the software used for manufacturing the personal computers, rather than manufacturing or selling the said computers as such.
(3) As for the third issue (i.e. invalidation), by comparing the patent with the prior art, which was submitted as evidence after appeal, the Court held that; the only difference is that the “functional description display means” is an “icon” in the claimed invention whereas it is a “screen/menu help” item in the prior art; and, in light of the technical knowledge well known at the time of the patent application, a skilled person could have easily arrived at the idea of using an “icon” instead of a “screen/menu help” item as the “functional description display means.”
For these reasons, the Court concluded that Matsushita's patent was to be invalidated, and thus, pursuant to Section 104-3 (1) of the Patent Law, it is not allowed to enforce its patent.
(4) As for the fourth issue (unduly late offence/defense), the Court rejected Matsushita's argument that the additional allegation/evidence submitted before the Court should be dismissed on the grounds of unduly late defense. The reasons are as follows: (a) proceeding of the first instance had been rather expeditious, (b) this additional allegation /evidence was submitted at the earlier stage of the appellate proceedings, (c) the additional allegation/evidence is only to supplement previous argument from a similar perspective; and (d) considering that the new evidence is a document written in English which had been published abroad a long time ago, it is excusable to take some time to find such document.

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