Main
text of the judgment (decision)
1. The final appeal shall
be dismissed.
2. The costs of the final appeal shall be borne by the appellant.
Reasons
Reasons for the petition
for acceptance of final appeal filed by the counsels for the appeal, SAMEJIMA
Masahiro, KOTANI Taizo and YAMAMOTO Mayuko
1. An outline of the facts related to the case which duly became final and
binding in the judgment of prior instance and the circumstances leading up to
this case as shown in relevant records are as described below:
(1) Patent right
The appellant is the patentee of the patent covering the invention whose title
is “Sheet cutter” (Patent No. 5374419, containing one claim; hereinafter this
patent is referred to as the “Patent” and the patent right with respect to the
Patent as the “Patent Right”).
(2) Circumstances during the first instance
In December 2013, the appellant filed against the appellee, who sold the tools
listed in the list of items shown in the exhibit to the judgment of first
instance, the present action seeking injunction of such sale and claiming
damages and other relief based on the Patent Right.
The appellee asserted a defense under Article 104-3, paragraph (1) of the Patent
Act (hereinafter referred to as the “defense of invalidation”) on the grounds
that the reason for invalidation listed in Article 123, paragraph (1), item (i)
or (iv) exists with regard to the Patent. In October 2014, however, the court
of first instance rendered a judgment which rejected the appellee’s defense of
invalidation on the above grounds and accepted part of the appellant’s claims.
(3) Circumstances during the prior instance
The appellee appealed against the judgment of first instance and, in the
statement of reasons for appeal dated December 26, 2014, asserted a new defense
of invalidation on the grounds that the Patent had been obtained in violation
of Article 29, paragraph (1), item (iii) or paragraph (2) of the Patent Act and
that the reason for invalidation listed in Article 123, paragraph (1), item
(ii) of the same act thus exists with regard to the Patent (hereinafter the
defense based on these grounds is referred to as the “Defense of
Invalidation”).
After a total of four dates for preparatory proceedings, the court of prior
instance closed the oral argument on the first date for oral argument in
November 2015. The appellant did not, before the close of the oral argument at
the court of prior instance, assert a re-defense against the Defense of
Invalidation on the grounds that a correction will resolve the reason for
invalidation on which the defense of invalidation was based (hereinafter
referred to as the “re-defense of correction”).
On December 16, 2015, the court of prior instance rendered a judgment which
accepted the Defense of Invalidation, revoked such part of the judgment of
first instance as against the appellee, and rejected all of the appellant’s
claims, on the grounds that the Patent was obtained in violation of Article 29,
paragraph (1), item (iii) of the Patent Act.
(4) Circumstances after the delivery of the judgment of prior instance
The appellant filed a final appeal and a petition for acceptance of final
appeal and, on January 6, 2016, requested a trial for correction to correct the
scope of claims covered by the Patent (Correction Case No. 2016-390002). In
October the same year, the Patent Office made a trial decision to the effect
that such correction should be made (hereinafter referred to as the “Trial
Decision for Correction”). The Trial Decision for Correction became final and
binding around then.
(5) Circumstances, etc. during the trial for patent invalidation
During the pendency of the present case at the court of first instance, the
appellee requested a trial for patent invalidation on the grounds of the
existence of the reason for invalidation described in (2) above with regard to
the Patent (Invalidation Case No. 2014-800004). In July 2014, the Patent Office
made a trial decision that the request was unacceptable (hereinafter referred
to as the “Other Trial Decision”). In August the same year, the appellee filed
an action for revocation of trial decision seeking a revocation of the Other
Trial Decision. On December 16, 2015, however, the Intellectual Property High
Court rendered a judgment which rejected the appellee’s claims. The judgment
became final and binding by January 6, 2016.
As described above, at the time when the Defense of Invalidation was asserted
at the court of prior instance, the action for revocation of trial decision was
already pending against the Other Trial Decision, which did not subsequently
become final and binding until January 6, 2016. For these reasons, the
appellant was prevented, before the close of the oral argument at the court of
prior instance, from filing a request for a trial for correction or a request
for correction in the trial for patent invalidation in order to make
corrections intended to resolve the reason for invalidation on which the
Defense of Invalidation was based (Article 126, paragraph (2) and Article
134-2, paragraph (1) of the Patent Act).
2. The appellant argues that the ground for retrial listed in Article 338,
paragraph (1), item (viii) exists since the administrative disposition based on
which the judgment of prior instance was made has been modified by a subsequent
administrative disposition as a result of the Trial Decision for Correction
having become final and binding during the pendency of the present case at the
final appellate court and the scope of claims covered by the Patent having been
restricted, and that the judgment of prior instance thus contains a violation
of law that obviously affects the judgment.
3. (1) In a patent infringement suit, the adverse party may assert a defense of
invalidation, whereas the patentee may assert a re-defense of correction. It is
understood that the intention of Article 104-3, paragraph (1) of the Patent
Act, which allows a defense of invalidation to be asserted without waiting for
a trial decision for invalidation rendered in patent invalidation trial
proceedings to become final and binding, is to resolve any dispute involving
patent right infringement as promptly as possible within the proceedings of a
patent infringement suit. It is then understood that the intention of paragraph
(2) of the same article, which authorizes the court to dismiss a defense of
invalidation if the court considers that the defense is asserted for the
purpose of unreasonably delaying the proceedings, is to prevent the occurrence
of delays in the proceedings caused by hearing and judging on the defense of
invalidation. These understandings should be the same for a re-defense of
correction (see Supreme Court, 2006 (Ju) 1772, Judgment of the First Petty
bench of April 24, 2008, Minshu Vol. 62, No. 5, p. 1262).
In addition, the intention of Article 104-4 of the Patent Act, which, if a
trial decision to the effect that the scope of claims should be corrected,
among others, as listed in item (iii) of the same article (hereinafter simply
referred to as a “trial decision for correction, etc.”) becomes final and
binding after the final judgment on a patent infringement suit has become final
and binding, precludes the parties to the patent infringement suit from
asserting the fact that the trial decision for correction, etc. became final
and binding in any action for retrial against such final judgment, is to ensure
that any dispute involving patent right infringement is resolved at one time
based on the fact that, as described above, a re-defense of correction is
allowed to be asserted against a defense of invalidation in a patent
infringement suit.
Even if the final judgment on a patent infringement suit has not become final
and binding, if the patentee, despite his failure to assert a re-defense of correction
before the close of the oral argument at the trial court, is permitted to
contest the trial court’s ruling on the grounds that a trial decision for
correction, etc. subsequently became final and binding, this would have the
same effect as permitting the hearing and judgment made at the trial court to
be repeated all over again, as is the case with permitting the parties to a
patent infringement suit to assert, in an action for retrial against the final
judgment on their patent infringement suit, that a trial decision for
correction, etc. became final and binding.
It should then be considered that, unless there were convincingly compelling,
and exceptional, circumstances that prevented him from asserting a re-defense
of correction, a patentee who failed to assert a re-defense of correction
before the close of the oral argument at the trial court is not permitted to
contest the trial court’s ruling on the grounds that a trial decision for
correction, etc. subsequently became final and binding, in light of the intent
of the provisions of Articles 104-3 and 104-4 of the Patent Act since
permitting this would unreasonably delay a resolution of the dispute involving
patent right infringement.
(2) Let us apply the above discussion to this case. According to the facts
related to the case described above, the appellant did not, before the close of
the oral argument at the court of prior instance, assert a defense of
correction against the Defense of Invalidation asserted at the court of prior
instance. Up to the close of the oral argument at the court of prior instance,
the appellant had been prevented by law from filing a request for a trial for
correction or a request for correction in order to make corrections intended to
resolve the reason for invalidation on which the Defense of Invalidation was
based. However, under the circumstances described in 1.(5) above, such as that
the Other Trial Decision had not become final and binding because an action for
revocation of trial decision, which involved reasons for invalidation other
than the reason for invalidation on which the Defense of Invalidation was based
and which was newly asserted at the court of prior instance, was already
pending against the Other Trial Decision, it should be considered that it was
not necessary for the appellant to have actually filed these requests in order
to assert a re-defense of correction against the Defense of Invalidation. It
thus cannot be considered that these circumstances prevented the appellant from
asserting a re-defense of correction against the Defense of Invalidation at the
court of prior instance. No other convincingly compelling, and exceptional,
circumstances are found that would have prevented the appellant from asserting
a re-defense of correction.
4. For the above reasons, the judgment of prior instance does not contain the
violation of law asserted by the appellant, and the appellant’s reasons for the
petition are unacceptable. Accordingly, the Court unanimously decides as set
forth in the main text.
(This translation is
provisional and subject to revision.)