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  • [Latest News] The Intellectual Property High Court Grand Panel decision on March 25, 2016, establishing new interpretive criteria to expand the scope of application of the doctrine of equivalents

[Latest News] The Intellectual Property High Court Grand Panel decision on March 25, 2016, establishing new interpretive criteria to expand the scope of application of the doctrine of equivalents

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  • Precedents

I. Overview of Decision
This case relates to a patent infringement action lodged by the Plaintiff (Appellee), a leading pharmaceuticals manufacturer, against four companies, including generic drug manufacturers. The first instance, Tokyo District Court, on December 24, 2014, rendered a decision of patent infringement under the doctrine of equivalents (equivalent infringement). The appellate decision (the present decision), rendered by the intellectual property High Court Grand panel, upheld the first instance decision, but further established epoch-making interpretation criteria with respect to the 1st and 5th Requirements among five (5) requirements* for equivalent infringement which were found in the Supreme Court decision in the “Ball Spline Case” (February 24, 1998) .

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* Requirements for Equivalents found by the Supreme Court in 1998 (summary)
Even if, within the scope of a patent claim, there is a part which is different from the allegedly infringing product (“AIP”), equivalent infringement may exist, provided that:
1) the different part is not an essential part of the patented invention;
2) the purpose of the patented invention can be achieved if this part is replaced with the part in the AIP and also the same function and effect can be obtained;
3) the above replacement was easily conceivable for a person skilled in the art at the time of manufacturing the AIP;
4) the AIP was not identical to a product in the public domain or not easily conceivable for a person skilled in the art, at the time of filing of the patented invention ; and
5) there were no special circumstances such as a case where the AIP had been intentionally excluded from the scope of claim in the process of prosecution of the patent.
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1. 1st Requirement of Equivalents Infringement
(1) The IP High Court held in relation to the 1st Requirement of equivalent infringement to the following effect.
“The essential part should be determined by establishing the characteristic part constituting a particular technical concept which cannot be found in the prior arts, after perceiving the problem and solution of the patented invention together with the effect based on the descriptions of the scope of claim and specification.
The essential part of the patented invention should be identified according to the description of the scope of claim and specification, in particular, as compared with the prior art described in the specification.

It can be interpreted that, (a) if the degree of contribution of the patented invention is evaluated to be greater as compared with the prior art, the essential part should be more broadly conceptualized for a part of the description of scope of claim, and (b) if the degree of contribution of the patented invention is not so great as compared with the prior art, it may be found as being almost synonymous with the description of scope of claim.”

In the court cases so far, the essential part has been found after taking the description of the specification, prior art and prosecution history into consideration. As opposed to this, in the present decision, it should be found as compared generally with the prior art described in the specification, and exceptionally with the prior art not described therein.

It is remarkable that the present decision did not indicate “prosecution history” as an element for recognizing the essential part. Assumedly, this implicitly means that the prosecution history, such as the opinion in the written argument and the amendment(s) submitted by the applicant during the application process, should be considered in connection with an intentional exclusion referred to in the 5th Requirement for equivalents infringement.

Most notably, the present decision clearly establishes that the essential part should be more broadly conceptualized if the degree of contribution of the patented invention is evaluated to be greater as compared with the prior art. There seem to have been almost no court cases which broader conceptualization of the description of the scope of claim of a patent was accepted.

If such a broader conceptualization of the description of the scope of claim is accepted, the range to which the doctrine of equivalents applies would clearly be expanded accordingly.

(2) Further, in determining the 1st Requirement of the doctrine of equivalents, i.e., whether or not the part different from the AIP is an essential part of the patented invention, the decision expressly denied an approach in which by dividing constituent requirements described in the claim into the essential part and non-essential part, no equivalency at all can be recognized for the constituent requirements corresponding to the essential part  . Such an approach has been most typical in previous court cases that deny equivalent infringement. It is anticipated that the expanded application of the 1st Requirement will reorient the conventional approach by which the equivalent infringement has predominantly been denied. 

2. 5th Requirement of Equivalents (special circumstances)
The court held regarding the 5th Requirement of the Equivalents to the following effect.
Even if there existed any other structure outside the scope of claims which may have easily been conceived by a person skilled in the art as substantially identical to said other structure described in the scope of claims, and thereby the applicant may have easily conceived said other structure at the time of filing, the fact that the applicant did not describe said other structure in the scope of claim does not fall under the “special circumstances” in the 5th Requirement, only for that reason. As opposed to this, if it can be objectively and externally observed that the applicant had recognized said other structure outside the scope of claim at the time of filing as substituting the different part among the structures described in the scope of claim, for example, where it can be seen that the applicant describes the invention by said other structure in the specification, or where the applicant described the invention by said other structure in a paper, etc., published when the application was filed, the fact that the applicant did not describe said other structure in the scope of claim falls under the “special circumstances” in the 5th Requirement.

The above finding puts an end to a hitherto disputed issue of “applicability of the Doctrine of Equivalents to the materials having the same effect at the time of filing”.
The Doctrine of Equivalents is primarily intended to extend the patent scope to the equivalent structure that appeared after the patent was filed, and it has been disputed whether or not it can cover structures having the same effect which already existed at the time of filing.

There has been an opinion dominantly argued regarding the above Ball Spline decision of the Supreme Court, that as Mr. Ryoichi Mimura, a researcher of the above case at that time, explained in his commentary, the 5th Requirement should be narrowly applicable, specifically, there are a number of cases where the 5th Requirement should be denied with regard to the replacement by other material or technology that already existed at the time of filing, since the applicant intentionally excluded the replaceable structure although the applicant could have included such structure at the time of filing.

This decision states that such a situation does not fall under the “special circumstances” in the 5th Requirement, in principle, which relaxes the applicability of the 5th Requirement.

II. Influence of This Decision
In the previous patent infringement cases, equivalents infringement, if argued, has almost always been denied, mainly for the reason of the non-applicability of the 1st Requirement (essential part) and the 5th Requirements (intentional exclusion) of the Doctrine of Equivalents. As explained above, this decision established interpretation criteria under which the Doctrine of Equivalents may be more affirmatively applicable in respect of both of the 1st and 5th Requirements. Therefore, it is henceforth anticipated that, as long as this decision is not overturned by the Supreme Court, there will be a considerable increase in the court cases approving a claim of equivalents infringement. This may be good news for patent owners, however, from the standpoint of avoiding a conflict with another party’s patent, the likelihood of equivalents infringement should be more deliberately considered.

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