Suit Against an Appeal/Trial Decision - The court decisions -

June 12, 2003
HARAKENZO WORLD PATENT & TRADEMARK PATENT LAW FIRM
Patent & Trademark Attorney
Yoshihisa MASUI

1. Preface
A person who is dissatisfied with an administrative disposition may appeal under the Administrative Case Litigation Law. An appeal/trial decision and a decision of revocation given by the Japanese Patent Office are included in the administrative disposition. However, the Administrative Case Litigation Law is not necessarily appropriate to be applied in the case that the appeal/trial decisions is dissatisfying since the case regarding a patent right or a utility model right involves technical expertise matters. Therefore, actions against appeal/trial decisions are allowed to be taken (Article 178 of the Patent Law, Article 47 of the Utility Model Law) .
I would like to introduce the outline of the suit against appeal/trial decision and the latest court decisions on the suits in this column. To be familiar with some specific cases of the court decisions will be helpful in demanding an appeal/trial and a suit against an appeal/trial decision.

2. Outline of the system
2-1. Subjects of suit
Under the current laws, the subject of suit is limited to a decision of revocation rendered in opposition to the grant of a patent, a decision of an appeal/trial for invalidation, a decision to decline a written opposition to the grant of a patent, and a decision to decline a written demand for an appeal/trial or for a retrial.

2-2. Persons who are entitled to sue
The plaintiff in a suit against an appeal/trial decision is limited to a concerned party, an intervener or a person whose application for intervention has been refused. A person whose right is infringed by an administrative disposition is qualified to be a plaintiff under the Administrative Case Litigation Law. However, when a right having influence on the public like a patent right is infringed, the number of interested parties in the broad sense is too large, which could cause delay in the lawsuit. This is why only limited people are qualified.
The defendant is the Commissioner of the Japanese Patent Office for a case against a decision of revocation or an ex-parte appeal, and is either the demandant or the defendant of the trial for a case against an inter-partes trial.

2-3. Jurisdiction
The suits against an appeal/trial decision come under the exclusive jurisdiction of The Tokyo High Court. As an appeal/trial follows a procedure similar to a judicial procedure and cases with respect to patent rights that have influence on the public need to be solved immediately, the court of the first instance is omitted.

2-4. Time limit
A suit shall be filed within 30 days from the date of transmittal of a certified copy of an appeal/trial decision.
This time limit is invariable. However, a trial examiner-in-chief may extend the period upon ex officio for the benefit of a person residing in a place that is remote or difficult to access.

2-5. An appeal/trial examination
a) Subject of an appeal/trial examination
In an appeal/trial, a subject matter of a suit against an appeal/trial is the illegality of an appeal/trial decision either in substance or procedure. An illegal decision in substance refers to a decision in which inventive step of an invention is not recognized appropriately because of an erroneous recognition as to identical features and differences between a subject invention and a cited invention. The patentability of the subject invention is not examined in a suit. What is examined is the illegality of the appeal/trial decision in substance itself.
A defect in an appeal/trial procedure that has an influence on an appeal/trial decision is also examined. A defect in procedure refers to a case where a revocation for the grant of a patent is decided without any opportunity given in advance to a patentee thereof to offer his opinion on the grounds of the revocation. Only those defects which have effects on a conclusion of a suit are examined. (See Case (vii) ) .
b) Scope of examination
The scope of examination is principally limited to the facts indicated as a reason of an appeal/trial decision and new matter shall not be claimed.

2-6. Closing of appeal/trial examination
An appeal/trial decision is canceled (i. e. , a demand for a suit is approved) when grounds for demanding a suit are affirmed, while the demand for a suit is dismissed when grounds for demanding a suit are not affirmed.
When the decision to cancel the appeal/trial decision becomes final and conclusive, the Japanese Patent Office is bound to the decision, so the Japanese Patent Office are not allowed to give the same disposition based on the same reasons. Appeal examiners of the JPO make further examination and an appeal decision, following the decision of the court.
When the plaintiff is dissatisfied with the decision, he/she may appeal to the Supreme Court.

3. The latest court decisions
3-1. Statistics of the court decisions pronounced in May 2003
Court decisions were pronounced for 23 suits against an appeal/trial decision concerning patent and utility rights in May 2003. Table 1 shows the type of appeal/trial decisions against which suits were filed and the number of admitted demands for the suits.

Table 1
The number of suits for which decisions were pronounced in May 2003
The type of appeal/trial decisions against which suits are filed
Decision of Revocation rendered in opposition
admitted demands
unadmitted demands
Appeal against examiner's decision of refusal
Decision to dismiss a demand for an appeal/trial
Decision to decline the amendment
Total

The number of suits
The number of admitted demands for suit against an appeal/trial decision
1: Under the former laws remaining effective until 1993 (Heisei 5) , an applicant who has received a decision to dismiss an amendment for the application by reason that the amendment changes the gist thereof in the phase of an appeal/trial against examiner's decision of refusal may demand an appeal/trial against the decision to the Tokyo High Court. This decision was made under the former law with respect to a divisional application of which original application was filed in 1989 (Heisei 1) .
2: The number in parentheses refers to the number of cases with respect to which a trial for correction is demanded after the decision to revoke the grant of a patent and the correction was admitted and as to which a demand for suit against an appeal/trial decision was approved consequently.

3-2. Court Decisions
The following are issues of my interest picked up from the above 23 cases.

i) Heisei 13 (Administrative case: Ke) No. 583
Subject: Decision to revoke the registration of a patent rendered in opposition
Plaintiff: Patentee of Japanese Patent No. 3038428 "Radiation image information reading apparatus"
Defendant: The JPO Commissioner
Conclusion: Admitted
The present invention relates to "a radiation image information reading apparatus comprising: (A) reading means for reading a radiation image transformation panel on which a radiation image is recorded and obtaining image data containing a plurality of pixels;
(B) thinning-out means for thinning out the image data at the same thinning rate in vertical and horizontal direction of the radiation image;
(C) means for obtaining conditions for gradation process for the image data corresponding to the radiation image based on frequency distribution of the image data thinned out by the thinning-out means, and (D) ".
The JPO made a decision of revocation, deciding that the invention lacks inventive step based on publication 1 and well-known art. However, the plaintiff appealed against the decision, arguing that the decision is defective on the recognition of the identical features between component (B) and the publication 1 and the differences based on the well-known art.
Issue : Against the argument of the plaintiff, the defendant claimed that the publication 1 clearly describes "thinning out the image data at the same thinning rate".
The Tokyo High Court decided in favor of the plaintiff, holding as follows: Although the publication 1 describes "to obtain an image of 1024 x 1024 pixels by downsizing the original image of 2048 x 2048", there are various methods for downsizing an image which can be adopted in the case of publication 1. Accordingly, the publication 1 is not considered to clearly describe "thinning out the image data at the same thinning rate".
Issue : The Tokyo High Court decided that there is no well-known or commonly used art found in Demandee's Exhibit No. 1, on which the decision on inventive step of the present invention was based, in the view that the constitution related to the above mentioned erroneous recognition regarding the identical features is a basic constitution of the present invention.
Comments: The court decision can be summarized as follows: The description in the publication 1 as to obtaining a low pixel image from a high pixel image by a method of thinning out and other methods is about a generic concept and not to be equivalent to the description as to thinning out in the present invention, which is a subordinate concept.
The decision is appropriate in the light of the examination standard of the JPO for "treatment of an invention expressed as a generic or subordinate concept in recognizing a cited invention".

ii) Heisei 14 (Administrative case: Ke) No. 118
Subject: Decision to decline an appeal for invalidation
Plaintiff: Demandant of the appeal for invalidation
Defendant: Patentee of Japanese Patent No. 3041307 "Storage box with wing and automatic locking device and dead bolt used therein"
Conclusion: Admitted
The present invention relates to
"[Claim 1] A locking device of a storage box with wing comprising:
(A) a locking device (1) ... ;
(B) a bracket (40) ... ; and
(C) a deadbeat (16) movably inserted in the locking device (1) in a vertical direction and having a projecting end portion engaged
in the bracket (40) and preventing the wing (5) from opening, wherein
(D) a cavity (76) ... . being provided.
[Claim 3] A dead bolt used in a locking device of a storage box with wing
(E) movably inserted in a locking device (1) in a box (3) in a vertical direction and having a projecting end portion engaged in a bracket (40) provided inside (5A) of a wing (5) and preventing the wing (5) from opening,
(F) wherein the projecting end portion provided with a cavity (76)
for ensuring connection to a latch (43A) of the bracket (40) projecting in the opening direction of the wing (85) . The JPO declined the demand for an appeal for invalidation, deciding that the invention according to claims 1 and 3 has an inventive step based on cited references 1 to
3. However, the plaintiff appealed against the decision, arguing that there are defects in the decision on the differences between the component (C) of claim 1 and the cited reference
3 and the differences between the component (B) and the cited reference 3.
Issue : The plaintiff claimed that the end part of the hook member is substantially identical with the component (C) of claim 1 since the end part of the hook member is provided to be vertically movable against the upper end
of the mounting metal fitting in terms of the motion of the hook member against the mounting metal fitting in the cited reference 3.
The Tokyo High Court decided the case as follows: The projecting end portion of the component (C) is not limited to what moves reciprocally in a vertical straight line as long as it moves reciprocally in the vertical direction and is engaged in the bracket (40) . Although the hook member of the cited reference 3 moves circularly in range of the constant central angle, the hook member moves reciprocally in the vertical direction and is engaged in the mounting metal fitting 7. Accordingly, the hook member is substantially identical with the component (C) .
Issue : Against the plaintiff claiming that the present invention lacks inventive step based on the cited reference 3, the defendant defended itself by saying that the invention according to claim 3 in which the bracket is provided with a latch projecting in the opening direction of the wing is advantageously applicable compared to the invention of the cited reference 3 in which no projection like latch (43A) is formed.
The Tokyo High Court decided this case as
follows: The invention according to claim 3 relates to a dead bolt. The words "for ensuring the connection to a latch (43A) of the bracket (40) " in the description of the component (F) refer to "concavity (76) " and do not specify "the latch (43A) of the bracket (40) " as a constituent feature of the invention. The appeal decision is defective in stating "While the bracket ... of the present invention is provided with a latch projecting in the opening direction of the wing, the bracket ... of the cited reference 2 is provided with a latch projecting in the opening direction of the wing. In this point, they are different to each other. "

iii) Heisei 14 (Administrative case: Ke) No. 119
Subject: Decision to revoke the registration of a patent rendered in opposition
Plaintiff: Patentee of Japanese Patent No. 3132632
Defendant: The JPO Commissioner
Conclusion: Admitted
The present invention relates to "an internal oil pump rotor comprising: an inner rotor having z external teeth; and an outer rotor having (z+1) internal teeth, wherein trochoidal teeth, in which the number of teeth of the inner rotor (z: piece) , the radius of the circle generated by the teeth of the inner rotor (R: mm) , the diameter of the top circle of the teeth of the inner rotor (d1: mm) , and the diameter of the bottom circle of the teeth of the inner rotor (d2: mm) satisfying the following equation: 0. 20 R·z/ (π·(d1+d2) /2) (Equation A) 0.30, used as external teeth of the inner rotor. "
The JPO decided to revoke the registration of the patent based on cited reference. The plaintiff appealed against the decision, arguing that the decision is defective on recognition of the inventive step.
Issue : Against the claim of the plaintiff, the defendant claimed as follows: The range of the equation A is shown to be from 0. 08 to 0. 628 based on the data about the numbers of teeth of the inner rotor and the like in the cited reference. This satisfies the conditions of the present invention.
Accordingly, it is identical with the present invention.
The Tokyo High Court decided the case as follows: Although the cited reference describes that the range of the equation A is from 0. 08 to 0. 628, there is no description or suggestion that the range in the present invention is adopted from it. For this reason, the present invention is not considered to be disclosed in the cited reference.
Accordingly, the appeal decision is erroneous. The court further stated "Regarding the decision on the novelty of the present invention concerning the numerical limitation, the technical meaning of the numerical limitation was taken into consideration, ... the novelty is affirmed when it achieves extremely outstanding operation-effect. The embodiment of the present invention of which range is from 0. 2 to 0. 3 falls in the range of 0.
08 to 0. 628 and is shown to have better pulsation features compared to the comparative examples of which rage is outside the range. The critical meaning of the number range of the present invention is not examined in the decision. "
Comments: The decision, like the abovedecision i) , is appropriate in the light of the examination standards on novelty stating that even the cited reference described in the broad sense (i. e. , as a generic concept) and the present invention is described in the narrow sense (i. e. , as a subordinate concept) included in the board sense, the cited reference is not considered to refer to the invention expressed as a subordinate concept. In the cases concerning numerical limitation like this case, it is important to clarify the critical meaning of the number range in a description in order to obtain a patent.

iv) Heisei 14 (Administrative case: Ke) No. 373 Subject: Decision to dismiss an appeal against the Examiner's decision of refusal
Plaintiff: Patentee of Japanese Patent No. H03-510089 "Powder coating composition"
Defendant: The JPO Commissioner
Conclusion: Dismissed
The present invention relates to "(A) a colored powder coating composition, wherein the powder particle being an aggregation in which each granular constituent fused or bonded to be a complex particle, the complex particle not being isolated by a mechanic and/or an electrostatic force related to application of the composition to a base substance and the each granular constituent consisting of a main film forming constituent, a film forming constituent, and more than one constituent selected from non film forming constituents, and
(B) ... in the case of the aggregation containing a metal or gloss constituent and a flowable film forming constituent ... ,
(C) ... in the case of the aggregation containing a plurality of differently colored compatible film forming constituents and optionally containing uncolored compatible film forming constituents, wherein a particle size of each film forming constituent being small enough for coatings to be obtained to be of uniform color on the powder coating being applied to the base substance to heat and form a successive coating ... , and
(D) the composition". The JPO decided the present invention has no inventive step based on publication 1. The plaintiff appealed against the decision arguing that the decision is defective on the recognition of the present invention, the identical features and differences between the present invention and the invention in publication 1.
Issue : The plaintiff claimed that the constitutions (B) and (C) are not specified as a dependent claim but are limited to the "aggregation", which is a generic concept of the present invention, as an independent claim.
The Tokyo High Court decided the case as follows: It is clear that the present invention including the "aggregation" specified in the constitutions (A) and (D) and not specified in the constitutions (B) and (C) as an invention thereof. Accordingly, there is no defect found in the appeal decision stating that the present invention has no inventive step compared to the cited invention.
Comments: Article 36(5) of the Japanese Patent Law provides "there shall be set forth, by statements separated on a claim by a claim basis, all matters which an applicant for a patent considers necessary in defining an invention for which a patent is sought".
Accordingly, the decision in which the cases not specified in the above constitutions (B) and (C) are considered to be included in the constitutions (A) and (D) based on the description of " ... in the case of ... " in the constitutions (B) and (C) seems to be appropriate.

v) Heisei 14 (Administrative case: Ke) No. 324
Subject: Decision to dismiss an appeal against the Examiner's decision of refusal
Plaintiff: Patentee of Japanese Patent No. H11-21606 "Roof tile for prevention of disasters"
Defendant: The JPO Commissioner
Conclusion: Dismissed
The present invention relates to "a plate-like roof tile formed with an engaging concavity and an engaging convex at each side end thereof, wherein the engaging convex and the engaging concavity being engaged on covering a roof in a triangular arrangement, the engaging convex for connecting an upstanding portion and a horizontal portion extending from the upstanding portion to the engaging concavity side provided around a central portion of a bottom-side flashing upper surface, an insertion space being provided between the flashing upper surface and a lower surface of the horizontal portion of the engaging convex being formed, and the engaging convex to be inserted into the insertion space being provided outside of the flashing of the convex". The JPO declined the demand for an appeal against examiner's decision of refusal, stating that the present invention has no inventive step compared to the cited invention. The plaintiff appealed the decision, arguing that the decision is defective on the recognition of the cited invention and the difference from the cited invention.
Issue : The plaintiff claimed as follows: It was unavoidable for those skilled in the art at the time of filing the application to form a bottom notch as in the cited invention for manufacturing a roof tile having an engaging projection. It was inconceivable to manufacture a roof tile having no bottom notch according to the present invention. The present invention was made in result that the above-mentioned problem in manufacturing a roof tile was solved.
The Tokyo High Court decided the case as follows: The inconvenience caused by providing a bottom notch is obvious and those skilled in the art shall try to find the way to get rid of the necessity to provide it. Therefore, the constitution itself in which the engaging convex is formed instead of the bottom notch is easily come up with. Accordingly, what is claimed remains in the scope of constitution and there is no inventive step found.
The court further decided as follows: Regarding the method of manufacturing a roof tile for prevention of disasters of which constitution is described in the present invention 1, the features specifying the invention should be described in claims ... in the case that patent applications have been filed, the decision on inventive step will be made with examination of well-known art in this regard.
Comments: This case was caused by the discrepancy between means for solving the problems to be solved by the invention and the features described in the claims. In other words, the matters that should be described as features of the invention were missing.
This decision reminded me of the importance of the fundamental principle of full understanding of the features of the present invention in relation to the prior art and of reflecting them in the claims.

vi) Heisei 13 (Administrative case: Ke) No. 469
Subject: Decision to revoke the registration of a patent rendered in opposition
Plaintiff: Holder of Japanese Utility Model No. 2604241
Plaintiff: The JPO Commissioner
Conclusion: Dismissed
The present utility model relates to "a viscous-liquid damper comprising: at least one airtight container made
of thermoplastic resin including a main container body enclosing viscous liquid inside thereof and a cover;
wherein the airtight main container and the cover being heat fused to bond to each other, and the cover being integrally provided with a mounting part with an engaging portion made of thermoplastic resin and attached by being merely inserted inside of a fixed member". The JPO made a decision of revocation based on the publications 1 and 2, stating that the device can be made extremely easily. The plaintiff appealed against the decision, arguing that the decision is defective on the recognition of the identical feature with and the difference from the publication 1.
Issue : The plaintiff claimed that the meaning of the word "attached" described in the specification of the present utility model is "to be fixed firmly" and does not refer to the condition of the damper made of rubber described in the publication 1 that is easily detached.
The Tokyo High Court decided the word "attached" is not used as claimed by the plaintiff based on other three utility model publications in which the word merely means "to be fit and attached".
Further, the court decided that the claim of the plaintiff could not be adopted because the word "attached" is used as the words "fixed" and "secured" in the present description without any distinction among them.
Comments: The technical scope of a patented invention shall be determined on the basis of the statements of the patent claim(s) in the specification. In this case, the meaning of a term or terms of the patent claim(s) shall be interpreted in the light of the specification, the drawings, and the common general technical knowledge at the time when the application is filed (Article 70 of the Japanese Patent Law) . The decision on this case is made on the basis of the meaning of the term "attached" interpreted in this way.

vii) Heisei 13 (Administrative case: Ke) No. 301
Subject: Decision to revoke the registration of a patent rendered in opposition
Plaintiff: Patentee of Japanese Patent No. 2792373
Defendant: The JPO Commissioner
Conclusion: Dismissed
The JPO decided to revoke the registration of this patent, of which invention is entitled "Nonaqueous electrolyte
secondary battery", based on publications 1 and 2. The plaintiff appealed against the decision, arguing that there is a defect in procedure as well as in the recognition of the identical features with and differences from the publication 1 and of the difference 3.
Issue : The plaintiff claimed that there is a defect in the procedure because the recognition and decision as to the difference 3 is not indicated in the notice of reasons for rejecting a demand for correction and the notice of reasons for revocation and that he was not given any opportunity to argue against them.
The Tokyo High Court dismissed the claim of the plaintiff with admission of the fact that the recognition and decision as to the difference 3 is not indicated in the above notices, stating that the defects in procedure have no influence on the appeal decision.
The court explained the grounds as follows: The difference 3 itself is based on the argument in plaintiff's response to the notice of reasons for rejecting a demand for correction. The difference can be easily expected from well-known matters and the matters are known to those skilled in the art. The plaintiff was not considered to be blindsided by the decision since he did not fight over the matters.

4. Conclusion
As mentioned above, the court decisions on suits against an appeal/trial are often helpful for preparing an effective application for obtaining and maintaining a patent rights and for responding to appeals.
I would like to continue to introduce the latest court decisions in this column.