April 30, 2008

Unmovable Decision

IRIS OHYAMA Co., Ltd. filed a patent infringement litigation against PLACOM Co., Ltd. who imported and sold a product called Full Cover Hose Reel Set. IRIS OHYAMA claimed that the product literally infringed their Japanese Patent No. 3901855, entitled "Hose Reel" registered on 26 January 2007.

On 31 March 2008, the Tokyo District Court concluded that an injunction should be granted to prohibit any transfer, exhibition, and import for the purpose of transfer of the product by PLACOM.

Claim 1 of Japanese Patent No. 3901855:
A hose reel having a drum rotatably supported by a frame for winding up a hose, the frame being formed in a shape of a case for receiving the drum, and having a top surface, a bottom surface having an opening formed therein, and a foot mounted thereto so that the foot is movable between positions to close and non-close the opening.

The PLACOM's reel has elements which meet every element included in the above claim 1, but a side-step of the PLACOM's reel which corresponds to the foot in the IRIS OHYAMA patent is removably mounted to a frame. PLACOM asserted that the removable structure is different from that in the patent, which is integrally formed with the frame and substantially limited to rotate around a supporting point. Moreover, the underlined part of Claim 1 was originally written as "a foot which closes the opening formed in the bottom surface" before amendment, and the Claim 1 after amendment includes the term "movable" although the description only discloses a structure rotatable between a folded position and an extended position. The amendment that has been done in the Claim 1 above has broadened the scope of the invention, which is against the requirement for an amendment.

However, the Court rejected the assertion stating that there is no word in Claim 1 indicating the limitation to rotation; and the foot may be slidable or removable, for example. This can be seen from both of the terms "rotatably" and "movably" used in Claim 1. In addition, it is readily envisioned that the rotatable structure in the description was explained as one embodiment to achieve one object of the invention: a stable stand in the extended position and a compact size in the folded position of the reel. The description includes no suggestion that the rotatable structure is essential to the invention, and also there is no reason for the structure to be essential. Rather, a person skilled in the art naturally understands the structure may include a slidable foot or a removable foot to achieve the above object. This means the amendment does not include a new matter.

April 21, 2008

Length Sometimes Doesn't Matter

In this case, a claim for cancelling a rejection of an application for trademark registration was approved by the Intellectual Property High Court.

Aston Martin received a final rejection from JPO on a trademark application for "DB9" - consisting of two letters and one number - when they made an amendment on 1 October 2004 so that it would belong to Class 12: "Automobiles, bicycles, motorcycles, parts and fittings therefor", and Class 37: "Repair, restoration, maintenance, polishing services of land vehicles, parts and fittings therefor".

On 25 November 2004, JPO rendered the rejection stating that the "DB9" falls in the range of the Japanese Trademark Law Article 3(1)-(v), that is, it "consists solely of a very simple and common mark".

On 31 October 2007, the Intellectual Property High Court supported the JPO decision for the part although the "DB" stands for David Brown who is the founder of the company and "9" indicates one of the classic series of cars bearing the initials "DB". However, the Court reversed the JPO decision based on the Japanese Trademark Law Article 3(2) which says "a trademark may be registered under any of items (iii) to (v) of the preceding paragraph if, as a result of the use of the trademark, consumers are able to recognize the goods or services as those pertaining to a business of a particular person".

In the "automobiles" field, the number of famous automobile manufacturers is not large and new cars are not actually often released, thereby a certain amount of people in the world closely watch newly launched automobiles and their names. Only a small number of advertisements and newspaper articles were made for the car "DB9" and its sales volume was not significant in Japan, but the DB series were known among the Japanese people who had shown interest in automobiles during the above rejection date.

Also, there is no problem with the amended Classes. "Bicycles" and "motorcycles", like automobiles, are also vehicles and automobile manufacturers often produce these goods, and the dealers and consumers of automobiles often deal or purchase bicycles and motorcycles as well. In addition, the manufacturing of automobiles, repair, restoration, and maintenance services are quite involved with each other. That is, when any designated services are accompanied by the mark "DB9", dealers and consumers understand that the services are made for "DB9" by Aston Martin.

Furthermore, there is no evidence that proves that the mark "DB9" is used for any product names or services provided by people other than Aston Martin which is the only one who exclusively used the said mark.

Therefore, the short mark "DB9" can be protected as a registered trademark.

March 31, 2008

Rescued Three Words Rescued A Patent

NIITAKA Co., Ltd. owns Japanese Patent No. 3609532 entitled "Dishwasher Detergent Powder". Claim 1 of the patent had a description that read: "0.5% by weight or less of KOH" as one of the essential elements of a detergent powder according to the invention.

NIITAKA demanded a trial to correct the said description to read: "from 0.5% to 5% by weight or less of KOH", as NIITAKA alleged that they had eliminated a part of description of Claim 1 by mistake for amendment of the patent upon receipt of rejection by an examiner. However, JPO denied the demand on 1 May 2006, stating that the correction substantially expanded or altered the claim scope. NIITAKA brought a suit for cancellation of the decision.

On 28 November 2007, the Intellectual Property High Court supported NIITAKA and cancelled the decision made by JPO.

The amended description that reads: "0.5% by weight or less of KOH" was included in Claim 1 in the phrase "from 0.5% to 5% by weight or less of NaOH and/or 0.5 % by weight or less of KOH". The description indicates no lower limit, and means that the detergent may contain 0% KOH by weight. Also, although it is naturally understood that either NaOH or KOH is included as one essential element, the conjunction "and/or" indicates that there might be a case where neither NaOH nor KOH is included in the detergent.

Referring to the examples described in the patent for confirmation, among ten examples in the described invention, only Example 8 corresponds to the case where 0.5 % by weight or less of KOH is included. JPO appealed that NIITAKA had only eliminated the original three words of "from", "to", and "5%" to exclude a part of the described invention from the claim scope. But if so, because the invention has been consistently explained that having included either NaOH or KOH therein, NIITAKA would lose most of the claim scope by the amendment, which contradicts any reasonable economic activities.

Moreover, the fact that 0% by weight of KOH is included in the detergent and the fact that NaOH and/or KOH are one essential element literally conflict with each other, it requires a certain logic operation to construe the claim. As any scope of claims should be easily understood through the description itself, the description "0.5% by weight or less of KOH" is inappropriate as claim words. As a result, based on the statement that NaOH and KOH have similar properties and activities as compounds, it is apparent that the description "from 0.5% to 5% by weight or less of KOH" was an error.

March 17, 2008

Time Cannot Be Extended In One's Own Favor

A former employee of Mitsubishi Chemical Corporation, whom we will refer to here as person A, made a claim for further consideration of patents of inventions. Based on Article 35 of the Japanese Patent Law (see below), the Tokyo District Court partly dismissed the case on 29 February 2008.

The patents: Japanese Patent No. 1466481, entitled "(3-Aminopropoxy)Benzyls"; and Japanese Patent No. 1835237, entitled 　"Serotonin Antagonist" cover a drug product which has been marketed under a brand name of ANPLAG Fine Granules/Tablets, and have considerably contributed (and will supposedly contribute) to the sales amount of 1800 million dollars in total during its sales period of 16 years since 1993.

In Japan, the right to obtain a patent right of an invention created by an employee is usually assigned to the employer through a contract, employment policy, or other agreement, so that the employer can file a patent application in its own name as applicant. And the employer is supposed to remunerate the employee for the employee invention in accordance with the agreement by means of compensations for application, implementation, and assignment of the invention, respectively. Specifically, a compensation for application should be paid in ten years from the date when the application is filed. That is, a 10-year statute of limitations ("extinctive prescription") for claiming for a reasonable amount of remuneration begins to run from the said date.

As for JP 1466481, the payment date of compensation for application was 20 August 1981, that of compensation for assignment was 10 December 1988, and that of compensation for implementation was 7 October 1993 when the patent was implemented, from which a 10-year extinctive prescription began to run for each remuneration. However, Mitsubishi Chemical paid about 10 dollars to person A as compensation for application in November 1981, and thirty dollars as that for assignment for the former patent in February 1989, which means the extinctive prescription resumed to run from these dates. Similarly, as for JP 1835237, the latest payment date of compensation was 11 April 1994.

It was 1 February 2007 when person A claimed for further consideration of the two patents, revealing that ten years have elapsed counting from the starting point of extinctive prescription for each of the compensations. Person A appealed that five years to evaluate the outstanding effect of the inventions onto the drug product should be counted in before the extinctive prescription for compensation for implementation begins to run. However, the Tokyo District Court denied the appeal, and ruled that the employee claim was barred.

Article 35 of the Japanese Patent Law: Employee Inventions

(1) An employer, a legal entity or a state or local public entity (hereinafter referred to as the "employer, etc.") shall have a non-exclusive license on the patent right concerned, where an employee, an executive officer of a legal entity or a national or local public official (hereinafter referred to as the "employee, etc.") has obtained a patent for an invention which by reason of its nature falls within the scope of the business of the employer, etc. and an act or acts resulting in the invention were part of the present or past duties of the employee, etc. performed on behalf of the employer, etc. (hereinafter referred to as an "employee invention") or where a successor in title to the right to obtain a patent for an employee invention has obtained a patent therefor.

(2) In the case of an invention made by an employee, etc. which is not an employee invention, any contractual provision, service regulation or other stipulation providing in advance that the right to obtain a patent or the patent right shall pass to the employer, etc. or that he shall have an exclusive license on such invention shall be null and void.

(3) The employee, etc. shall have the right to a reasonable remuneration when he has enabled the right to obtain a patent or the patent right with respect to an employee invention to pass to the employer, etc. or has given the employer, etc. an exclusive right to such invention in accordance with the contract, service regulations, or other stipulations.

(4) The amount of such remuneration shall be decided by reference to the profits that the employer, etc. will make from the invention and to the amount of contribution the employer, etc. made to the making of the invention.

February 29, 2008

Disapproved Replacement

This case involved a suit for cancellation of the examiner's decision affirming a final rejection of a patent application.

In this case, the Intellectual Property High Court ruled against the party to the suit, stating that an amendment for changing the subject matter of a patent application from a product to a method substantially claims a right having a law effect different from the original before the amendment.

Specifically, Shimadzu Corporation filed a patent application entitled "Holographic Grating" on 25 February 2000. After receiving a final rejection from the examiner, Shimadzu requested examination, and also submitted an amendment on 8 April 2004. Unless the amendment was approved, the claimed product would still be considered part of the products that belong to the prior art. However, the amendment was dismissed.

Before the amendment, the application contained three claims for "a holographic grating", including Claim 1 in form of a product-by-process claim. After the amendment, two of the three claims were eliminated, and the application was defined by one claim for "a method for fabricating a holographic grating".

A product-by-process claim is one in which a product is defined at least in part in terms of the method or process by which it is made. That is, the invention written in form of a product-by-process claim falls in a category of "an invention of a product", not a category of "an invention of a method" or "an invention of a product and a method". An applicant is able to choose from either "an invention of a product" or "an invention of a method" to claim, and the choice is stated in the claims of the application. The distinction between the two categories appears in the claim descriptions. With reference to the claims of the Shimadzu application, the claim 1 before amendment started with a phrase, "A holographic grating" which obviously falls in the category of "an invention of a product", while the claim 1 after amendment started with a phrase, "A method for fabricating a holographic grating" which falls in the category of "an invention of a method".

On 20 September 2007, the Intellectual Property High Court reckoned that Shimadzu had made an amendment to change the subject matter of the patent application, which changed the scope of claims of the application, as a result of that the examiner's decision was supported and agreed upon.

February 18, 2008

Rudeness Is Not A Beauty

This is a case of unfair competition and name right infringement on the Internet.

Unit Japan Co., Ltd. is a company that sells beauty machines and runs an esthetic salon, the director of which is a certain person X from Taiwan who teaches beauty techniques at the salon.

TOPLASER JAPAN Co., Ltd. (the name was changed in 2007 and now called "MUSE") is a Chinese company that manufactures and sells beauty machines including those that Unit Japan sells.

The action of TOPLASER at issue was as follows: they had a website in Japanese version (already eliminated from the Internet) and without permission from Unit Japan, they listed the name of the latter under the title "Introduction of Our Agents and Subsidiaries", and also made a link to the Unit Japan's homepage. In addition, the name of person X was posted above the name and address of the Unit Japan's salon so that inquiries would be directed to the salon. Against the action, Unit Japan sued TOPLASER seeking compensation for the damage under Unfair Competition Law.

Person X has been internationally famous as a skilled make-up artist, and through her instruction to other salon managers, Unit Japan only sells beauty machines they examined and recommended. Unit Japan also has gained considerable fame and reliability as a company providing a certain degree of advanced skills in the make-up art field. To the contrary, TOPLASER was not known and had a relatively lower reliability than Unit Japan as TOPLASER admitted. Moreover, a certain person B who substantially holds the management of TOPLASER once took a seminar course at Unit Japan's salon to learn the skills that the latter offers, this could mean that person B had acquired enough knowledge about the position of Unit Japan and aware of TOPLASER's illegal use and abuse of the fame and reliability of Unit Japan by displaying its name as their subsidiary on the Internet.

On 26 July 2007, the Osaka District Court ruled that the action of TOPLASER constituted defamation and harmed the interest of Unit Japan because the display of the latter's name on the Internet was misleading and had given the impression that Unit Japan was one of TOPLASER's underlying companies. Some consumers have actually purchased the beauty machines directly from TOPLASER, being a parent company, at a lower price, and not from Unit Japan, a subsidiary. The court also admitted that the name right of person X, a part of a personality right, was infringed by the posting of false information. As a result, TOPLASER paid around four thousand dollars to Unit Japan.

January 31, 2008

Strike The Design While It Is Hot

This is a case wherein Hoei Shokai Co., Ltd. requested an injunction and monetary damages against Yohki Co., Ltd., one of the affiliated companies of Daiki Aluminium Industry Co., Ltd., for infringement of patents and a design, which was partly granted.

Hoei holds Japanese Patent Nos. 3323489, 3489081, 3489678, 3506137, 3492677, 3492680, and 3574128 and Japanese Design Registration No. 1137667 for a ladle. Hoei appealed that Yohki had infringed these patents and the design upon using them for the latter's product, that is, a pressurized ladle for transporting molten aluminium alloy.

On 23 March 2007, the Tokyo District Court partly accepted the appeal, and ordered Yohki to pay around $670,000 for damages to Hoei. Yohki had claimed that they had a right of prior use for all of the patents and the design, but the Court did not approve the claim for Japanese Patent Nos. 3323489 and 3492677, and the design.

The Hoei's ladle is a pressure type ladle and a modification of an incline type ladle. The modification is easy for a skilled person in the art, but it requires a through hole for pressure adjustment, which can be provided in the upper lid or body of the ladle. When a ladle has double lids of a larger fixed one and a smaller openable one, usually the hole is designed and formed in the fixed lid because the hole is connected to a piping. However, according to the JP No. 3323489, Hoei's ladle has a through hole in the smaller openable lid at the central part of the larger fixed lid, to provide an effect of reducing splash of a liquid therein, which was an unknown design.

As to the specification of JP No. 3492677, Yohki alleged that they had completed their product corresponding to the patent before its application date, 28 December 2004. On 9 December 2004, there was an accident that aluminium leaked from Yohki's ladle and caused damages to a truck on which the ladle was mounted. Then, on 14 December 2004, Yohki had a meeting with their client to improve the product and proposed a relief valve for pressure relief, but it is not clear if they had included a plan to add a vent to the product or not, which corresponds to elements of No. 3492677: a member for pressure relief in a ladle, and a member for transmission of gases and limitation of a molten metal in a ladle. In January 2005, Yohki finished their experiments to examine the effect of a vent. This means Yohki had not completed their supposedly improved product before the application date of JP No. 3492677.

A ladle is a device for transporting a hot molten metal between factories using vehicles such as trucks on public roads, so that workers can generally see such devices at a certain distance from them. In consideration of the application, the differences between the two designs in detail are not significant enough to change their similar impressions as a whole, as shown below (left: Hoei's design, right: Yohki's product).

January 18, 2008

Incomplete Punch

Carl Co. Ltd. filed an application for a design patent of a punching tool for arts and crafts on 20 December 2005, but the application was rejected. Carl's appeal against the rejection was ruled inadmissible by JPO due to similarity to the design of Japanese Design Patent No. 736935 (cited design). Both of the designs include a generally rectangular housing with edges having a rounded profile, an operation button, and a horizontal slit in which sheet materials are inserted.

Carl brought a suit and challenged the reasons for the ruling. Carl claimed that their tools for arts and crafts are used by consumers who are engaged in art activities and have a keen sense for aesthetic appearance as compared to the consumers of ordinary office tools, thereby the cubic housing of the Carl's design is not similar to the flat rectangular housing of the cited design. Also, the curvature at the edge and the mark at the bottom surface of the housing included in the Carl's design are different from those of the cited design. The color tones of the two designs are also different from each other. Carl further appealed that their design has contributed to an expansion of demand for the said tools and achieved a commercial success; and the ruling from JPO is against the spirit of the Design Law. Moreover, for an effective assessment of similarity of a filed design, a detailed comparison of previously made designs should be done to identify the substantial parts of the designs to be judged.

On 10 September 2007, the Intellectual Property High Court supported JPO and explained their concept of design patent. The two designs are different from each other only in the details including the housing shape and curvature. The details do not give the impression that they are distinctive as a whole even to those who are engaged in art activities. The Carl's design does not include any specification of color tone, and the color of the cited design is not unique enough to attract people's attention: the color tone does not have effect on the similarity. Also, no commercial success of a product due to its design gives an influence on the determination of similarity. Furthermore, it is not reasonable to identify the substantial part by comparing the past designs; and the similarity should be determined by considering the totality of the common feature and distinctive feature of the designs to be judged. Indeed, the essential configuration to secure the function of the article to which a design is applied has to be excluded from the substantial part in consideration of similarity. However, punching tools having various shapes are already known, and the generally rectangular housing and the edges with rounded profile are not essential to the tool function. Based on the consideration including these details, still, the two designs substantially give the same impression to people.

December 27, 2007

Everybody Shares The Fruit

A decision of rejection made by the JPO was affirmed by the Intellectual Property High Court on 20 July 2006.

The company who filed the appeal over the rejection is SAKATA SEED Co., a breeder of vegetable and flower seeds.

SAKATA filed a Japanese trademark application No. 2000-137808 consisting of four Japanese Katakana characters for "Andes". The designated good for the trademark belongs to a type of melon. "Andes" is the name of a greenhouse-type melon cultivar bred, and, the seeds of which are sold solely by SAKATA.

The JPO stated that "Andes" is now widely known and recognized only as one cultivar name of a melon by dealers and consumers, that is, it does not have distinctiveness. The exclusive use of "Andes" by SAKATA as a trademark is not appropriate because a huge number of people related to "Andes" from farmers to retail sellers use the mark "Andes". To the contrary, after selling the seeds, Sakata does not involve itself at all in the later processes such as time and amount of harvest, and supply to the market, therefore SAKATA does not have the right to control the name "Andes" by and for themselves.

The Intellectual Property High Court backed up the JPO decision for the same reason. The Court also dismissed SAKATA's appeal with respect to another point the latter had complained stating that the rejection by the examiner was based on Article 3, 1-i of the Japanese Trademark Law, and that the JPO made a decision on the ground of Article 3, 1-iii of the same law. Both the rejection and the decision were made substantially on the same basis of consideration, and the latter did not show another reason for the rejection.

Trademark Law

Article 3. (Requirements for trademark registration)

1. Any trademark to be used in connection with goods or services pertaining to the business of an applicant may be registered, unless the trademark:

(i) consists solely of a mark indicating, in a common manner, the common name of the goods or services;

(iii) consists solely of a mark indicating, in a common manner, in the case of goods, the place of origin, place of sale, quality, raw materials, efficacy, intended purpose, quantity, shape (including shape of packages), price, the method or time of production or use, or, in the case of services, the location of provision, quality, articles to be used in such provision, efficacy, intended purpose, quantity, modes, price or method or time of provision.

December 17, 2007

It Was Not A Paper-Thin Difference

This is a case where a JPO decision was cancelled.

SANDEN Co., Ltd. filed Japanese Patent Application No. 06-322201, entitled "Optical Detecting Section Of Sheet Discriminating Apparatus" on 26 December 1994. Upon a receipt of the final decision of refusal of the application from the examiner, SANDEN demanded a trial against the decision on 19 September 2003. The JPO had dismissed the demand, and SANDEN filed a suit for cancellation of the final decision.

The JPO listed the differences between the Application and the referenced documents as follows, but still stated that the invention of the SANDEN application is only a variation of conventional design and could be derived by the ordinary person skilled in the art from the known techniques:

<Claim 1 of the SANDEN application>

1. 　　　　An optical detecting section of sheet discriminating apparatus^*(3), characterized in that it comprises:

Differences
*(1) No description can be found in the referenced documents about the direction which is not the same as the predetermined direction.
*(2) No description about the arrangement can be found in the referenced documents.
*(3) The referenced documents disclose an apparatus for detecting laminated state of sheets.

On 29 June 2006, the Intellectual Property High Court overruled the JPO decision. According to the specification of the SANDEN application, the invention was made based on an idea to use a pair of light emitting/receiving elements, that is a plurality of detection lines, to analyze a transmitted light to discriminate a sheet such as paper currency and ticket. The referenced documents do not disclose any technical idea that specifies the use of a plurality of detection lines, but an only one detection line. These inventions, which started from such different premises, should be considered to have different functions and effects, as a result. Although an apparatus for detecting laminated state of sheets and a sheet discriminating apparatus belong to technical fields that are close to each other, the difference is not negligible and there should be a strong motivation to switch the structure for counting the number of laminates of sheet to the structure to analyze the authenticity of sheet. Moreover, the idea of a plurality of detection lines is not necessary to an apparatus for detecting laminated state of sheets, but is significant to the SANDEN application.

In other words, the structure based on the idea of a plurality of detection lines and having the above three different configurations is not a simple variation of conventional design and was not obvious from the prior art.

November 30, 2007

Base Is Essential

Horphag Research Ltd. is a company in Switzerland that has researched and developed natural and nutritional product ingredients, and is the exclusive supplier of Pycnogenol brand, a French maritime pine bark extract. The registered trademarks for polyphenols of the French extract include Pycnogenol and Flavangenol, which contain OPC (Oligomeric Proanthocyanidin, a strong antioxidant) with different contents and compositions therein from each other. The latter's trademark is owned by Toyo Shinyaku Co., Ltd., a Japanese company.

Horphag demanded a trial for invalidation of Claims 1 and 2 of Japanese Patent No. 3533392 owned by Toyo Shinyaku in 2005, and JPO approved the demand for Claim 1 but dismissed the one for Claim 2. Horphag had further demanded cancellation of the decision for Claim 2, which was approved by the Intellectual Property High Court on 13 November 2007.

Claims of the Toyo Patent:

1. An external preparation for skin containing: proanthocyanidin; and
proteolytic peptide having a mean molecular weight of from 3000 to 7000,
the proanthocyanidin containing proanthocyanidin dimmer to tetramer of 1 part by weight or more relative to proanthocyanidin pentamer or more of 1 part by weight.

2. The external preparation for skin according to claim 1, wherein
the peptide is collagen-derived peptide.

The Toyo Patent No. 3533392 is an invention relating to an external preparation for skin containing proanthocyanidin, which may be from a plant extract. Since proanthocyanidin is likely to bind to protein and degrades the skin conditioning properties, the content of proanthocyanidin and the ratio of proanthocyanidin to peptide are the key point of the invention.

However, as Horphag argued, the examples described in the Toyo Patent partly use Flavangenol itself as a part of proanthocyanidin in an extract to be combined with collagen peptide, and the comparative examples also use some processed Flavangenol, which means the test conditions do not belong to the prior art. And also, each of the comparative examples uses a different amount of catechin which should be included as an element of the extract, which is not appropriate for the test condition to support the description of Claim 1. Moreover, the Toyo Patent referred to more than 20 documents providing the description, and detail examination of which showed that the invention could be readily appreciated based on some of the documents. Being the dependent claim of Claim 1, Claim 2 should be considered invalid.

November 19, 2007

Final Judgment

The case Canon Inc. vs. Recycle Assist Co. Ltd. was concluded by the Supreme Court on 8 November 2007. The Supreme Court dismissed the appeal by Recycle Assist, and Canon won the patent lawsuit (see the previous related articles below: "Unstable Life Of An Ink Tank" and "Later Life Of An Ink Tank").

The Supreme Court made the decision based on the principle of patent exhaustion. The principle is not applied if:

(i) the product is reused or recycled after its durability period and reasonable given time of function; or

(ii) the essential elements of the patented invention are replaced or processed in whole or in part.

The Canon's product does not fall in the category (i) as indicated by the decision made by the Tokyo District Court. However, the Recycle Assist's act includes rinsing off the ink that is left inside the tank after use, and refilling of new ink. This process falls in the above category (ii).

The original ink tank does not have any opening for refilling ink to prevent degraded print quality and failure of a printer, but Recycle Assist opened a hole in a used tank to refill ink and closed the hole after the refilling, which is considered a modification of the tank. Moreover, the refilled ink allows the interfaces thereof in the tank to recover the function of preventing any leakage of the ink, which is essential to achieve the object of the Canon's patent. That is, Recycle Assist enabled the essential effect of the patent to be exerted in a new tank product which is not substantially the same as the original product manufactured by Canon.

Under the patent protection, the patent exhaustion principle was not applied to the case, and the Supreme Court allowed Canon to seek injunction against Recycle Assist's import and sales of the Canon ink tanks which were sold domestically and overseas.

October 31, 2007

Pain Added To Company

Toko Pharmaceutical Industrial Co., Ltd. owns Japanese Registered Trademark No. 3260011 consisting of Japanese 5 letters (on the left below). The designated good for the trademark belongs to Class 5 (Pharmaceuticals, etc.). The trademark is used on a package of an analgesic antipyretic drug, accompanied by the mark "EVEPAIN", as seen in the picture on the right below, by a licensee company of the trademark. The mark "EVEPAIN" is a variation of the Toko's trademark as an English expression for the trademark, and both have the same pronunciation: the first two letters from the left are read and pronounced just like the word "EVE"; and the three remaining letters are read as "PAIN".

SSP CO., LTD. owns Japanese Registered Trademark Nos. 1598640 (on the left below), 3065022 (in the middle below), and 3065023 (on the right below), all of which belong to Class 5. The SSP's trademark, as seen in the picture on the right, is used for an analgesic antipyretic drug.

SSP had demanded a trial for cancellation of the Toko's trademark to avoid confusion in accordance with Article 53 (1) of the Trademark Law, but JPO decided that the demand could not be made because the mark "EVEPAIN" was one inseparably connected word and was not confusing with the SSP's trademarks. SSP brought a suit for cancellation of the decision to the Intellectual Property High Court.

On 28 February 2007, the Intellectual Property High Court cancelled the decision made by JPO. The SSP's drug product is well known and is distinct due to outstanding advertisements since 1986, and was already the No. 5 ranking product in terms of the domestic market sharing in 2004 before the filing of the Toko's trademark application. The mark "EVEPAIN" itself does not provide any concept, and is generally understood as being composed of two words "EVE" and "PAIN". The former reminds people of the SSP's drug product, and the latter represents the feature of the product, which means the mark "EVEPAIN" is not distinct by itself, and more similar to the SSP's trademark rather than different in its appearance and pronunciation, which may cause confusion among consumers and dealers. In addition, because Toko did not prove the fact that they had no knowledge that the use of the trademark and variation mark was unfair, and that they could not show they had exercised due care and good judgment about the trademark use, the SSP's claim for cancellation should be approved.

October 22, 2007

A Bright Guiding Light For A Three Dimensional Trademark

This case presents a contrasting result with that of previous article below entitled: "Birds Chirp Across the Nation".

On June 27, 2007, the Intellectual Property High Court recognized the product configuration of a Maglite flashlight of Mag Instrument, Inc. as a three-dimensional trademark, overruling the decision of JPO to refuse registration (application No. 2001-3358).

JPO refused the application for registration based on Article 3 (1) - 3 of the Japanese Trademark Law, that is: three-dimensional marks which are recognized as merely being within the scope of the shape of the designated goods cannot be registered as trademarks. The Maglite flashlight includes a head portion, a central barrel portion having a grooved surface which facilitates the light intensity adjustment and improves handling of the flashlight, and a tail portion with a hole for a hand strap. The provided features entirely relate to the functional and aesthetical aspect of the goods, but are not unique enough to be inherently distinctive. In addition, JPO denied its acquired distinctiveness because the word marks "MINI MAGLITE" and "MAG INSTRUMENT" appear on each Maglite flashlight.

However, the Intellectual Property High Court reversed the JPO decision stating that a product configuration, which is not indispensable to the functional and aesthetical aspect of the goods, should not be instantly denied on its registration for a three-dimensional trademark, and the use of such a product configuration may leave a strong impression on the consumers for an independently acquired distinctiveness. Based on this point of view, the court examined the Maglite flashlight, and found the following factors which proved the acquired distinctiveness to justify a registration of a three dimensional trademark:

(1) The shape of the Maglite flashlight has not been modified since it was first sold in 1984 in the United States;

(2) In Japan, the sales of the Maglite flashlight in the fiscal year period ending in March 2000 reached $5 million with 607,000 units sold, and in 2007, more than 2700 shops sell the Maglite flashlight;

(3) The configuration of the Maglite flashlight has been emphasized in advertising in numerous newspapers and magazines, including posters displayed in trains and the Internet, since 1985;

(4) The unique configuration was highly acclaimed, the design received awards in Japan and abroad, which attracted the attention of consumers;

(5) Advertisements of the Maglite flashlight emphasized the creativity of its design. The pictures of the Maglite flashlight on the advertisements left an impression on consumers;

(6) Mag Instrument has taken legal actions against companies that sell flashlights shaped like the Maglite flashlight, resulting in that any flashlight having a similar configuration has been excluded from the market;

(7) The words "MINI MAGLITE" followed by the words "MAG INSTRUMENT" appear on the Maglite flashlight, but the letters of the marks are printed lower case and in fine lines, and are positioned in a small portion around its face cap, which makes the words inconspicuous; and

(8) The mark "MAG INSTRUMENT" has not been displayed on advertising, and does not have an independent notability as a manufacturer of the Maglite flashlight.

September 28, 2007

MODE Back To Starting Point

This case presents an issue of inventiveness.

HORIBA, LTD. manufactures and sells various measuring instruments, and owns a Japanese Patent No. 3616490 entitled "Vehicle Driving Mode Display Apparatus". The apparatus is a so-called driver's aid for vehicle driving tests. When a test driver sends a start signal to a data processing unit such as a computer, the apparatus is operated by the unit to provide the driver with a desired vehicle speed vs. time trace, the actual vehicle speed, and the current position in the entire test course on the display screen thereof.

Ono Sokki Co. Ltd. is a company in the same line of industry, and sells another vehicle driving mode display apparatus.

HORIBA brought an action for injunction and damages against Ono Sokki, which was dismissed by Osaka District Court on 25 January 2007.

Osaka District Court did not consider the Ono Sokki's apparatus, but examined the HORIBA patent and pointed out lack of inventiveness on the part of the latter.

The HORIBA patent cited US patent No. 5531107 in the specification. Comparing the HORIBA patent to the US patent, the only material difference is that the actual speed is displayed as a change of the speed in a graph for the entire test course in the HORIBA patent, while it is not clear if the similar graph displayed in the US patent is for the entire test course or just a part of it. Whether the difference was non-obvious to a person skilled in the art should be the point to be considered. The HORIBA patent was made to solve a problem of a test driver who has concerns about the current position in an entire course, that is, about the travel distance the driver has completed and the remaining distance to be completed. However, many patents were made to remove such driver's concern including Japanese Utility Model No. 53-72301 which had been filed 21 years before the filing of the HORIBA patent. Since the above US patent was clearly made for the same purpose, no inventive step was necessary to display a graph of speed for an entire test course to indicate a driver the current position using the prior art, which confirms that the HORIBA patent could be made without involving inventiveness.

September 18, 2007

Root Of Noodle

Udon is one kind of Japanese noodle sold in small packages in dried, frozen, raw, and boiled form. Dry udon (see the picture below) is boiled in water and served (see here, for example).

In Japan, each prefecture has its specialties, and "Himi Udon" is a specialty of Himi City in Toyama Prefecture, and is one of the well-known udon brands in Japan. Kaizuya Co. Ltd. (hereinafter, referred to as Kaizuya) is a company with a history selling Himi Udon in Toyama Pref. since 1975. Kaizuya has an affiliate limited company located in Toyama Pref. and manufactures Himi Udon for them.

Kaizuya brought a suit seeking injunction, elimination of copy on packages and the like, and monetary damage against Himi Udon Takaokaya Honpo Co. Ltd. which is a competitor of Kaizuya, and its president, Mr. Ikeda.

Takaokaya started business in 1997 and sold 12 kinds of udon that have "Himi" as a part of the names. However, the udon had been actually manufactured in Okayama Pref., which is about 200 miles away from Toyama Pref. till March in 2005. Moreover, Takaokaya displayed an advertising slogan stating, "This thin-type Himi Udon by Takaokaya, the original Himi Udon, has a long history since Edo period" for example, on their udon's packages, brochure, and HP on the Internet.

On 10 November 2006, the Toyama District Court determined, under The Unfair Competition Prevention Law, that Takaokaya's action was a display of false information on the origin of their product, and had misled consumers. Since "Himi" is a city name, the term "Himi Udon" would be perceived as udon originated and manufactured in Himi City. In addition, "Himi Udon" is not a general name like "satsuma-imo" ("imo" means sweet potato) and "tsukuda-ni" ("ni" means boiled food in soy sauce), both of which are named after the city they originated from (Satsuma and Tsukuda, respectively).

The Court didn't issue an injunction because Takaokaya had already stopped the manufacturing in Okayama Pref., but instead ordered Takaokaya and its president to pay a damage of more than $3.3 million to Kaizuya according to the following calculation:

Takaokaya had manufactured 8 kinds of Himi Udon out of 12 in Okayama Pref. from 1997 to 2005, and the total profit Takaokaya had yielded from them was found to be about $3.5 million. The market share of Kaizuya was considered to be 93 percent. That is, the amount of damage Kaizuya suffered is: $3.5 million × 0.93 = $3.3 million, which is unusually high for a case under the Unfair Competition Prevention Law.

August 30, 2007

Line Between Patented And Unpatented

On 21 December 2006, the Intellectual Property High Court dismissed a claim against the JPO by DAIO PAPER CORPORATION and Elleair Paper Tech. Co. Ltd. (both are the plaintiffs of this case). The plaintiffs are the owners of Japanese Patent No. 3473561 entitled "Nonwoven Fabric For Wet Tissue Paper", which the JPO decided to cancel the claims 1 to 4 of the patent when the plaintiffs demanded for correction. The plaintiffs appealed to the Intellectual Property High Court against the cancellation of the claims. The patent had the claim 1 as follows:

1. A nonwoven fabric for wet tissue paper, comprising:

a first hydrophilic fiber; and

a second heat fusible fiber which three-dimensionally interlaces with and is bonded to the first fibers by fusion, and

the nonwoven fabric including:

a plurality of convex portions which have a relatively higher density and are formed in a linear shape; and

a plurality of concave portions which have a relatively lower density and are formed in a linear shape (as shown in Fig. 2 below), with a height difference of 50 to 300 µm between the convex portions and the concave portions,

each of the concave portions being alternately arranged with each of the convex portions to form a linear design, with the linear design crossing with another linear design formed by other concave portions and convex portions, and forming a herringbone pattern (as shown in Fig. 1 below),

the nonwoven fabric being provided with 3 to 9 lines of the linear design formed by the concave portions and the convex portions per one centimeter.

The JPO and the Intellectual Property High Court picked up the part "3 to 9 lines …per one centimeter" as a question of patent scope because no definition of the line had been provided in the claim. Since the convex portion and the concave portion are individually formed in a linear shape, each portion can be considered as a line, whereas the alternate arrangement of a pair of a convex portion and a concave portion forms a three-dimensional configuration and, likewise, the convex portion of the pair can be considered as a line. In addition, no description is provided about the criteria for measuring the number of the lines. The resulting number of the lines changes depending on a direction of measuring. For example, the measurement can be performed in the perpendicular direction to the linear design to obtain the maximum number of lines, or in any other direction including the transverse direction to the V-shaped design.

As long as the definition of the lines and the criteria for measuring the number of the lines are not naturally determined by any technical knowledge, the claim is not clear or detailed enough for the person skilled in the art to practice the patent.

August 20, 2007

Get Clutch Hit In Japan

Major League Baseball Properties, Inc. ("MLBP") was involved in a trademark dispute with JPO.

MLBP appealed the JPO decision to the Intellectual Property High Court upon receipt of the JPO decision of final rejection on a trademark application for the logo mark of the Chicago Cubs on 18 October 2006.

JPO rendered the decision stating that the logo mark includes a ring having a certain width, another ring having the same width and a notch, and the letters U, B, and S on the edge of the notch. The only recognizable part of the figure at one glance is the three letters, which leads to a designation of "UBS". The American major leagues are getting popular in Japan now, but are not sufficiently recognizable by people to distinguish the goods bearing the mark as that of the Chicago Cubs. Also, the logo mark is similar to the trademarks cited by JPO which are Japanese Trademark Nos. 1951134, 4339840, 4364718, 4515606 (see below), and 4623586 - all happened to be the trademarks of Union Bank of Switzerland , and also bear the letters UBS.

MLBP claimed that the letters cannot be separable from the outside ring because they represent a part of the team name "Cubs" which is now well known in Japan due to the season-opening game played between the Chicago Cubs and the Mets in Tokyo in the year 2000. Furthermore, Sammy Sosa, who is a famous home run batter, belonged to the team, and adding to that the 13 Japanese players who played in the Major League in 2006 including Ichiro Suzuki and Hideki Matsui. Incidentally, in 2006, the number of the Chicago Cubs goods sold in Japan was the fourth highest in the world.

On 8 August 2007, the Intellectual Property High Court overruled the JPO decision and supported MLBP. As baseball games of the American Major Leagues are regularly broadcasted on TV and the number of Japanese players who belong to the Leagues is increasing, the Chicago Cubs is now familiar in Japan as one of the Major League baseball teams. The trademark MLBP filed has the same figure as that of the logo mark of the Chicago Cubs, which appears in various images on players' uniforms. Furthermore, the goods relating to the Chicago Cubs, including game software, are sold in Japan via a number of Japanese companies now, which means the trademark filed by MLBP naturally leads to the designation of Cubs, and cannot be confused with the trademarks of Union Bank of Switzerland.

August 2, 2007

Ceaseless Quest For Easiness

The Procter & Gamble Co., Ltd. filed a patent application entitled "A Cleaning Implement Having High Absorbent Capacity", and in response to a rejection of the patent application, requested a trial against the rejection and also submitted an amendment on 23 January 2004.

The application included the first claim as follows (the added amendment is indicated by the underlines):

1. A cleaning implement, comprising:
1. a handle; and
2. a removable cleaning pad comprising:
1. a scrubbing layer; and
2. an absorbent layer in direct fluid communication with the scrubbing layer;
   characterized in that the cleaning pad has a t1200 absorbent capacity of at least 10 g of deionized water per g of the cleaning pad, and has a squeeze-out value of 40% or less under a pressure of 1.5 kPa or less.

The JPO, however, denied the request, and The P&G appealed to the Intellectual Property High Court, which was dismissed On 7 November 2006.

The application recited two patents, US Patent 5419015 ("Mop with removable interchangeable work pads") and JP Laid-Open No. 59-229322 ("Absorbent Sheet"). While the recited patents do not limit any values of absorbent capacity and squeeze-out, the application by The P&G specifies them. Also, the element to which a cleaning pad is removably attached is different between the patents and the application. In spite of these differences, the Intellectual Property High Court stated the invention made by The P&G was obvious from the patents. The P&G claimed that in cleaning floor surfaces, it was the common sense, at that time, that the cleaning using a scrubbing layer and the absorbing a fluid cleaning composition into an absorbent layer were conducted in separate and subsequent steps and that the application provided a new configuration which allows the steps to be achieved in a simultaneous step. But there is no dispute on the fact that the pads of the US patent and the application by The P&G have "an absorbent layer in direct fluid communication with the scrubbing layer", and the combination of the configurations disclosed in the above two patents easily enabled the skilled person in the art to realize the configuration disclosed in the application. In addition, the "t1200 absorbent capacity" only shows the value measured after cleaning a hard surface for 20 minutes which is a typical period of time for house cleaning. Moreover, in the application, there is no description which supports the detailed values of the "at least 10 g", the "squeeze-out value of 40%", and the "pressure of 1.5 kPa".

July 17, 2007

The Original Was Controlled

One heated fight between two drug manufacturers over a patent infringement issue was settled down before a hot summer comes in Japan in 2007. The companies are Earth Chemical CO., Ltd., and DAINIHON JOCHUGIKU CO., Ltd.. The patent in issue is JP No. 3802196 registered on 12 May 2006 and granted to the former. The patent technology is embodied by Earth as a household insecticide product called "No-Mat" series (the left picture below), which includes a cartridge and a fan, and a substance in the cartridge is dispersed by rotating the fan using batteries.

Based on the patent, Earth served a notice to DAINIHON in July 2006 requesting to stop the manufacturing and sales of "Katoris" series (the two pictures on the right below), a mosquito repellent by DAINIHON which also uses batteries to rotate a cartridge for volatizing and dispersing a substance therein. Also, Earth made documents stating that the Katoris clearly infringed the Earth's patent, and distributed the documents to their clients.

DAINIHON (plaintiff) brought an action in August 2006, claiming that Earth (defendant) did not have a right to seek injunction because none of the Katoris series infringed JP No. 3802196, and that the Earth's action was illegal because they spread false information. Earth counterclaimed for an injunction against the manufacturing and sales of the Katoris series by DAINIHON.

On 23 March 2007, the Tokyo District Court found that the patent No. 3802196 should be invalidated at trial and dismissed the counterclaim on the ground that some patents had been published before the filing of the application for the above patent, and already had described technologies about a pest control apparatus for dispersing a substance by driving a fan using batteries. Specifically, given the combination of the technologies of WO96/04786, and JP Nos. 5-68459 and 7-111850, the one skilled in the art should be able to achieve the idea disclosed in the patent in issue, including the details about the current consumption of a motor, the weight of a fan, and the air volume at the outlet port of the fan.

At the same time, the Tokyo District Court dismissed the claim by DAINIHON. Earth cannot use the patent right as described above, and in addition, before the distribution of the document by Earth, the articles about the DAINIHON's action for a declaratory judgment had already appeared in newspapers, which means the document did not make people objectively believe the infringement.

June 29, 2007

Original Company Dug Its Nails

This is a case about Japan Intellectual Property Arbitration Center (only written in Japanese) awarding the transfer of a domain name under the rule 15(a) of Rules for Uniform Domain Name Dispute Resolution Policy.

Young Nails Inc., an American company that provides services for attaching artificial nails and sales of nail care products, owns trademark rights in the US and Japan (US registered trademark No. 2294279, and Japanese registered trademark Nos. 4862416 and 4953933) for similar marks that consist of a design bearing the letter "Y" and the expression "young nails", as seen from the left picture (No. 4862416). Young Nails also registered the domain name "youngnails.com" for their website.

Young Nails entered in a non-exclusive sales agreement with a person in Japan, Christina Ikeda, for providing the services and sales of Young Nails in the country. Although Ms. Ikeda had no right to register a domain name which includes the words of the above trademark, she registered the domain name "youngnails.jp" and created a website of her own without permission from Young Nails. In spite of requests by Young Nails for assignment of the domain name, and the cancellation of the agreement between the two in 2004, Ms. Ikeda still continued to use the domain name. Moreover, she sent a letter to Young Nails to propose the sale of the name for 100 million US dollars.

Young Nails asserted that the domain name "youngnails.jp" is confusingly similar to the trademarks and the domain name they own, and the use of the domain name by Ms. Ikeda also results in misleading consumers of Million Oaks, another company that accepted an agreement with Young Nails as a non-exclusive sales representative, and their sales activity in Japan.

Young Nails filed a motion for transfer of the domain name against PCC Corporation, a Japanese company, which was the registrant of the domain name at that time, Christina Ikeda, the person who actually used the domain name, and another company which was the prior registrant of the domain name.

On 8 December 2006, the panel of Japan Intellectual Property Arbitration Center ruled on the motion for transfer according to JP Domain Name Dispute Resolution Policy and Rules for JP Domain Name Dispute Resolution Policy, as follows:

(i) the main part of the domain name "youngnails.jp" is the word "youngnails", which is recognized to be extremely similar to the trademark of Young Nails;

(ii) the current registrant stated in their response that the company had registered the domain name by a request from a client, and they do not assert the right to the domain name, which means they admitted that they have no rights or legitimate interests with respect to the domain name; and

(iii) the domain name had been clearly registered and used in bad faith, in view of the fact and history according to which the domain name was used.

June 18, 2007

It Is Hard To Capture A Famous Rabbit

The famous drawings of "The Tale of Peter Rabbit" by Beatrix Potter are now in public domain because the copyright of the work expired on 21 May 2004.

Familiar Co. Ltd., had a plan to sell their Peter Rabbit products such as Peter Rabbit Towels. However, Copyright Japan, a company which manages the copyright of "The Tale of Peter Rabbit", kept the mark "©" printed on the work as the copyright notice. The mark is used to show that the work bearing it is protected by a copyright. The printed mark inflicted damage on Familiar: their customers shied away from dealing with them to avoid troublesome copyright situation.

Familiar sued Copyright Japan based on two issues:

i) declaratory judgment of invalidity, unenforceability, and non-infringement of the copyright; and

ii) injunction of the use of the mark "©" by Copyright Japan, and their goods and services provided in connection with the use of the mark "©".

On 30 January 2007, the Osaka District court cited to support the former issue and rejected the latter.

The presence or absence of the mark "©" legally does not influence the protection state of the work bearing it in Japan. Even a work protected by a copyright may not have the mark, also, the mark does not always mean that the work bearing it is protected by a copyright. However, actually, the mark has an aspect to express in a positive manner that a copyright protects the work, and to warn consumers that unauthorized use of the work may be an infringement. It is only natural that customers of Familiar would feel hesitant to deal with them, and that Familiar would have legal concerns and uneasy feelings about their sales of Peter Rabbit products. To remove these negative effects, the declaratory judgment is necessary. To the contrary, as for the injunction, although the mark may mislead consumers into believing that the copyright is still valid, the action to put the mark on a product does not produce any erroneous assumption about the content or quality of the product.

This case relates to the articles below ("An Unfair Use of "Peter Rabbit" Trademark")

May 30, 2007

Blurred Schemes

ASAHI BREWERIES, Ltd. is one of the most prominent brands in beer market in Japan, and recently has attracted public attention with two topics.

First, ASAHI lost their trademark registration suit for the mark "Hon-Nama" (consisting of two Japanese characters as shown on the left, Japanese Trademark Application No. 2000-135077). The designated good for the trademark belongs to low-malt alcohol beverages, so-called Happoshu, which have a taste similar to beer.

Since JPO ruled invalid the trademark application, ASAHI brought a suit for cancellation of the judgment JPO had made.

On 28 March 2007, the Intellectual Property High Court supported the JPO decision on the same ground as that JPO had stated. The term "Hon-Nama" is not a term found in standard dictionaries, and consists of two Kanji characters: the one on the left means "real, genuine, or authentic", and the one on the right means "unprocessed, or incomplete". The combination of these two characters makes the term "Hon-Nama" have a meaning of "the authentic without heat sterilization". However, the combination of two characters is actually used in many descriptions of beverages and other products in Japan. In addition, the mark "Hon-Nama" in the application filed by ASAHI does not have any distinct feature that provides visual impression to people. Furthermore, ASAHI consistently used the mark "Hon-Nama" with one of their house marks "Asahi" in their displays, propagandas, TV commercials, and brochures to sell the beverage bearing the mark. And ASAHI used the mark by explaining the meaning of each character for the advertisement of their beverage. This means that no traders and consumers recognize the ASAHI beverage only by the mark "Hon-Nama" although one billion beverages bearing the mark have been sold so far.

Second, another ASAHI trademark application (No. 2006-19029) for the mark "INA BAUER" was rejected by JPO in May 2007. The so-called Ina Bauer is one movement in the field of figure skating that a German skater, Ina Bauer, invented. This technique became famous in Japan when Shizuka Arakawa, a Japanese female skater, won the gold medal at the 2006 Winter Olympics. ASAHI filed the application without any particular idea which alcohol beverage would bear the mark. The application was denied because the technique was named after the inventor, and an exclusive use of the name by taking advantage of the fame of the technique may disturb the order of trade market.

May 21, 2007

Don't Relax On Chair Patent

This case relates to the articles below ("Massage Chair Increased Tension" (Part I and II)).

The Intellectual Property High Court revised the decision the Tokyo District Court had made, and considerably reduced the calculated amount of damage from about US $13 million to $95 thousand on 25 September 2006.

In this case, Family Co. Ltd. is the appellant, while Toshiba Tec is the respondent.

Out of the Toshiba's five patents, Japanese Patent No. 3121727 is the only one left valid after the revision of judgments to invalidate the other four patents.

Regarding the point whether the four types of Family's massage chairs belong to the technical scope of JP No. 3121727 or not, two types of the chairs belong to it, and the other two do not literally infringe the patent but belong to it as an equivalent.

However, the essential feature of JP No. 3121727 is a stretching or massage effect which is obtained by different timings of air bag expansions for hips and legs, and (i) the effect can be attained through a mode which only a few of the chairs have such feature, (ii) the effect is only incidental to the massage chairs, (iii) the effect is not described in any brochures published by the appellant or the respondent, (iv) at the time of the patent registration, the market share of the Toshiba's chairs amounted only to a few percentage points, and there were strong competitors in the market, (v) Family's massage chairs provide a function to massage by using both balls and bags, and another function to automatically detect points to be pressed by using a photo sensor, which are different features from that of JP No. 3121727, and consumers selected the Family's chairs because of these features, (vi) Toshiba's chairs that provide massage by using air bags neither have a strong market competitiveness nor a strong sales force.

Therefore, the quantity of chairs Toshiba could have sold is reasonably calculated as one percent of the quantity of each of Toshiba's chairs assigned by Family, as follows:

Assigned Quantity: 68,979 chairs
Quantity Toshiba Could Have Sold (1%): 690 chairs
Profit per Chair: $138
Total Damage Amount to be Paid: 690 x 138 = $95,220

April 9, 2007

Within Known Range and Out of Supported Range

On 1 March 2007, the Intellectual Property High Court supported a JPO decision declaring a patent invalid. The patent is Japanese Patent No. 2848760, entitled "Anticancer Agent Containing Taxol As Effective Ingredient" owned by Bristol-Myers Squibb Company.

JPO made a decision on 28 July 2005 that the claims 1 to 3 of the JP were invalid upon the request of JCR Pharmaceuticals Co., Ltd. Bristol-Myers Squibb Company filed a suit to demand the cancellation of the decision.

Taxol is a chemotherapy drug that is given as a treatment for some types of cancers, and at the time the JP was filed, Taxol was administered by a 24-hour IV infusion. The claims 1 to 3 of the JP include the following descriptions (after the correction):

1. A medical agent, comprising Taxol for treating a patient who is suffering from solid cancer, leukemia or ovarian cancer and is pretreated to reduce or minimize fatal anaphylactic-like reactions, the medical agent being packaged for parenteral administration to the patient so that Taxol is administered at about 135 mg/m² to about 175 mg/m² over a period of about three hours.

2. The patient is suffering from solid tumor or leukemia, and the amount of administered Taxol is above 175 mg/m² and less than 275 mg/m².

3. The patient is suffering from ovarian cancer, and the amount of administered Taxol is above 175 mg/m² and less than 275 mg/m².

However, JPO and the Intellectual Property High Court later detected that these claims have the same contents as those described in five papers including Annals of Oncology, Vol. 3, No. S1 (1992), and Contemporary Oncology (1992). In these papers, tests for administrating Taxol were carried out to compare the results under different condition patterns for infusion at 135 mg/m² or 175 mg/m² for 3 hours, or 24 hours to patients having ovarian cancers, following patient pretreatments with steroids, antihistamines, and antagonists sufficient to prevent fatal anaphylactic-like reactions. Other three papers including Seventy-sixth annual meeting of the American Association for Cancer Research, Vol. 26 (1985) describe the results at different amounts of Taxol which cover the range above 175 mg/m² and less than 275 mg/m² for 3 or 6 hours, for example.

Moreover, the specification of the JP includes no specific data that supports the effectiveness or safety of the 3- hour infusion of Taxol above 175 mg/m², but only includes an example at 135 mg/m² and 175 mg/m² for 3 hours for patients having ovarian cancer. No data is shown for the patient who has solid cancer or leukemia. Generally, the effectiveness of any medical agent cannot be determined based only on the name of its chemical structure, required amount, or administration method. Thereby, specific pharmacological data is essential to support the claimed effectiveness of an ingredient used in an invention of a medical agent.

March 30, 2007

Original Arrangement Builds A Fortune

The case in which the court upheld an infringement of a database for the first time in Japan will be described below.

Nippon Telegraph and Telephone Corp. (hereinafter, referred to as NTT) is the biggest telephone operating company in Japan, and generated a database called Town Page Database and an occupationally classified telephone directory "Town Page", the largest yellow pages on a WWW server in Japan). NTT owns a database copyright and a compilation copyright for these data respectively.

Daikei Kabushiki-gaisha (hereinafter, referred to as Daikei) generates another classified database based on Town Page Database and distributes it on demand (hereinafter, referred to as Classified Data). Every time NTT revised the database, Daikei acquired it and revised their database exactly in the same way.

NTT sued Daikei seeking damages and an injunction against the actions by the latter on the claim that their actions infringed both of the NTT copyrights.

The main issues in the case included the following questions:

1. Does Town Page Database qualify as a database work?
2. Do Classified Data infringe the database copyright in Town Paper Database?
3. Does Town Page qualify as a compilation?
4. Do Classified Data infringe the compilation copyright in Town Page?

On 17 March 2000, the Tokyo District Court addressed the above questions, ordered Daikei to pay NTT's total loss which amounted to about 280 thousands dollars, and stated four points as follows:

1. Town Page Database qualifies as a database work having a systematic structure.

The occupational classification system of Town Paper Database comprehensively covers the occupations in Japan, which were compiled by NTT's efforts to classify individual occupations into a hierarchical database for customers' convenience in searching. The used occupational classification is based on classes, which are considerably different from the Japan Standard Industrial Classification, and there is not an occupational class that falls in a particular class in the Japan Standard Industrial Classification. In addition, there is no other similar database.

2. The generation and distribution of Classified Data constitutes an infringement of the copyright in Town Page Database.

Classified Data was generated by using the occupational classification and the telephone number information in Town Page Database, and includes (i) the same information as that in Town Page Database, (ii) the information on occupational class of which only the name is changed from that in Town Page Database, and (iii) the combined information in a class which were in the plural classes in Town Page Database, and Daikei never used their original classification.

3. Town Page qualifies as a compilation having creativity in arrangement of the information materials.

Since the contents of Town Page Database and Town Page are the same, the telephone number information in Town Page, which is classified based on an original occupationally classified system for each region in Japan, should be a compilation for the region.

4. The production and distribution of the Classified Data do not constitute an infringement of the compilation copyright in Town Page.

Classified Data is generated based on Town Page Database, and it includes a lot of descriptions different from Town Page such as subscribers' names, which means that Classified Data is not derived from Town Page.

March 19, 2007

It Was an Air Shot

This case is about a decision of rejection JPO had made, which was supported by the Intellectual Property High Court on 28 February 2006.

Bridgestone Sports Co., Ltd. (hereinafter, referred to as Bridgestone) filed a patent application entitled "Two-Piece Solid Golf Ball" on 1 March 1996, but the Examiner issued a final rejection. Although Bridgestone had demanded a trial on the issue, and had made an amendment at the same time, JPO rejected both the demand and the amendment stating that the invention with or without the amendment was readily apparent to those skilled in the art based on Japanese Patent Application Laid-Open No. 6-98949. Bridgestone brought a suit, but again their claim was rejected.

The underlined part - whereon the amendment was made - of claim 1 of Bridgestone's application is shown below:

1. A two-piece solid golf ball, comprising:

a solid core having a diameter of 37 to 41 mm, the solid core having a hardness distribution with a surface hardness of 85 degrees or less, a center hardness lower than the surface hardness by 10 to 17 degrees, and the hardness at a position 5 mm or less from the surface which is lower than the surface hardness by 8 degrees or less, as measured by a JIS-C scale hardness meter; and

a cover which has 360 to 450 dimples formed on its surface and covers the core, the cover having a hardness of 77 to 86 degrees so that the hardness is higher than the surface hardness of the core by 2 to 5 degrees, and having a thickness of 1.5 to 1.95 mm.

Bridgestone's claim was different from the No. 6-98949 in the part "the cover having a hardness of 77 to 86 degrees so that the hardness is higher than the surface hardness of the core by 2 to 5 degrees" (before the amendment, the underlined part was stated as "1 to 15 degrees", and No. 6-98949 did not include any specific numbers for the cover hardness).

According to the specification of Bridgestone's application, the cover hardness was set to 77 to 86 degrees because a hardness less than 75 degrees lowers the resilience of the ball, and a hardness over 90 degrees makes the shot feeling heavy. That is, the hardness range of 77 to 86 degrees is not critical to provide a specific effect. Moreover, referring to other publications including Japanese Patent Application Laid-Open Nos. 6-319830, 8-767, and 7-238193, it is obvious that a cover material having a hardness of 80 to 85 degrees was already known at the time of the filing of the Bridgestone's application. Also, it has been a known technique to maintain the cover hardness between 87 and 90 degrees to obtain an excellent shot feeling and control of the ball. Varied degrees of hardness that are below the said ideal range are also known to be useful if made with an appropriate material.

The amended part "higher than the surface hardness of the core by 2 to 5 degrees" is not critical either, because the range of 2 to 5 degrees was selected to avoid the difference of less than 1 degree which lowers the resilience of the ball, and the difference of over 10 degrees which makes the shot feeling sluggish.

Furthermore, the cover hardness has no particular relationship with the difference between the cover hardness and the core surface hardness, according to the specification. As a result, Bridgestone's application does not define a unique technical or critical feature, and is not patentable.

February 27, 2007

A Need for Another Source

SUKOYAKA KOBO Co., Ltd, a health food company (hereinafter, SUKOYAKA KOBO) owned Japanese trademark No. 4788761 (registered on 23 July 2004) consisting of 5 letters on the yellow circle of its package, as seen in the picture on the left. The three letters on the lower line mean "turmeric" which belongs to Zingiberacear (Ginger) family and is used as a spice for curry, for example. The designated good for the trademark belongs to Class 29 (processed food in powder, capsule, tablet, and liquid form, comprising turmeric as main ingredient).

Meanwhile, Tanabe Seiyaku Co., Ltd., a pharmaceutical company (hereinafter, Tanabe) owned Japanese trademark No. 4371626 (registered on 31 March 2000) consisting of also 5 letters, as seen in the right inscription, belongs to Class 5 (Nutritional additives for medical purposes, medicinal tonics and substitutes thereof).

The two letters common in the above two trademarks are pronounced "Gen-ki" in Japanese.

Due to the similarity between the two trademarks, JPO made a decision on 21 September 2005 that SUKOYAKA KOBO's No. 4788761 was invalid upon the request of Tanabe. SUKOYAKA KOBO filed a suit to demand the cancellation of the decision two days after JPO decided the invalidation of the former's trademark.

SUKOYAKA KOBO argued with the decision stating that the two-line name can be smoothly pronounced "Gen-ki Ukon" as a united name, which was apparently different from Tanabe's trademark. Also, since the trademarks belonged to different classes, there's no possibility that consumers will be confused with the two trademarks.

However, on 27 April 2006, the Intellectual Property High Court completely supported the JPO decision.

As for the two common Kanji characters in the trademarks, which is one of the Japanese writing scripts, the one on the left means a "source", and the one on the right represents the concept of vitality and life essence: "qi" in Oriental medicine. That is, the combination of the two Kanjis resulted to a coined word that reads: "source of vitality". And because turmeric was already known as a plant name and a spice commonly used for food at the time of the registration of SUKOYAKA KOBO's trademark, when consumers see the term "turmeric" in the trademark, they will only consider it as a common noun and a generic ingredient of the product. As a result, in spite of differences in the appearances, the two trademarks are generally similar based on the common idea implies by the phrase "source of vitality" and the commonly pronounced name "Gen-ki". Moreover, at the time of the registration, as the interest of consumers toward health foods increased, a number of pharmaceutical companies have started to manufacture health foods. The resulting sale routes, the stores, and the ingredients and applications of the goods manufactured by health food companies and pharmaceutical companies were similar, which make the boundary between the classes blurred and raise the possibilities that could mislead consumers.

February 15, 2007

Pile Up Confirmations By Millimeters

Sumitomo Heavy Industries, Ltd. (hereinafter referred to as Sumitomo) was once granted registration of Japanese Patent No. 3231708, entitled "Method for Marking Transparent Material" after an amendment of the claims.

1. A marking method, comprising the steps of:
   providing an object to mark; and marking an inside of the object ….
2. The marking method according to claim 1, wherein the object is formed of glass or PMMA.
3. The marking method …, wherein in the marking step, the distance between the object surface and the focal point of the laser is controlled so that ….
4. The marking method …, wherein the object has a plate-like shape, and….

1. A marking method, comprising the steps of:
   providing a plate-shaped object to mark which has a thickness of 2 mm or less; and marking an inside of the object ….
2. A marking method, comprising the steps of:
   providing a plate-shaped object to mark which has a thickness of 2 mm or less; and marking an inside of the object ….
   (Claim 2 includes different descriptions from those in claim 1 which will not be explained here)
3. The marking method according to claim 1, wherein the object has a thickness of 1 mm or more.
4. The marking method according to claim 2, wherein the object has a thickness of 1 mm or more.

On 1 March 2005, FUJI ELECTRIC SYSTEMS Co., Ltd. filed a suit demanding for cancellation of the registration, and on 17 August 2005, JPO approved the demand, stating that the amendment was made to include specifications which were not described in the patent specification.

Sumitomo brought a suit to the Intellectual Property High Court, which was denied again on 27 April 2006. Sumitomo claimed: a crack of 500 µm in a thickness direction of a glass substrate after marking was described in the specification as a problem to solve, which meant an object to mark should have a thickness of from 1 mm (a value over 500 µm) to 2 mm (a value for a substrate in which a crack of 500 µm can be easily formed), for the ordinary person in the art. Also, another problem to solve was listed in which a glass substrate having a thickness of 1 - 2 mm showed a crack on its surface after a marking in a conventional manner. Moreover, there were also an explanation of the difficulty in marking a substrate which had a thickness of 2.3 mm, and an example with a 10 mm quartz substrate, and a 2 mm PMMA substrate which showed no cracks on the surfaces thereof. However, such a list of descriptions was useless to the court decision, because the example with a 2 mm PMMA only defined the lower limit of a thickness, and to begin with, there was no description in the specification at all that stated any possibility to mark a material having a thickness of 1 - 2 mm without a crack on its surface, or any preference to use a material having a thickness of 1 - 2 mm for marking.

January 29, 2007

No "Anne" For Games

This is a case between Sullivan Entertainment International Inc., a film distributor (hereinafter referred to as Sullivan), and the provincial government of Prince Edward Island in Canada (hereinafter referred to as PEI) for a trademark of "Anne of Green Gables".

The "Anne of Green Gables" is the title of the famous book written by L. M. Montgomery. PEI has a nickname "the Home of Anne" because the story of "Anne of Green Gables" was set there, and established facilities with respect to the said literary work as the heart of their tourism. PEI also registered the "Anne of Green Gables" as an official mark in Canada.

On 20 June 2000, Sullivan filed a trademark application for "Anne of Green Gables" in Japan. The application was registered as Japanese trademark No. 4470684 on 27 April 2001. The designated good for the trademark belonged to Class 9 (such as glasses, electrical machines, video discs and tapes, toys for TV games for home use) and Class 14 (such as precious metals, goods made of precious metals, jewelry, clocks and watches).

PEI demanded a trial for invalidation of the trademark registration on Class 9, saying that the integrity and overall image of the literary work would be damaged. The JPO approved the appeal on 13 July 2004.

Sullivan brought a suit for cancellation of the judgment JPO had made, claiming that any one can freely select the title "Anne of Green Gables" for an application of trademark because similar trademarks for "Anne of Green Gables" are owned by PEI, THE ANNE OF GREEN GABLES Licensing Authority Inc. (AGGLA), and other companies in other countries. Also, a lot of other trademarks based on different famous titles and character names such as "Hamlet" and "DONQUIXOTE" have been registered in Japan.

However, the Intellectual Property High Court acknowledged the JPO decision for the nullification of the trademark on Class 9. Recent rapid changes of locomotion and communication means influence the consciousness of people and actual markets, and the trademarks registered in the past from well-known titles and literary characters cannot be a decisive example of this case. Since the literary work "Anne of Green Gables" is one of the cultural assets in Canada, the application filed by Sullivan without prior agreement of AGGLA was against the doctrine of good faith. Moreover, an exclusive use of the title by one company, which has no relationship with the literary work whatsoever, is not appropriate; and the registration of the trademark in Japan might harm the cordial relation between the two countries.

January 15, 2007

Difficult Calculation

Mr. Seiji Yonezawa had worked for Hitachi Ltd. for 28 years since 1969, and as an engineer, he made 308 inventions in service. These include three inventions with respect to an optical mechanism for recording and reproducing information on and from a recording medium such as CD by using laser beam, the exclusive rights of which to obtain patents had been assigned to Hitachi by Mr. Yonezawa through a contract, which is a typical form of business relationship between a company and an employee in Japan. Hitachi obtained patent rights covering the inventions in Japan and six foreign countries including USA, France, and Holland. Hitachi earned profits up to a thousand million dollars under cross-license agreements with a plurality of companies based on the patents rights, and Mr. Yonezawa received about $20000 award for the three inventions from Hitachi.

Mr. Yonezawa claimed for more reasonable consideration, and on 29 December 2002, the Tokyo District Court ordered Hitachi to pay Mr. Yonezawa about $300000. A company (employer) has a duty to give an award to an employee who made an invention while in service according to Japanese Patent law. However, in the lower court decision, this law was not applied to the patent rights which had been granted to Hitachi in the aforementioned foreign countries therefore the award money was given based on the patent rights granted only to Hitachi in Japan. Both Mr. Yonezawa and Hitachi brought appeals to the Tokyo High Court.

On 29 January 2004, the Tokyo High Court showed their support for Mr. Yonezawa by ordering Hitachi to pay about $1.4 million to the former on the grounds that a reasonable consideration should be calculated and paid by taking into account the patent right which is granted based on an invention while in service and is registered not only in Japan but also in a foreign country. In this case, the percentage point Mr. Yonezawa had contributed to the three inventions as an individual was calculated to be 14% in total of the profit Hitachi earned.

Although Hitachi again brought an appeal to the Supreme Court, the final decision also supported and settled the previous decision, saying both Japanese patents and foreign patents based on an invention while in service are within the scope of an object of Japanese Patent law to protect an employee who makes the invention, and encourage his/her contribution to the development of an industry.

December 29, 2006

Transferred Before Use

Verisign Inc. is a leading provider of Internet trust services that conducts trusted and secure electronic commerce and communications over IP networks, and retains Thawte Consulting (Pty) Ltd. which was established in 1995 and is now well-known as the second largest commercial provider of SSL certificates in the world.

On 6 September 2006, Japan Intellectual Property Arbitration Center ruled on a conflict brought by Verisign Inc. (petitioner) against a person named Mr. Masayoshi Hotta (registrant), a resident of Tokyo and owner of the domain name "THAWTE.JP", for seeking a transfer of the domain name to the petitioner.

The petitioner owns a registered trademark "THAWTE" (filed by the petitioner to JPO on 13 September 2001, registered No. 4602873). The trademark "THAWTE" is now of course famous, but was already well-known when the domain name was registered on 31 October 2001 at the latest, also in Japan.

Japan Intellectual Property Arbitration Center ordered the registrant to transfer the domain name to the petitioner on the following grounds:

December 14, 2006

Birds Chirp Across the Nation

On 29 November 2006, the Intellectual Property High Court ruled invalid the Japanese "three-dimensional" trademark registration No. 4704439 for chick-shaped Hiyoko cakes manufactured by the confectionary HIYOKO Co., Ltd. (hereinafter, referred to as HIYOKO).

This case had been originally filed by another confectionary Nikakudo Co., Ltd. (hereinafter, referred to as Nikakudo) to request invalidation of the above trademark registration to JPO. Since JPO rejected the request on 28 July 2005, Nikakudo again brought a suit against the decision. Nikakudo (plaintiff) has manufactured bird-shaped cakes called "Nikaku no Oyako" (the left side of the above picture, "Oyako" means a pair of parent and child) for 40 years, and Hiyoko (original defendant) has manufactured chick-shaped cakes called "Hiyoko" (the right side of the above picture, "Hiyoko" means chick) since Taisho period (1910s).

In Japan, registrations of "three-dimensional" trademarks have been allowed since 1996 under the revised Japanese Trademark Law. The "Colonel Sanders" of Kentucky Fried Chicken (a doll in front of each franchise in Japan) and four-pronged concrete "tetrapod" breakwater blocks are examples of such registered trademarks. JPO (defendant) had judged the Hiyoko registration valid because consumers and dealers can easily recognize the cake Hiyoko from its product sales and broad advertising that have been going on for years. However, according to the Intellectual Property High Court, HIYOKO has their shops only in local regions in Japan, and the sales and advertising for the cake Hiyoko are done through display of the character trademark "Hiyoko" to attract attention of consumers. Moreover, across the nation, there are 23 manufacturers who sell sweets having similar bird shapes. Furthermore, historically, a similar type of sweet had already been manufactured by Toraya Confectionery Co. in Edo period (1603-1867) (see below), which means the bird (chick) shape is a traditional and an extremely common shape for sweets in Japan. Even with consideration of the high product sales and frequent advertising of Hiyoko and the well-known logo "Hiyoko", the three-dimensional trademark for Hiyoko itself has not sufficiently acquired a nationwide publicity and distinctiveness to justify legal protection.

November 27, 2006

Too Early Injection

Nihon Medrad. K. K. (hereinafter, referred to as Medrad) is a company which provides sales, imports, and maintenance of medical devices in Japan, and MEDRAD INC. in the U.S. is its parent company.

Medrad concluded a distributorship agreement with SHEEN MAN CO., LTD. (hereinafter, referred to as SHEEN MAN) on 1 July 1997 for the sales of an injector, and its accessories including syringes, which is a medical device having a system for injecting a contrast media into a blood vessel, manufactured by MEDRAD INC. The agreement gave SHEEN MAN the right to exclusively sell the MEDRAD products in Japan until 30 June 2001, the expiration date of the agreement. Also, Medrad concluded another agreement with SHEEN MAN and Sugan Co., Ltd. (hereinafter, referred to as Sugan), which is an affiliated company of SHEEN MAN, on a sale route to admit the sales of the MEDRAD products in Japan by way of Sugan and SHEEN MAN.

However, before the expiration date, Yoshikawa Kasei CO., LTD. (hereinafter, referred to as Yoshikawa), which had manufactured tubes for syringes for SHEEN MAN, offered SHEEN MAN the manufacture of the syringes itself. In August 2000 when it was determined that the agreement would not be renewed, SHEEN MAN accepted the offer, and then Yoshikawa started the development of a similar syringe by themselves based on the MEDRAD syringe. As a result, Yoshikawa achieved an improved syringe having a more transparent material, a longer cap, and a lure lock which is not easily disengaged compared to the original syringe by MEDRAD. Yoshikawa filed an application for manufacturing approval on 26 April 2001, which was approved by the Ministry of Health, Labor and Welfare on 11 October 2001. It was January 2002 when SHEEN MAN started regular sales of the Yoshikawa syringes by way of Sugan.

Medrad sued SHEEN MAN, Sugan, and Yoshikawa for the development of the improved syringes before the expiration date of the agreement and for their market release, as a breach of the above agreement, and sought for damages.

The Osaka District Court partly accepted Medrad's appeal, and ordered SHEEN MAN to pay around seven million dollars to Medrad.

The distributorship agreement included Article 11 Paragraph 2 that prohibited all the activities for technological development on the existing MEDRAD products such as a change, an improvement, and the like by SHEEN MAN alone without prior written consent from Medrad. Although SHEEN MAN claimed that the "activities" should be construed as those for obtaining a patent right, and basically a selection or change of materials and shapes does not fall in the category of "development", the court denied the claim. However, Yoshikawa was a third party to the agreement, thereby is not accused of breach of the agreement.

It took about 14 months from the time of the request by SHEE MAN for the manufacture of the syringes to Yoshikawa, which was before the expiration date of the agreement, to the approval by the Ministry. If the request was made on the expiration date to fulfill the agreement, the approval should have been made in August 2002. That is, the eight months between January 2002 and August 2002 correspond to the period when Medrad owed SHEEN MAN for the damage, the amount of which can be calculated to be around seven million dollars.

November 14, 2006

BRAND AWARENESS COMES AT A PRICE

GUCCI is one of the most famous brands in the world, and owns several registered trademark rights in the marks GUCCI, a combination G and G, and the combinations of these (including Japanese registered trademark Nos. 1856139, 2472177, 15455439, 19642539, 4458596, 2129746, and 3344025).

On 1 December 2005, Osaka District Court ordered a Japanese company, which had cashed in on the brand awareness for GUCCI in Japan, to pay about $600,000 for damages caused by the act of infringing upon the trademarks to GUCCI, the plaintiff.

The Japanese company is LEAD Ltd. (hereinafter, referred to as LEAD) and its affiliated subsidiary MARIA Ltd., which eventually merged into LEAD (hereinafter, referred to as MARIA), LEAD and MARIA actually being the defendant in this case. The defendant was originally a general dealer that sold miscellaneous goods to pachinko parlors. Since 2000, brand-name products have come into the shelves of pachinko parlors, and the defendant began to sell fake GUCCI products (e.g., purses, wallets, belts, key cases, and the like) by purchasing those from manufacturers in Japan. Although the defendant had been aware that the prices were extremely low as brand-name products, they continued their sales, and also they started their business through auctions on the Internet, which brought them a better profit than expected until the defendant expanded their business by employing workers. However, the defendant was deluged with complaints from purchasers, and finally the police disclosed their illegal business.

The point of this case is the amount necessary to compensate for the damage. As LEAD and MARIA purchased and sold the products based on a mixed accounting, the result obtained from examined documents of MARIA, the main company in the business, has an illogical aspect:

So the gross profit of the auction was calculated by taking an average of the above numbers with the auction sales, and the total profit amount was obtained by adding a gross profit ($755,074) of the sales of the pachinko parlors to the gross profit of the auction, resulting in $953,355. Because the defendant was supposed to have incurred business expenses such as communication via computers, employing workers, and product delivery, the total expense of $353,900 should be deducted. The remaining difference of about $600,000 plus certain delay damage is the total amount to be paid to GUCCI for the joint illegal act during the months the defendant's business was in operation.

October 30, 2006

Recycle The Patent First

On 18 October 2006, SEIKO EPSON CO. lost a suit against Ecorica Inc., a recycle company which collects, refills, and sells used printer ink tanks. SEIKO EPSON has a Japanese Patent No. 3257597 entitled "Ink Tank for Inkjet Printer", which is a divisional application of a Japanese Patent Application No. 4-32226 (original patent). Although SEIKO EPSON had appealed to the Tokyo District Court that Ecorica had infringed this patent, the court rejected the appeal.

In January 2006, on a similar subject, Canon Inc. won a judgment in the Intellectual Property High Court for an infringement of a Canon's patent right by a recycler (see below "Later Life Of An Ink Tank"). However, in this case for SEIKO EPSON, the court rejection was made from a different point of view.

That is, the court judged that the patent No. 3257597 itself had to be invalid because it did not satisfy the requirements for divisional application.

The original patent claims an ink tank which includes a thin film covering an ink discharging port and is featured by an outer edge of the ink discharging port which extends beyond the film. According to the original patent, the use of a film solves a problem in the prior art that would occur when a needle is inserted for discharging ink through a rubber cock at an ink discharging port. To get through the cock, the needle has to be sharp and has to have a rather large diameter, which may be dangerous and could also lead to ink leakage. The thin film helps to avoid this possibility. However, at the same time, it is also possible that the thin film may be torn during the insertion of the needle. So, in order to prevent this risk, the outer edge of the ink discharging port is extended to the outer area of the film. This is the only description of the structure of the ink tank claimed in the original patent, which means this structure is essential for the original patent.

However, in the divisional application No. 3257597 of this case, there is no description of the structure. As long as there is no common feature description between the two applications, the applicatio