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NEWSLETTER-2013
CONTENTS >> 2013 >> December 1
2013.12.01

K&P's Intellectual Property High Court Decision Report in June, 2013

1. Motivation in Determining Inventive Step

Kurita Water Industries Ltd. v. Commissioner of JPO, Case No. 2012 (Gyo-Ke) 10335 (Decision rendered on June 6, 2013)

The Applicant, Kurita, filed a patent application relating to a method for preventing spots in a papermaking process in 2006, but the application was finally rejected on the grounds of lacking inventive step by the Appeal Board of JPO in 2012. Against the JPO's decision, Kurita filed a cancellation action before the IPHC in 2012.

Claim 1 of the patent application at issue claims as follows:
"A method for preventing spots which are developed in paper and mainly comprise calcium carbonate in a papermaking process in which calcium carbonate as a loading material and/or calcium carbonate from used paper exists, the method comprising adding a reaction product of a chlorine-based oxidant and an ammonium salt to a papermaking process water, wherein the reaction product of a chlorine-based oxidant and an ammonium salt is added to both of a raw material system and a recycle system".

The main issue in this case was the level of specificity required of a description for constituting the motivation in examining the inventive step. The IPHC answered to the issue as follows.

First, the IPHC found (i) that the claimed invention and the invention disclosed in prior art reference (p.a.r.) 1 were in common in that a reaction product of a chlorine-based oxidant and an ammonium salt was added to a papermaking process water, but (ii) that they were different in that the former was intended to prevent spots mainly comprising calcium carbonate developed in paper, while the latter was intended to kill microorganisms in pulp slurry to inhibit biotic contamination, and (iii) that it had been well known (a) that microorganisms could be easily developed in a papermaking process where calcium carbonate existed, (b) that the development of microorganisms caused a problem of producing slime deposits mainly comprising microorganisms and containing loading materials, which developed spots in paper, and (c) that, in order to prevent such a problem, a slime control agent was added to inhibit the development of microorganisms or kill them.

On the basis of the above findings, the IPHC decided (i) that p.a.r. 1 did not disclose or suggest (a) that a tiny amount of microorganisms agglutinated calcium carbonate in a papermaking process where calcium carbonate existed to develop spots mainly comprising calcium carbonate in paper and (b) that the development of spots could be prevented by adding the claimed reaction product to a papermaking process water, and thus p.a.r.1 did not motivate a person skilled in the art to carry out the method disclosed in p.a.r. 1 in a papermaking process where calcium carbonate existed to prevent the spots which were developed in paper and mainly comprising calcium carbonate; and (ii) that even though the above well known matters were recognized, the spots developed from slime deposits mainly comprising microorganisms were different from the spots mainly comprising calcium carbonate to be prevented by the claimed method, and thus the above well known matters did not motivate a person skilled in the art to carry out the method disclosed in p.a.r. 1 in a papermaking process where calcium carbonate existed to prevent the spots which were developed in paper and mainly comprising calcium carbonate.

Conclusively, the IPHC upheld Kurita's appeal and cancelled the JPO's decision.

An appeal to the Supreme Court was not filed against this decision, and thus the decision is now final and binding.

K&P's Comments

This decision provides a negative example of a "motivation". As seen from the above decision, a motivation may not be recognized even though the claimed invention and the invention disclosed in p.a.r. 1 are the same in preventing the development of spots, when the specific causes of the developments of the spots are different. Namely, this decision would teach that even if the problems to be solved are in common as a broader concept between the claimed invention and the invention disclosed in a prior art reference, a motivation could be denied if it can be shown that they are technically different as a narrower concept.

2. What is the Level of Specificity Required for Satisfying Support Requirement?

DIC Corporation v. Commissioner of JPO, Case No. 2012 (Gyo-Ke) 10292 (Decision rendered on June 27, 2013)

The Applicant, DIC, filed a patent application relating to an adhesive tape in 1999, but the application was finally rejected on the grounds of not satisfying the support requirement by the Appeal Board of JPO in 2012. Against the JPO's decision, DIC filed a cancellation action before the IPHC in 2012.

Claim 1 of the patent application at issue claims as follows:
"An adhesive tape comprising a substrate and an adhesive agent which is on at least one of the surfaces of the substrate, the adhesive agent being obtained by crosslinking (a) 100 parts by weight of an acrylic copolymer prepared by 50 parts by weight or more of n-butyl acrylate, 1-5 parts by weight of one or more of a vinyl monomer having a carboxylic group and/or a vinyl monomer containing a nitrogen and 0.01-5 parts by weight of a vinyl monomer having a hydroxyl group as essential components, and (b) an adhesive composition comprising 10-40 parts by weight of a tackifying resin, wherein the adhesive agent has a peak of tanδ at 5°C or lower, a storage modulus G' at 50°C of 7.0×104-9.0×104 (Pa), and a tanδ at 130°C of 0.6-0.8".

One of the main issues in this case was the level of specificity required for satisfying the support requirement. The IPHC answered to the issue as follows.

First, the IPHC found (i) that the specification of the patent application at issue stated that adhesive properties deteriorated when each of the claimed parameters did not fall within the claimed range, (ii) that working examples 1 to 4 and comparative examples 1 and 2 showed that the adhesive agent brought about excellent adhesive properties when all the claimed parameters fell within the claimed range, while the agent did not when any of the parameters did not fall within the range, and (iii) that all of the adhesive agents used in the examples comprised about 90 parts by weight of n-butyl acrylate, vinyl acetate as an optional component, acrylic acid as a vinyl monomer having a carboxylic group, N-vinyl pyrrolidone as a vinyl monomer containing a nitrogen, hydroxyethyl acrylate as a vinyl monomer having a hydroxyl group, and a polymerized rosin ester resin "A-100" and a polymerized rosin ester resin "D-135" as tackifying resins.
On the basis of the above findings, the IPHC decided (i) that the adhesive agents used in the examples constituted only a very small part of the composition of the claimed adhesive agent, (ii) that the specification did not mention what should be made to control the claimed parameters within the claimed range, and (iii) that each of the claimed parameters was considered to be changed complexly depending on the various factors, such as the types and amounts of the monomers, the molecular weight of the acrylic polymer, the type and amount of the tackifying resin, and the degree of crosslinking, and thus (iv) that it was clear that it was necessary to adjust many factors other than the composition defined in the claims for satisfying the claimed viscoelastic properties (parameters) even if an adhesive agent satisfied the claimed composition, and therefore it could not be said that the specification disclosed the sufficient support for all the claimed adhesive agents which had both the claimed composition and the claimed viscoelastic properties (parameters) even though the specification showed some limited specific examples.

Conclusively, the IPHC dismissed DIC's appeal, and upheld the JPO's decision.

An appeal to the Supreme Court was not filed against this decision, and thus the decision is now final and binding.

K&P's Comments

This decision basically follows the leading case law made by the Grand Panel* of the IPHC on November 11, 2005, regarding the support requirement for the so-called a parameter invention, which is an invention including characteristic feature(s) defined by utilizing technical parameter(s) representing physical, chemical or biological properties. In the case, the patent invention at issue claimed a method for manufacturing a polyvinylalcohol film wherein a relationship between a melting temperature (X) and an equilibrium swelling degree (Y) was defined, and the Grand Panel decided that in order to satisfy the support requirement as a “parameter” invention, it was required that: (1) technical meaning of the relationship between the area defined by the parameters and the effect was disclosed in the specification as filed to such a degree that a skilled person could understand it; or (2) sufficient specific examples were demonstrated in the specification as filed to such a degree that skilled person could acknowledge that effect was achieved anywhere in the area defined by the parameters.
Nevertheless, this decision would be much stricter than the Grand Panel's decision since various examples or reasonable technical explanation is required not only for the claimed parameters, but also for the claimed adhesive agent. This is because the claimed polymer was limited only to polyvinylalcohol in the Grand Panel decision case, while the claimed adhesive agent was not so limited in this case.
*: The Grand Panel is an ad hoc special division of the IPHC which is formed to hear and decide cases involving a complex and controversial legal issue and/or having a huge impact on business or society, which is somewhat similar to en banc of CAFC in the U.S.A.

In June 2013, the IPHC handed down 16 decisions including the above 2 cases on patents, and overturned the previous decisions in 2 cases.

Meanwhile, regarding "Taiwan Semiconductor Manufacturing Co., Ltd. v. Commissioner of JPO", Case No. 2012 (Gyo-Ke) 10243 (Decision rendered on May 23, 2013) informed in our last report, we confirmed that an appeal to the Supreme Court was not filed against the decision, and thus the decision is now final and binding.

3. Does the parody mark harm the public policy?

Hokkaido Design KK. v. Puma SE, Case No. 2012 (Gyo-Ke) 10454 (Decision rendered on June 27, 2013)

Defendant, Hokkaido Design KK filed a trademark application for “KUMA + bear shape device” (herein after referred to as "KUMA") designating “Clothes, footwear” in International Class 25 and the mark was registered in 2006.

Plaintiff, Puma SE, a famous sports shoes and wear manufacturer filed a trial for invalidation against Defendant's “KUMA” registration, citing Plaintiff's registered trademark "PUMA + puma shape device" (herein after referred to as "PUMA"). The board of appeals of JPO rendered a decision that "KUMA" registration should be invalidated. Against this decision, Defendant filed an action before the IPHC, requesting the cancellation of JPO's invalidation decision.

[Defendant's mark]
[Plaintiff's mark]
KUMA PUMA

"Kuma" is a Japanese word meaning "bear", a wild animal inhabiting in Hokkaido (the northern island of Japan) where Defendant is headquartered.  Defendant sold T-shirts with "KUMA" for tourists visiting Hokkaido in souvenir shops. 

It is clear that "KUMA" reminds Plaintiff's famous "PUMA". The main issue in this case was whether "KUMA" (so-called a parody mark) would harm public policy (Art. 4, para. 1, No. 7) and might cause confusion of source of goods (Art. 4, para. 1, No. 15) with respect to "PUMA".

IPHC’s decision

IPHC sustained JPO's decision to invalidate the registration of "KUMA" for the following grounds.

1) Was likelihood of confusion possible?
IPHC first admitted i) that Plaintiff had been using "PUMA" over decades in connection with sports shoes, sportswear, etc. and "PUMA" had become well known in Japan, ii) that "KUMA" gave a very similar impression to "PUMA", as they were common "UMA" (the last 3 letters in the marks consisting of 4 letters ) and animal silhouette on the right upper portion, iii) that consumers of "KUMA" T-shirts and those of "PUMA" products overlapped and "KUMA" T-shirts and "PUMA" products could be sold in the same premises such as department stores or shopping malls. Then, IPHC concluded that there had been likelihood of confusion of source of goods as "KUMA" might remind "PUMA" and lead consumers to believe that Defendant and Plaintiff had some relationships.

2)Whether or not granting registration of "KUMA" harm public policy
IPHC admitted that Defendant was aware of "PUMA" and its intention to free-ride the well-known status of "PUMA", as Defendant had filed trademark applications for the marks "UUMA" (means "horse" in Japanese) and "BUTA" (means "pig" in Japanese) which had the same concept as "KUMA" (rejected due to harm the public policy, Art. 4, para. 1, No. 7).

BUTA UUMA

IPHC also affirmed that use of "KUMA" by Defendant might cause dilution of "PUMA" as a source indicator and harm trust, reputation and goodwill incorporated in "PUMA", and Defendant had a wrongful intention to gain unfair profit, taking advantage of "PUMA".  Thus, IPHC finally concluded that granting trademark registration of "KUMA" was against the purpose of the Japanese Trademark Law which aimed to protect trademark owners and consumers, and therefore might corrupt public policy and be against ethics of business.  

An appeal to the Supreme Court was filed against this decision, and thus the decision is not final and binding.

K&P's Comments

In this case, Defendant's parody mark was invalidated for the reasons that it might cause confusion of source of goods (Art. 4, para. 1, No. 15) and also harm public policy (Art. 4, para. 1, No. 7). However, the latter is not inherently intended to solve conflicts between private individuals, and thus, there is a dissenting opinion that application of Art. 4, para. 1, No. 7 to parody mark is not appropriate since it may overextend the meaning of this stipulation.
To reject/invalidate parody marks, possible grounds will be i) similarity to prior mark (Art. 4, para. 1, No. 11), ii) likelihood of confusion of source of goods/services (Art. 4, para. 1, No. 15), iii) a mark which is used with wrongful intention to gain unfair profit and is similar to a famous foreign/Japanese mark (Art. 4, para. 1, No. 19), or iv) harm to public policy (Art. 4, para. 1, No. 7). In this case, we reckon that the application of the above mentioned term iii) could have been possible.

In June 2013, the IPHC handed down 7 decisions including the above 1 case on trademarks, and no decisions were overturned.

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