K&P's Intellectual Property High Court Decision Report in September, 2012

Hitachi Chemical Co., Ltd. v. Commissioner of JPO, Case No. 2011 (Gyo-Ke) 10315 (Decision rendered on September 10, 2012)

The Applicant, Hitachi Chemical, filed a patent application relating to a circuit connecting material in 2003, but the application was finally rejected on the ground of lacking inventive step by the Appeal Board of JPO in 2011. Against the JPO's decision, Hitachi Chemical filed a cancellation action before the IPHC in 2011.

Claim 1 of the patent application in issue claims as follows:

"A connection structure of circuit material comprising:
A. a first circuit material ... (omitted);
B. a second circuit material ... (omitted); and
C. a circuit connecting material ... (omitted); wherein
D. (omitted);
E. the circuit connecting material contains an insulating material and conductive particles having projected portions ... (omitted);
F. (omitted);
G. the distance between the projected portions is 1000 nm or less;
H. the height of the projected portions is 50-500 nm; and
I. (omitted)".

The main issue in this case was whether or not a new notice of reason for rejection should be issued when referring to a document as "a common technical knowledge". The IPHC answered to the issue as follows.

During the JPO's appeal procedures, the JPO issued a notice of reason for rejection that the present application lacked inventive step on the basis of the prior art reference (p.a.r.) 1 in view of the p.a.r. 2 with reference to the p.a.r. 3 and 4 describing a well known technique. However, regarding the claimed distance between the projected portions, the JPO only pointed out that those skilled in the art could easily have adjusted the distance between the projected portions by considering the required stability of the conductive connection, diameter of conductive particles, height of the projections and the like, and cited no reference in the notice. In the JPO's decision, it was found that the practice of adjusting the distance of the projected portions to 1000 nm or less has been commonly performed before the filing date of the present application, and referred to JP2000-243132 as an example showing the common technique.

Contrary to the JPO's decision, the IPHC found that although the JPO's decision referred to JP2000-243132 as if it disclosed the distance as a common technical knowledge, the JPO referred to only one document and JP2000-243132 itself did not specifically show that adjusting the distance to 1000 nm or less was a common technical matter, rather it only showed the distance as a working example of the invention disclosed in JP2000-243132.
On the basis of this finding, the IPHC decided that the JPO' decision was, in effect, to reject the present application as lacking inventive step on the basis of the p.a.r. 2 in view of JP2000-243132 by newly citing JP2000-243132, which was a new and different reason for rejection, and thus the JPO should have issued a new notice of reason for rejection.

Conclusively, the IPHC upheld Hitachi'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.

Under the Japanese practice, the Appeal Board of JPO sometimes refers to new documents as references showing a well known technique or a common technical knowledge only when they render the decision. The above IPHC's decision reveals that such JPO's decisions may include, in effect, a new reason for rejection, and that the JPO's decisions may be argued against on the basis of failing to issue a notice of reason for rejection.

The Trustees of Princeton University et al. v. Commissioner of JPO, Case No. 2011 (Gyo-Ke) 10253 (Decision rendered on September 13, 2012)

The co-Applicants, the Trustees of Princeton University and the University of Southern California, filed a patent application relating to an organic light emitting device in 2002, but the application was finally rejected on the ground of lacking inventive step by the Appeal Board of JPO in 2011. Against the JPO's decision, the co-Applicants filed a cancellation action before the IPHC in 2011.

Claim 1 of the patent application in issue claims as follows:

"An organic light emitting device comprising an anode layer; an emissive layer over the anode layer, which comprises a non-charge-carrying material, a hole transporting material as a charge carrying dopant material and a phosphorescent dopant material; and a cathode layer over the emissive layer; wherein the HOMO level of the non-charge carrying material is lower than the HOMO level of the hole transporting material and the LUMO level of the non-charge carrying material is higher than the LUMO level of the phosphorescent dopant material".

The main issue in this case was how the technical term "phosphorescence" should be interpreted. The IPHC answered to the issue as follows.

The IPHC found that the technical term "phosphorescence" had some meanings, for example, it might mean an emission from triplet exciton state, or a bluish white low light which can be seen in a dark place when yellow white phosphorus is allowed to stand in air, or the like. Thus, the meaning of the term could not be unambiguously determined only on the basis of the term itself and should be interpreted by referring to the description of the specification of the application.
On the basis of this finding, the IPHC referred to the description of the specification and decided that the term "phosphorescence" claimed in the present application meant "an emission from triplet exciton state", which was the general meaning in the art, whereas the term "phosphorescence" used in the prior art reference meant "an emission from the excited-state rare-earth metal ion to which the energy of triplet exciton transitions". Therefore, the IPHC denied the JPO's decision that the claimed "phosphorescence" was not substantially different from the term "phosphorescence" used in the prior art reference.

Conclusively, the IPHC upheld the co-Applicants' 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.

This decision follows the leading case law ("Ra lipase case") on the interpretation of a claimed technical term, which was made by the Supreme Court on March 8, 1991 (Case No 1987 (Gyo-Tstu) 3).
The Supreme Court decided in the case that it was acceptable to refer to the description of specification in interpreting the technical meaning of a claimed term in the case where the claimed term was not unambiguous in itself.

Teikoku Seiyaku Co., Ltd. v. Commissioner of JPO, Case No. 2012 (Gyo-Ke) 10005 (Decision rendered on September 24, 2012)

The Applicant, Teikoku Seiyaku, filed a patent application relating to a glucosamine-containing cataplasm in 2001, but the application was finally rejected on the ground of lacking inventive step by the Appeal Board of JPO in 2011. Against the JPO's decision, Teikoku Seiyaku filed a cancellation action before the IPHC in 2012.

Claim 1 of the patent application in issue claims as follows:

"A glucosamine-containing cataplasm comprising a cross-linked hydrous gel which comprises at least 2-30 parts by weight of a water-soluble polymer, 20-80 parts by weight of water, 0.01-5 parts by weight of a cross-linking agent and 0.5-10 parts by weight of a pH adjuster as essential ingredients,
wherein glucosamine is compounded to the gel as an active ingredient, and ... (omitted)."

One of the main issues in this case was whether or not the difference of physicochemical properties of the components to be replaced should be considered in determining inventive step. The IPHC answered to the issue as follows.

The IPHC found that the prior art reference (p.a.r.) 1 related to a cataplasm comprising a cross-linked polymer gel containing vitamin C (VC) and a support, and that the cross-linking agent was specified so as to solve the particular problem raised when VC was used as an active ingredient, and thus that the cataplasm in the p.a.r. 1 had a technical feature in the combination of the specific active ingredient (VC) and the specific cross-linking agent. The IPHC also found that p.a.r. 2 indicated that glucosamine and VC had been known as a typical skin-lightening agent, but that glucosamine was not similar to VC in physicochemical properties such as a chemical structure.

On the basis of these findings, the IPHC decided that it could not be recognized that the interaction between glucosamine and the cross-linking agent in the cataplasm was similar to the interaction between VC and the cross-linking agent, and thus those skilled in the art could not have easily conceived to replace VC as the active ingredient in p.a.r. 1 with glucosamine only on the basis of the fact that both glucosamine and VC had been known as a skin-lightening agent.

Conclusively, the IPHC upheld Teikoku'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.

This decision teaches that it would be possible to overcome a rejection that a component (A) in prior art (1) can be easily replaced with another component (B) in another prior art (2) even if components A and B seem to show the same effects provided that any physicochemical property can be shown to be different in A and B, and as a result, the interaction between A and another component, which is the key feature of the invention, is different from the interaction between B and another component.

KCI Licensing Inc. v. Commissioner of JPO, Case No. 2011 (Gyo-Ke) 10301 (Decision rendered on September 26, 2012)

The Applicant, KCI Licensing, filed a patent application relating to a wound therapy device in 2000, but the application was finally rejected on the ground of lacking inventive step by the Appeal Board of JPO in 2011. Against the JPO's decision, KCI filed a cancellation action before the IPHC in 2011.

Claim 1 of the patent application in issue claims as follows:

"A therapeutic apparatus for stimulating healing of a wound in mammals, comprising: a porous pad ... (omitted); an impermeable sterilized dressing cover ... (omitted); a vacuum canister ... (omitted); a suction pump ... (omitted); and at least one filter ... (omitted), wherein the porous pad comprises a porous body having at least a partial outer surface and an inner body; the outer surface is formed for contact with a surface of the wound with small first pores having a sufficient size to allow the permeation of body fluid and a pore diameter of no larger than 100 μm to enhance biocompatibility; the inner body has second pores larger than a pore diameter which is vacuum compatible size; and ... (omitted)".

One of the main issues in this case was whether or not a motivation is required to combine two prior art references to deny the inventive step. The IPHC answered to the issue as follows.

In the JPO's decision, the JPO had applied a pore size of 0.001-0.5 μm disclosed in the prior art reference (p.a.r.) 2 to the invention disclosed in the p.a.r. 1 to deny the inventive step.

The IPHC found that the p.a.r. 1 disclosed an invention relating to a wound closure apparatus that closed wounds without stressing the surrounding skin, which belonged to the same technical field as the invention at issue, and that the object of the invention was that the vacuum pump evacuates air from the canister and thence the wound environment, resulting in the application of negative pressure to the wound, which in turn tended to promote drainage of fluids flowing from the wound into the canister on the premise of a procedure for draining the wound by applying a continuous negative pressure to the wound over an area sufficient to promote migration of epithelial and subcutaneous tissue toward the wound as a conventional art. The IPHC also found that the p.a.r. 2 specified a pore size in order to rapidly remove liquid wound exudate and lead it into the absorbent layer while preventing passage of natural wound healing factors or the high molecular weight components of the wound contact layer and prevent ingrowth of cells.

On the basis of these findings, the IPHC decided that the pore size in the p.a.r. 2 was not specified on the premise that the body fluid from the wound was actively collected into the vacuum canister by vacuum suction and a continuous negative pressure was applied to the wound so that the wound was healed by the negative pressure as in the invention at issue and the invention in p.a.r.1., and thus there was no motivation in the p.a.r. 1 for applying to the p.a.r 1 the pore size of the p.a.r. 2 which was different from the p.a.r. 1 in the object and the mechanism of action.

Conclusively, the IPHC upheld KCI'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.

This decision teaches that no motivation for combining two p.a.r.'s A and B may be recognized in the case where the object and/or the mechanism are different in the two, and that inventive step may be argued on the grounds that there is no motivation for applying the p.a.r. B to the p.a.r. A.