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

The Trustees of Princeton University et al. v. Semiconductor Energy Laboratory Co., Ltd., Case No. 2011 (Gyo-Ke) 10235 (Decision rendered on November 7, 2012)

The co-Patentees, the Trustees of Princeton University and the University of Southern California, obtained a patent relating to a composition used as an emitting layer of an organic light emitting device in 2009, against which Semiconductor Energy Laboratory (SEL) filed an invalidation trial before the JPO in 2010. The JPO upheld SEL's demand and made a decision of invalidation in 2011, followed by the co-Patentees' appeal against the JPO's decision to the IPHC in 2011.

Claim 1 of the patent in issue claims as follows:

"A composition used as an emitting layer of an organic light emitting device, which comprises a phosphorescent complex having the formula L2MX, wherein L and X are different monoanionic bidentate ligand and M is Ir; and further said L ligand is coordinated to M through an sp2 hybridized carbon and a nitrogen atom and said X ligand is an O-O ligand or an N-O ligand, provided that the composition in which X is hexafluoroacetylacetonate or diphenylacetylacetonate is excluded from L2MX ".

The main issue in this case was how the problem to be solved by the claimed invention should be considered in determining the support requirement. The IPHC answered to the issue as follows.

First, the IPHC ruled that whether or not the support requirement was satisfied should have been determined by considering if the claimed invention was within the scope that those skilled in the art could recognize that the problem of the claimed invention could be solved by the claimed invention in view of the disclosure of the specification of the patent in issue and/or the common technical knowledge at the filing of the patent in issue, and thus that it was required to determine the problem of the claimed invention as a premise of the judgment of the support requirement.

On the basis of the above ruling, the IPHC reviewed the specification of the patent in issue and the exhibits showing the common technical knowledge, and found that the problem of the claimed invention was not to provide a composition showing EL efficiency higher than ever before, which was recognized as the problem in the JPO's decision, but to obtain a new organometallic compound emitting a phosphorescence when it was used as an emitting layer of an organic light emitting device. Further, the IPHC found that the specification of the patent in issue demonstrated various emission spectrum of phosphorescence by the claimed organic iridium complexes as well as the mechanism of action thereof. Accordingly, the IPHC decided that the specification of the patent in issue satisfied the support requirement.

Conclusively, the IPHC upheld the co-Patentees' 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 is very important to adequately determine the problem to be solved by the claimed invention in order to examine the support requirement as a premise thereof.

Yamauchi Corp. v. Ichikawa Co., Ltd., Case No. 2012 (Gyo-Ke) 10004 (Decision rendered on November 13, 2012)

The Patentee, Yamauchi, obtained a patent relating to a belt for shoe pressing in 2005, against which Ichikawa filed an invalidation trial before the JPO in 2011. The JPO partially upheld Ichikawa's demand and made a decision of invalidation of Claim 1 in 2011, followed by Yamauchi's appeal against the JPO's decision to the IPHC in 2012.

Claim 1 of the patent in issue claims as follows:

"A belt for shoe pressing, formed by integrating a reinforcing substrate and a thermosetting polyurethane, said reinforcing substrate being embedded in said polyurethane, and an outer peripheral surface and an inner peripheral surface being formed by said polyurethane, wherein the polyurethane forming said outer peripheral surface is made of a composition containing a urethane prepolymer having isocyanate groups on ends and a hardener containing dimethylthiotoluenediamine".

The main issue in this case was how motivation should be considered in examining inventive step when the problems to be solved by the invention in the present invention and those in the prior art references differ from each other. The IPHC answered to the issue as follows.

First, the IPHC found (i) that the problem to be solved by the present invention was to provide a belt for shoe pressing which was capable of preventing cracking, (ii) that prior art reference (p.a.r.) 1 disclosed MOCA (4,4 methylene-bis-(2-chloroaniline)) as the hardener, which was known as a carcinogenic material, and (iii) that p.a.r. 2 disclosed "ETHACURE 300", which contained 3,5- dimethylthio-2,6-toluenediamine and 3,5-dimethylthio-2,4-toluenediamine, as a new hardener safer than MOCA.

On the basis of the above findings, the IPHC decided as follows:
It might prima facie appear that those skilled in the art could easily conceive the present invention by using "ETHACURE 300" disclosed in p.a.r. 2 in place of MOCA used in p.a.r.1 in view of safety. However, the problem to be solved by p.a.r.1 was to provide a belt for shoe pressing which was excellent in keeping the belt running stably for a long time, and the problem to be solved by p.a.r.2 was to provide a safe hardener which did not have carcinogenicity, and thus both problems were different from the problem to be solved by the present invention. Further, the present invention showed in the specification a remarkably advantageous effect over a belt for pressing using MOCA that even those skilled in the art could not have expected. Therefore, those skilled in the art could not easily conceive the present invention on the basis of p.a.r.1 in view of p.a.r. 2.

In this connection, the JPO's decision was that even if the effect of the present invention was remarkable, those skilled in the art could easily replace MOCA with "ETHACURE 300" without creativity, and thus the present invention merely confirmed such an effect. Against the JPO's decision, the IPHC decided that (i) p.a.r. 2 did not disclose a belt for shoe pressing at all, and thus it was unknown what effect other than safety could be brought about by using "ETHACURE 300" as a hardener for a belt for shoe pressing. Further, according to other evidences, it was recognized that many alternative hardeners of MOCA had been developed other than "ETHACURE 300", and there was no special reason to select "ETHACURE 300" from among them, rather it was highly likely that a hardener other than "ETHACURE 300" would be selected as an alternative to MOCA in view of safety. Therefore, those skilled in the art would not be strongly motivated to use "ETHACURE 300".

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

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

This decision teaches that motivation, which is an important factor for destroying inventive step, should be considered in connection to the problem to be solved by the invention. Namely, it is not easy to recognize motivation on the basis of references having different problems to be solved from the claimed invention.