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

The Procter & Gamble Company v. Commissioner of JPO, Case No. 2012 (Gyo-Ke) 10196 (Decision rendered on January 21, 2013)

The Applicant, P&G, filed a patent application relating to a disposable absorbent article in 2006, but the application was finally rejected on the ground of lacking inventive step by the Appeal Board of JPO in 2012. Against the JPO's decision, P&G filed a cancellation action before the IPHC in 2012.

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

"A disposable absorbent article which comprises a chassis having a front waist region, a back waist region, and a crotch region between the front and back waist regions, said chassis having two opposing longitudinal edges and two perpendicularly placed end edges, said chassis further comprising:
a. a liquid permeable topsheet spanning at least the crotch region;
b. a backsheet spanning at least the crotch region;
c. an absorbent core disposed between said topsheet and backsheet; and
d. an elastic member disposed along at least one opposing longitudinal edge in either the front waist or back waist region of said chassis characterized in that said member comprises an unapertured, skinless elastomeric layer wherein said layer exhibits an Energy Recovery Value of at least about 0.77, and
wherein the elastomeric layer is ... (omitted), the material is selected from ... (omitted), the elastic member is obtained by a process comprising a step of obtaining the elastomeric layer, a step of carrying out a treatment of non-blocking which includes an application of powder on one or more surface of the elastomeric layer and the step of laminating the elastomeric layer on one or more nonwoven support web layer, and the elastic member is included in ... (omitted)".

One of the main issues in this case was how the difference of the problem to be solved by the invention between the present invention and the cited invention should be considered in determining the inventive step. The IPHC answered to the issue as follows.

First, the IPHC found (i) that the problem to be solved by the present invention was that the handling of an elastomeric monofilm or single layer film paired with a release liner subsequently required another mechanism to facilitate handling of the layer for future lamination with one or more nonwovens when trying to manufacture an elastic laminate using a release liner with a single layer elastomeric film, since when further converting the film material, in most instances, the release liner was separated from the elastomeric film, removed, and wound up, and (ii) that the present invention had mechanisms for aiding in the non-blocking that was required to facilitate the lamination process of such films with nonwoven layers in order to solve the problem.
Further, the IPHC found (i) that the problem to be solved by the cited invention disclosed in the prior art reference 1 was to make the step of applying elastic laminates having different elasticity to a desirable position by a process of "cut and strip" more efficiently and the means for solving the problem was to combine a process of forming an elastomeric component and a process of binding the component to a substrate with one sequential process, which were quite different from those of the present invention, and (ii) that there was no risk that the blocking would occur in the manufacturing processes of the cited invention, which included a process of directly adding the elastomeric material on the substrate by gravure printing and the like and a process of indirectly transferring the elastomeric material on the substrate by offset printing and the like after putting the elastomeric material on the surface of the intermediate.

On the basis of the above findings, the IPHC decided that there was no motivation in the cited invention to apply a treatment of non-blocking after forming an elastomeric component and before binding it to a substrate.

Conclusively, the IPHC upheld P&G'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 is based on a so-called "problem-solution approach", which is generally adopted in the EPO, and shows that the recent IPHC's decisions tend to place more importance on the "problem-solution approach", as commented in the previous K&P IPHC Report of June, 2012.

Panasonic Corporation v. Y (an Individual), Case No. 2012 (Gyo-Ke) 10020 (Decision rendered on January 31, 2013)

The Patentee, Panasonic, obtained a patent relating to a light-emitting device in 2008, against which Y filed an invalidation trial before the JPO in 2011. The JPO accepted Y's demand and made a decision of invalidation in 2011, followed by Panasonic's appeal against the JPO's decision to the IPHC in 2012.

Claim 1 of the patent in issue claims as follows:

"A light-emitting device comprising a phosphor layer having a phosphor, the light-emitting element having an emission peak in a wavelength range from 360 nm to less than 500 nm, the phosphor emitting light being excited by luminenscence of the light-emitting element, and output light of the light-emitting device at least containing a light-emitting component of luminenscence from the light-emitting element, wherein the phosphor comprises a nitride phosphor or an oxynitride phosphor which is activated by Eu2+ and has an emission peak in a wavelength range from at least 600 nm to less than 660 nm (hereinafter referred to as "the red phosphor"), and an alkaline-earth metal orthosilicate phosphor which is activated by Eu2+ and has an emission peak in a wavelength range from at least 500 nm to less than 600 nm(hereinafter referred to as "the green phosphor"), and wherein an internal quantum efficiency of the phosphor is at least 80% under the excitation by luminenscence of the light-emitting element".

One of the main issues in this case was whether the phrase "an internal quantum efficiency of the phosphor is at least 80%" should mean that the efficacy of each of the red phosphor and the green phosphor is at least 80%, which is the construction in the JPO's decision, or that the efficacy of the combination of the red phosphor and the green phosphor as a whole is at least 80%. The IPHC answered to the issue as follows.

First, the IPHC construed that it was literally clear that all references to the claim term "phosphor" which read: "the phosphor emitting light being excited by luminenscence of the light-emitting element", "the phosphor comprises" and "an internal quantum efficiency of the phosphor is at least 80% under the excitation by luminenscence of the light-emitting element", were intended to have the same meaning as the term "phosphor" recited in the phrase "comprising a phosphor layer having a phosphor" of Claim 1, and thus it was also clear that the phosphor included the red phosphor and the green phosphor.
Further, the IPHC found that the working examples of the patent in issue demonstrated that a light-emitting device comprising a phosphor layer having a phosphor including a red phosphor with an efficacy of lower than 80% and a green phosphor with an efficacy of higher than 80%. On the basis of this finding, the IPHC mentioned that if the phrase "an internal quantum efficiency of the phosphor is at least 80%" was construed as saying it was necessary that the efficacy of each of the red phosphor and the green phosphor be at least 80%, this construction contradicted the above working examples, although the specification of the patent in issue stated (i) that if there was even one phosphor having a low internal quantum efficiency in the phosphor of the light-emitting device, the strength of output light decreased and white light of high luminous flux could not be obtained, and that (ii) it was preferable that the internal quantum efficiency of the phosphor which had the lowest internal quantum efficiency was 80% or higher.
Furthermore, the IPHC added that it was clear that the whole efficacy of phosphor including a number of kinds of phosphors varied depending on the efficacy of each phosphor and the mixture ratio thereof, and thus that it was easy to adjust the efficacy at higher than 80% by increasing the mixture ratio of the green phosphor having a higher efficacy even if the efficacy of the red phosphor was below 80%.

On the basis of the above, the IPHC decided that the phrase "an internal quantum efficiency of the phosphor" recited in Claim 1 should be interpreted as meaning the whole efficacy of the phosphor including the red phosphor and the green phosphor.

Conclusively, the IPHC upheld Panasonic'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 shows a typical Japanese practice for construing a phrase or a term recited in a claim. Specifically, every word in the claim is made count and the phrase or the term is construed verbatim and consistently, and then the consistency between the claim and the specification is also generally considered.

In January 2013, the IPHC handed down 29 decisions including the above 2 cases on patents, and overturned the previous decisions in 9 cases.

Cache LLC v. P1 Inc., Case No. 2012 (Wa) 6892 & 6896 (Decisions rendered on January 24, 2013)

The Plaintiff, Cache LLC, a beauty salon in Osaka filed 2 law suits against the Defendant, P1 Inc., claiming compensation for damages caused by the Defendant’s trademark use.

The Plaintiff owned a trademark right for “Cache (standard characters)” designating beauty salon services. They have been using the mark “cache” in their beauty salons located in Osaka and posting advertisements in local magazines distributed in the Osaka area for years, and sometimes their beauty salons were introduced in magazines for professionals.

The Defendant uses a mark similar to the Plaintiff’s registered mark in their beauty salons located in Higashi-Osaka (an adjacent city to Osaka) and Gifu (a city 130 km away from Osaka).

The Plaintiff alleged that the Defendant’s trademark use infringed the Plaintiff’s trademark right and claimed for damages caused by the Defendant’s acts.

There was no room to argue that the Defendant’s trademark use infringed the Plaintiff’s trademark right. The main issue in these cases was whether or not the Defendant’s trademark use caused damages including loss of royalty.

In the above 2 cases, the Court rendered 2 different decisions. As for the infringement case in Higashi-Osaka (an adjacent city to Osaka), the Court partially sustained the Plaintiff’s claim and ordered the Defendant to pay royalty for the Plaintiff’s registered trademark. On the contrary, the Court totally dismissed the Plaintiff’s claim for damages in the infringement case in Gifu (a city 130 km away from Osaka) and did not admit even payment of royalty.

In the case of Higashi-Osaka, the Court did not deny that the Plaintiff’s trademark might have acquired some trust in the Osaka area, admitted that the targeted markets of the Plaintiff’s and the Defendant’s might impinge on each other and then concluded that the Defendant should pay the minimum royalty for the Plaintiff’s trademark. However, in the Gifu case, the Court found that the Plaintiff’s trademark had not acquired any goodwill in Gifu, thus, even though the Defendant used the marks similar to the Plaintiff’s registered mark, the Defendant did not enjoy the goodwill of the Plaintiff’s mark and therefore concluded that no damages such as loss of royalty had been caused to the Plaintiff.

The above decisions followed the Supreme Court decision in 2009 that when neither trust nor goodwill was incorporated in the registered mark, no damages including those for the loss of royalty could be claimed. This would not be always the case when the mark is well-known or the registrant places advertisements eagerly, however, it would not be always righteous to claim royalty for a registered mark which is not used or used only locally.

In January 2013, the IPHC handed down 6 decisions on trademarks, and overturned the previous decisions in 3 cases.