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

The Procter & Gamble Company v. Commissioner of JPO, Case No. 2012 (Gyo-Ke) 10328 (Decision rendered on April 10, 2013)

The Applicant, P & G, filed a patent application relating to a container for the disposal of food wastes in 1999, but the application was finally rejected by the Appeal Board of JPO in 2010. Against the JPO's decision, P & G filed a cancellation action before the IPHC in 2010, and the IPHC cancelled the JPO's decision and remanded the case to the JPO. The case was further examined and rejected again on the grounds of lacking inventive step by the Appeal Board of JPO in 2012. Against the JPO's 2nd decision, P & G filed a cancellation action before the IPHC in 2012.

Claim 1 of the patent application at issue claims as follows:
"A container for the disposal of food wastes, said container comprising: liquid impervious walls defining an opening for receiving the food wastes and having inner and outer surfaces, an absorbent material deposited adjacent said inner surface of said liquid impervious wall; and a liquid pervious liner deposited adjacent said absorbent material, and said container having an effective amount of an odor-neutralizing composition deposited on said absorbent material".

The main issue in this case was how a difference in the problem to be solved between the present invention and a cited invention should be considered. 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 an economic plastic bag preventing liquid contained in food wastes from leaking and neutralizing unpleasant odors emitted by the decomposition of food wastes in a general household until it was collected by a waste disposal agency, (ii) that the cited invention related to a waste bag applied when the wastes with high water were vacuum-transported, and (iii) that "vacuum-transport" meant a system of transporting and collecting wastes by air currents where waste inlets and a waste collection site were connected with transport pipes and the wastes were suctioned from the site.

On the basis of the above, the IPHC decided that those skilled in the art could have easily understood on the basis of the description of the specification of the patent at issue (i) that unnecessary air ventilation should have been generally prevented and (ii) that it would have not been necessary to specify the RH insofar as the conditions had been within the standard test environments, and found that Merial's test results of about 50 to 70% of the RH was the standard, while Fujita's results of over 80% was beyond the standard.

On the basis of the above findings, the IPHC decided that the problem related to the use under the "vacuum-transport" and means for solving the problem were considered in the waste bag of the cited invention, and that the waste bag was not expected to be used under such conditions of being left for a long time until it was collected after wastes were disposed in the bag so that the wastes were decomposed to produce malodors, and thus that the cited invention involved no problem to prevent malodors from wastes with high water even inherently, and therefore it had no motivation to combine a composition neutralizing odors with the cited invention.

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.

As previously stated in our report in June, 2012, the recent IPHC's decisions tend to place more emphasis on the "problem-solution approach" in determining inventive step, and this decision provides another example thereof.

Sekisui Chemical Co., Ltd. v. Kuraray Co., Ltd., Case No. 2012 (Gyo-Ke) 10321 (Decision rendered on April 16, 2013)

The Patentee, Sekisui, obtained a patent relating to an interlayer film for laminated glass in 1999, against which Kuraray filed an invalidation trial before the JPO in 2011. The JPO accepted Kuraray's demand and made a decision of invalidation on the grounds of not satisfying the enablement, the clarity and the support requirements in 2012, followed by Sekisui's appeal against the JPO's decision to the IPHC in 2012.

Claim 14 of the patent at issue claims as follows:
"An interlayer film for laminated glass comprising a plasticized poly(vinyl acetal) resin film containing at least one member selected from the group consisting of alkali metal salts and alkaline earth metal salts, wherein the concentration of sodium in the interlayer film is not greater than 50 ppm and a particle diameter of the alkali metal salts and the alkaline earth metal salts in the interlayer film which is determined by secondary ion imaging with a time-of-flight secondary ion mass spectrometer (TOF-SIMS) is not greater than 3 μm".

One of the main issues in this case was whether or not the enablement requirement could be satisfied when the detailed measurement conditions of a claimed numerical definition were not disclosed in the specification. The IPHC answered to the issue as follows.

In the previous JPO's decision, the JPO had decided that the patent at issue had not satisfied the enablement requirement on the grounds (a) that TOF-SIMS had detected not only the metal salts but also the ions thereof, (b) that TOF-SIMS had not been quantitative, and (c) that the details of measurement conditions of TOF-SIMS had not been disclosed in the specification although the particle diameter had depended on the conditions, in particular on the threshold.

However, as to (a), the IPHC found that the specification disclosed that "the magnesium salts ... occur in the form of salts in the sheet without electrolytic dissociation" and that the supplemental test data actually showed that most residual metal salts existed in the form of salts without electrolytic dissociation, and thus that it could be said that the existence of metal ions did not need to be considered.
As to (b), the IPHC found that the claims did not define the amount of metal salts, and thus that poor quantification could not account for the deficiency of enablement requirement.
As to (c), the IPHC found that it was widely known that the threshold was set to "0" in TOF-SIMS although the details of measurement conditions of TOF-SIMS were not disclosed in the specification.
On the basis of the above findings, the IPHC decided that it was possible to determine the particle diameter by TOF-SIMS with reference to an expert opinion showing that TOF-SIMS had a resolution of 0.1 μm, which was much smaller than the claimed upper limit of the diameter, 3 μm.

Conclusively, the IPHC upheld Sekisui'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.

As mentioned in our report of March, 2013, generally speaking, the enablement requirement would be much more strictly applied in Japan than in the EP or in the U.S.A., and the measurement conditions of the parameters or the numerical limitation defined in a claim are also required to be disclosed in greater detail in the specification. However, taking into consideration this decision and the previous decision in March, 2013, the recent IPHC's decisions may be inclined to relax the disclosure requirements for measurement conditions.

In April 2013, the IPHC handed down 22 decisions including the above 2 cases on patents, and overturned the previous decisions in 6 cases.
In April 2013, the IPHC handed down 3 decisions on trademarks, and overturned the previous decisions in 2 cases.