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

Taiwan Semiconductor Manufacturing Co., Ltd. v. Commissioner of JPO, Case No. 2012 (Gyo-Ke) 10243 (Decision rendered on May 23, 2013)

The Applicant, Taiwan Semiconductor Manufacturing (TSM), filed a patent application relating to an interconnect structure 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, TSM filed a cancellation action before the IPHC in 2012.

Claim 6 of the patent application at issue claims as follows:
"An interconnect structure comprising:
a substrate having a conductive member;
composite low-k dielectric layer interposed with at least one stress-harmonizing layer therein overlying the substrate; and
a conductive feature in the composite low-k dielectric layer, passing through the at least one stress-harmonizing layer and electrically connecting the conductive member,
the stress-harmonizing layer which harmonizes the stress in the composite low-k dielectric layer comprising silicon carbide containing oxygen (SiaCbOc), wherein a is 0.8 to 1.2, b is 0.8 to 1.2 and c is 0 to 0.8, not inclusive of 0".3

The main issue in this case was how an inevitable impurity in the prior art reference should be construed. The IPHC answered to the issue as follows.

First, the IPHC found (i) that prior art reference (p.a.r.) 1 disclosed that the material of the stress-harmonizing layer was "Blok" and the main ingredient of "Blok" was silicon carbide (SiC), (ii) that it was well known that "Blok" was a SiC membrane formed by a PECVD method using an organosilicon gas, and (iii) that it was a common technical knowledge that the SiC membrane formed by the PECVD method inevitably contained oxygen.
On the basis of the above findings, the IPHC decided (i) that the stress-harmonizing layer disclosed in p.a.r. 1 inevitably contained oxygen, (ii) that the claimed numerical range of c of "c is 0 to 0.8, not inclusive of 0" should be literally construed as the range from an extremely small value next to 0 to 0.8, and thus (iii) that there was no difference in the oxygen content between the claimed invention and the invention disclosed in p.a.r. 1, and further that no critical meaning could be acknowledged in the limitation of the value of c since no specific grounds for defining the numerical limitation was disclosed in the specification.
In this connection, during the court proceedings, TSM asserted (i) that the claimed term "silicon carbide containing oxygen" should be construed to mean that oxygen was intentionally contained to the extent that oxygen could show the effect, and (ii) that the term was not expected to include a case where a trace amount of oxygen was inevitably-contained. However, the IPHC rejected the TSM's assertion by pointing out (i) that the claims did not define that the claimed silicon carbide containing oxygen was the silicon carbide to which oxygen was intentionally added, and (ii) that the specification did not disclose or suggest it.

Conclusively, the IPHC denied the inventive step of the claimed invention and upheld the JPO's decision.

The period for appeal to the Supreme Court has not expired since the period has been extended by 30 days for the losing party, TSM which is a foreign entity, and thus the decision has not been final and binding as of June 28, 2013.

As seen from the above decision, an inevitable impurity may be taken into consideration as a content of a prior art reference even if it is not explicitly disclosed therein, and the numerical definition "0 to X, not inclusive of 0", for example, may be literally construed to encompass such an impurity-level content.

Hitachi Zosen Corporation v. Y (an Individual), Case No. 2012 (Gyo-Ke) 10289 (Decision rendered on May 29, 2013)

The Patentee, Y, obtained a patent relating to a crushing cartridge in 2007, against which Hitachi filed an invalidation trial before the JPO in 2011. The JPO dismissed Hitachi's demand in 2012, followed by Hitachi's appeal against the JPO's decision to the IPHC in 2012.

Claim 1 of the patent at issue claims as follows:
"A crushing cartridge for crushing a rock bed or a concrete structure, the cartridge comprising a PET container which has two leg wires for connection to a high-voltage/high-current generator through two bus bars, and contains a glow fuel for radio-controlled models comprising nitromethane as the main ingredient and methanol and an oil, wherein the other ends of the two leg wires short-circuited with a fine copper-nickel resistance wire having a wire diameter of 0.4 mm and a length of 100 mm are enclosed in the PET container".

One of the main issues in this case was how much the scope of the disclosure of a prior art reference should be acknowledged in reference to a common practice in the field in determining inventive step. The IPHC answered to the issue as follows.

First, the IPHC found (i) that one of the differences between the claimed cartridge and the invention disclosed in prior art reference (p.a.r.) 1 was that the former specified the composition of the claimed glow fuel, while the latter only disclosed nitromethane as an explosive material and did not specifically disclosed the purity of the nitromethane, (ii) that a glow fuel generally comprises methanol, nitromethane and an oil, (iii) that about 20 types of glow fuels were available in the domestic market, nitromethane content of these fuels was 30 to 75%, and a glow fuels comprising 90% of nitromethane, 5% of methanol and 5% of an oil was also available on request, (iv) that it was a common practice to adjust the nitromethane content so as to match with the subject to be crushed in a worksite, and (v) that the specification of the patent at issue did not state any function of methanol and the oil.
On the basis of the above findings, the IPHC decided (i) that p.a.r. 1 should be naturally construed as disclosing not only the nitromethane whose purity was 100%, but also the nitromethane whose content was adjusted in view of the fact that it was a common practice to adjust the nitromethane content so as to match with the subject to be crushed in a worksite, (ii) that no difference was acknowledged in the effect as a crushing agent between the invention disclosed in p.a.r. 1 where nitromethane was used as an explosive material and the claimed cartridge where a glow fuel comprising nitromethane as the main ingredient and methanol and an oil was used, and (iii) that it was merely a design matter to select an explosive material from the commercially available products as a claimed glow fuel.

Conclusively, the IPHC denied the inventive step, 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 examination guideline, the scope of disclosure of a reference includes not only matters explicitly described in a reference, but also equivalents thereto, i.e. those that a skilled person can derive from the descriptions based on the common technical knowledge as of the filing date. In the above decision, in reference to a common practice of adjusting the nitromethane content so as to match with the subject to be crushed in a worksite as a common technical knowledge, the IPHC broadly acknowledged the scope of "nitromethane".

In May 2013, the IPHC handed down 7 decisions including the above 2 cases on patents, and overturned the previous decisions in 2 cases.
In May 2013, the IPHC handed down 5 decisions on trademarks, and overturned the previous decisions in no cases.

We have now confirmed (i) that the appeals to the Supreme Court against the decision on Case No. 2011 (Gyo-Ke) 10148, which we introduced in the K&P IPHC Decision Report in April 2012, and the decision on Case No. 2011 (Gyo-Ke) 10354, which we introduced in the K&P IPHC Decision Report in July 2012, were dismissed on October 16, 2012 and December 11, 2012, respectively, and thus the above mentioned IPHC's decisions are now final and binding, and (ii) that the invalidation trial, which was the base of Case No. 2011 (Gyo-Ke) 10186, which we introduced in the K&P IPHC Decision Report in April 2012, was withdrawn on November 7, 2012.