October, 2014｜News Letter

1. What Kind of Matter Should be Construed as Matter Equivalent to Matter Disclosed in Prior Art Publication in Examining NoveltyToray Industries, Inc. v. Teijin Limited, Case No. 2013 (Gyo-Ke) 10303 (Decision rendered on October 23, 2014)

The Patentee, Toray, obtained a patent relating to a biaxially-oriented white polyester film in 2004, against which Teijin filed an invalidation trial before the JPO in 2012. During the trial proceedings, Toray demanded a correction of the claims, and the JPO admitted the correction but rendered a decision of invalidation in 2013 on the grounds of lacking novelty, followed by Toray's appeal against the JPO's decision to the IPHC in 2013.

Claim 1 of the patent at issue claims as follows:
"A biaxially-oriented white polyester film made from a polyester composition containing 5% by weight or more of inorganic particles, wherein a concentration of carboxyl terminal groups of the polyester composition is 35 equivalents/10⁶ g-polyester or less, and a temperature-rise crystallization temperature (Tcc) of the polyester composition and a glass transition temperature (Tg) thereof satisfy the following formula:
    30 ≤ Tcc-Tg ≤ 60".

The main issue in this case lied in what kind of matter should be construed as a matter which was equivalent to a matter disclosed in a prior art publication in examining novelty. The IPHC answered to the issue as follows:

In the JPO's decision, the JPO first found (i) that Example 12 of prior art reference (p.a.r.) 1 demonstrated that polyester composition A was mixed with PET containing no modifiers to prepare polyester composition B containing 15 wt.% of the modifier, from which a film was made, (ii) that p.a.r. 1 stated that the content of the modifier comprising calcium carbonate could be adequately changed by mixing the polyester composition of the present invention and various polyesters, (iii) that Examples 6 and 7 of p.a.r. 1 demonstrated that the white films were made without the process of adjusting the content of modifiers by the addition of polyesters, and thus the adjusting process was not an essential process, (iv) that the content of the modifier in polyester composition A was 30 wt.%, which was within the preferable range for the film of the patent at issue, and (v) that Example 9 of p.a.r. 1 demonstrated that a film made from a polyester composition containing 30 wt.% of the modifier showed preferable properties. On the basis of the above findings, the JPO concluded that "a white polyester film made from polyester composition A" was a matter which was equivalent to a matter disclosed in p.a.r. 1, based on which the JPO denied novelty of the patent at issue.

However, the IPHC restrictively ruled (i) that even though there was no explicit disclosure in a prior art publication, a matter which was equivalent to a matter disclosed therein was recognized as a matter which was substantially disclosed therein, and (ii) that if a feature was an unambiguous technical matter for those skilled in the art, and it could be understood from the publication itself that it was a natural precondition that the invention disclosed in the publication had the feature, then the feature could be recognized as a matter which was equivalent to a matter disclosed therein.
On the basis of the above ruling, the IPHC decided (i) that no evidences were found for sufficiently recognizing that a film made from polyester composition A was an unambiguous technical matter for those skilled in the art, and (ii) that polyester composition A was just an intermediate composition for obtaining polyester composition B for preparing a white film, and there were no descriptions showing that a film was made from polyester composition A nor that it was a natural precondition that a film was made from polyester composition A. The IPHC further added that whether or not "a white polyester film made from polyester composition A" was a matter which was equivalent to a matter disclosed in p.a.r. 1 was a different issue from whether or not a white polyester film could be made from polyester composition A on the basis of the disclosures of p.a.r. 1.

Conclusively, the IPHC upheld the Toray'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.

K&P’s CommentsAs seen from the above, this decision provides a general rule for the construction of "a matter which is equivalent to a matter disclosed in a prior art publication", which would be more restrictive or narrower than the JPO's practice.

In October 2014, the IPHC handed down 26 decisions including the above case on patent, and overturned previous decisions in 8 cases.