March, 2014｜News Letter

1. Should Generally Acknowledged Measuring Method be Disclosed in Specification?JK Sucralose Japan v. San-Ei Gen F.F.I., Inc., Case No. 2013 (Gyo-Ke) 10172 (Decision rendered on March 12, 2014)

The Patentee, San-Ei Gen, obtained a patent relating to a method for masking astringency in 2007, against which JK Sucralose filed an invalidation trial before the JPO in 2012. During the trial proceedings, San-Ei made a correction of claims, and the JPO dismissed JK Sucralose's demand in 2013, followed by JK Sucralose's appeal against the JPO's decision to the IPHC in 2013.

The Corrected Claim 1 of the patent at issue claims as follows:

“A method for masking astringency, comprising using sucralose in an amount of 0.0012 to 0.003% by weight of a beverage exhibiting astringency selected from tea and coffee and in an amount so as not to exhibit sweetness”.

One of the main issues in this case was whether a generally acknowledged measuring method?should be specifically disclosed in the specification. The IPHC answered to the issue as follows.

In the JPO's decision, the JPO found that it could not be said that threshold value of sweetness was unclear even though the specification of the patent at issue did not disclose the definition of the threshold value of sweetness and the specific measuring method thereof, since it was generally acknowledged that the threshold value of sweetness was determined by a “method of limits”.

However, the IPHC denied the above JPO's finding and found that not only the “method of limits” but also a “method of adjustment” and a “method of constant stimuli” were known as measuring methods for threshold value although the “method of limits” was widely acknowledged as a measuring method for threshold value of sweetness. On the basis of the above finding,the IPHC decided that it could not be said that those skilled in the art could have determinately acknowledged that the measuring method for threshold value of sweetness in the specification of the patent at issue was the “method of limits”.

Conclusively, the IPHC upheld the JK Sucralose'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.

K&P’s CommentsThis decision teaches that measuring methods relating to claimed definitions should be clearly and specifically disclosed in a specification even if the measuring methods are widely acknowledged in the art, in particular in the case where any alternative is possible.

In March 2014, the IPHC handed down 27 decisions including the above case on patents, and overturned previous decisions in 8 cases.

In March 2014, the IPHC handed down 3 decisions on trademarks, and overturned previous decision in 1 case.

Meanwhile, regarding “United States Gypsum Company v. Commissioner of JPO”, Case No. 2012 (Gyo-Ke) 10423 (Decision rendered on February 19, 2014) presented in our last report, we confirmed that an appeal to the Supreme Court was not filed against the decision, and thus the decision is now final and binding.