June, 2014｜News Letter

1. To What Extent of Disclosure is Required for being Admitted as Disincentive Factor?Honeywell International., Inc. v. Asahi Glass Co., Ltd., Case No. 2013 (Gyo-Ke) 10218 (Decision rendered on June 26, 2014)

The Patentee, Honeywell, obtained a patent relating to a composition containing fluorine-substituted olefins in 2011, against which Asahi Glass filed an invalidation trial before the JPO in 2011. During the trial proceedings, Honeywell demanded a correction of the specification, and the JPO admitted the correction but rendered a decision of invalidation in 2013 on the grounds of lacking inventive step, followed by Honeywell's appeal against the JPO's decision to the IPHC in 2013.

Claim 1 of the patent at issue claims as follows: “A heat transfer composition comprising: at least one compound represented by the formula (II):

wherein each R is … (snip), and at least one lubricant selected from a polyol ester and a polyalkylene glycol”.

One of the main issues in this case was to what extent of disclosure is required for being admitted as a disincentive factor. The IPHC answered to the issue as follows:

First, the IPHC found that the difference between the claimed composition and the composition disclosed in prior art reference (p.a.r.) 1 lied only in that the former specified the lubricants to those selected from a polyol ester and a polyalkylene glycol, while the latter did not specify the kind of the lubricants. Further, having reviewed the common technical knowledge with reference to various public documents in detail, the IPHC found that the effects of the claimed combination of the compound of formula (II) and the specific lubricants, i.e. the excellent miscibility and stability were not remarkable beyond those skilled in the art could have expected. On the basis of the above findings, the IPHC decided that those skilled in the art could have easily conceived of the claimed combination on the basis of p.a.r. 1 in view of the common technical knowledge.

In this connection, during the court proceedings, Honeywell asserted with reference to some public documents that fluoroolefins were known to have a reactivity and low stability, and thus those skilled in the art must have hesitated to use such compounds. However, the IPHC rejected the Honeywell's assertion by pointing out that these documents only taught that specific fluoroolefins, all of which did not correspond to the claimed compound of formula (II), were excluded from the candidates for refrigerants, and that they did not teach that all the fluoroolefins could not be used as refrigerants.

Conclusively, the IPHC dismissed Honeywell's appeal, and upheld the JPO's decision.

The period for appeal to the Supreme Court has not expired since the period was extended by 30 days for the losing party, Honeywell, which is a foreign entity, and thus the decision is not final and binding as of July 31, 2014.

K&P’s CommentsThis decision provides a negative example of a “disincentive factor”, which is one positive factor for acknowledging inventive step under the Japanese practice. As seen from the above decision, it would be insufficient just to show the relevant matter(s) in general terms, but would be required to show it (them) in relation to a specific claimed element.

In June 2014, the IPHC handed down 11 decisions including the above case on patents and utility model, all of which maintained the previous decisions.

Meanwhile, regarding "Nissan Motor Co., Ltd. v. Commissioner of JPO, Case No. 2013 (Gyo-Ke) 10248 (Decision rendered on May 26, 2014)" presented in our last report, we confirmed that an appeal to the Supreme Court was NOT filed against the decisions, and thus the decision is now final and binding.

In June 2014, the IPHC handed down 5 decisions on trademarks, all of which maintained the previous decisions.