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

Maruwa Co., Ltd. v. Kyocera Corporation, Case No. 2012 (Gyo-Ke) 10180 (Decision rendered on July 17, 2013)

The Patentee, Kyocera, obtained a patent relating to a dielectric ceramics in 2006, against which Maruwa filed an invalidation trial before the JPO in 2010. The JPO accepted Maruwa's demand and rendered a decision of invalidation in 2011, followed by Kyocera's appeal against the JPO's decision to the IPHC along with a trial for correction before the JPO in 2011. The IPHC remanded the case to the JPO and the JPO accepted the correction and dismissed Maruwa's demand in 2012, followed by Maruwa's appeal against the JPO's decision to the IPHC in 2012.

Claim 1 of the patent at issue claims as follows:
"A dielectric ceramics comprising an oxide containing, as a metal element, at least a rare earth element (Ln, provided that more than 90% of La is contained), Al, M (M is Ca and/or Sr) and Ti; ... (snip);
wherein Q value when converted to 1 GHz is 40,000 or more"

One of the main issues in this case was what the unexpected remarkable effect of a selective invention was. The IPHC answered to the issue as follows.

First, the IPHC found (i) that the differences between the claimed invention and the invention disclosed in prior art reference (p.a.r.) 1 were (a) that the former limited the claimed oxide to that containing more than 90% of La as a rare earth element, while the latter did not, and (b) that the former specified Q value as 40,000 or more, while the latter did not, and (ii) that p.a.r. 1 demonstrated in the working example that an oxide containing only La as rare earth element showed Q value of 39,000, which was very close to the claimed lower limit. Further, the IPHC also found with reference to some prior art documents that it had been well known to those skilled in the art that a dielectric ceramics whose composition corresponded to that of the ceramics disclosed in p.a.r. 1, and which contained La only as rare earth element, showed Q value over 40,000.
On the basis of the above findings, the IPHC decided (i) that p.a.r. 1 suggested using an oxide containing 100% of La as rare earth element, and (ii) that those skilled in the art could have easily expected that the invention disclosed in p.a.r. 1 which contained only La as rare earth element showed Q value over 40,000.
In this connection, Kyocera had asserted to the court that the remarkable effect of the claimed invention had been not just showing Q value over 40,000, but stably providing a dielectric ceramics excellent in Q value even when economically advantageous La had been used as a rare earth element, which the JPO had agreed to in its decision. However, the IPHC rejected the Kyocera's assertion by pointing out that those skilled in the art could have easily expected that a dielectric ceramics excellent in Q value was able to be stably provided even when economically advantageous La was used as a rare earth element, as stated above.

Conclusively, the IPHC upheld Maruwa'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.

The claimed invention at issue was regarded as a selective invention in the JPO's decision since p.a.r. 1 disclosed all the general concepts, but did not specify the content of La and Q value. The IPHC required a higher effect for such a selective invention than the JPO did, and considered that to stably provide the claimed ceramics was insufficient for acknowledging the inventive step.

Ryoto Chemical Industry Co., Ltd. v. Ube Industries, Ltd. et al., Case No. 2012 (Gyo-Ke) 10207 (Decision rendered on July 24, 2013)

The co-Patentees, Ube and Mitsubishi Tanabe Pharma Corporation, obtained a patent relating to an optically active piperidine derivative in 2011, against which Ryoto filed an invalidation trial before the JPO in 2011. The JPO dismissed Ryoto's demand in 2012, followed by Ryoto's appeal against the JPO's decision to the IPHC in 2012.

Claim 1 of the patent at issue claims as follows:

"A benzenesulfonic acid salt of an optically active piperidine derivative which is represented by formula (I):

and has an absolute configuration of (S)".

One of the main issues in this case was whether or not an optical isomer was novel when its racemate had been publicly known. The IPHC answered to the issue as follows.

First, the IPHC found (i) that prior art reference (p.a.r.) 1 disclosed the racemate of the claimed derivative, and (ii) that it was acknowledged as common technical knowledge at the priority date of the patent at issue with reference to several technical articles that chemical compounds whose biological actions were different between their optical isomers were becoming to be used as optical isomers, but not as the racemate with the recent technological developments of asymmetric synthesis and optical resolution.
On the basis of the above findings, the IPHC decided that the novelty of an optical isomer should be acknowledged by focusing on the difference of biological activity between optical isomers when a patent application was filed on the basis of a finding that a chemical compound had a different biological activity between its optical isomers in view of the above common technical knowledge even though the racemate itself had been publicly known.
Further, the IPHC decided that the claimed derivative also had the inventive step on the grounds that the specification of the patent at issue showed that the claimed (S) isomer brought about an unexpected remarkable pharmacological effect over the racemate disclosed in p.a.r. 1 though the optical resolution of the racemate was achievable on the basis of the common technical knowledge.

Conclusively, the IPHC dismissed Ryoto's appeal and maintained the JPO's decision.

An appeal to the Supreme Court was filed against this decision, and thus the decision is not final and binding.

Unlike in the U.S. and EP, novelty of optical isomer is generally not acknowledged in Japan when its racemate was publicly known on the grounds that the optical isomer was naturally included in the racemate and the optical resolution of the racemate could be achieved on the basis of the common technical knowledge at the filing.  Nevertheless, the IPHC acknowledged the novelty and the inventive step by focusing on the recent technological development and unexpected remarkable effect of the isomer even though the IPHC found that the optical resolution was achievable on the basis of the common technical knowledge.  This decision would provide a new approach to persuading the Examiner of the patentability of an optical isomer.