June, 2015｜News Letter

1. How Problem to be Solved by Invention should be Determined and Considered in Examining Inventive Step?

NipponSteel&Sumikin Rolls Co., Ltd. v. Fujico Co., Ltd., Case No. 2014 (Gyo-Ke) 10225 (Decision rendered on June 9, 2015)

The Patentee, Fujico, obtained a patent relating to a composite roll for hot rolling in 2012, against which NipponSteel&Sumikin Rolls (NSSR) filed an invalidation trial before the JPO in 2013. During the trial proceedings, Fujico demanded a correction of the claims, and the JPO admitted the correction and dismissed the NSSR’s demand in 2014, followed by NSSR’s appeal against the JPO’s decision to the IPHC in 2014.

Corrected Claim 1 of the Fujico's patent at issue claims as follows:
A composite roll used for hot rolling for hot rough rolling of steel bar, wire rod or shaped steel, the composite being manufactured by inserting ... , injecting a molten metal ... , wherein the molten metal consists of 1.0 to 2.0 mass% C, ... , the occupancy of one or more metallic carbides ... is 3.0% or less by area, ... , the hardness of the buildup layer is set to 45 to 70 as Shore hardness, ... for preventing the damage on the surface of the roll ... .

One of the main issues in this case lied in how the problem to be solved by the invention should be determined and considered in examining inventive step. The IPHC answered to the issue as follows.

In the JPO’s decision, the JPO found that the corrected invention of the patent at issue was to make a roll which had been conventionally used for the finishing process of rolling useful for hot rough rolling process of steel bar and the like, which was located upstream of the finishing process, and thermal conditions of which were severer than those of the finishing process, by adjusting the ratio of elemental components, the hardness, and the like, while the invention disclosed in the prior art reference (p.a.r.) related to a composite roll for hot rolling which was used for the finishing process of rolling of steel bar, and the like; and decided (i) that there was a difference (difference 1) between the corrected invention and the invention disclosed in the p.a.r. in the use and the problem to be solved, and (ii) that no specific disclosure that motivated to apply the roll of the invention disclosed in the p.a.r. to the above use or that aimed at solving the above problem was found; and thus concluded that difference 1 was not easily conceivable.

However, having reviewed various p.a.r.s in detail, the IPHC found (i) that the roll of the corrected invention was to use for rough rolling in general and was not limited to one that was used under the particularly severe conditions in the rough rolling process, (ii) that the use of the roll for the rolling and rough rolling processes of steel bar and the like had been well known at the time of filing the application of the patent at issue, and (iii) that the problem to be solved by the corrected invention that was to prevent the damage on the surface of the roll caused from thermal fatigue cracking was within technical common knowledge at the time of filing the application of the patent at issue; and determined that those skilled in the art could have easily conceived difference 1.

Conclusively, the IPHC upheld the NSSR'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 CommentsAs seen from the above decision, if one can show that the problem to be solved by the invention is within common technical knowledge, it can be a basis for denying inventive step even though the problem is not explicitly stated in the prior art reference disclosing the cited invention.

In June 2015, the IPHC handed down 18 decisions including the above case on patent, and overturned previous decisions in 6 cases.

In June 2015, the IPHC handed down 5 decisions on trademark and maintained all of the previous decisions.