June, 2016｜News Letter

1. May Claimed Definitions be Limitedly Construed on the basis of Features Disclosed in the Specification but not in Claims in Examining Inventive Step?

NGK Spark Plug Co., Ltd. v. Denso Corporation, Case No. 2015 (Gyo-Ke) 10126 (Decision rendered on June 9, 2016)

The Patentee, Denso, obtained a patent relating to a gas sensor element in 2012. Against the Denso’s patent, NGK filed an invalidation trial with the JPO in 2014. During the trial proceedings, Denso demanded a correction of claims, and the JPO admitted the correction, and dismissed the NGK’s demand in 2015, followed by NGK’s appeal against the JPO’s decision to the IPHC in 2015.

The corrected Claim 1 of the Denso’s patent at issue claims as follows:
A gas sensor element being constituted by providing a pair of electrodes at mutually opposing positions on both sides of a solid electrolyte sheet; wherein the solid electrolyte sheet is constituted by arranging a zirconia filling part which comprises a zirconia material having oxygen ion conductivity in the filling through-hole provided in an alumina sheet consisting of an alumina material having electric insulating properties; the pair of the electrodes is … ; each of a pair of surface alumina layers, comprising an alumina material and which is thinner than the alumina sheet and has electric insulating properties, is laminated on both surfaces of the alumina sheet; each of the pair of the surface alumina layers has a through-hole for opening …; the through-hole for opening is formed to a larger shape than the electrodes, from which the electrodes are exposed; and … .

One of the main issues in this case lied in whether claimed definitions may be limitedly construed on the basis of features disclosed in the specification but not in the claims in examining inventive step. The IPHC answered to the issue as follows:

In the JPO’s decision, the JPO construed the element “the through-hole for opening is formed to a larger shape than the electrodes, from which the electrodes are exposed” (Element A) to mean that the through-hole for opening was formed to a larger shape than the electrodes to the extent that the side surface of the electrodes was exposed; while the JPO found that the surface alumina layer of the gas sensor element obtained by applying the technique disclosed in prior art reference (p.a.r.) 3 to the invention disclosed in p.a.r. 2 was formed so as to adjoin the side surface of the electrodes, which did not satisfy the Element A.
On the basis of the above construction and finding, the JPO decided that those skilled in the art could not have easily conceived of the invention according to Claim 1 of the patent at issue on the basis of the invention disclosed in p.a.r. 2 and the technique disclosed in p.a.r. 3.

However, having reviewed the definitions of Claim 1 and the descriptions of the specification of the patent at issue in detail, the IPHC found (i) that Claim 1 just defined that “the through-hole for opening is formed to a larger shape than the electrodes”, and had no definition meaning that “a larger shape than the electrodes” must have the size of the extent that the side surface of the electrodes was exposed, and (ii) that no specific disclosure to support the limited construction could be found in the description of the specification.
On the basis of the above findings, the IPHC decided that the surface alumina layer of the gas sensor element obtained by applying the technique disclosed in p.a.r. 3 to the invention disclosed in p.a.r. 2 satisfied the Element A, thus those skilled in the art could have easily conceived of the invention according to Claim 1 of the patent at issue on the basis of the invention disclosed in p.a.r. 2 and the technique disclosed in p.a.r. 3.

Conclusively, the IPHC upheld the NGK’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 final and binding.

K&P’s CommentsRegarding the finding of the claimed invention in examining novelty and inventive step, we have a leading case law [Case No. 1987 (Gyo-Tsu) 3] handed down on March 8, 1991 by the Japanese Supreme Court. The case law rules that the findings of the claimed invention should be made on the basis of the recitation of the claim in examining novelty and inventive step unless the circumstances are exceptional, and the description of the specification may be made allowance for only when the circumstances are exceptional. Accordingly, it is very important that any technical feature on the basis of which novelty and/or inventive step is argued should be clearly recited in the claims. Otherwise, even if such a feature is described in the specification, it is unlikely that the argument would be accepted.

In June 2016, the IPHC handed down 10 decisions including the above case on patent, and overturned the previous decisions in 2 cases.

In June 2016, the IPHC handed down 3 decisions on trademark, and overturned the previous decisions in 1 case.

Additionally, we have now confirmed that the appeals to the Supreme Court against the decisions on Case No. 2013 (Gyo-Ke) 10311 (Taiho Pharmaceutical Co., Ltd. v. Anticancer Incorporated), which we introduced in the K&P’s IPHC Decision Report in February 2015, and on Case No. 2014 (Gyo-Ke) 10201 (JFE Steel Corporation v. Nippon Steel & Sumitomo Metal Corporation), which we introduced in the K&P’s IPHC Decision Report in December 2015, were dismissed on June 7, 2016, and on June 28, 2016, respectively.