July, 2016｜News Letter

1. To What Degree of Disclosure is Required in Prior Art Reference for Accepting Reproductive Experiment as Basis for Destroying Novelty?

Teijin Limited v. Toray Industries Inc., Case No. 2015 (Gyo-Ke) 10099 (Decision rendered on July 19, 2016)

The Patentee, Toray, obtained a patent relating to a biaxially-oriented white polyester film in 2004. Against the Toray’s patent, Teijin filed an invalidation trial with the JPO in 2012. During the trial proceedings, Toray demanded a correction of claims, and the JPO admitted the correction but rendered a decision of invalidation (the JPO’s 1st decision) in 2013 on the grounds of lacking novelty, followed by the Toray's appeal against the JPO's 1st decision to the IPHC in 2013. The IPHC made the 1st decision to overturn the JPO’s 1st decision and remanded the case to the JPO in 2014. The JPO further examined the case, and dismissed the Teijin’s demand (the JPO’s 2nd decision), followed by the Teijin’s appeal against the JPO’s 2nd decision to the IPHC in 2015.
(Regarding the IPHC’s 1st decision, we introduced it in the K&P’s IPHC Decision Report in October 2014.)

The corrected Claim 1 of the Toray’s patent at issue claims as follows:
“A biaxially-oriented white polyester film made from a polyester composition containing 5% by weight or more of inorganic particles, wherein a concentration of carboxyl terminal groups of the polyester composition is 35 equivalents/106 g-polyester or less, and a temperature-rise crystallization temperature (Tcc) of the polyester composition and a glass transition temperature (Tg) thereof satisfy the following formula:
 30 ≤ Tcc-Tg ≤ 60”.

One of the main issues in this case lied in to what degree of disclosure was required in a prior art reference for accepting a reproductive experiment made on the basis of the prior art reference as a basis for destroying novelty. The IPHC answered to the issue as follows:

Teijin made a reproductive experiment of working example 4 in prior art reference (p.a.r.) 5 in which the same starting monomers as working example 4 were used and the polymerization conditions were adjusted so that the concentration of carboxyl end group and the intrinsic viscosity become the same level as those disclosed in working example 4. On the basis of the reproductive experiment, Teijin argued that the experiment showed that working example 4 satisfied the formula “30 ≤ Tcc-Tg ≤ 60”, thus the JPO was incorrect in deciding that the corrected invention of Claim 1 at issue had novelty over p.a.r. 5.
However, having reviewed the disclosure of working example 4 in p.a.r. 5 in detail, the IPHC found that p.a.r. 5 did not disclose the specific polymerization conditions, such as temperature, reaction time, and the like. Further, the IPHC found that it was common technical knowledge that even though the starting monomers were the same, the specific composition of the polymer obtained from the same monomers varied depending on the specific polymerization conditions, and accordingly, various physical properties of the polymer also changed.
On the basis of the above findings, the IPHC decided that it was unknown if the specific composition of the polymer was accurately reproduced, even if the polymerization conditions were adjusted so that some physical properties, such as the concentration of carboxyl end group and the intrinsic viscosity, became the same level, and therefore that it was also unknown if other physical properties which could vary depending on the composition of the polymer like “Tcc-Tg” were reproduced.

Conclusively, the IPHC dismissed the Teijin’s appeal and maintained the JPO’s 2nd decision.

An appeal to the Supreme Court was filed against this decision, and thus the IPHC’s 2nd decision is NOT final and binding.

K&P’s CommentsFor destroying novelty of a composition claim including a feature defined by any parameter and the like on the basis of a reproductive experiment of a working example in a prior art reference, this decision teaches that it would be desirable to choose a working example where the experimental conditions which would influence the claimed parameter are specified.

In July 2016, the IPHC handed down 12 decisions including the above case on patent, and overturned the previous decisions in 1 case.

In July 2016, the IPHC handed down 2 decisions on trademark, and maintained all of the previous decisions.