February, 2017｜News Letter

1. To What Extent Disclosure is Required for Acknowledging Disincentive Factor in Examining Inventive Step?

Honeywell International, Inc. v. Daikin Industries, Ltd., Case No. 2016 (Gyo-Ke) 10032 (Decision rendered on February 22, 2017)

The Patentee, Honeywell, obtained a patent relating to a composition comprising a fluorine-substituted olefin in 2010. Against the Honeywell’s patent, Daikin filed an invalidation trial with the JPO in 2011. During the trial proceedings, Honeywell demanded a correction of claims, and the JPO admitted the correction, but rendered a decision of invalidation in 2015. Honeywell filed an appeal against the JPO's decision to the IPHC in 2016.

Corrected Claim 1 of the Honeywell’s patent at issue claims as follows:
Use of a composition comprising 2,3,3,3-tetrafluoropropene (HFO-1234yf) in an automobile air conditioning system as a refrigerant.

One of the main issues in this case related to the extent of the disclosure required for acknowledging a disincentive factor in examining inventive step. The IPHC answered to the issue as follows:

First, having reviewed the corrected claim of the patent at issue and a prior art reference (p.a.r.) 1, the IPHC found (i) that the only difference between the two was that the use of the former was “an automobile air conditioning system”, while the latter was “a heat pump”, and (ii) that the “heat pump” disclosed in p.a.r. 1 included not only a heat pump for heating, but also a heat pump for cooling, or a refrigerator, on the basis of the disclosures of p.a.r. 1 and common technical knowledge; and decided that those skilled in the art could have easily conceive of using HFO-1234yf as a heat medium for an automobile air conditioning system.

In this connection, during the court proceedings, Honeywell asserted that there was a disincentive factor against using HFO-1234yf for an automobile air conditioning system on the grounds that those skilled in the art would have expected that fluorinated olefins, which were classified as unsaturated compounds, had higher reactivity, lower stability and/or higher toxicity, compared to saturated compounds, at the time of the priority date of the patent at issue. However, the IPHC rejected the Honeywell's assertion by pointing out as follows:

(1) Exhibit A22 submitted by Honeywell disclosed that all the refrigerants of fluorine-containing unsaturated compounds listed in the table were reactive; and Exhibit A23 submitted by Honeywell disclosed (i) that compounds having double-bonded carbons were problematic as refrigerants, and (ii) that the stability of these compounds decreased as fluorine atoms were added to the molecule. However, Exhibit A22 did not disclose that whole of fluorinated olefins including unlisted compound (including HFO-1234yf) could not be used as refrigerants, and Exhibit A23 did not disclose how many fluorine atoms were added to the molecule in order to decrease the stability of the molecule to the extent that it could not be used as a refrigerant. Accordingly, it was not recognized that Exhibits A22 and A23 showed that partially fluorinated olefins, such as HFO-1234yf, had low stability unusable as a refrigerant for an automobile air conditioning system, irrespective of their specific structures.

(2) Exhibits A20, A21 and A23 submitted by Honeywell disclosed that some olefinic impurities contained in saturated fluorocarbons and fluorohydrocarbons had toxicity, that compounds having double-bonded carbons acquired higher toxicity by being fully fluorinated, and the like. However, it was not recognized that these Exhibits showed that fluorinated olefins which were not impurities contained in saturated fluorocarbons and which were not fully fluorinated impurities, such as HFO-1234yf, had toxicity, irrespective of their specific structures.

(3) P.a.r. 1 disclosed that “it was confirmed that no problem was found in the general properties required as a heat medium for use in a heat pump”, and that “(i) a cycle property equal to or more than that of a heat pump conventionally using R-12, R-22 or R-502 as heat mediums is obtained. (ii) there is an advantage in equipment design due to excellent properties as a heat medium”. Therefore, it could not be recognized that there was a disincentive factor that those skilled in the art would have been concerned about the reactivity and the toxicity of HFO-1234yf to abandon the use of HFO-1234yf as a refrigerant for an automobile air conditioning system in spite of the disclosures in p.a.r. 1.

Conclusively, the IPHC dismissed the Honeywell’s appeal and upheld 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 Comments This 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 preferable to show some directly related knowledge to the claimed specific feature(s) more than general or conceptual knowledge.

In February 2017, the IPHC handed down 18 decisions including the above case on patent, and overturned the previous decisions in 4 cases.

In February 2017, the IPHC handed down 2 decisions on trademark, and maintained all of the previous decisions.

In February 2017, the IPHC handed down no decision on industrial design.