May, 2019｜News Letter

1. How should Claim which may Encompass Conventional Art be Construed?

BRAHMS A.G. v. Radiometer Co., Ltd., Case No. 2019 (Ne) 10006 (Decision rendered on May 29, 2019)

The Patentee, BRAHMS, obtained a patent relating to a method for detecting sepsis or sepsis-like systemic infections in 2013, and filed an infringement litigation on the basis of the patent against Radiometer in 2017. The Tokyo district court, as a first instance, decided that the Radiometer’s method did not fall into the scope of the patent, and thus it did not infringe the patent. BRAHMS appealed against the Tokyo district decision with the IPHC in 2019.

The sole granted claim of the BRAHMS’s patent at issue claims as follows:
A method for detecting sepsis or sepsis-like systemic infections, comprising measuring procalcitonin 3-116 in a serum of a patient.

One of the main issues in this case related to how a claim which may encompass a conventional art should be construed. The IPHC answered to the issue as follows:

The IPHC first reviewed the specification of the patent at issue in detail, and found that the starting point of the invention at issue was a discovery that the procalcitonin detectable in relatively high concentration in a serum of a patient with sepsis was not procalcitonin 1-116, but procalcitonin 3-116, and the term “measuring” generally meant to determine various quantities such as length, weight, velocity and the like by using an instrument or a piece of equipment, and thus the phrase “measuring procalcitonin 3-116 in a serum of a patient” should be construed to clarify the amount of procalcitonin 3-116 in a serum of a patient.
On the basis of the above finding, the IPHC decided that the Radiometer’s method measured a concentration of procalcitonins without making a distinction between procalcitonin 1-116 and procalcitonin 3-116 in a sample of a patient, and did not clarify the amount of procalcitonin 3-116, and thus Radiometer’s method did not fall within the scope of the patent at issue.

In this connection, during the court proceedings, BRAHMS asserted that it was not essential to measure procalcitonin 3-116 apart from procalcitonin 1-116 on the grounds that it was obvious for those skilled in the art that procalcitonin 3-116 could be measured with an accuracy necessary for detecting sepsis even by measuring procalcitonins in general without making a distinction between procalcitonin 1-116 and procalcitonin 3-116 in a serum of a patient.
However, the IPHC rejected the BRAHMS’s assertion by pointing out as follows:
Measuring procalcitonin 3-116 without making a distinction between procalcitonin 3-116 and procalcitonin 1-116 in a serum of a patient had the same meaning of measuring procalcitonins in a serum of the patient, which fell within conventional art. Accordingly, the phrase “measuring procalcitonin 3-116 in a serum of a patient” could not be construed so as to encompass such conventional art.

Conclusively, the IPHC dismissed the BRAHMS’s appeal and upheld the JPO’s decision.

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

K&P’s Comments As shown in the above decision, the IPHC confirms that a claim construction encompassing conventional art cannot be accepted, which follows the previous case laws in Japan.

(by Katsumasa OSAKI, Patent Attorney)

In May, 2019, the IPHC handed down 5 decisions including the above case on patent, and maintained all the previous decisions.

In May, 2019, the IPHC handed down 2 decisions on trademark, and overturned the previous decision in 1 case.

In May, 2019, the IPHC handed down no decisions on industrial design.