October, 2020｜News Letter

1. How should Disincentive Factor be Considered for Examining Inventive Step?

Tanaka Kikinzoku Kogyo K.K. v. JX Nippon Mining & Metals Corp.; Case No. 2019 (Gyo-Ke) 10130 (Decision rendered on October 22, 2020)

JX Nippon Mining & Metals (JX), obtained a patent relating to a sintered compact sputtering target in 2012. Against the JX’s patent, Tanaka Kikinzoku Kogyo (TKK) filed an invalidation trial with the JPO in 2014. During the trial procedure, JX demanded a correction of the claims. The JPO admitted the correction, and dismissed the TKK’s demand in 2017. TKK filed an appeal against the JPO's 1st decision to the IPHC in 2017. The IPHC rendered a decision of cancellation of the JPO’s 1st decision in 2018, and then the decision was made final and binding. Thereafter, the JPO resumed the invalidation trial. During the resumed trial procedure, JX further demanded a correction of the claims. The JPO admitted the correction, and dismissed the TKK’s demand in 2019 again. TKK filed an appeal against the JPO’s 2nd decision to the IPHC in 2019.

The corrected Claim 1 of the JX’s patent at issue claims as follows:

1. A sintered compact sputtering target of a ferromagnetic material which is a material having Co and/or Fe as its main component in which particles of a nonmagnetic material consisting of one or more materials selected from the group consisting of an oxide, nitride, carbide, and silicide is dispersed, the sputtering target containing 6 mol % or more of the nonmagnetic material, …, wherein all particles of the nonmagnetic material with a structure observed on the material in its polished face … comprises particles having s shape and size with at least two contact points or intersection points between all imaginary circles having a radius of 2 μm formed around an arbitrary point within the nonmagnetic material particles and the interface of the ferromagnetic material and the nonmagnetic material, ….

One of the main issues in this case related to how a disincentive factor should be considered for examining inventive step. The IPHC answered to the issue as follows:

First, having reviewed the claimed target at issue and the disclosure of the prior art reference (p.a.r.) 1 in detail, the IPHC found two differences between them in (1) that the former defines the content of the nonmagnetic material as “6 mol % or more”, while the latter discloses the content of SiO2 particles (nonmagnetic material) as “3% by weight”, and (2) that the former defines that all particles of the nonmagnetic material with a structure observed on the material in its polished face comprise “particles having s shape and size with at least two contact points or intersection points between all imaginary circles having a radius of 2 μm formed around an arbitrary point within the nonmagnetic material particles and the interface of the ferromagnetic material and the nonmagnetic material” i.e. “Shape 2” particles, while the latter does not apparently clarify whether “Shape 2” particles are contained.

Regarding the difference (2), having reviewed p.a.r. 1 and common technical knowledge on the priority date of the patent at issue in detail, the IPHC acknowledged as below:

P.a.r. 1 mentions that, when a Co-based alloy powder prepared by a rapid solidification method and an oxide are mechanically alloyed, a composite alloy powder having a composition where the oxide is homogeneously dispersed in the Co-based alloy powder can be obtained, and that, when this powder is hot-pressed in a mold, an extremely homogeneous oxide dispersed-type Co-based alloy target can be produced. A sputtering target of p.a.r. 1 is produced by mixing an atomized powder with a SiO2 powder and then mechanically alloying the mixture, followed by hot pressing, and it has a composition of a fine mixture phase where SiO2 is dispersed in a Co-Cr-Ta alloy.

On the other hand, regarding mechanical alloying, on the priority date of the patent at issue, it is considered that those skilled in the art could have understood that mechanical alloying itself would proceed when producing the sputtering target of p.a.r. 1 in three steps, that is, a step where material powder particles are flattened by compression and rolling (first step), a step where kneading is repeated and a lamellar structure develops (second step), and a step where oxide particles are taken in and homogeneous fine dispersion is attained when crystalline grains are refined and dispersed particles such as oxides are contained (third step).

Further, on the basis that mechanical alloying proceeds by following the above-mentioned first step to third step, it is considered that a lamellar structure develops and particles of Shape 2 are present in a step sometime during mechanical alloying, for example, in the second step. TKK’s two exhibits also show the presence of particles of Shape 2 in a step sometime during mechanical alloying.

However, p.a.r. 1 does not describe or suggest the presence of SiO2 particles of Shape 2. Rather, in light of the common technical knowledge regarding mechanical alloying on the priority date of the patent at issue, mechanical alloying is a technique for finely dispersing ceramic particles and the like in a metal matrix. The second step is merely a step along a proceeding process, and it is inferred that mechanical alloying is recognized to be completed at the end of the third step when homogeneous fine dispersion is attained. It cannot be recognized that mechanical alloying is assumed to be terminated at the second step in the middle of the process. P.a.r. 1 does not describe or suggest terminating mechanical alloying in the second step and the like in the middle of the process, and there are no other descriptions suggesting this. Rather, p.a.r. 1 describes obtaining a crystalline structure which is a fine mixture phase where an alloy phase and a ceramic phase are homogeneously dispersed as a means to solve the problem. In order to obtain the fine mixture phase where a ceramic phase is homogeneously dispersed, it is necessary to have the mechanical alloying proceed to the third step where homogeneous fine dispersion is attained, and thus p.a.r. 1 is recognized to impart disincentive to terminate the mechanical alloying in the second step in the middle of the process.

As such, those skilled in the art having regard to the common technical knowledge regarding mechanical alloying, would not have been motivated to terminate the mechanical alloying in the second step and the like in the middle of the process, thereby having the SiO2 particles contain those with shape 2.

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

An appeal to the Supreme Court was filed against this decision, but was dismissed. Accordingly, the decision is made final and binding.

K&P’s Comments This decision provides a positive example of a “disincentive factor”, which is one of the important positive factors for acknowledging inventive step under the Japanese practice. As seen from the above decision, if it is essential to proceed a process to the end for solving the problem of the invention in a prior art reference, a disincentive factor to terminate the process in the middle thereof can be found in the prior art reference even though the claimed product can be objectively prepared in the middle thereof.

(by Katsumasa OSAKI, Patent Attorney)

In October, 2020, the IPHC handed down 6 decisions including the above case on patent, and overturned the previous decision in 2 cases.

In October, 2020, the IPHC handed down 3 decisions on trademark, and maintained all the previous decisions.

In October, 2020, the IPHC handed down no decision on industrial design.