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January 28, 2004 1
AIPLA Conference January 2004AIPLA Conference January 2004
New Defensive Tools New Defensive Tools For Japanese Patent For Japanese Patent
LitigationLitigationYoshikazu IwaseYoshikazu Iwase
[email protected]@andersonmori.com
Anderson Mori, Tokyo JapanAnderson Mori, Tokyo Japan(Currently Training at Finnegan, Henderson,(Currently Training at Finnegan, Henderson,
Farabow, Garrett & Dunner, L.L.P.)Farabow, Garrett & Dunner, L.L.P.)
January 28, 2004 2
January 28, 2004 3
January 28, 2004 4
Traditional Defensive Tools Traditional Defensive Tools for Japanese Patent Litigationfor Japanese Patent Litigation
Non-Infringement as Denial of Cause of Non-Infringement as Denial of Cause of ActionAction
Invalidity of Patent as DefenseInvalidity of Patent as Defense Prior Use as DefensePrior Use as Defense Declaratory Judgment Action for Non-Declaratory Judgment Action for Non-
Infringement Infringement
Counterclaim for DefamationCounterclaim for Defamation Counterclaim for Groundless SuitCounterclaim for Groundless Suit
Invalidity Action Before the JPOInvalidity Action Before the JPO Opposition – abolished as of January 1, 2004Opposition – abolished as of January 1, 2004
January 28, 2004 5
New Defensive ToolsNew Defensive Toolsfor Japanese Patent Litigationfor Japanese Patent Litigation
1.1. Declaratory Judgment Action Declaratory Judgment Action for Non-Infringement Based on for Non-Infringement Based on Invalidity of PatentInvalidity of Patent
2.2. [Counter] Claim for Injunction [Counter] Claim for Injunction Based on Antitrust Violation Based on Antitrust Violation
3.3. Failure to Disclose Prior-Art Failure to Disclose Prior-Art Information as Abuse of RightsInformation as Abuse of Rights
January 28, 2004 6
Declaratory Judgment Declaratory Judgment Action for Non-Action for Non-Infringement Based on Infringement Based on Invalidity of PatentInvalidity of Patent
January 28, 2004 7
Fujitsu v. TI Fujitsu v. TI CaseCase
If a court finds a clear reason for If a court finds a clear reason for invalidation of a patent, a claim for invalidation of a patent, a claim for injunction, damages, or other claims injunction, damages, or other claims based on such patent are not allowed based on such patent are not allowed as abuse of rights. as abuse of rights.
Fujitsu v. TIFujitsu v. TI, the Supreme Court (April 11, , the Supreme Court (April 11, 2000)2000)
The JPO still retains the ultimate The JPO still retains the ultimate power to decide the validity of patents.power to decide the validity of patents. Courts cannot invalidate patents.Courts cannot invalidate patents.
January 28, 2004 8
Post Post Fujitsu v. TI Fujitsu v. TI
A few lower court cases have A few lower court cases have dismissed patentee’s claims for dismissed patentee’s claims for injunction or damages due to injunction or damages due to invalidity of the patent without invalidity of the patent without adjudicating the issue of adjudicating the issue of infringement.infringement.E.g., The Tokyo District Court (May 30, E.g., The Tokyo District Court (May 30,
2002)2002)
January 28, 2004 9
Strengths of the DJ ActionStrengths of the DJ ActionCompare to Invalidity Action Compare to Invalidity Action
Before the JPOBefore the JPO This DJ Action might be faster than invalidity actiThis DJ Action might be faster than invalidity acti
on before the JPO. (The JPO’s average deliberation before the JPO. (The JPO’s average deliberation period is 15 months.)on period is 15 months.) Especially, if a potential infringer admits the infringemEspecially, if a potential infringer admits the infringem
ent of its product, the process before the district court ent of its product, the process before the district court will probably be faster.will probably be faster.
A potential infringer can force the patentee to hirA potential infringer can force the patentee to hire an attorney to attend at least a few hearings at e an attorney to attend at least a few hearings at the Tokyo or Osaka District Court.the Tokyo or Osaka District Court.
January 28, 2004 10
Proposed Draft ComplaintProposed Draft Complaintfor Filing with Japanese Courtsfor Filing with Japanese Courts
Plaintiff is planning to make and sell a Plaintiff is planning to make and sell a product.product.
This product falls under the technical scope This product falls under the technical scope of a Defendant’s patent (admission of of a Defendant’s patent (admission of infringement).infringement).
However, the Defendant’s patent is clearly However, the Defendant’s patent is clearly invalid.invalid.
Therefore, a claim for injunction, damages, Therefore, a claim for injunction, damages, or other claims based on such patent are not or other claims based on such patent are not allowed as abuse of rights.allowed as abuse of rights.
For the foregoing reasons, Plaintiff requests For the foregoing reasons, Plaintiff requests that the Court declare that Defendant’s that the Court declare that Defendant’s claims do not exist.claims do not exist.
January 28, 2004 11
WeaknessesWeaknesses If the potential infringer does not If the potential infringer does not
admit infringement, the judge will admit infringement, the judge will probably examine the issue of probably examine the issue of infringement first. infringement first.
A request for interlocutory decision – A request for interlocutory decision – probably denied.probably denied.
If the potential infringer does admit If the potential infringer does admit infringement and loses the case, it infringement and loses the case, it will have to give up its product will have to give up its product sooner than if it had not filed this DJ sooner than if it had not filed this DJ action.action.
There may be an adverse inference even There may be an adverse inference even to its future designing-around product.to its future designing-around product.
January 28, 2004 12
On-Going Discussion on the On-Going Discussion on the Standard for Deciding Validity of Standard for Deciding Validity of
Patents at the CourtsPatents at the Courts
A proposal to loosen the requirement A proposal to loosen the requirement for dismissing claims due to for dismissing claims due to invalidity of patents at the courts is invalidity of patents at the courts is under discussion:under discussion: The courts can dismiss patentee’s claim The courts can dismiss patentee’s claim
or invalidate a patent, where there is or invalidate a patent, where there is simply a reason for invalidation – need simply a reason for invalidation – need not be “clear.” not be “clear.”
Discussed on December 15, 2003 Discussed on December 15, 2003 at the Consultation Group on Intellectual Property Litigation at the Consultation Group on Intellectual Property Litigation
of the Office for Promotion of the Justice System Reformof the Office for Promotion of the Justice System Reform
January 28, 2004 13
[Counter] Claim for [Counter] Claim for Injunction Based on Injunction Based on Antitrust ViolationAntitrust Violation
January 28, 2004 14
The Amendment to the The Amendment to the Antimonopoly Act in 2000Antimonopoly Act in 2000
Private parties became able Private parties became able to file a suit seeking an to file a suit seeking an injunction of certain kinds of injunction of certain kinds of antitrust activities in 2000.antitrust activities in 2000.
January 28, 2004 15
The Amendment to the The Amendment to the Antimonopoly Act in 2000 Antimonopoly Act in 2000
(Cont’d)(Cont’d) Sec.24 [Injunction rights] of the Sec.24 [Injunction rights] of the
Antimonopoly ActAntimonopoly Act ““A person, whose interests are infringed or A person, whose interests are infringed or
likely to be infringed by act in violation of likely to be infringed by act in violation of Section 8(1)(v) or Section 8(1)(v) or Section 19Section 19;;
and thereby suffering or likely to suffer and thereby suffering or likely to suffer serious damages; serious damages;
is entitled to demand the suspension or is entitled to demand the suspension or prevention of such infringements from an prevention of such infringements from an entrepreneur or a trade association who entrepreneur or a trade association who infringes or is likely to infringe such infringes or is likely to infringe such interests.”interests.”
January 28, 2004 16
Enforcement against Antitrust ViolationEnforcement against Antitrust Violation(Excerpted from Tadashi Shiraishi, “Introduction to Antitrust Law of Japan,” (Excerpted from Tadashi Shiraishi, “Introduction to Antitrust Law of Japan,”
page 30, with some omission)page 30, with some omission)
Order Order to to eliminaeliminate te violatinviolating actg act
Order to Order to pay a pay a SurcharSurchargege
Civil suitCivil suit CriminCriminal al penaltypenaltyDamagDamag
esesInjunctioInjunctionn
Private Private MonopolizatiMonopolization on (Section (Section 3, the 3, the former part)former part)
OKOK NoNo OKOK NoNo OKOK
UnreasonablUnreasonable restraint of e restraint of trade trade (Section 3, (Section 3, the latter the latter part, part, “Cartel”)“Cartel”)
OKOK OKOK OKOK NoNo OKOK
Unfair Trade Unfair Trade Practice Practice (Section 19) (Section 19)
OKOK NoNo OKOK OK OK (Section (Section 24)24)
NoNo
January 28, 2004 17
““Unfair Trade Practices”Unfair Trade Practices”
Section 2, Paragraph (9) of the Antimonopoly Section 2, Paragraph (9) of the Antimonopoly ActAct ““Unfair Trade Practices” Unfair Trade Practices” means any act …means any act …
which tends to impede fair competition and which tends to impede fair competition and which is designated by the Fair Trade which is designated by the Fair Trade Commission.Commission.
Designation of Unfair Trade Practices (June 18, 1982)Designation of Unfair Trade Practices (June 18, 1982) 10. 10. Tie-in ArrangementTie-in Arrangement: Unjustly causing the other party to purchase : Unjustly causing the other party to purchase
a commodity or service from oneself or from an entrepreneur a commodity or service from oneself or from an entrepreneur designated by oneself by tying it to the supply of another commodity designated by oneself by tying it to the supply of another commodity or service, or otherwise coercing the party to deal with oneself or or service, or otherwise coercing the party to deal with oneself or with an entrepreneur designated by oneself. with an entrepreneur designated by oneself.
13. 13. Dealing on Restrictive TermsDealing on Restrictive Terms: Other than any act coming under : Other than any act coming under the preceding two paragraphs, dealing with the other party on the preceding two paragraphs, dealing with the other party on conditions that unjustly restrict any transaction between the party conditions that unjustly restrict any transaction between the party and his other transacting party or other business activities of the and his other transacting party or other business activities of the party.party.
January 28, 2004 18
Outcome…Outcome…
No Injunction granted as of the end of No Injunction granted as of the end of 2002.2002.
No case involving patent infringement No case involving patent infringement as of the end of 2002.as of the end of 2002.
Cf. The number of non-patent cases as Cf. The number of non-patent cases as of the end of 2002:of the end of 2002: 3 dismissal decisions;3 dismissal decisions; 1 settlement; and 1 settlement; and 14 pending cases.14 pending cases.
January 28, 2004 19
Prospective Situations Where Prospective Situations Where Defendant Can Succeed in This Defendant Can Succeed in This
[Counter] Claim[Counter] Claim
Plaintiff granted in the past or Plaintiff granted in the past or grants a restrictive license to you.grants a restrictive license to you.
Plaintiff, forming a patent pool, Plaintiff, forming a patent pool, refused to grant a license to you.refused to grant a license to you.
You should check the Guidelines for You should check the Guidelines for License Agreement published at:License Agreement published at: http://www2.jftc.go.jp/e-page/guideli/http://www2.jftc.go.jp/e-page/guideli/
patent99.htmpatent99.htm
January 28, 2004 20
Strategic Analysis Compare to Strategic Analysis Compare to File a Request for File a Request for
Investigation with the JFTCInvestigation with the JFTC Strengths:Strengths:
Need not wait for the JFTC’s action.Need not wait for the JFTC’s action. Defendant (a potential infringer) can give Plaintiff (a patDefendant (a potential infringer) can give Plaintiff (a pat
entee) a visible pressure.entee) a visible pressure. Defendant may force Plaintiff to hire antitrust attorneys.Defendant may force Plaintiff to hire antitrust attorneys. Defendant may choose preferable forum to file a [countDefendant may choose preferable forum to file a [count
er] claim.er] claim.
Weaknesses:Weaknesses: Must prove “serious injury.”Must prove “serious injury.” No case granting injunction so far.No case granting injunction so far.
January 28, 2004 21
Failure to Disclose Failure to Disclose Prior-Art Information as Prior-Art Information as Abuse of RightsAbuse of Rights
January 28, 2004 22
Introduction of Disclosure Introduction of Disclosure Requirement Effective as of Requirement Effective as of
January 1, 2002January 1, 2002 Patent Applicant’s Obligation to Disclose Patent Applicant’s Obligation to Disclose
Information on Prior ArtInformation on Prior Art Section 36, Paragraph 4 of the Patent Section 36, Paragraph 4 of the Patent
Law:Law: ““The detailed description of the invention … shall The detailed description of the invention … shall
comply with the followingcomply with the following (ii) Where a person desiring a patent knows, at the (ii) Where a person desiring a patent knows, at the
time of filing a patent application, any inventions time of filing a patent application, any inventions publicly known through documents … which are publicly known through documents … which are related to the invention, the detailed description of related to the invention, the detailed description of the invention shall contain the source of the invention shall contain the source of information on the invention publicly known information on the invention publicly known through a document such as the title of a through a document such as the title of a publication in which the invention publicly known publication in which the invention publicly known through a document is described.”through a document is described.”
January 28, 2004 23
Introduction of Disclosure Introduction of Disclosure Requirement Effective as of Requirement Effective as of
January 1, 2002 (Cont’d)January 1, 2002 (Cont’d)
Violation may lead to rejectionViolation may lead to rejectionSection 49(v) of the Patent LawSection 49(v) of the Patent Law
However, once a patent is issued, However, once a patent is issued, it does not constitute a reason it does not constitute a reason for invalidation. for invalidation.
January 28, 2004 24
Introduction of Disclosure Introduction of Disclosure Requirement Effective as of Requirement Effective as of
January 1, 2002 (Cont’d)January 1, 2002 (Cont’d) Legislatures’ explanation:Legislatures’ explanation: “…“…This system is primarily designed to This system is primarily designed to
achieve a prompt examination process. achieve a prompt examination process. Failure of a patent application to Failure of a patent application to satisfy the requirement does not mean satisfy the requirement does not mean that the invention described in the that the invention described in the application is application is substantially defectivesubstantially defective, , and even if the invention is patented and even if the invention is patented as it is, it would as it is, it would not directly harm the not directly harm the benefit of any third partybenefit of any third party seriously.” seriously.”
January 28, 2004 25
Can the Violation of Section Can the Violation of Section 36(4)(ii) Be a Ground for 36(4)(ii) Be a Ground for
Abuse of Rights?Abuse of Rights? Abuse of Rights (Article 1, Paragraph 3 of the Civil Abuse of Rights (Article 1, Paragraph 3 of the Civil
Code)Code) Determined under overall consideration of parties’ intent Determined under overall consideration of parties’ intent
and objective circumstances. Patentee’s malicious intenand objective circumstances. Patentee’s malicious intent helps courts find the plaintiff’s claim abuse of rights.t helps courts find the plaintiff’s claim abuse of rights.
Cf. Inequitable Conduct in the U.S.Cf. Inequitable Conduct in the U.S. Materiality plus Intent to Deceive the PTOMateriality plus Intent to Deceive the PTO ““The more material the omission or the misrepresentatioThe more material the omission or the misrepresentatio
n, the lower the level of intent required to establish inequin, the lower the level of intent required to establish inequitable conduct, and vice versa.”table conduct, and vice versa.”
CritikonCritikon, 120 F.3d at 1256 (Fed. Cir. 1997), 120 F.3d at 1256 (Fed. Cir. 1997)
January 28, 2004 26
Can the Violation of Section Can the Violation of Section 36(4)(ii) Be a Ground for 36(4)(ii) Be a Ground for Abuse of Rights? (Cont’d)Abuse of Rights? (Cont’d)
Example of Defendant’s Arguments:Example of Defendant’s Arguments: There is a clear reason for invalidation There is a clear reason for invalidation
of the patent due to lack of inventive of the patent due to lack of inventive step under Section 29, Paragraph 2, and step under Section 29, Paragraph 2, and thus patentee’s claim is not allowed as thus patentee’s claim is not allowed as abuse of rights.abuse of rights.
Even if the reason for invalidation of the Even if the reason for invalidation of the patent is not clear enough, taking into patent is not clear enough, taking into account of the patentee’s intentional account of the patentee’s intentional concealment of the primary prior art in concealment of the primary prior art in violation of Section 36, Paragraph 4, violation of Section 36, Paragraph 4, item (ii), patentee’s claim is not allowed item (ii), patentee’s claim is not allowed as abuse of rights.as abuse of rights.
January 28, 2004 27
Can the Violation of Section Can the Violation of Section 36(4)(ii) Be a Ground for 36(4)(ii) Be a Ground for Abuse of Rights? (Cont’d)Abuse of Rights? (Cont’d)
Objective CircumstancesObjective Circumstances (Materiality, e.g. (Materiality, e.g. Similarity of prior art to the patented invention)Similarity of prior art to the patented invention)
StrongStrong
MediocreMediocre
[Abuse of Rights][Abuse of Rights] Malicious IntentMalicious Intent (Intent (Intent to Deceive)to Deceive)
There is a clear reason for invalidation.
Not Clear EnoughNot Clear EnoughSupplemented Supplemented
by Intent?by Intent?
January 28, 2004 28
A Useful District Court CaseA Useful District Court Case
Facts: A utility model holder made its Facts: A utility model holder made its invention publicly known by invention publicly known by distributing a product specification distributing a product specification disclosing the invention before filing disclosing the invention before filing an application. an application.
Decision:Decision: There is a reason for invalidation There is a reason for invalidation
regarding the utility model.regarding the utility model. This reason was caused by the act of This reason was caused by the act of
Plaintiff itself, and Plaintiff knew this fact Plaintiff itself, and Plaintiff knew this fact at the time of filing the application.at the time of filing the application.
Therefore, a claim for injunction and Therefore, a claim for injunction and damages is not allowed as abuse of rights.damages is not allowed as abuse of rights.
The Tokyo District Court (February 29, 2000) The Tokyo District Court (February 29, 2000)
January 28, 2004 29
AIPLA Conference January 2004AIPLA Conference January 2004
New Defensive Tools New Defensive Tools For Japanese Patent For Japanese Patent
LitigationLitigationYoshikazu IwaseYoshikazu Iwase
[email protected]@andersonmori.com
Anderson Mori, Tokyo JapanAnderson Mori, Tokyo Japan(Currently Training at Finnegan, Henderson,(Currently Training at Finnegan, Henderson,
Farabow, Garrett & Dunner, L.L.P.)Farabow, Garrett & Dunner, L.L.P.)
