Date of
Judgment: January
27, 2009
Issuing
Authority: Supreme
Court
Level of
the Issuing Authority: Final Instance
Type of
Procedure: Judicial (Civin( �b>
Subject
Matter: Patent (Inventions)
Main
text of the judgment (decision):
1.The decision in prior instance is
quashed, and the decision in first instance is revoked.
2.This case is remanded to the Tokyo District
Court.
Reasons:
Reasons
for Appeal argued by the appeal counsels, ONO Seiji, et al.
1. The point at issue in this case is whether or
not it is allowable to file a petition for a protective order under Article
105-4, paragraph (1) of the Patent Act in a case pertaining to a petition for
an order of provisional disposition to seek an injunction against the
infringement of a patent right, etc.
2. According to the case records, the outline of
the case is as follows.
(1) A filed a petition for an order of
provisional disposition to seek an injunction, etc. against the import and sale
of LCD television sets and LCD monitors and other acts conducted by the
appellant, alleging that such acts infringe A’s patent right (the case
pertaining to this petition shall hereinafter be referred to as the
“Provisional Disposition Case”). In the Provisional Disposition Case, a hearing
was held on the date on which the appellant, who is the obligor, was able to
attend.
(2) The appellant filed a petition for a
protective order under Article 105-4, paragraph (1) of the Patent Act against
the appellees, who were A’s agents or assistants in court, in order to protect
the appellant’s trade secrets, alleging that these trade secrets were stated in
the brief and other documents that the appellant planned to submit in the
Provisional Disposition Case (this petition for a protective order shall
hereinafter be referred to as the “Petition”).
3. The court of prior instance dismissed the
Petition without prejudice, holding that since “litigation concerning the
infringement of a patent right or exclusive license” prescribed in the main
clause of the principal part of Article 105-4, paragraph (1) of the Patent Act
does not include a provisional disposition case to seek an injunction against
the infringement of a patent right, it is unallowable to file a petition for a
protective order in the Provisional Disposition Case.
4. However, we cannot affirm the determination
of the court of prior instance mentioned above, on the following grounds.
In litigation concerning the infringement of a
patent right or exclusive license, if any trade secrets are included in the
brief or documentary evidence that are planned to be submitted to the court, it
could happen that the party who holds these trade secrets, for fear that the
trade secrets will be used by the other party for purposes other than the
purpose of conducting the suit or be disclosed to a third party, which would
cause hindrance to the party’s business activities involving the trade secrets,
refrains from showing those trade secrets at court and ends in failing to make
sufficient allegations and proof. It can be construed that in order to avoid
such situation, the Patent Act provides for the protective order system
(Article 105-4 to Article 105-6, Article 200-2, and Article 201 of said Act)
and prohibits, by a protective order with criminal punishment, such trade
secrets from being used for purposes other than the purpose of conducting the
suit or disclosed to a party other than the one who has received the protective
order.
A provisional disposition case to seek an
injunction against the infringement of a patent right or exclusive license
addresses a specific issue, i.e. whether or not an order of provisional
disposition is necessary, which is not disputed in a case on the merits.
However, since other issues are addressed both in the provisional disposition
case and the case on the merits, there is no difference between these cases in
that the party who holds the trade secrets is likely to face the
above-mentioned situation, and the protective order system cannot be deemed to
accept this. Even if we construe that a petition for a protective order may be
filed in such provisional disposition case, this construction cannot be judged
to be contrary to the features of a provisional disposition case, such as that
the case should be handled promptly.
Under the Patent Act, the term “litigation” is
not only used to refer to a case on the merits but it also includes a civil
preservation case in some provisions (Article 54, paragraph (2) and Article
168, paragraph (2) of said Act). In light of the purpose of the protective
order system described above, it is appropriate to construe that a provisional
disposition case to seek an injunction against the infringement of a patent
right or exclusive license falls within the category of “litigation concerning
the infringement of a patent right or exclusive license” prescribed in the main
clause of the principal part of Article 105-4, paragraph (1) of the Patent Act,
and it is allowable to file a petition for a protective order in such
provisional disposition case.
5. The determination of the court of prior
instance that goes against this reasoning contains a violation of laws and
regulations which apparently affects the judgment. The appeal counsels’
arguments are well-grounded, and the decision in prior instance should
inevitably be quashed. We have decided to revoke the decision in first instance
and remand the case to the court of first instance for further examination.
Therefore, the decision has been rendered in the
form of the main text by the unanimous consent of the Justices.
(This translation is
provisional and subject to revision.)