Main
text of the judgment (decision)
The final
appeal shall be dismissed.
The costs for the final appeal shall be borne by
the appellants.
Reasons
Explanations
regarding the reasons for the petition for acceptance of the final appeal filed
by the Attorney for Appellant SHINBO Katsuyoshi and other (except for the
reasons that were eliminated)
1. This lawsuit was initially instituted by the
appellee to demand an injunction against the appellants’ import and sale, etc.
of certain pharmaceutical drugs and to seek an order to discard said drugs. The
appellee is a joint owner of the patent right for a process for manufacturing a
compound containing maxacalcitol, which is one of the active ingredients in a
drug used to treat keratosis. The appellee asserts that the process for
manufacturing pharmaceutical drugs covered by the appellants’ business for
import and sale, etc. is equivalent to the structure stated in the scope of
claims for the appellee’s above-mentioned patent and therefore falls within the
technical scope of the patented invention (cf. a judgment of the Third Petty
Bench of February 24, 1998 in Supreme Court 1994 (O) 1083 (hereinafter referred
to as the “1998 Judgment”), as shown on page 113 of Minshu Vol. 52, No. 1). The
appellants are fighting against the appellee’s demand. While the 1998 Judgment
explains the particular circumstances justifying denial of equivalence (e.g., a
circumstance where certain products or processes manufactured or used by the
party adverse to a patent infringement suit (hereinafter referred to as
“Competing Products or Processes”) were intentionally excluded from the scope
of the patent claims in the course of filing a patent application for the patented
invention), the appellants argue that there are particular circumstances in
relation to the referenced patent and they insist that the manufacturing
process for their above mentioned pharmaceutical drugs is not equivalent to the
structure stated in the scope of the patent claims in question.
2. The facts lawfully ascertained in the second
instance are summarized as follows.
(1) Patent
The appellee is a joint owner of the patent
right for an invention named “intermediates for the synthesis of vitamin D and
steroid derivatives and process for preparation thereof“ (Patent Number
3310301, covering 28 claims; hereinafter referred to as the “Patent”). Claiming
priority with regard to the Patent based on the patent application filed in the
United States on September 3, 1996, the appellee filed a patent application
with the Japan Patent Office on September 3, 1997.
(2) Invention
Claim 13 written in the scope of claims for the
Patent (hereinafter referred to as the “Scope of Claims”; the invention
pertaining thereto being referred to as the “Invention”) is as described in the
Appendix attached hereto (attachment omitted). At the time of filing an
application for the Patent, the appellee stated the structure of cis-vitamin D
in the Scope of Claims as the starting material, etc. for manufacturing the
target compound, without mentioning the structure of trans-vitamin D, which is
an isomer of cis-vitamin D.
(3) Appellants’ Process
a) DKSH Japan K.K., as an appellant, is a
business operator that imports and sells maxacalcitol, an active pharmaceutical
ingredient (API) for a drug used in the treatment of keratosis. Other
appellants are distributors of maxacalcitol preparation products. (The process
for manufacturing such maxacalcitol APIs is hereinafter referred to as the
“Appellants’ Process.”)
b) In comparing the Appellants’ Process with the
structure stated in the Scope of Claims, both are different with respect to the
starting material, etc. for manufacturing the target compound—trans-vitamin D
is used in the former and cis-vitamin D is adopted in the latter. However, the
Appellants’ Process satisfies the requirements for the structure stated in the
Scope of Claims in all other respects.
The appellants allege as follows: in connection
with the parts of the structure stated in the Scope of Claims that are
different from the Appellants’ Process, the appellee was supposed to be able to
easily conceive the structure adopted in the Appellants’ Process at the time of
filing the application for the Patent.
(4) Statements in the patent description
Looking into the description attached to the
application filed for the Patent (hereinafter referred to as the
“Description”), there is no statement concerning a process for transforming
vitamin D from the trans form to the cis form, and nothing in the Description
implies that an invention using trans-vitamin D as the starting material, etc.
is disclosed. In short, no such inventions are disclosed in the Description.
3. Based on the facts explained above, the court
of second instance determined as follows: this court case does not involve any
particular circumstances as explained in Paragraph 1; the Appellants’ Process
is equivalent to the structure stated in the Scope of Claims and falls within
the technical scope of the Invention, and thus, the appellee’s claim is
acceptable. The points for such a determination are as follows.
(1) Although an applicant for a certain patent
may be able to easily conceive of the existence of some structures that fall
outside the scope of claims at the time of filing a patent application, the
applicant may omit statements concerning such structures in the application to
be filed. In this event, it cannot be ascertained that there are particular
circumstances explained in Paragraph 1 above merely due to such an omission.
(2) Even in the event described in (1) above,
the existence of particular circumstances explained in Paragraph 1 above will
be ascertained if it is objectively and visibly determined that the applicant
recognized that a certain structure that falls outside the scope of the patent
claims could substitute for the structure stated in the scope of claims while
the former structure differs in part from the latter.
4. The appellants argue that the scope of
particular circumstances explained in Paragraph 1 above is interpreted too
narrowly in the determination shown by the court of second instance.
5.
(1) The patent system is a system for granting a
patent right, which is an exclusive right, to inventors who have publicly
disclosed their inventions, thereby protecting the patented inventions for the
holders of the relevant patent rights and making known the contents of the
patented inventions to third parties, with the aim of encouraging the creation
of inventions through promoting their utilization, thereby contributing to the
development of industry (cf. Article 1 of the Patent Act). According to Article
70, paragraph (1) of the Patent Act, the technical scope of a patented
invention must be defined based on the statements in the scope of claims
attached to a patent application. If, however, a party adverse to a patent
infringement suit were easily able to evade injunctions or the exercise of
other rights by a patentee simply by replacing a certain part of the structure
stated in the scope of the patent claims with any other easily conceivable
technology that is substantially the same as the structure specified in the
patent application, such evasion would go against the purport of the patent
system described above and produce the effect of prejudicing the equitable
principle. In light of the foregoing, Competing Products or Processes
satisfying given requirements should be considered to be equivalent to the
structure stated in the scope of patent claims and fall within the technical
scope of the patented invention even when the structure specified by the
applicant contains any part that is different from those of the Competing
Products or Processes. If some Competing Products or Processes were
intentionally excluded from the scope of patent claims in the course of filing
the application for the patented invention, or if there are other particular
circumstances justifying denial of equivalence, the patentee will not be
allowed to insist on the doctrine of equivalents. This is because the doctrine
of estoppel does not allow the patentee to subsequently insist on what is
inconsistent with his/her previous consent to exclusion of the Competing
Products or Processes from the technical scope of the patented invention, or
with his/her previous conduct that might visibly be interpreted as such consent
(cf. 1998 Judgment).
Therefore, third parties who are aware of the
description in a patent application that is publicly disclosed cannot reliably
believe that the Competing Products or Processes are excluded from the scope of
the patent claims, and it is difficult to ascertain that the applicant has
acted in a way to imply consent to such exclusion from the technical scope of
the patented invention merely because the applicant omitted to mention the Competing
Products or Processes in the scope of patent claims in a situation where the
applicant was able to easily conceive the structures adopted in the Competing
Products or Processes different in part from the structure stated in the scope
of the claims at the time of filing the patent application. In addition, if the
patent applicant’s failure to describe other easily conceivable structures in
the scope of the patent claims automatically and unexceptionally made it
impossible for the patentee fighting in a patent infringement lawsuit to insist
that the Competing Products or Processes fall within the technical scope of the
patented invention on the grounds that they are equivalent to the structure
stated in the scope of the patent claims, the expected result would be
inequitable for both patent applicants/patentees and third parties. On the part
of patent applicants, such interpretation and operation would be the same as
forcing them to prepare their applications in a way that exhaustively covers
all expected future forms of infringement at the time of filing while they are
under pressure to file patent applications as early as possible under the
first-to-file rule. On the part of third parties aware of patent descriptions
publicly disclosed, they would be able to examine alternative structures
equivalent to the structure stated in the scope of claims without the time
constraints faced by patent applicants, and third parties could therefore be
able to easily evade injunctions or the exercise of other rights by relevant
patentees.
In consequence, even in a situation where the
scope of patent claims written by the patent applicant did not mention the
structure for Competing Products or Processes different in part from the
structure stated in the scope of claims while the applicant was able to easily
conceive the structure for such Competing Products or Processes at the time of
filing the application, the mere fact of such omission in the scope of the
patent claims does not infer that the Competing Products or Processes were
intentionally excluded from the scope of patent claims in the course of filing
the application for the patented invention or that there are other particular
circumstances.
(2) In some of the situations explained in (1)
above, however, a patent description written by an applicant may contain a
statement to the effect that the patented invention can work even when the
structure stated in the scope of claims is replaced with a structure for
Competing Products or Processes that are different in part from the structure
stated in the scope of claims. In this or any other way, applicants may
recognize at the time of filing the patent that the structure for any Competing
Products or Processes can substitute for the structure stated in the scope of
the patent claims, but intentionally omit statements concerning such Competing
Products or Processes in the scope of the patent claim. If the situation
explained in the preceding two sentences is objectively and visibly
ascertained, third parties aware of the publicly disclosed patent description
can understand that Competing Products or Processes are excluded from the scope
of the patent claims based on the applicant’s intention. This means that the
applicant has acted in a way to cause third parties to believe that the
Competing Products or Processes do not fall within the technical scope of the
patented invention with the applicant’s consent. A ruling that the existence of
particular circumstances is ascertained in the situation referred to above is
consistent with the purpose of the Patent Act, which is to encourage inventions
through promoting their protection and utilization, thereby contributing to the
development of industry, and such a ruling is reasonable for adequate
coordination of interests between patent applicants and third parties.
Therefore, intentional exclusion of Competing
Products or Processes from the scope of patent claims in the course of filing
an application for a patented invention or the existence of other particular
circumstances should be ascertained if the applicant is objectively and visibly
determined to have indicated his/her intention of omitting statements
concerning Competing Products or Processes in the scope of the patent claims in
a situation described below, while recognizing that the structure for the
Competing Products or Processes could substitute for the structure stated in
the scope of the patent claims: the applicant knew the existence of such
Competing Products that contain certain parts that are different from the parts
in the structure stated in the scope of the patent claims; and the applicant
was able to easily conceive the structure for such Competing Products or
Processes at the time of filing the application in connection with said
differences.
In light of the facts explained prior, nothing
contained in the appellee’s application for the Patent indicates objectively
and visibly the appellee’s intention of omitting to mention the structure for
the Appellants’ Process in the Scope of Claims while recognizing that the
structure adopted by the appellants, which was different in part from the
structure stated in the Scope of Claims, could substitute for said structure.
6. Since the determination shown in the second
instance is consistent with the foregoing, the Supreme Court upholds such a
determination. The arguments of the final appeal are unacceptable.
Therefore, the justices unanimously render a
judgment as stated in the main text.
(This translation is
provisional and subject to revision.)