TOPICS

“Rolling Apparatus and Manufacturing Method Thereof”

Overview:

This precedent relates to an appeal case concerning a claim for damages in which the lower court ruled that the defendants’ products did not satisfy requirement 1-A of Case Invention 1 and dismissed the plaintiff’s claim, but the IP High Court recognized that while the product did meet requirement 1-A it did not satisfy other requirements, and thus concluded that the lower court’s decision was appropriate in its conclusion and dismissed the plaintiff’s appeal.

▶ Link to a summary and full text of the trial decision (Japanese)

Case Invention 1:

Case Invention 1 can be broken down into the following constituent requirements:

(1-F) A rolling apparatus comprising:

(1-A) a transfer path constituted by at least one pair of transfer grooves; and a plurality of rolling members interposed so as to be capable of rolling within the transfer path, wherein

(1-B) the rolling members are each formed as a sphere, a cylinder with three-dimensional curved surfaces at both ends, a cone, a barrel shape or a composite of these curved surfaces,

(1-C) a no-load region is produced in part of the transfer path where the rolling members come into contact with only one of the transfer grooves,

(1-D) said one of the transfer grooves is formed with a cross-section in a direction perpendicular to a transfer direction so as to come into two-point contact with the rolling members whether a sphere or three-dimensional curved corners of non-spherical rolling members, and

(1-E) a contact angle variation path is formed where the contact angle is made larger compared to other parts of the transfer path.

Main Issue:

Whether the product belonging to the defendant of the appeal falls within the technical scope of Case Invention 1 (particularly whether requirement 1-A is satisfied).

Court’s Ruling:

Concerning this main issue, the original trial decision, in summary, found that: (1) the configuration of requirement 1-A is recognized as being “capable of increasing and decreasing the rotational speed with respect to each of the rolling members and adjusting an interval between the rolling members based thereon” in view of the technical significance of the invention, and “a bearing having a retainer that steadily maintains an interval between the rolling members” does not fall under this, and (2) the defendants’ products constantly and steadily maintain an interval between the balls using a retainer, and thus does not satisfy requirement 1-A. However, the present trial decision did not accept the finding of the original trial decision described above, and judged as follows (underlining has been added by the author for emphasis):

The defendants assert that “maintaining an interval between the rolling members using a retainer”, as per the defendants’ products, should be (narrowly) interpreted by excluding it from…requirement 1-A, based on Japanese Patent Act, Article 70(2), and in view of the use effect of the case invention.

However, the technical scope of the patented invention ultimately “must be determined based upon the statements in the claims” (Japanese Patent Act, Article 70(1)), and the matters described in the specification are merely considered to the extent that they clarify the significance of the terms recited in the claims (Article 70(2)). A broad interpretation of Article 70(2) that incorporates matters not recited in the claims into the technical scope of the invention in the name of considering the statements of the specification (broad interpretation of the technical scope) amounts to the disregarding of the differentiated roles of “the claims” and “the specification (the detailed description of the invention)”, and is not permitted.

The narrow interpretation asserted by the defendants exceeds the bounds of interpreting “the significance of the terms recited in the claims”, flagrantly seeks to incorporate the matters relating to a configuration for controlling an interval between the rolling members into the technical scope of the invention based on the statements of the specification (the detailed description of the invention), and is not acceptable under Article 70 of the Japanese Patent Act.

The defendants’ assertion that “maintaining an interval between the rolling members using a retainer” should be interpreted by excluding it from the technical scope of each of the inventions of this case…is not incomprehensible, but this should be treated as a defense of patent invalidity due to violation of the support requirement (Article 36(6)(i)), and not for making unreasonable claim interpretations such as described above.

For these reasons, the defendants’ products satisfy requirement 1-A…, and the provision of a retainer is not an obstacle to recognizing the satisfaction of that requirement.

Furthermore, this trial decision separately considers whether requirement 1-C is satisfied, and dismisses the defendant’s appeal by judging that the defendants’ products cannot be recognized as satisfying requirement 1-C of Case Invention 1.

Comments:

This case is a precedent in which the determinations of the original trial and the appeal trial were split over whether or not the defendants’ products satisfy specific requirements of the patented invention. Concerning the interpretation of Article 70 of the Japanese Patent Act that establishes the technical scope of a patented invention, this case will garner attention in terms of clarifying the differentiated roles of the claims and the specification, and denying the original trial decision’s narrow interpretation applied to the technical scope based on the statements of the specification (technical significance and use effect of the patented invention).

There are other court judicial precedents, besides the original trial decision discussed here, that seem to arrive at a narrow interpretation by focusing on the technical significance and the like of a patented invention (e.g., decision of Intellectual Property High Court (September 25, 2006)), but I believe the present trial decision is helpful for conceptually understanding the technical scope of patented inventions.

Yasuhiro SUTO