Episode 15

The Kilby decision (Supreme Court, 1998 (O) No. 364, April 11, 2000, Third Petty Bench, Minshu Vol. 54, No. 4, p. 1368) ruled that the infringement court can determine whether or not there is a reason for invalidation of a patent, and that if there is a reason for invalidation, a claim for injunction or damages based on the patent right is an abuse of rights and is not permitted.
Subsequently, Article 104-3, paragraph 1 of the Patent Act was enacted, allowing the infringement court to determine the validity of a patent, not just when the reason for invalidation is "clear." In an infringement lawsuit, if the patent is "deemed to be invalidated by a patent invalidation trial," the patent owner cannot exercise his or her rights.
This has created a so-called "double track" situation in which a decision on the validity of a patent can be made through two routes: the "invalidation trial route (invalidation trial, trial to set aside the trial decision, and appeal)" and the "infringement lawsuit route (infringement lawsuit, appeal trial, and appeal trial)."
Even if the judgment on the validity of a patent differs between the first instance judgment of an invalidation trial and the first instance judgment of an infringement lawsuit, if an appeal trial of an infringement lawsuit and a lawsuit to set aside the trial decision are pending at the Intellectual Property High Court at the same time, the cases are assigned to the same department, resulting in consistent judgments at the Intellectual Property High Court and preventing discrepancies in judgments between the two routes, the infringement lawsuit route and the invalidation trial route (https://www.jpo.go.jp/resources/shingikai/sangyo-kouzou/shousai/tokkyo_shoi/document/seisakubukai-28-shiryou/01.pdf).
We will look at recent court cases that fall into the above case.
In an infringement lawsuit (Tokyo District Court, Case No. 25121 of 2019 (Wa), Judgment dated December 9, 2021), the court dismissed the claim on the grounds that although the invention implemented by the defendant was within the technical scope of the patent in question (Patent No. 6538097), the patent in question was invalid due to a cited invention (JP Patent Publication No. 2015-102994). The appeal court (Intellectual Property High Court, Case No. 10008 of 2022 (Ne), Judgment dated November 29, 2022) also dismissed the appeal for the same reasons.
The defendant (appellee) in the above infringement lawsuit requested an invalidation trial (Invalidation 2019-800106) of the above patent right (Patent No. 6538097) based on the same cited invention (JP Patent Publication No. 2015-102994), but the request was denied. The defendant then filed a lawsuit to set aside the decision (Intellectual Property High Court Case No. 10027 of 2021 (Gyo-Ke), Judgment of November 29, 2022), but the request was dismissed for the same reason.
The above appeal (Intellectual Property High Court Case No. 10008 of 2022 (Ne) Judgment of November 29, 2022) and the lawsuit to set aside the decision (Intellectual Property High Court Case No. 10027 of 2021 (Gyo-Ke), Judgment of November 29, 2022) were decided on the same day by the same court. Despite this, there is a discrepancy in judgment between the infringement lawsuit route and the invalidation trial route. In particular, the above-mentioned appeal court decision is an illegal decision that violates "when it is deemed that a patent should be invalidated by a patent invalidation trial" (Article 104-3, Paragraph 1 of the Patent Act). Looking at the judgments in both cases, it cannot be said that either case was sufficiently examined, and they simply ratified the judgment of the first instance district court and the judgment of the Japan Patent Office Trial and Appeal Division.
On July 1st of this year (2024), a celebration was held for Patent Attorney Day, and the Chief Justice of the Intellectual Property High Court was invited as a guest. There, he gave a speech saying, "We aim to be a court that is fast, cheap, and convenient." This "convenient" does not mean convenient for users. It means convenient for those who run the court. In other words, it means that cases are processed from right to left without being examined thoroughly. The above court case is a typical example. The current Intellectual Property High Court is dysfunctional, contrary to the purpose of its establishment (Article 1 of the Intellectual Property High Court Establishment Act).