In the case that effective range can be confirmed in relation to a patent right which is in a pending civil suit against infringement of the patent, a matter of a possible benefit arising from a request for trial for confirmation of scope being granted (or not) will be problematic if it is requested separately from the above mentioned civil suit.
(2) Outline of the case
The plaintiffs (respondent) filed a suit to prohibit infringement of a patent against a defendant (appellant), claiming that the defendant’s confirmation subject invention violated the plaintiffs’ subject patent invention. The defendant requested a defensive confirmation trial for the scope of the right before pleading would be closed in the patent infringement trial and a decision announced.
The verdict in an earlier patent infringement trial decided that the defendant’s product corresponded to infringement by equivalents of the subject patent and required compensation for damages. However, unlike in that decision, the decision in the trial for confirmation of scope by the Intellectual Property Tribunal decided that the confirmation subject invention did not correspond to infringement by equivalents of the subject patent.
The judgment in the appeal on infringement of the patent annulled the verdict of the previous trial since the defendant’s product was not seen as infringing the subject patent equivalently, for the same reason as in the Intellectual Property Tribunal’s decision.
However, during litigation for cancellation of the trial decision in the trial for scope confirmation, the Patent Court annulled the decision by stating that filing a defensive confirmation trial for the scope of a right separately, even though the scope of right for the subject patent could be confirmed, since the related suit against infringement of the patent was pending, this could not be seen as a valid or appropriate means and it was an unnecessary burden for the interested parties, and so it was deemed difficult for the benefit of requesting such a trial to be recognized.
(3) Supreme Court’s decision
During a trial of the patent court case at the Supreme Court, the Supreme Court remanded after reversal of the Patent Court’s original verdict based on the following reason (decision 2016hu328 announced on February 8, 2018):
① A confirmation trial for the scope of a right has its own function, the point being that such trial contributes to quickly end, or prevent in advance, conflicts among interested parties by simply and rapidly deciding whether a confirmation subject invention corresponds to a patent right’s objective effective range.
② Article 164 (1) regulates that a presiding trial judge can suspend trial procedures until litigation procedures are completed, and Article 164 (2) regulates that a court can suspend a litigation procedure until a trial decision on a patent is determined. Article 164 (3) regulates that when an infringement lawsuit is filed or closed, the Patent Court should notify the presiding patent trial judge of its purpose, and Article 164 (4) regulates that a presiding patent trial judge should notify the Court corresponding to Article 164 (3) of the purpose of the following case when an invalidation trial, etc. for a patent right is requested against a lawsuit on infringement of patent right or exclusive license according to Article 164 (3). Such regulations which show that the Patent Court recognizes confirmation trials for scope of right and litigation procedures as separate independent procedures, regardless of initiation order or the progress of each procedure, can be understood as having the purpose of respecting the function of the confirmation trial for the scope of right system presented above.
③ In light of the characteristics and function of the confirmation trial for scope of right system and the regulations and the purposes of patent law, the benefit of a confirmation trial for scope of right which is requested separately from an infringement lawsuit will not be seen as denied even if an infringement litigation is ongoing and the effective range of a patent right can be confirmed.
(4) Significance of judgment
The Patent Court’s judgment on litigation for cancellation of a trial decision against the confirmation trial for the scope of a right is considered as having been decided based on the reason that, in the case that a trial in an appeal case of patent infringement litigation and litigation for cancellation of a trial decision against a confirmation trial for the scope of a right are simultaneously ongoing in the Patent Court, since, in an appeal, jurisdiction over the trials is converged in the Patent Court, requesting a confirmation trial for the scope of a right is seen as nonbeneficial only for pending patent infringement litigation made by a head of the justice department of the Patent Court who has doubt about the necessity of judging two cases having substantially the same issue.
However, this Patent Court decision, regardless of its intentions, caused a serious issue in terms of infringing rights and interests in favor of interested parties by obstructing the requesting of a confirmation trial for the scope of a right in the case that a patent infringement litigation is ongoing.
Although reformation of the confirmation trial for the scope of a right system should be made by revision of patent law, it was attempted to achieve such reformation by analysis of legal theory through judgment.
Regarding this, the Supreme Court stated that in light of the characteristics and function of the confirmation trial for the scope of right system and the regulations and purposes of patent law, the benefit of a confirmation trial for the scope of a right which is requested separately from an infringement lawsuit will not be denied even if the patent right’s effective range can be confirmed since the infringement litigation is ongoing.
I.e., this judgment has its significance in that the Supreme Court recognized the intrinsic function of a confirmation trial for the scope of a right under patent law, irregardless of a patent infringement litigation, and also recognized the benefit of requesting a confirmation trial in relation to the scope of a right during a patent infringement litigation.