Patent

Date

August 8, 2022

Right

Case

2019 (Ne) 10007

Court

Intellectual Property High
Court, Fourth Division

number- A case in which the court determined, concerning the claim for payment ofcompensation for damages based on the patent right related to the patent for an
invention titled "Device for displaying a ladder circuit when an abnormality occurs
with a programmable controller," that both the programmable indicator main bodyand its software fall under "any article indispensable for the solution of the problem
by the invention" (Article 101, item (ii) of the Patent Act).
- A case in which the court determined that both the programmable indicator main
body and its software that can also be used for a purpose other than the production of
directly infringing products are transferred, etc. "knowing that they are used forworking an invention."- A case in which the court determined that in cases where there are indirectly
infringing products that are not used for the production of directly infringing
products, the quantity of said indirectly infringing products falls under the quantity
corresponding to "circumstances that render the patentee or the exclusive licensee
unable to sell" (Article 102, paragraph (1), item (i) of the Patent Act).
- A case in which the court determined that in cases where there are indirectly
infringing products that are not used for the production of directly infringing
products, the quantity of said indirectly infringing products becomes grounds forrebuttal of presumption of the amount of damages under Article 102, paragraph (2)of the Patent Act.
Case type: Claim for injunction against patent infringement (after withdrawal of theclaim for injunction, claim for payment of compensation for damages)
Results: Partial modification of the prior instance judgment
References: Article 101, item (ii) and Article 102, paragraph (1), item (i) and paragraph(2) of the Patent Act
Related rights, etc.: Patent No. 3700528. Invalidation Trial No. 2018-800131
Judgment in prior instance: Osaka District Court, 2015 (Wa) 8974, rendered on
December 13, 2018
Summary of the Judgment
No. 1 Outline of the case
1. In this case, the First-instance Plaintiff alleged that the act of manufacturing andiselling, etc. of the programmable indicator main body ("Defendant's Indicator A") andits software ("Defendant's Product 3") by the First-instance Defendant directly infringe
or indirectly infringe (Article 101, item (i) or item (ii) of the Patent Act) of the patentright ("Patent Right 1") related to the invention indicated in the premises ("Invention1") and three other patent rights ("Patent Rights 2 through 4"), and claimed against theFirst-instance Defendant an injunction against the manufacturing, selling, etc. of theFirst-instance Defendant's Products and the disposal thereof based on Patent Rights 1
through 4 and also claimed payment of compensation for damages based on the tort (allpatent rights lapsed due to expiry of patent terms by March 31, 2020, and therefore, theclaim for injunction, etc. was withdrawn.).
2. In the judgment in prior instance (Osaka District Court, 2015 (Wa) 8974, renderedon December 13, 2018), the court of prior instance determined that the manufacturing,
selling, etc. of the Defendant's Product 3 fall under indirect infringement as defined in
Article 101, item (ii) of the Patent Act of Patent Right 1 and ordered against the First instance Defendant an injunction, etc. against the production, transfer, etc. of
Defendant's Product 3 and the payment of compensation for damages of approximatel y47,020,000 yen, and dismissed the remaining claims of the First-instance Plaintiff.
3. In this judgment, as stated in No. 2 below, the court determined that the
manufacturing, selling, etc. of both the Defendant's Indicator A and Defendant's Product3 fall under indirect infringement as defined in Article 101, item (ii) of the Patent Act
of Patent Right 1, and ordered against the First-instance Defendant to pay compensation
for damages of approximately 55,620,000 yen, which was calculated using theprovisions of Article 102, paragraph (1), item (i) of the Patent Act, and dismissed theremaining claims of the First-instance Plaintiff.
No. 2 Determinations in this judgment
1. "Any article that is essential to the invention's solution of the problem" as defined in
Article 101, item (ii) of the Patent Act
In this judgment, the court determined that not only Defendant's Product 3, but also
Defendant's Indicator A fall under "any article that is essential to the invention's solutionof the problem" as stated below.
"The purport of specifying articles for which the production, transfer, etc. is deemed
to be an infringement is stipulated to be 'any article that is essential to the invention's
solution of the problem' in Article 101, item (ii) of the Patent Act is construed asfollows: since articles subject to said item can be used for the purpose of non infringement in addition to the purpose of infringement, this provision aims to limit thearticles for which the transfer, etc. is deemed to be infringement (indirectly infringingii

articles) to important components, tools, raw materials, etc. (hereinafter collectively
referred to as 'components, etc.') from the perspective of invention so that the effects ofthe patent right are not extended unjustly; and for this reason, said articles are stipulated
to be not only 'essential for working the invention,' but also 'essential to the invention's
solution of the problem.' In light of this purport, it is reasonable to construe that 'any
article that is essential to the invention's solution of the problem' (an essential article
for the solution of the problem) is any of the components, etc. with which 'problems
that the invention intends to solve' are solved for the first time by using it, in otherwords, any of the characteristic components, etc. that directly bring a unique structurethat characterizes a characteristic technical means newly disclosed by the invention asa method to solve problems of prior art.
... the characteristic technical means that Invention 1 newly disclose has a structure
wherein 'a means for displaying a ladder circuit that monitored the occurrence ofabnormal phenomena corresponding to the specified type of abnormality when the typeof abnormality is specified by said touch' (Constituent Feature 1E) includes 'a touch
panel for specifying ... the output element ... of the displayed ladder circuit by touch
and a means for searching and displaying the ladder circuit that inputs an output element
when the output element of the displayed ladder circuit is specified by said touch'(contact search) (hereinafter referred to as 'a contact search by touch when anabnormality occurs' in some cases).""As described in (A) above, Article 101, item (ii) of the Patent Act is construed tolimit indirectly infringing products to characteristic components, etc. that directly bringa unique structure, etc. that characterizes the characteristic part of the invention inquestion. The scope of 'components, etc.' should be determined by examining whether
the article has physical or functional integrity, while also observing from thesocioeconomic perspective. Even if a component is an existing component, etc., in cases
where it is manufactured and sold to be used as one of the components, etc. provided
for solving the invention's problem, the component should also be construed to fallunder an article that is essential to the invention's solution of the problem. It is basedon the following grounds: in many cases, even characteristic components, etc. arecreated by the combination of well-known components, etc.; if the application ofindirect infringement is immediately precluded in cases where an article that has
integrity can be formally separated, the scope of the provisions of indirect infringement
is extremely limited and it is significantly against the purport that the Patent Act deemedindirect infringement to be patent infringement and approved the protection of thepatent right."iii

(D) "Defendant's Product 3
Defendant's Product 3 stores the parts, such as the circuit monitoring function, etc.,from among the OS of extended/optional functions. When it is installed on Defendant's
Indicator A, the circuit monitoring function, etc. can be used with Defendant 's Indicator
A. The part of circuit monitoring function, etc. of Defendant's Product 3 and other parts
are found to be physically and functionally integrated.
Then, Defendant's Product 3 is found to be a characteristic component that directly
brings the characteristic technical means of Invention 1 as a whole.
Therefore, Defendant's Product 3 falls under an essential article for the solution of
the problem of Invention 1."(E) "Defendant's Indicator A
The structure with a contact search by touch when an abnormality occurs, which isa characteristic technical means newly disclosed by Invention 1, can be achieved only
when there are both Defendant's Indicator A and Defendant's Product 3. As the Firstinstance Defendant admits, the only OS that can be installed on Defendant 's Indicator
A in order to achieve the circuit monitoring function, etc. is Defendant's Product 3 andthe only indicator on which Defendant's Product 3 can be installed to achieve saidfunction is Defendant's Indicator A. Therefore, Defendant's Indicator A can function toachieve the aforementioned structure in limited cases where the OS of Defendant 's
Product 3 is installed. In addition, both Defendant's Indicator A and Defendant's Product3 are produced and sold by the First-instance Defendant. The First-instance Defendantis familiar with the aforementioned structure, intentionally selected said structure, andhas provided both to customers.
Based on the above, Defendant's Indicator A and Defendant's Product 3 happen tobe physically separate products, and therefore, one function is divided in multiple
components. However, originally, Defendant's Indicator A is functionally indivisible
from Defendant's Product 3. Even if it is deemed to be an independent product, it
constitutes a characteristic component, etc. that directly brings the characteristic
technical means of Invention 1.
Therefore, Defendant's Indicator A falls under an essential article for the solutionof the problem of Invention 1."
2. The point, "knowing that the article is used for the working of the invention" as
defined in Article 101, item (ii) of the Patent Act (Subjective Requirement [ii])In this judgment, the court determined, as stated below, that Defendant's Indicator
A and Defendant's Product 3 that could be used for purposes other than the productionof directly infringing products fulfill said subjective requirement.
iv

"b. First, an examination is conducted below as to in what situation Subjective
Requirement [ii] is considered to be fulfilled, in other words, in what situation it can besaid that articles that can also be used lawfully are produced, transferred, etc. while'knowing that they are used for the working of an invention.'
The indirect infringement defined in Article 101, item (ii) of the Patent Act
positioned the production, transfer, etc. of articles that can also be used lawfully(hereinafter referred to as 'versatile products') as indirect infringement. Why theprovisions require Subjective Requirement [ii] as a requirement for the establishmentof indirect infringement is construed to be a consideration not to unnecessarily extend
the scope where indirect infringement is established since whether the subject product s(components, etc.) are used lawfully or with an aim or in a manner to infringe the patentright is left to the decision of individual users and it is hard for persons who intend to
produce, transfer, etc. the article to be responsible for duty of care to that extent and it
may undermine trade stability significantly.
In light of these purports, there are the general possibilities that said components,
etc. are used with the aim or in the manner to infringe the patent right. If it is construed
that Subjective Requirement [ii] is fulfilled when a person who produced, transferred,
etc. components, etc. only recognized or admitted that there are said general
possibilities, it results in discounting the purport to give a consideration to the tradestability of versatile products by Subjective Requirement [ii] and it is not reasonable.
Therefore, in order to say that Subjective Requirement [ii] is fulfilled, it should beconstrued that there must actually be a situation where it is highly possible, more thana general possibility, to cause patent infringement due to the transfer, etc. of thecomponents, etc., and a person who produced, transferred, etc. said components, etc.
recognizes and admits said fact.
On the other hand, concerning Subjective Requirement [ii], if it is construed that aperson who produces, transfers, etc. components, etc., is required to have a recognition
that said components, etc. are actually used for the working of a patented invention at
the individual transferee, etc. on each occasion of producing, transferring, etc. said
components, etc., it results in the patent right not being in force even in cases where
said person recognizes and admits that it is highly possible to cause a patent
infringement by the transfer, etc. of said components, etc., unless said person does not
actually recognize the intended use by individual transferee, etc. This is construed not
to meet the original purport of Article 101, item (ii) of the Patent Act to affect the patentright on preliminary acts for which it is highly possible to result in a direct infringement.
In consideration of the above, in order to find the fulfillment of Subjectivev

Requirement [ii], it is reasonable to construe, in light of the nature of the components,
etc., their objective use conditions, provision method thereof, etc., that there must be
an actual situation where it is highly possible for persons in the non-exceptional scopefrom among persons, who purchase, etc. said components, etc., to use said products forpatent infringement and that a person who produces or transfers, etc. the components ,etc. must recognize and admit that fact, and the fulfillment of these requirements is
considered to be sufficient. In light of the wording of the Patent Act, "knowing that thearticle is used for the working of the invention," it is not unreasonable to construe inthis way.
c. When applying said understanding to this case, as stated in D. above, it is found that
there is actually a situation where it is highly possible that persons in the non exceptional scope from among users who purchase, etc. Defendant's Indicator A andDefendant's Product 3 produce products directly infringing Patent Right 1. Based on
the fact explained in D. above, there is no way that the First-instance Defendant who
produces, transfers, etc. Defendant's Indicator A and Defendant's P roduct 3 did notknow that fact. Therefore, it is found that the First-instance Defendant produced,
transferred, etc. Defendant's Indicator A and Defendant's Product 3 while recognizing
and admitting the aforementioned situation.
3. Application of Article 102, paragraph (1) of the Patent Act to indirect infringement
In this judgment, the court determined that Article 102, paragraph (1) of the Patent
Act also applies to indirect infringement, and then, determined that "articles consistingof the infringing act" as defined in said paragraph are the portion equivalent to theinfringer's indirectly infringing products from among finished products sold by thepatentee, etc. However, the court also determined that if there are indirectly infringing
products that were not used for the production of directly infringing products, they fallunder "circumstances that render the patentee or the exclusive licensee unable to sell"
as defined in item (i) of said paragraph and the amount obtained by multiplying thequantity after deducting the quantity equivalent to said circumstances by the "amountof profit per unit" is the amount of damages defined by said item.
"(B) Quantity transferred
The First-instance Defendant alleged that 'articles that constitute the act of
infringement' are directly infringing products and not all of persons who purchased
Defendant's Indicator A and Defendant's Product 3 produce products working Invention
1 (directly infringing products) ... .
However, an act of indirect infringement is 'deemed to constitute infringement' of apatent right (Article 101 of the Patent Act) and the amount of damages from patentvi

infringement is stipulated for 'articles that constitute the act of infringement' (Article
102, paragraph (1) of said Act). As stated in A. (B) above, it is construed that as longas Article 102 of said Act also applies to indirect infringement, 'articles that constitutethe act of infringement' should be construed to refer to indirectly infringing products.
However, components, etc. that are indirectly infringing products as stipulated in
Article 101, item (ii) of the Patent Act may be used with an aim or in a manner not toinfringe a patent right. In addition, in cases where it is found to have high possibility tocause patent infringement by the transfer, etc. of said components, etc., said transfer ofcomponents, etc. constitutes indirect infringement regardless of the use mode by atransferee; however, in cases where the components, etc. are not used with an aim or ina manner to infringe a patent right by a transferee, eventually said patent right does notcontribute to the sale of indirectly infringing products. Then, concerning said transferee,
it cannot be said that the patentee's products could have been sold if no indirect
infringement had taken place, and damages to profits that the patentee, etc. could havereceived from the transfer of articles of the patented invention do not occur. Therefore,
the amount of profits obtained from the transfer of said articles cannot be estim ated as
the amount of damages to the patentee, etc. In addition, it is reasonable to construe thatsuch case falls under 'circumstances that render the patentee or the exclusive licensee
unable to sell' as defined in Article 102, paragraph (1), item (i) of said Act. The
allegation of the First-instance Defendant is construed to include the intention that if
the allegation to use the quantity used for the production of directly infringing products
alone as the basis for the calculation of damages is not accepted, the same circumstances
are alleged as 'circumstances that render the patentee or the exclusive licensee unable
to sell,' and it is accepted to that extent.
Therefore, when calculating the amount of damages to the patentee, etc., it isreasonable to construe that said quantity sold is deducted from the 'quantity transferred'as defined in Article 102, paragraph (1) of the Patent Act."
4. Application of Article 102, paragraph (2) of the Patent Act to indirect infringement
In this judgment, the court determined that Article 102, paragraph (2) of the Patent
Act applies to indirect infringement and then determined that if there are indirectly
infringing products that were not used for the production of directly infringing products,
they can be deemed to be grounds for rebuttal of presumption (since the amountcalculated based on paragraph (1) of said Article is higher, the higher amount isdetermined to be the amount of damages.).
"C. Grounds for rebuttal of presumption(A) Article 102, paragraph (2) of the Patent Act is a provision for presumption.
vii

Therefore, if the infringer alleged and verified that the corresponding causal
relationship with the damages to the patentee is missing for all or part of the profits thatthe infringer received, the aforementioned presumption is rebutted to that extent.
If indirectly infringing products defined in Article 101, item (ii) of the Patent Act
were not actually used for the production of directly infringing products, as a result,they are not in the relationship where the articles of the patented invention could havebeen transferred if the infringement had not taken place, and damages on profits thatthe patentee could have received from the transfer of articles of patented inventions do
not occur. Accordingly, it is impossible to presume that the amount of profits received
from the transfer of said articles is the amount of damages to the patentee. It isreasonable to construe that such case falls under circumstances to rebut the presumption
defined in Article 102, paragraph (2) of said Act.

viii

Judgment rendered on August 8, 2022
2019 (Ne) 10007, Case of appeal for injunction against patent infringement, etc.
(Court of prior instance: Osaka District Court, 2015 (Wa) 8974)
Date of conclusion of oral argument: June 8, 2022
Judgment
Appellant and Appellee: Jtect Corporation(hereinafter referred to the "First-instance Plaintiff")

Appellee and Appellant: Mitsubishi Electric Corporation(hereinafter referred to the "First-instance Defendant")

Main text
1. Based on the appeal by the First-instance Plaintiff, Paragraph 4. and Paragraph 5. inthe main text of the judgment in prior instance shall be altered as shown below.
(1) The First-instance Defendant shall pay to the First-instance Plaintiff 55,629,205 yen
and the amount accrued on the portion of 12,302,476 yen at the rate of 5% per annum
for the period from September 26, 2015 until the completion of payment, and theamounts accrued on the portion of the amounts indicated in each column for "Amountof monthly damage" in "Sales period" sections 5 through 14 as indicated in Attachment
10 "List of Amount of Monthly Damage" at the rate of 5% per annum for the periods
from dates indicated in each column for "Start date of delay damages" corresponding
to said sections until the completion of each payment.
(2) The remaining claims of the First-instance Plaintiff shall be dismissed.
2. The appeal by the First-instance Defendant shall be dismissed.
3. Court costs in the first and second instances shall be divided into ten and the Firstinstance Defendant shall bear one-tenth of the costs and the First-instance Plaintiff shallbear the remaining costs.
4. This judgment may be enforced provisionally only for Paragraph 1. (1).
5. Paragraph 1. through Paragraph 3. of the main text of the judgment in prior instanceare lapsed by withdrawal of the First-instance Plaintiff's appeal.
Facts and reasonsNo. 1 Object of the appeal
1. The First-instance Plaintiff1(1) The part of the judgment in prior instance which is against the First-instancePlaintiff shall be rescinded.
(2) The First-instance Defendant shall pay to the First-instance Plaintiff 550 million
yen and the amount accrued thereon at the rate of 5% per annum for the peri od from
September 26, 2015, until the completion of the payment.
2. The First-instance Defendant(1) The part of the judgment in prior instance which is against the First -instance
Defendant shall be rescinded.
(2) The claim of the First-instance Plaintiff shall be dismissed.
No. 2 Outline of the case
(Unless particularly noted, the same abbreviations used in the judgment in priorinstance shall be used herein.)
1. Outline of the case(1) In this case, the First-instance Plaintiff, who has [i] a patent right (hereinafterreferred to as "Patent Right 1") for an invention (hereinafter referred to as "Invention1") related to Claim 1 of the patent (hereinafter referred to as the "First Pat ent") for an
invention titled "Device for displaying a ladder circuit when an abnormality occurs witha programmable controller"; [ii] a patent right (hereinafter referred to as "Patent Right2-1") for an invention (hereinafter referred to as "Invention 2-1") related to Claim 1 ofthe patent (hereinafter referred to as the "Second Patent") for an invention titled"Control panel for PLC and method for displaying abnormality with the control panel";[iii] a patent right (hereinafter referred to as "Patent Right 2-3") for an invention(hereinafter referred to as "Invention 2-3") related to Claim 3 of the Second Patent; [iv]a patent right (hereinafter referred to as "Patent Right 3") for an invention (hereinafterreferred to as "Invention 3") related to Claim 1 of the patent (hereinafter referred to as
the "Third Patent") for an invention titled "Operation control console panel"; and [v] apatent right (hereinafter referred to as "Patent Right 4") for an invention (hereinafterreferred to as "Invention 4") related to Claim 1 of the patent (hereinafter referred to as
the "Fourth Patent") for an invention titled "Screen definition device of operation
panel," alleged against the First-instance Defendant that production, transfer, etc. of [i]Display Devices 1 through 3 and 5 through 7 indicated in the Attachment to the
judgment in prior instance "List of the Defendant's Products" (hereinafter referred to as"Defendant's Product 1-1 through 1-3, Defendant's Products 2-1 through 2-3";
hereinafter collectively referred to as the "Defendant's Indicator"); [ii] License Keys 4
and 8 indicated in said list of software to have a personal computer function as a display
operation device (hereinafter referred to as "Defendant's Products 1-4 and 2-4"); [iii]2Software 9 and 10 indicated in said list for the creation of OS and project data for the
Defendant's Indicator (hereinafter referred to as "Defendant's Products 3 -1 and 3-2";
hereinafter collectively referred to as "Defendant's Product 3"); and [iv] Support Tool
11 indicated in said list to support the creation of project data for the Defendant's
Indicator (hereinafter referred to as "Defendant's Product 4"), fall under direct
infringement or indirect infringement of Patent Rights 1 through 4, and demanded an
injunction against production, transfer, lease, etc. of Defendant's Products based on
Article 100, paragraph (1) and paragraph (2) of the Patent Act, as well as that the First instance Defendant pay a deposit of 550 million yen as compensation for damages basedon the tort of patent infringement and delay damages accrued thereon at the rate of 5%
per annum as specified by the Civil Code before amendment by Act No. 44 of 2017 forthe period from September 26, 2015, which is the day following the delivery day of theComplaint, until the completion of the payment.
(2) The judgment in prior instance found that Defendant's Product 1-1, Defendant's
Product 1-2, Defendant's Product 2-1, and Defendant's Product 2-2 (hereinaftercollectively referred to as "Defendant's Indicator A") on which Defendant's Product 3
is installed belong to the technical scope of Invention 1 and that production, transfer,etc. of Defendant's Product 3 fall under indirect infringement as defined in Article 101,
item (ii) of the Patent Act of Patent Right 1. Then, the court of prior instance orderedagainst the First-instance Defendant an injunction against the production and transfer
of Defendant's Product 3, an injunction against the licensing of programs related to
Defendant's Product 3, and disposal of Defendant's Product 3, and also ordered thepayment of 47,028,368 yen as compensation for damages and delay damages accrued
thereon, while dismissing all of the remaining claims of the First-instance Plaintiff.
(3) Dissatisfied with the judgment in prior instance, both the First-instance Plaintiff and
the First-instance Defendant filed Appeals respectively to seek rescission of all of theparts of the judgment in prior instance that were against each party.
While this case was pending, the First-instance Plaintiff withdrew claims to seek
injunction and disposal related to Patent Rights 1 through 4.
2. Basic facts
The basic facts are as stated in No. 2, 2. ("Basic facts") in the "Facts and reasons"section of the judgment in prior instance, except for the corrections as stated below, andtherefore, they are cited.
(1) After the phrase "請求のとおり訂正することを認めるとの審決がされ[it was
decided to approve the correction as requested]" from line 1 to line 2, page 5, the phrase"（以下、この審決による訂正を「前件訂正」という。）[(hereinafter the correction
3

by this trial decision is referred to as the "Prior-instance Correction")]" is added and thefollowing is added, starting as a new line after the end of line 2 on said page.
"Description 1 [0012] is altered as follows by the Prior-instance Correction(underlined part is the altered part; Exhibit Ko 19-2).
[0012][Means to solve the problem and action]
The display device related to the invention is used in a programmable controller,
which controls controlled objects, such as machines, devices, equipment, etc., andincludes a program for monitoring an occurrence of abnormal phenomena in controlled
objects, a means for displaying the type of abnormality corresponding to the abnormal
phenomena identified by the program, a means for specifying one type of abnormality
among one or more types of abnormality by touching a touch panel, and a means fordisplaying a ladder circuit that monitored the occurrence of abnormal phenomena
corresponding to the specified type of abnormality when the type of abnormality is
specified."(2) The term "本件発明１[Invention 1]" in line 6, page 6 is altered to "訂正前発明１[Invention 1 before Correction]" and the phrase "これに係る特許[the patent related
thereto]" is altered to "これ（後記本件訂正後は本件発明 1）に係る特許[the patent
related thereto (after the Correction as stated below, Invention 1)]" respectively; andthe following is added, starting as a new line after the end of line 26, page 12.
"(6) The Correction
A. The First-instance Defendant filed a request for a trial for patent invalidation(Invalidation Trial No. 2018-800131) related to the patent for Invention 1 on November
22, 2018 (Exhibit Ko 62).
B. The First-instance Plaintiff received the announcement of a trial decision that thepatent for Invention 1 before Correction would be invalidated on Jul y 9, 2019 and fileda request for correction on September 17, 2019 (hereinafter the correction related tosaid request for correction is referred to as the "Correction"; Exhibits Ko 56 and 57 andExhibit Otsu 32).
C. The Japan Patent Office (hereinafter referred to as the "JPO") approved theCorrection on March 30, 2020, made a decision that the First-instance Defendant's
request for a trial for patent invalidation was groundless (hereinafter referred to as the'JPO Decision'), and delivered a certified copy of the decision to the First-instance
Defendant on April 13, 2020 (Exhibit Ko 62 and Exhibit Otsu 71).
D. The First-instance Defendant filed an action on April 27, 2020 seeking rescission of
the JPO Decision (Intellectual Property High Court, 2020 (Gyo-Ke) 10059; hereinafter4referred to as the 'unrelated case') (Exhibit Otsu 71).
E. On May 31, 2021, the Intellectual Property High Court determined to dismiss theFirst-instance Defendant's request in the unrelated case and the First-instance
Defendant filed a petition for acceptance of final appeal against the judgment (Supreme
Court, 2021 (Gyo-Hi) 237); however, the Supreme Court determined to reject the final
appeal on October 12, 2021 and the JPO Decision became final and binding (Exhibit
Ko 70 and Exhibit Otsu 71).
(7) Division of constituent features of Invention 1
The constituent features of the invention of Claim 1 of the First Patent after the
Correction (hereinafter referred to as 'Invention 1') are divided as follows (theunderlined parts are corrections by the Correction).
1A. and 1G. a display device which is used in a programmable controller, which
controls controlled objects, such as machines, devices, equipment, etc. and ischaracterized by including
1B'. a program that monitors an occurrence of abnormal phenomena in said controlled
objects and recognizes changes in address data corresponding to said programmablecontroller in response to the occurrence of said abnormal phenomena;
1C. a means for displaying the type of abnormality corresponding to the abnormal
phenomena monitored when an occurrence of the abnormal phenomena is identified by
the program;
1D. a touch panel for specifying the name of the abnormal phenomena related to one
type of abnormality among one or more types of displayed abnormality by touch;
1E. a means for displaying a ladder circuit that monitored the occurrence of abnormal
phenomena corresponding to the specified type of abnormality when the type ofabnormality is specified by said touch;
1F. wherein the means for displaying said ladder circuit includes said touch panel for
specifying either the input or output element of the displayed ladder circuit by touch
and a means for searching and displaying the ladder circuit that outputs an input element
when the input element of the displayed ladder circuit is specified by said touch, andfor searching and displaying the ladder circuit that inputs an output element when the
output element of the displayed ladder circuit is specified by said touch.
Description 1 [0012] is altered as follows by the Correction (underlined part is thealtered part; Exhibit Ko 57).
[0012][Means to solve the problem and action]
The display device related to the invention is used in a programmable controller,5which controls controlled objects, such as machines, devices, equipment, etc., andincludes a program that monitors an occurrence of abnormal phenomena in controlled
objects and recognizes changes in address data corresponding to said programmablecontroller in response to the occurrence of said abnormal phenomena, a means fordisplaying the type of abnormality corresponding to the abnormal phenomena identified
by the program, a means for specifying one type of abnormality among one or moretypes of displayed abnormality by touching a touch panel, and a means for displaying
a ladder circuit that monitored the occurrence of abnormal phenomena corresponding
to the specified type of abnormality when the type of abnormality is specified."
3. Issues
The issues are as stated in No. 2, 3. ("Issues") in the "Facts and reasons" section of
the judgment in prior instance, except for the corrections as stated below, and therefore,
they are cited.
(1) The section from the beginning to the end of line 23, page 13 is altered as follows.
"A. (A) Grounds for invalidation of Patent 1: Prior art effect for which Exhibit Otsu 28
serves as the prior art (Issue 5-1A)(B) Grounds for invalidation of Patent 1: Breach of requirements for correction (Issue
5-1B)"(2) The phrase "本件特許１及び２－１[Patent 1 and Patent 2-1]" in line 25, page 13
is altered to "本件特許２－１[Patent 2-1]" and the following is added, starting as a
new line after the end of line 7, page 14.
"I. Grounds for invalidation of Patent 4: Lack of an inventive step for which Exhibit
Otsu 6 serves as the primary prior art (Issue 5-9)"(3) The section from the beginning of line 9 to the end of line 10, page 14 is altered asfollows.
"(7) Whether there are grounds to hinder the exercise of the rights related to Patent
Right 1 and whether there is a breach of the principle of good faith in a lawsuit (Issue
7)"(omitted)
No. 3 Judgment of this court
1. Issue 1-1 (Whether the manufacturing, selling, etc. of Defendant's Indicator A andDefendant's Product 3 fall under a direct infringement of Patent Right 1)(1) Invention 1
The technical meaning of Invention 1 is as stated in the section from the beginning6

of line 16, page 81 to the end of line 23, page 82 of the judgment in prior instance, andtherefore, it is cited. However, the term "[0001]" in line 19, page 81 is altered to"[0002]".
(2) Defendant's Indicator A and Defendant's Product 3
The outline of the Defendant's Product is as stated in the section from line 23, page
95 to the end of line 4, page 104 of the judgment in prior instance, and therefore, it iscited, except for the following amendments.
A. After the phrase "１５、１７、[15, 17,]" in line 23, page 95, the phrase "４６、５２、６３、７４、７５、[46, 52, 63, 74, 75,]" is added, and after the term "18" in saidline, the phrase "、４３ないし４６、４９、５０、５７、６５ないし６７、７９
ないし８１[, 43 through 46, 49, 50, 57, 65 through 67, 79 through 81]" is added
respectively.
B. The following is added, starting as a new line after the end of line 7, page 103 andthe term "イ(イ)[B. (B)]" in line 25 on said page is altered to "ウ[C.]".
"The circuit monitoring function has the following three search methods: 'coil search,''contact search,' and 'factor search.' 'Coil search' is a function to search and display acircuit block that uses the specified device as a coil (output element) and 'contact search'
is a function to search and display a circuit block that uses the specified device as acontact (input element). On the other hand, 'factor search' is a function to search thecontinuity or non-continuity status of a contact that causes the specified device to be
ON or OFF by tracking back a circuit."
C. The following is added, starting as a new line after the end of line 4, page 104.
"(D) Installing a one-touch circuit jump function
a. One-touch circuit jump function
The one-touch circuit jump function is a function to activate a circuit monitoring
function while the device that the user configured with the project data is specified. It
has two options of conditions to display an abnormal phenomenon: whether a circuit
block is displayed after searching a circuit block that uses a device with a device number
specified by a user as a coil ('coil search') or whether all circuit blocks that are included
in a search route are displayed after searching by tracking back the causes of an alarm('factor search'). Users specify either of the options with the project data. If a circuit
monitoring function is activated by the one-touch circuit jump function, it is notdifferent from the case of executing a circuit monitoring function by another method,
except that it displays a circuit after performing a specified search that is configured
immediately after the activation. Whichever search method is configured, once thecircuit monitoring function is activated, all functions, including 'coil search,' 'contact7

search,' and 'factor search,' can be used in the same way as activating the circuit
monitoring function by another method.
Usually, there is no meaning in performing a contact search by specifying the device
that is turned on by a program for monitoring abnormal phenomena. For example,
however, if a device that is the cause of an abnormal phenomenon is specified and thecontact search is performed after the factor search, multiple abnormal phenomena that
may occur in association with the same cause may be identified.
b. Installation method
In the configuration of an extended function switch or extended user alarm display
by the project data for Defendant's Products 1-1 and 1-2, and in the configuration of an
extended function switch or alarm display for Defendant's Products 2-1 and 2-2, check'Use one-touch circuit jump function.' and select either circuit search mode, 'coil search'or 'factor search' as the search method."(3) Examination of whether constituent features are fulfilled
This court also finds that Defendant's Indicator A on which the OS of Defendant's
Product 3 is installed fulfills all the constituent features of Invention 1. The reasons forthis finding are as stated in the section from the beginning of line 6, page 104 to the endof line 14, page 108 of the judgment in prior instance, and therefore, they are cited,
except for the following amendments.
A. All the terms "構成要件１Ｂ[Constituent Feature 1B]" in line 9 and line 25, page
104, and in line 25 and line 26, page 105 are altered to "構成要件１Ｂ′[Constituent
Feature 1B']"; after the term "認められる[found]" in line 24 on said page, "（以下、これらアラーム表示を「アラーム機能等」ということがある。）[(hereinafter thesealarm displays are referred to as 'alarm function, etc.' in some cases)]" is added; thefollowing is added, starting as a new line after the end of line 24 on said page; the term
"回路 モ ニタ 機 能等 [circuit monitoring function, etc.]" in line 25 on said page isaltered to "回路モニタ機能及びワンタッチ回路ジャンプ機能（以下「回路モニタ機能等」という。）[circuit monitoring function and one-touch circuit jump function(hereinafter collectively referred to as "circuit monitoring function, etc.")]".
"In addition, the First-instance Defendant alleged, as stated in the section of No. 3, 1.
(The Defendant's allegation), (1) A. above (the section added in No. 2, 4. (3) in thisjudgment), that Defendant's Indicator A on which the OS of Defendant's Product 3 isinstalled does not include 'a program for monitoring the occurrence of abnormal
phenomena' (monitoring program) as specified by Constituent Feature 1B'. As
explained above, however, Control Panel 10 (display device) has a program that
identifies the type of abnormal phenomena that occurred in controlled objects of8

Programmable Controller Main Body 20 by identifying changes in RAM 23 data ofProgrammable Controller Main Body 20. This is different from a 'ladder program formonitoring abnormality' included in Programmable Controller Main Body 20 ([0027]
through [0029]). In addition, a program included in Control Panel 10 (display device)indirectly monitors the occurrence of abnormal phenomena through changes in RAM
23 data of Programmable Controller Main Body 20 and, therefore, it is determined to
be 'a program for monitoring the occurrence of abnormal phenomena.' The programs
specified by Constituent Features 1B and 1B' are originally nothing less than 'a programthat identifies changes' as alleged by the First-instance Defendant. Furthermore, theFirst-instance Defendant also recognizes that Defendant's Indicator A on which the OSof Defendant's Product 3 is installed has said program. Therefore, even if 'a monitoring
program' alleged by the Fist-instance Defendant is included in the programmablecontroller, it does not have an impact on whether Constituent Feature 1B' are fulfilled.
Consequently, the First-instance Defendant's allegation related to this point cannot be
accepted either."B. The term "（ワンタッチ回路ジャンプ機能）[(one-touch circuit jump function)]"in line 11 and line 12, page 106 is deleted and the section from the beginning of line 15
to the end of line 26, page 108 is altered as follows.
"F. The First-instance Defendant alleged, as stated in No. 3, 1. (The Defendant's
allegation) (1) B. above, that Defendant's Indicator A on which specified project data is
not installed does not fulfill Constituent Features 1C through 1F.
However, in Invention 1, the project data itself is not specified as a matter required
to identify the invention. Therefore, the decision on whether Defendant's Indicator A on
which the OS of Defendant's Product 3 is installed belongs to the technical scope ofInvention 1 is to examine whether it is a display device where a circuit monitoring
function, etc. can be used if project data with a specified configuration, such as an alarmfunction, etc., is installed. It is sufficient to examine whether said constituent features
are fulfilled on the premise that said specified project data is installed.
Consequently, the aforementioned allegation of the First-instance Defendant cannot
be accepted.
G. The First-instance Defendant alleged, as stated in No. 3, 1. (The Defendant's
allegation) (1) E. above (the section added in No. 2, 4. (4) above in this judgment), that
if a one-touch circuit jump function that specified 'factor search' is installed, circuit
diagrams are displayed in a list, including a circuit diagram where the abnormal
phenomenon occurred and also a circuit diagram that is considered to be a factor thereof.
Therefore, Defendant's Indicator A for which a factor search is specified does not fulfill
9

'a means for displaying a ladder circuit that monitored the occurrence of abnormal
phenomena corresponding to the specified type of abnormality' of Constituent Feature
1E.
However, it is enough for 'a means for displaying a ladder circuit that monitored theoccurrence of abnormal phenomena corresponding to the specified type of abnormality'of Constituent Feature 1E to provide displays, including said ladder circuit diagram,and it cannot be interpreted that it must be a means to display said ladder circuit diagram
only. Also, with regard to an indicator installed by specifying a factor search, there may
be cases where all the history from a ladder circuit that is considered to be a factor ofan abnormal phenomenon until a ladder circuit that monitored the occurrence of theabnormal phenomenon is displayed and the screen requires scrolling in order to display
the ladder circuit that monitored the occurrence of the abnormal phenomenon.
Therefore, Constituent Feature 1E are construed to be fulfilled.
Consequently, the aforementioned allegation of the First-instance Defendant cannot
be accepted."(4) Whether the manufacturing, selling, etc. of Defendant's Indicator A and Defendant's
Product 3 fall under direct infringement of Patent Right 1
This court also finds that the manufacturing, selling, etc. of Defendant's Indicator A
and Defendant's Product 3 do not fall under direct infringement of Patent Ri ght 1. The
reasons for this finding are as indicated in the section from the beginning of line 3, page
109 to the end of line 19, page 112 of the judgment in prior instance, and therefore, they
are cited, except for deleting the section from the beginning of line 8 to the end of line
14, page 111 of the judgment in prior instance.
2. Issue 1-2 (Whether the manufacturing, selling, etc. of Defendant's Indicator A andDefendant's Product 3 fall under indirect infringement of Patent Right 1)(1) Whether indirect infringement as defined in Article 101, item (i) of the Patent Act
is establishedThis court also finds that the manufacturing, selling, etc. of Defendant's Indicator A
and Defendant's Product 3 do not fall under indirect infringement as defined in Ar ticle
101, item (i) of the Patent Act concerning Patent Right 1. The reasons for this finding
are as indicated in the section from the beginning of line 25, page 112 to the end of line
14, page 113 of the judgment in prior instance, and therefore, they are cited.
(2) Whether indirect infringement as defined in Article 101, item (ii) of the Patent Act
is established
A. "Any article that is used in the production of the product"
According to the holding in 1. above, Defendant's Indicator A and Defendant's
10

Product 3 are found to fall under "any article that is used in the production of the
product" of a directly infringing product (product wherein a patent is worked) of Patent
Right 1. In this case, whether they fall under "any article that is essential to the solutionof the problem" (hereinafter referred to as an "essential article for the solution of the
problem") by Invention 1 becomes an issue.
B. "Any article that is essential to the invention's solution of the problem"(A) Meaning of an essential article for the solution of the problem
The purport of specifying articles for which the production, transfer, etc. is deemed
to be an infringement is stipulated to be "any article that is essential to the invention's
solution of the problem" in Article 101, item (ii) of the Patent Act is construed asfollows: since articles subject to said item can be used for the purpose of non infringement in addition to the purpose of infringement, this provision aims to limit thearticles for which the transfer, etc. is deemed to be infringement (indirectly infringing
articles) to important components, tools, raw materials, etc. (hereinafter collectively
referred to as "components, etc.") from the perspective of invention so that the effectsof the patent right are not extended unjustly; and for this reason, said articles are
stipulated to be not only "essential for working the invention," but also "essential to theinvention's solution of the problem." In light of this purport, it is reasonable to construethat "any article that is essential to the invention's solution of the problem" (an essential
article for the solution of the problem) is any of the components, etc. with which"problems that the invention intends to solve" are solved for the first time by using it,in other words, any of the characteristic components, etc. that directly brings a uniquestructure that characterizes a characteristic technical means newly disclosed by theinvention as a method to solve problems of prior art.
(B) Characteristic technical means of Invention 1
a. Problems of Invention 1 and the means to solve them
A characteristic technical means to be newly disclosed as a method to solve
problems of prior art in Invention 1 is examined below from the perspective of (A)above. According to 1. (1) above, the following are found: there are the following
problems with a display device used in a programmable controller: [i] in order to search
the ladder circuit that caused an abnormal display, the conventional method where theperson in charge of maintenance refers to ladder circuit diagrams requires a lot of time;and [ii] searching multiple ladder circuit diagrams to identify the true cause of anabnormality takes a long time; Description 1 states that Invention 1 solves (A) the
problem defined in [i] above by including a means for displaying a ladder circuit thatmonitored the occurrence of abnormal phenomena corresponding to the specified type11

of abnormality when the type of abnormality is specified by touch (Constituent Features
1D and 1E); and also solves (B) the problem defined in [ii] above by including a meansfor displaying said ladder circuit that includes a touch panel for specifying either the
input or output element of the displayed ladder circuit by touch and a means forsearching and displaying the ladder circuit that outputs an input element when the input
element of the displayed ladder circuit is specified by said touch, and for searching anddisplaying the ladder circuit that inputs an output element when the output element of
the displayed ladder circuit is specified by said touch (Constituent Feature 1F).
b. Prior art
According to the statements in the documents that are found to be publications
distributed before filing of an application for Patent 1, including the statements (pages
8, 14, and 25) in "Catalog for Mitsubishi Graphic Operation Terminal MELSEC -GOT
900 Series" (Exhibit Otsu 1; hereinafter referred to as "Exhibit Otsu 1 Document");
statements (page 6-16 through page 6-17) in "Mitsubishi Graphic Operation Terminal
GOT MELSEC Operating Manual" (Exhibit Otsu 2; hereinafter referred to as "Exhibit
Otsu 2 Document"); and statements (page 1-10 through page 1-11, page 6-4 throughpage 6-6, and page 6-7) in "Mitsubishi Graphic Operation Terminal GOT MELSEC
Operating Manual (Extended Function / Optional Function)" (Exhibit Otsu 3;
hereinafter referred to as "Exhibit Otsu 3 Document"), it is found that the following
product is disclosed: a product that includes a circuit monitoring function wherein whenhighlighting multiple types of displayed messages using a finger and selecting a touchkey, a circuit monitoring function is activated while searching the device with which
the error occurred, and a circuit block including the searched device alone is displayed,
and wherein the circuit monitoring function enables a coil search to display a circuit
block, including the retrieved search device, by specifying a touch-key by touch andinputting the device name or device number on the input screen, and a contact search
to display a circuit block, including the retrieved search device, by specifying a touch key by touch and inputting the device name or device number on the input screen.
In addition, according to the statements (sheet 2 and sheet 3) in "MELSEC QnACatalog" (Exhibit Otsu 20: hereinafter referred to as "Exhibit Otsu 20 Document"), it
is found that the following is disclosed: a ladder circuit editing device wherein a cursor
moves to the position of a device contact or coil when the coil or contact on the laddercircuit diagram is specified by dragging a cursor over it.
Furthermore, according to the statements ([0001], [0014] through [0016], [FIG. 2],
and [FIG. 3]) in "Unexamined Patent Application Publication No. 1994 -195111"(Exhibit Otsu 29; hereinafter referred to as "Exhibit Otsu 29 Document"), it is found12

that the following is disclosed: A monitoring device that displays a ladder circuit that
outputs an input element by touching the input element of the displayed ladder circuit
when an abnormal phenomenon occurs.
c. Review
In comparison with the prior art defined in b. above, Invention 1 is different fromthe prior art in the following points: in terms of the devices defined in Exhibit Otsu 1
Document through Exhibit Otsu 3 Document, searching the input element or output
element is a touch search; in terms of the device defined in Exhibit Otsu 20 Document,a coil search or contact search is a touch search and a search is performed when anabnormal phenomenon occurs; and in terms of the device defined in Exhibit Otsu 29
Document, a touch search can be performed by inputting the output element. In
consideration of these points, it is found that the structure of Invention 1 wherein "ameans for displaying a ladder circuit that monitored the occurrence of abnormal
phenomena corresponding to the specified type of abnormality when the type ofabnormality is specified by said touch" (Constituent Feature 1E) includes "a touch panel
for specifying... the input element ... of the displayed ladder circuit by touch and ameans for searching and displaying the ladder circuit that outputs an input element when
the input element of the displayed ladder circuit is specified by said touch" (coil search)is only prior art and it is also found that the characteristic technical means that Invent ion
1 newly discloses has the following structure wherein "a means for displaying a laddercircuit that monitored the occurrence of abnormal phenomena corresponding to thespecified type of abnormality when the type of abnormality is specified by said touc h"(Constituent Feature 1E) includes "a touch panel for specifying... the output element ...
of the displayed ladder circuit by touch and a means for searching and displaying theladder circuit that inputs an output element when the output element of the d isplayed
ladder circuit is specified by said touch" (contact search) (hereinafter referred to as "acontact search by touch when an abnormality occurs" in some cases).
(C) Characteristic components, etc.
As described in (A) above, Article 101, item (ii) of the Patent Act is construed tolimit indirectly infringing products to characteristic components, etc. that directly bringa unique structure, etc. that characterizes the characteristic part of the invention inquestion. The scope of "components, etc." should be determined by examining whether
the article has physical or functional integrity, while also observing from thesocioeconomic perspective. Even if a component is an existing component, etc., in cases
where it is manufactured and sold to be used as one of the components, etc. provided
for solving the invention's problem, the component should also be construed to fall13

under an article that is essential to the invention's solution of the problem. It is basedon the following grounds: in many cases, even characteristic components, etc. arecreated by the combination of well-known components, etc.; if the application ofindirect infringement is immediately precluded in cases where an article that has
integrity can be formally separated, the scope of the provisions of indirect infringement
is extremely limited and it is significantly against the purport that the Patent Act deemedindirect infringement to be patent infringement and approved the protection of thepatent right.
(D) Defendant's Product 3
Defendant's Product 3 stores the parts, such as the circuit monitoring function, etc.,from among the OS of extended/optional functions. When it is installed on Defendant's
Indicator A, the circuit monitoring function, etc. can be used with Defendant's Indicator
A. The part of circuit monitoring function, etc. of Defendant's Product 3 and other parts
are found to be physically and functionally integrated.
Then, Defendant's Product 3 is found to be a characteristic component that directly
brings the characteristic technical means of Invention 1 as a whole.
Therefore, Defendant's Product 3 falls under an essential article for the solution of
the problem of Invention 1.
(E) Defendant's Indicator A
The structure with a contact search by touch when an abnormality occurs, which isa characteristic technical means newly disclosed by Invention 1, can be achieved only
when there are both Defendant's Indicator A and Defendant's Product 3. As the First instance Defendant admits, the only OS that can be installed on Defendant's Indicator
A in order to achieve the circuit monitoring function, etc. is Defendant's Product 3 andthe only indicator on which Defendant's Product 3 can be installed to achieve saidfunction is Defendant's Indicator A (Exhibits Ko 5 and 8). Therefore, Defendant's
Indicator A can function to achieve the aforementioned structure in limited cases where
the OS of Defendant's Product 3 is installed. In addition, both Defendant's Indicator A
and Defendant's Product 3 are produced and sold by the First-instance Defendant. The
First-instance Defendant is familiar with the aforementioned structure, intentionallyselected said structure, and has provided both to customers.
Based on the above, Defendant's Indicator A and Defendant's Product 3 happen tobe physically separate products, and therefore, one function is divided in multiple
components. However, originally, Defendant's Indicator A is functionally indivisible
from Defendant's Product 3. Even if it is deemed to be an independent product, it
constitutes a characteristic component, etc. that directly brings the characteristic
14

technical means of Invention 1.
Therefore, Defendant's Indicator A falls under an essential article for the solutionof the problem of Invention 1.
(F) The First-instance Defendant's allegationa. The First-instance Defendant alleged that, as stated in No. 3, 2. (The Defendant's
allegation), B. (the section amended in No. 2, 4. (6) above in this judgment) of thejudgment in prior instance related to the citation, the contact search with a structure ofConstituent Feature 1F "for searching and displaying the ladder circuit that inputs an
output element when the output element is specified by said touch" does not contributeto specifying the cause of the abnormality and, when a coil search is performed too far,it cannot return to the original circuit by contact search; therefore, even if the coil search
has the technical meaning alleged by the First-instance Plaintiff "to see other impacts
on equipment by the identified cause of the abnormality," it does not fall under either ameans for solving the problems of Invention 1 or a characteristic technical means; andtherefore, it is a function only necessary for a circuit editing device, which is in adifferent technical field from Invention 1.
b. Examining this point, Description 1 has the following statements.
"[0010]In a conventional programmable controller, when an abnormality occurs, anabnormality is displayed corresponding to the type of the abnormality, and therefore,
an operator can find the fact that an abnormality occurred and the type of abnormal
phenomenon that occurred; however, the reason for the occurrence is not displayed.
Therefore, in a conventional programmable controller, when an abnormality occurs,
the person in charge of maintenance of the system needs to find the ladder circuit thatturned on the abnormality indicator while referring to ladder circuit diagrams that wereprepared in advance, and searches for a cause of the abnormality in accordance with theladder circuit.
[0011][Problems to be solved by the invention]
In general, ladder circuit diagrams are thick with over 100 pages, and it takes a lotof time to look for a ladder circuit that caused the abnormality display.
In addition, multiple ladder circuits must be searched until the true cause of theabnormality is identified in many cases, and a long period of time is wasted until therequired ladder circuit is found from the ladder circuit diagrams.
Accordingly, the present invention aims to solve the above problem by displaying
the ladder circuit that caused the abnormality when an abnormal phenomenon occurs,15and thereby making it possible to promptly perform the recovery process.
[0015]For the ladder circuit that caused the abnormality in cases where the abnormality isdisplayed, the input element that resulted in the abnormality is immediately specified
and the recovery process is easily performed. At this point, the input element may also
be an output element. Therefore, in some cases, the input element that caused theabnormality is not the true cause, but another input element that outputs said input
element is the true cause of the abnormality. For example, if Input Element 1 causes ananomality display, Input Element 2 that switches the operation status of said Input
Element 1 (which is also Output Element 1) may be the true cause of the abnormality
in some cases. Moreover, the chain may be traced further back.
[0016]
In cases where said situation occurs, the display device can specify the input andoutput elements of the displayed ladder circuit using a touch panel. When the input
element of the displayed ladder circuit is specified, the ladder circuit that outputs the
specified input element is searched and displayed. In addition, when the output elementof the displayed ladder circuit is specified, the ladder circuit that inputs the specified
output element is searched and displayed. For this reason, ladder circuits can be
retrieved one after another until a true cause is identified. Moreover, the operation iscompleted only by touching a touch panel with a hand, which is very simple.
[0040]
Further, with Control Panel 10, the ladder circuit can be switched. In this regard,
the operator touches either the input element (in this case, M001)) or output element
EM 600.
When the input element is touched, Step S54 in FIG. 12 becomes YES, and in Step
S55, the address corresponding to the input element is stored in the variable Add. In
this state, in order to perform Step S51 next, in Step S51 performed at this time, theladder circuit that outputs input element (M001) in the previous steps is searched anddisplayed. FIG. 8 illustrates said operations and the ladder circuit is replaced with one
that outputs input element in the previous steps.
The operator can track the ladder circuit back to upstream in order to search the truecause using this function and can accurately identify the cause while the system guides
the chain of causal relationship.
[0041]
When the chain of causal relationship is tracked back too far, the operator touches
the output element. Then, Steps S57 and S58 are executed this time and it becomes16

possible to return to the ladder circuit that inputs output elements in the previous st eps.
For example, if Output Element M001 is touched in the state shown in FIG. 8, it
becomes possible to return to a ladder circuit that inputs Output Element M001, in otherwords, to the ladder circuit shown in FIG. 7.
[0042]In Steps S55 and S51 in FIG. 12, the ladder circuit can be pursued to the retroactiveside and if the ladder circuit is tracked back by Steps S57 and S58 too far, it is possible
to return to the original circuit. Therefore, this control panel is very easy to use andenables effective performance of recovery process in the event of an abnormality.
[0045][Effects of the Invention]
According to the device described in Claim 1, the ladder circuit that caused theabnormality is displayed when the abnormality occurred. Therefore, an operator can
immediately start the recovery process and can avoid a situation of wasting time insearching the relevant ladder circuits from a thick list of ladder circuit diagrams as donein the past.
If the chain of causal relationship relates to multiple ladder circuits, it is possible
for an operator to display relevant ladder circuits one after the other by touching a touch
panel. It supports the search for causes very effectively in cases where the abnormal
phenomenon is very complicated, and thereby effectively shortens the time forsearching causes.

17[Figure 12]
Circuit monitoring display process

Add = Other than 0?

Search and display a circuit that outputs Add address.

Display the first circuit.

Input by touch was
performed?

Input element?

Set address to Add.

Output element?

Set address to Add.

Search and display circuit that outputs Add address.

"c. According to the statement in b. above, it is found that there is a statement that, as
the function and effect of the contact search in Constituent Feature 1F of Invention 1,
if tracking back too far during the search for a cause of an abnormality by the coil search("a means for searching and displaying the ladder circuit that outputs an input element),
it returns to the original circuit ([0041], [0042], and [FIG. 12]). A circuit that is tracked
back by a coil search is also displayed. Therefore, it is obvious that it is possible toreturn to the original circuit if tracking back too far. This may not be said to be theoptimal means to return to the original circuit, but the contact search has a function to
return to the original circuit.
In addition, there is no necessity to understand that the statement in b. above onlymeans that the function and effect of the contact search are merely to return to the18original circuit. The function and effect of Invention 1 are: "it takes a lot of time to look
for a ladder circuit that caused the abnormality display. ... the present invention aims tosolve the above problem by displaying the ladder circuit that caused the abnormality
when an abnormal phenomenon occurs, and thereby make it possible to promptly
perform the recovery process." ([0011]) and "If the chain of causal relationship relates
to multiple ladder circuits, it is possible for an operator to display relevant laddercircuits one after the other by touching a touch panel. It supports the search for causes
very effectively in cases where the abnormal phenomenon is very complicated, andthereby effectively shortens the time for searching causes." ([0045]). It also includes
broadly an objective of recovery process to shorten the time required for recovery
process when an abnormal phenomenon occurs by displaying a variety of ladder circuits.
There is also the following collateral objective in the recovery process: after tracking aladder circuit back, identifying an abnormality at a contact, and pursuing the cause of
the abnormality, to check whether the impact of the abnormality with the contact
affected output elements other than the coil on the tracked back route and to also
confirm other impacts on equipment from the identified cause of the abnormality. These
are also found to contribute to identifying the cause of the abnormality (Exhibit Ko 69)
and the First-instance Defendant does not deny that the contact search has the intended
use to confirm the impacts on downstream. Consequently, it is reasonable to find thatthe contact search in Constituent Feature 1F is a means to solve the problem of
Invention 1 in the display device to shorten the recovery process when an abnormality
occurs.
In addition, a characteristic technical means of Invention 1 is a contact searchfunction by touch when an abnormality occurs, but not simply to include a contact
search function by touch. Therefore, usefulness as a means to solve said problem in adifferent technical field from that of the conventional circuit editing device is found.
Based on the above, the allegation of the First-instance Defendant indicated in a.
above cannot be accepted.
C. Whether the invention falls under a general-purpose productIn light of the functions, etc. of Defendant's Indicator A and Defendant's Product 3,
it cannot be found that Defendant's Indicator A and Defendant's Product 3 fall underarticles that are widely distributed within Japan.
In this regard, the First-instance Defendant alleged, as stated in No. 3, 2. (TheDefendant's allegation), (3) C. (B) of the judgment in prior instance related to thecitation (the section amended in No. 2, 4. (6) in this judgment), that the circuit
monitoring function is an independent function from the occurrence of abnormality and19can be used under conditions where a ladder circuit is displayed without going throughthe alarm list function, and, therefore, this function is provided as a general-purpose
function.
However, the purport of Article 101, item (ii) of the Patent Act to exclude "those
widely distributed within Japan" from subjects of indirect infringement is the fact that
it is not preferable to include standard products and popular products that are generally
available on the market in the subject of indirect infringement from the perspective ofensuring trade stability. Since Defendant's Indicator A and Defendant's Product 3 are
not found to be such standard products or popular products, even if the circuit
monitoring function is a general-purpose function, Defendant's Indicator A andDefendant's Product 3 do not fall under general-purpose products.
Therefore, even in consideration of the allegation of the First-instance Defendant,
the aforementioned finding is not changed.
D. Conditions under which directly infringing products are produced(A) Regarding the point, "knowing that the article is used for the working of theinvention" (Subjective Requirement [ii]), first, the conditions where Defendant's
Indicator A and Defendant's Product 3 are used for the working (production) of
Invention 1 are examined.
The First-instance Plaintiff alleged, as stated in No. 3, 2. (The Plaintiff's allegation),B. (C) of the judgment in prior instance related to the citation (the section amended in
No. 2, 4. (5) above in this judgment), that selling of Defendant's Indicator A andDefendant's Product 3 is substantially the same as the selling of the indicator on which
the OS of Defendant's Product 3 is installed or the production thereof as directly
infringing products if a circuit monitoring function is installed on Defendant's Indicator
A. On the other hand, the First-instance Defendant alleged, as stated in No. 3, 2. (TheDefendant's allegation), (3) D. of the judgment in prior instance related to the citation(the section amended in No. 2, 4. (6) above in this judgment), that in order for
Defendant's Indicator A and Defendant's Product 3 to be produced as directly infringing
products, it is required to connect them with a specified type of sequencer manufacturedby the First-instance Defendant; therefore, it has low probability to use Defendant's
Indicator A and Defendant's Product 3 for producing directly infringing products; andusing the contact search function of Invention 1 when an abnormal phenomenon occurs
is meaningless or is an unrealistic function to return to the original circuit; therefore,
Defendant's Indicator A and Defendant's Product 3 will not be used as a product working
Invention 1.
(B) As examined in 1. (2) and (3) above, in order for Defendant's Indicator A on which
20the OS of Defendant's Product 3 is installed to belong to the technical scope of Invention
1, a ladder circuit must be displayed when the name of the abnormality displayed on
the touch panel is touched. For this purpose, users are found to be required not only topurchase Defendant's Indicator A and Defendant's Product 3, but also to have asequencer manufactured by the First-instance Defendant with which a circuit
monitoring function, etc. can be used in Defendant's Indicator A, and to create project
data, including a circuit monitoring function, etc.
The First-instance Plaintiff alleged that the purchase, etc. of Defendant's Indicator
A and Defendant's Product 3 or the installation of the circuit monitoring function on
Defendant's Indicator A are immediately deemed to be production of directly infringing
products. Based on the constituent features of Invention 1, however, for the producti onof directly infringing products, it is not necessary that users actually operate a one touch circuit jump function, but a state where the function can be operated is necessary,and therefore, said allegation of the First-instance Plaintiff cannot be accepted.
(C) In order to use Defendant's Indicator A, it is necessary to install the OS of
Defendant's Product 3. Therefore, there are no users who purchased, etc. Defendant's
Indicator A but have not purchased Defendant's Product 3. In addition, Defendant's
Indicator A is to be connected to a programmable controller (sequencer), which is acontrol device to control equipment and machines in a plant, etc. Based on its nature, it
is difficult to find it to be an exceptional phenomenon that when an abnormality occurs
with equipment or a machine, users who purchased, etc. Defendant's Indicator A checka ladder circuit to confirm and identify the cause and that users use the circuit
monitoring function during the check.
Furthermore, as it is found in No. 4, 2 (2) of the judgment in prior instance related
to the citation (1. (2) above in this judgment), the First-instance Defendant stated about
the one-touch circuit jump function at the beginning of the section "Case Study 1" onpage 6 of a catalog for Defendant's Products 1-1 and 1-2 and Defendant's Product 3-1(Exhibit Ko 5) and emphasized its good points, such as "A few touches on the screen
make it possible to search the causes of an abnormality!" This page follows thestatements of "Contents," etc. on pages 2 and 3 the statements of "Line-up" ofequipment in GOT1000 on pages 4 and 5. This is the page that refers to the product'sfunctions for the first time and the one-touch circuit jump function is explained at its
beginning (Exhibit Ko 5). The First-instance Defendant also stated the function in thesection stating the linkage with the general-purpose sequencer on page 12 of said
document. At the beginning of page 1 of an advertisement document titled "GOT 1000
Series Information No. 2: Computer-free Maintenance [i]" (Exhibit Ko 35; created in21June 2013), there is a statement "Only GOT can do it!!" In this document, there is alsoa statement, "For maintenance! For solving problems! Equipped with a one -touchcircuit jump function! Very popular! [Ladder editing function]" and "Promptly solved
at the worksite!" Under said statement, with the title "Broad access range and usefulfunctions for effective maintenance!," the following statement follows: "It also
corresponds to the one-touch circuit jump function and is useful for identifying thecauses of malfunction." (Exhibit Ko 35) In addition, the First-instance Defendant
alleged that the one-touch circuit jump function can also be used with Defendant's
Products 2-1 and 2-2 and Defendant's Product 3-2 (Exhibit Ko 8).
Considering these circumstances together, it is obvious that the First -instance
Defendant regarded the one-touch circuit jump function as a key advertising point for
Defendant's Indicator A and Defendant's Product 3. As stated in (2) above, since
Defendant's Indicator A is a high-specification or middle-specification model among
the Defendant's indicators and its price is high, it is natural for users to intend to use
the functions fully. Then, persons who purchased Defendant's Indicator A andDefendant's Product 3 reasonably act to use the circuit monitoring function, etc. As
stated in 1. (2) above, when a user creates project data where the extended function
switch, etc., whose operation setting is set as a circuit monitor, is installed, upon transfer
of project data to Defendant's Indicator A, the circuit monitoring function unit isautomatically selected as a target of the transfer from among the OS ofextended/optional function of Defendant's Product 3 and then automatically transferred
to Defendant's Indicator A, unless the user takes a special action to eliminate theseprocedures. In addition, concerning the installation of a one-touch circuit jump function,
as stated in No. 4, 2. (2) of the judgment in prior instance related to the citation (thesection amended in 1. (2) above in this judgment), configuration is completed bychecking boxes when configuring an extended function switch, etc. of project data
(Exhibits Ko 15, 37, and 52). Therefore, the possibility of installing the circuit
monitoring function, etc. is quite high.
Furthermore, the market share in Japan of sequencers manufactured by the First instance Defendant accounts for approximately 50% (Exhibits Otsu 58 through 64). The
First-instance Defendant alleged that the percentage of sales of sequencers
manufactured by the First-instance Defendant with which the circuit monitoring
function, etc. can be implemented by connecting to Defendant's Indicator A is as statedin 4. in Attachment 7. There are no grounds to question it, and therefore, it is found thatsaid percentage of sales is considerably high. Based on the above, eventually, the market
share in Japan of sequencers manufactured by the First-instance Defendant with which
22the circuit monitoring function, etc. can be implemented by connecting to Defendant's
Indicator A is also considered to be considerably high. In addition, the quantity sold of
sequencers manufactured by the First-instance Defendant is higher than the quantity
sold of programmable indicators manufactured by the First-instance Defendant(Exhibits Otsu 58 through 64). Based on the fact that "compatibility with PLC" accounts
for 63.9%, which is the highest percentage of selection criteria of programmableindicators (page 34 of Exhibit Ko 30), it is assumed that there is a trend to prepare aprogrammable controller (sequencer) and programmable indicator of the same
manufacturer. Consequently, a programmable controller held by a customer whopurchased Defendant's Indicator A is highly likely to be a programmable controller
manufactured by the First-instance Defendant and it is highly possible that it is a
programmable controller with which a circuit monitoring function, etc. can be used.
As described above, it is found that a user who purchases, etc. Defendant's Indicator
A always purchases, etc. Defendant's Product 3; the circuit monitoring function is afunction that is originally required for a programmable indicator; the First -instance
Defendant considered the one-touch circuit jump function to be a key point foradvertisement; users, who purchased, etc. Defendant's Indicator A and Defendant's
Product 3, are strongly motivated to use the circuit monitoring function, etc. and it ishighly possible that the function is installed; and the percentage of users who are in theequipment environment where the circuit monitoring function, etc. can be used isconsidered to be very high. In consideration of these circumstances, it is estimated tobe highly possible that persons in a non-exceptional scope from among persons whopurchased, etc. Defendant's Indicator A or Defendant's Product 3, produce products
directly infringing Patent Right 1 and there is no allegation or presentation of evidence
to overturn this presumption.
In addition, concerning Defendant's Product 1-2 among Defendant's Indicator A,
users who use the circuit monitoring function, etc. must purchase an optional function
board, and therefore, the usage rate of the circuit monitoring function, etc. may be lower
than the other types of Defendant's Indicator A (Exhibit Ko 5). Comparing the quantities
sold of Defendant's Product 1-2 stated in Attachment 3 and the quantities sold ofoptional function board, which are found to be as stated in 5. of Attachment 7, users
who can use the circuit monitoring function, etc. from among users who purchased, etc.
Defendant's Product 1-2 account for at a maximum of approximately 25% (not all users
who purchased the optional function board use the circuit monitoring function, etc.).
This percentage does not preclude estimating that it is highly possible that persons in
the non-exceptional scope from among persons who purchased, etc. Defendant's
23

Product 1-2, produce products that directly infringe Patent Right 1.
(D) The First-instance Defendant alleged that using the contact search function of
Invention 1 when an abnormal phenomenon occurs is meaningless or it is an unrealistic
function. However, the contact search function of Invention 1 is not a meaningless or
unrealistic function as stated in B. (F) above.
E. Subjective requirements
This court also finds that the First-instance Defendant has produced, transferred,
etc. infringing products "knowing that" Invention 1 "is a patented invention"(Subjective Requirement [i]) and "knowing that" Defendant's Indicator A andDefendant's Product 3 that are used for the production of products directly infringing
Patent Right 1 "is used to work the invention" of Invention 1 (Subjective Requirement[ii]) on April 2, 2013 and thereafter.
The reasons for this finding are as stated in the section from the beginning of line
19, page 116 to the end of line 4, page 125 of the judgment in prior instance, andtherefore, they are cited, except for the following amendments.
(A) The term "被告製品３[Defendant's Product 3]" in line 26, page 117 is altered to "被告製品３のＯＳをインストールした被告表示器Ａ[Defendant's Indicator A on
which the OS of Defendant's Product 3 is installed]".
(B) The section from the beginning of line 22, page 120 to the end of line 24, page 125
is altered as follows.
"(C) Subjective Requirement [ii]a. The First-instance Defendant alleged that Defendant's Indicator A and Defendant's
Product 3 have practical use in which Invention 1 is not worked; and that the First instance Defendant only sells Defendant's Indicator A and Defendant's Product 3 todistributors in principle, and therefore, does not know that Defendant's Indicator A andDefendant's Product 3 are used by users to work Invention 1.
b. First, an examination is conducted below as to in what situation Subjective
Requirement [ii] is considered to be fulfilled, in other words, in what situation it can besaid that articles that can also be used lawfully are produced, transferred, etc. while'knowing that they are used for the working of an invention.'
The indirect infringement defined in Article 101, item (ii) of the Patent Act
positioned the production, transfer, etc. of articles that can also be used lawfully(hereinafter referred to as 'versatile products') as indirect infringement. Why theprovisions require Subjective Requirement [ii] as a requirement for the establishmentof indirect infringement is construed to be a consideration not to unnecessarily extend
the scope where indirect infringement is established since whether the subject products24

(components, etc.) are used lawfully or with an aim or in a manner to infringe the patentright is left to the decision of individual users and it is hard for persons who intend to
produce, transfer, etc. the article to be responsible for duty of care to that extent and it
may undermine trade stability significantly.
In light of these purports, there are the general possibilities that said components,
etc. are used with the aim or in the manner to infringe the patent right. If it is construed
that Subjective Requirement [ii] is fulfilled when a person who produced, transferred,
etc. components, etc. only recognized or admitted that there are said general
possibilities, it results in discounting the purport to give a consideration to the tradestability of versatile products by Subjective Requirement [ii] and it is not reasonable.
Therefore, in order to say that Subjective Requirement [ii] is fulfilled, it should beconstrued that there must actually be a situation where it is highly possible, more thana general possibility, to cause patent infringement due to the transfer, etc. of thecomponents, etc., and a person who produced, transferred, etc. said components, etc.
recognizes and admits said fact.
On the other hand, concerning Subjective Requirement [ii], if it is construed that aperson who produces, transfers, etc. components, etc., is required to have a recognition
that said components, etc. are actually used for the working of a patented invention at
the individual transferee, etc. on each occasion of producing, transferring, etc. said
components, etc., it results in the patent right not being in force even in cases where
said person recognizes and admits that it is highly possible to cause a patent
infringement by the transfer, etc. of said components, etc., unless said person does not
actually recognize the intended use by individual transferee, etc. This is construed not
to meet the original purport of Article 101, item (ii) of the Patent Act to affect the patentright on preliminary acts for which it is highly possible to result in a direct infringement.
In consideration of the above, in order to find the fulfillment of Subjective
Requirement [ii], it is reasonable to construe, in light of the nature of the components,
etc., their objective use conditions, provision method thereof, etc., that there must be
an actual situation where it is highly possible for persons in the non-exceptional scopefrom among persons, who purchase, etc. said components, etc., to use said products forpatent infringement and that a person who produces or transfers, etc. the components,
etc. must recognize and admit that fact, and the fulfillment of these requirements is
considered to be sufficient. In light of the wording of the Patent Act, 'knowing that thearticle is used for the working of the invention,' it is not unreasonable to construe inthis way.
c. When applying said understanding to this case, as stated in D. above, it is found that25

there is actually a situation where it is highly possible that persons in the non exceptional scope from among users who purchase, etc. Defendant's Indicator A andDefendant's Product 3 produce products directly infringing Patent Right 1. Based on
the fact explained in D. above, there is no way that the First-instance Defendant who
produces, transfers, etc. Defendant's Indicator A and Defendant's Product 3 did notknow that fact. Therefore, it is found that the First-instance Defendant produced,
transferred, etc. Defendant's Indicator A and Defendant's Product 3 while recognizing
and admitting the aforementioned situation.
d. The First-instance Defendant's allegation
The First-instance Defendant indicated, as stated in No. 3, 2. (The Defendant's
allegation) (3) C. of the judgment in prior instance related to the citation (the sectionamended in No. 2, 4. (6) above in this judgment), that as a basis for denying malicious
intentions, the First-instance Defendant was selling Defendant's Product 3 throughdistributors. Even if it is true, this fact only allows to presume that the First -instance
Defendant did not specifically know the actual usage of individual users; and said fact
does not have an impact on the aforementioned finding that upon producing,transferring, etc. Defendant's Indicator A and Defendant's Product 3 that are found to
be indirectly infringing products, the First-instance Defendant recognized and admitted
a high possibility that persons in the non-exceptional scope from among users whopurchase, etc. Defendant's Indicator A and Defendant's Product 3 would use said
products for patent infringement.
However, the First-instance Defendant alleged, as stated in No. 3, 2 (TheDefendant's allegation) (3) B. of the judgment in prior instance related to the citation(the section amended in No. 2, 4. (6) above in this judgment), that the invention before
the correction related to Invention 1 before Correction in this case is prior art itself and,in this regard, it is impossible that any article falls under an essential article for thesolution of the problem and, therefore, there is no room for indirect infringement to beestablished. This allegation is construed that, in order to find the fulfillment ofSubjective Requirement [ii], it is necessary to have a recognition that said products are'essential to the invention's solution of the problem.' However, as described above, since
the purport of Article 101, item (ii) of the Patent Act to require Subjective Requirement[ii] is to facilitate the trade stability of persons who intend to produce, transfer, etc.
subject articles (components, etc.) because said articles are also used lawfully, it isreasonable to construe that it is enough that malicious intentions in the aforementioned
meaning are found in relation to the use of said products for the purpose of infringement,
and it is not required that the relevant person has a recognition that said products are26

'essential to the invention's solution of the problem.' Consequently, the aforementioned
allegation of the First-instance Defendant cannot be accepted.
e. Based on the above, it is found that the First-instance Defendant produced,
transferred, etc. Defendant's Indicator A and Defendant's Product 3 and licensed a
computer program related to Defendant's Product 3 (in cases of a program, it isconstrued that licensing falls under leasing) while knowing that they are used for t heworking of Invention 1."
F. Summary
Consequently, indirect infringement as defined in Article 101, item (ii) of the Patent
Act is established concerning the production, transfer, etc. of Defendant's Indicator A
and Defendant's Product 3 by the First-instance Defendant on April 2, 2013 andthereafter.
3. Issue 2-1 (Whether manufacturing, selling, etc. of the Defendant's Indicator andDefendant's Product 3 fall under direct infringement of Patent Right 2-1), Issue 2-2(Whether manufacturing, selling, etc. of Defendant's Products 1 and 2 and Defendant's
Product 3 fall under indirect infringement of Patent Right 2-1), Issue 2-3 (Whether
manufacturing, selling, etc. of Defendant's Indicator and Defendant's Product 3 fallunder direct infringement of Patent Right 2-3), and Issue 2-4 (Whether manufacturing,
selling, etc. of Defendant's Products 1 and 2 and Defendant's Product 3 fall underindirect infringement of Patent Right 2-3)
(1) Invention 2
The technical meaning of Inventions 2-1 and 2-3 is as stated in the section from the
beginning of line 5, page 126 to the end of line 2, page 128 of the judgment in priorinstance, and therefore, it is cited.
(2) Constituent Feature 2E
Constituent Feature 2E stipulates "to establish a program displaying the name of anabnormality for selectively displaying at least one name of various abnormalities thatis generated during the execution of said sequence control in the section to display thename of the abnormality, which is part of said display board and is installed
independently from the display section of said soft lamp and said soft switch," and toestablish "the section to display the name of the abnormality," which is part of the"display board," independently from "the section to display said soft lamp and soft
switch."In addition, looking at Description 2, as it was found in (1) above, Inventions 2 -1
and 2-3 have the structures as a means to solve the problem that it is troublesome toswitch screens when making responses to an abnormal display, with the aim to display
27

multiple abnormalities in the order of highest priority in the limited area of the part ofthe display board and to display lamps for multiple abnormal items, lamps indicating
the operation status of equipment and devices, and switches to give instructions to said
equipment and devices at the same time on one screen. As a result, on the screen
displaying the name of the abnormality, other display areas can be assigned to display
other information so that multiple abnormalities can be displayed on the display board
in order of highest priority when they occur at the same time. Therefore, operators canidentify which abnormality is the most serious and urgent and it has the effect o fpreventing problems caused by leaving a critical abnormality for a long time. In theembodiment of the invention, the section consisting of four areas in First Display Area
DPY1 on the upper side of the screen to display many soft lamps SL is indicated as"Section to display the name of abnormality" (FIG. 3]). Skilled operators who can takeactions only by the name of the abnormality, can identify the operation conditions of
the programmable controller or machine tool MT based on soft lamp SL displayed on
the screen and can eliminate the cause of the abnormality by operating soft switch SS
displayed on said screen ([0047]).
(3) Defendant's Indicator and Defendant's Product 3
The extended alarm pop-up display by the Defendant's Indicator on which the OSof Defendant's Product 3 is installed (concerning Defendant's Product 2, an alarm pop up display; hereinafter collectively referred to as "alarm pop-up display, etc." in somecases) can display an alarm only when an alarm occurs without placing an alarm display
object on the screen and can display an alarm regardless of the display screen even if
another object is placed at the display position of the alarm. It is naturally assumed that
another object may be hidden by the extended alarm pop-up display (page 11-8, page
11-9, and page 11-240 of Exhibits Ko 7).
Then, the alarm pop-up display, etc. of the Defendant's Indicator does not place analarm display but displays in a state overlapping the soft lamp and soft switch.
Therefore, it is not displayed in the "section to display the name of the abnormality,"
which is an independent section from the section displaying the soft lamp and soft
switch.
(4) The First-instance Plaintiff's allegation
The First-instance Plaintiff alleged that the alarm pop-up display, etc. is also afringed area and is "the section to display the name of the abnormality that is establishedindependently." As stated in (2) above, however, the "section" to display the name of
the abnormality is "independently" established in Constituent Feature 2E in order toprevent the display of the name of the abnormality from overlapping the soft lamp and28

soft switch. Therefore, it is not enough that the section is established as a section for
displaying the name of the abnormality. The alarm pop-up display, etc. that is in thestatus where the alarm display object overlaps the soft lamp and soft switch and theConstituent Feature 2E are based on totally different technical ideas.
The display position of the extended alarm pop-up can be switched to the top of thescreen, center of the screen, and bottom of the screen (page 11-240 of Exhibit Ko 7)
and the layout of the soft lamp and soft switch on the display screen can be optionallyconfigured by users (see page 6 of Exhibit Otsu 33). As shown in Photographs 13 and
14 of Exhibit Ko 11, it is possible to set the display position of the soft lamp and soft
switch in the position that does not overlap the bottom of the screen where an extended
alarm pop-up is displayed. However, the pop-up display highlights the display byshowing it in a different window overlapping the display screen, regardless of what isdisplayed on the display screen, while making it possible to use the part of the display
screen for a display other than the pop-up display when the pop-up display is not shownon the screen. The alarm pop-up display, etc. of the Defendant's Indicator is alsocharacterized by not requiring setting of the section itself (alarm display object).
Therefore, if users bother setting the section to display the soft lamp and soft switch
not to overlap the position for displaying the pop-up alarm, it is opposite to the original
purpose and it is not a practical and realistic use method. Therefore, even if constituent
features are formally fulfilled by such an abnormal use, it should be deemed that users
made an alternation or modification exceeding its original usage, and it is difficult to
say that the Defendant's Indicator that is made possible to use alarm pop-up display, etc.
by said alternation or modification belongs to the technical scope of Inventions 2-1 and
2-3.
As described above, the aforementioned allegation of the First-instance Plaintiff
cannot be accepted.
(5) Summary
Based on the above, the Defendant's Indicator that is made possible to use an alarm
pop-up display, etc. by installing the OS of Defendant's Product 3 does not fulfill
Constituent Feature 2E and does not belong to the technical scope of Inventions 2-1 and
2-3. Therefore, there is no room for the production, transfer, etc. of the Defendant's
Indicator and the Defendant's Products alleged by the First-instance Plaintiff to directly
or indirectly infringe Patent Rights 2-1 and 2-3.
4. Issue 3 (Whether manufacturing, selling, etc. of Defendant's Indicator A, Defendant's
Product 3, and Defendant's Product 4 fall under an indirect infringement of Patent Right3)
29

(1) Invention 3
The technical meaning of Invention 3 is as stated in the section from the beginningof line 26, page 145 to the end of line 6, page 147 of the judgment in prior instance,
and therefore, it is cited. However, the term "[0006]," is added before "[0008]" in line
5, page 147.
(2) Defendant's Indicator A and Defendant's Products 3 and 4
The functions of Defendant's Products 3 and 4 and the method to display a screen
on Defendant's Indicator A are as stated in the section from the beginning of line 6, page
152 to the end of line 10, page 155 of the judgment in prior instance.
(3) Conditions where direct infringement of Patent Right 3 is establishedAccording to (1) above, in order to solve the problem that individual operations,such as recovery, etc. after abnormal stoppage, can be performed only by skilled
operators, Invention 3 makes operation buttons on the touch panel of the operation
control panel displayed in a manner enabling the visual distinguishing of three
conditions: [i] when "operation conditions" are not fulfilled; [ii] when "operation
conditions" are fulfilled, but "activation conditions" are not fulfilled; and [iii] whenboth "operation conditions" and "activation conditions" are fulfilled, and thereby makes
it possible to visually identify three types of situations of operation buttons: operation
buttons that cannot be operated currently, operation buttons that can be operated
currently, and operation buttons to be operated next.
On the other hand, according to (2) above, Defendant's Product 3 and Defendant's
Indicator A themselves have no function to guide the screen display to become an
operation button display as specified in Invention 3. The screen display changes to an
operations button display as specified in Invention 3 when project data created by
Defendant's Product 4 is installed. Eventually, unless project data created by
Defendant's Product 4 is installed along with the OS of Defendant's Product 3 on
Defendant's Indicator A, direct infringement is not established.
(4) Whether indirect infringement of Patent Right 3 is establishedThe time when the First-instance Defendant manufactured and distributed
Defendant's Product 4 is as stated in the section from the beginning of line 8, page 158
to the end of line 2, page 162 of the judgment in prior instance (however, the term
"11.1" in line 1, page 161 is altered to "11.4"); and the time when the First -instance
Defendant learned of patent registration for Invention 3 is as stated in the section fromthe beginning of line 4 to the end of line 24, page 162 of the judgment in prior instance,
and therefore, they are cited.
Based on the above, it cannot be found that the First-instance Defendant knew that30

Invention 3 was a registered invention when the First-instance Defendant manufactured
and distributed Defendant's Product 4 (until February 2011) (the First -instance
Defendant learned of the patent registration on April 2, 2013) and the Fi rst-instance
Defendant has not been manufacturing and distributing Defendant's Product 4 after theFirst-instance Defendant learned that Invention 3 is a registered invention. Therefore,
without the need to make determinations on the remaining points, in any way, there is
no room that indirect infringement as defined in Article 101, item (ii) of the Patent Act
of Patent Right 3 is established.
5. Issue 5-1A (Grounds for invalidation of Patent 1: Prior art effect for which Exhibit
Otsu 28 serves as the prior art) and Issue 5-1B (Breach of requirements for correction)
Concerning the grounds for invalidation of Patent 1, the First-instance Defendant
withdrew the allegation of a lack of an inventive step using Exhibit Otsu 1 Document
through Exhibit Otsu 3 Document as the prior art in the prior instance and newly alleged
as stated in No. 2, 4. (9) above. Therefore, these points are examined below.
(1) Issue 5-1A (Grounds for invalidation of Patent 1: Prior art effect for which Exhibit
Otsu 28 serves as the prior art)
A. Statements in Exhibit Otsu 28 Document
Exhibit Otsu 28 Document has the following statements.
"[0023] In addition, Display Panel 14 is connected to Programmable Controller 10. On
said Display Panel 14, the operation status of Controlled Object 12 by execution of aladder program is displayed. ...
[0026] Controlled Object 12 includes a limit switch, operation switch, hydraulic valve,pressure valve, motor, operation panel, etc. Usually, there are multiple pieces of eachcontrolled object and Programmable Controller 10 controls their operations.
Consequently, display symbols indicating the operation status of these controlled
objects are displayed on Display 26.
[0028] Here, an address (relay address) identifying Controlled Object 12 used in theladder program for Controlled Object 12 is used as data identifying Controlled Object
12. Memory 24 of Display Panel 14 responds to the relay address and stores associateddata to display Controlled Object 12. In other words, the display symbol of Controlled
Object 12 is associated with each relay address. For example, if there is Controlled
Object 12 which is a lamp, the display symbol of the on-state lamp and off-state lamp
are associated with the relay address and the on- or off-state display symbol is selectedbased on the operation status signal.
[0030] When a contact or coil is touched while operation status is displayed on Display
26, a cursor moves over the contact or coil. This action causes a state where the contact31

or coil is selected and a comment responding to the contact or coil is displayed. Then,
users can touch the contact or coil that they want to know about as necessary and canlearn the details. It may be set to display a relay address along with a comment todescribe the details of Controlled Object 12 when the contact or coil is selected.
[0032] If an error (alarm state) occurs with any of Controlled Object 12 in said system,
Programmable Controller 10 detects the error based on the operation status signal fromControlled Object 12. Then, the operation status of corresponding Controlled Object 12(relay address) is provided to Display Panel 14 as an alarm occurrence status.
Consequently, an alarm is displayed for said display symbol on Display 26.
[0033] In the system of the present embodiment, when a user touches the display symbol
for an alarm on Display 26 in this status, a ladder circuit associated with the display
symbol is displayed. In addition, if it is not in the alarm occurrence status, thecorresponding ladder circuit is displayed by touching the display symbol.
[0040] Next, in the system of the present embodiment, when a displayed contact symbol
is touched to display a ladder circuit diagram, the ladder for the contact symbol isdisplayed; and when the symbol for returning is touched, it is possible to return to theprevious display. This ladder search process is explained based on FIG. 5.
[0041] First, when the display of the ladder circuit diagram is started, a pointerindicating the number of searches in the display of the ladder circuit diagram isinitialized and set to zero (S21). Next, it is determined whether a contact symbol or areturn symbol has been touched (S22).
[0042] In this determination, if the contact symbol is touched, a command for searchingfor a coil (OUT order) having the same contact number as the touched contact is issued(S23). This command is transmitted to Programmable Controller 10; Programmable
Controller 10 searches for a coil having the same contact number, and transmits(answers back to) a ladder program for it. Therefore, when receiving the answer backfrom Programmable Controller 10, the ladder program for the coil specified by thetouched contact symbol can be obtained. Usually, a ladder program is also obtained inunits of 16 words as in the case described above, and this is repeated as necessary.
[0043] When the ladder program is obtained, a ladder circuit diagram is displayed basedon the ladder program (S24). Next, the relay address of the displayed ladder circuit coilis set as the display address and is stored in association with the pointer (S25). Then,the pointer is incremented by 1 (S26), and the process returns to the determination in
S22.
[0045] If a return touch is detected in S22, it is determined whether the pointer is zero(S27). If the determination is YES, this touch is invalidated (S28) because there is no32

screen to return to and the process returns to S22. If the determination in S27 is NO,
the pointer is decremented by 1 (S29), and a ladder program using the relay addressstored in association with the obtained pointer value as a coil is acquired from
Programmable Controller 10, and then, the ladder circuit diagram is displayed (S30).
Then, the process returns to the determination in S22. When displaying each laddercircuit diagram, as described above, relay state data is also obtained and displayed.
Then, users can determine which relay should be searched based on the state of eachrelay. Although it is not shown in the figure, the process described in FIG. 5 is
terminated by a command to terminate the display of the ladder circuit.
[0046] When a ladder circuit diagram is displayed in this way, by touching the contact
symbol in the ladder circuit diagram, a ladder circuit diagram for a coil corresponding
to the contact can be displayed. Therefore, by sequentially touching the contact symbols,
the ladder circuit diagram that is considered to be related to the occurrence of the alarm
can be sequentially displayed, and users can easily investigate the cause of theoccurrence of the alarm. Furthermore, since the display can be returned to the originalstate by touching the return symbol, when the superior ladder circuit is checked for one
contact and it is found not to be the cause, it is possible to return to the original laddercircuit diagram and search the cause of occurrence of the alarm in a different relay.
[0049] As described above, according to the system of the present embodiment, by
touching a display symbol on the display panel, the ladder program for the display
symbol can be obtained and displayed as a ladder circuit diagram. Therefore, thenecessary ladder circuit diagram can be easily obtained by touching the display whenan alarm occurs. In particular, the ladder program itself does not need to be rewritten,
and creation of the ladder program does not become difficult.
[0053] Also, while the ladder circuit diagram is displayed, by touching the contact
symbol, a ladder circuit diagram for the coil corresponding to the contact symbol canbe displayed. Therefore, by sequentially performing these operations, the ladder of thesuperior coil can be sequentially displayed, and the cause of the alarm occurrence canbe easily searched.
[0054] Further, since the display can be returned to the original state by touching thereturn symbol, it is possible to easily search again for a different route.
[0055] In addition, a symbol can be selected by moving a cursor by touching a contact
and coil, and a comment on the contact and coil is displayed in the selected state.
Therefore, the details of each contact and coil can be easily understood. Further, since
a comment is not always displayed, the display does not become difficult to see as awhole. Furthermore, when a contact is selected by the cursor, touching the contact
33

causes to move to the ladder circuit diagram display for the coil corresponding to thecontact. Therefore, the operation to display the ladder circuit diagram is very simple
and preferable."
B. Finding on Exhibit Otsu 28 Invention
According to the statement in A. above, it is found that the following invention
alleged by the First-instance Defendant (hereinafter referred to as "Exhibit Otsu 28
Invention") is stated in Exhibit Otsu 28 Document.
1a" and 1g" an indicator which is a display device used in a programmable controller
to control controlled objects, such as machines, devices, equipment, etc.;
1b" wherein when Programmable Controller 10 detects the occurrence of abnormal
phenomena of said controlled subject, said information is provided;
1c" which includes a means for displaying a display symbol corresponding to the error(alarm status) when the error (alarm status) occurs;
1d" a touch panel on which users touch the specified display symbol that is displayed
as an alarm;
1e" and a means for displaying a ladder circuit associated with a display symbol that is
touched;
1f" wherein the means for displaying a ladder circuit includes a touch panel for
specifying either the input or output element of the displayed ladder circuit by touch
and a means for searching and displaying a ladder circuit using the contact as a coilwhen the contact of the displayed ladder circuit is touched in a state where it is selectedby touch and for returning to the original ladder circuit diagram by touching "return"symbol.
C. Virtual identicalness with Invention 1
Comparing Invention 1 and Exhibit Otsu 28 Invention, the following point at leastis different: in Invention 1, by touching an output element, a ladder circuit that inputs
the output element is searched and displayed (Constituent Feature 1F), while in Exhibit
Otsu 28 Invention, even if the user touches a coil, only the relay address is displayedwith a comment ([0030] and [0055] of Exhibit Otsu 28 Document) and, in order toreturn to the original circuit diagram, the "return" symbol must be touched (Structure
1f").
As stated in A. above, according to [0045] in Exhibit Otsu 28 Document, in Exhibit
Otsu 28 Invention, when the "return" symbol is touched, based on the stored address,
one circuit diagram before the one that is tracked by the ladder search is displayed. On
the other hand, in Invention 1, the ladder circuit that inputs said output element issearched and displayed. Therefore, it does not display a ladder circuit tracked by coil34

search only.
Therefore, to "search a ladder circuit that inputs output element" in Invention 1 andto "touch the return symbol" in Exhibit Otsu 28 Invention are completely different
means. Also in terms of the function, there is a difference as to whether the "original
ladder circuit diagram" alone is displayed. Therefore, it is obvious that due to said
difference, Invention 1 and Exhibit Otsu 28 Invention are not virtually identical.
The First-instance Defendant alleged that the structure of said contact search in
Invention 1 is the addition of a meaningless structure. However, as explained in 2. (2)B. (F) above, the contact search in Invention 1 is also found to be contributing to
identifying the cause of abnormality and, therefore, the First-instance Defendant's
allegation cannot be accepted. In addition, based on the difference in the function, it isobvious that the contact search and touching the "return" symbol both fall under a mere
replacement of well-known conventional art that shows the same effects.
D. Summary
Based on the above, the grounds for invalidation of prior art effect for which Exhibit
Otsu 28 serves as the prior art are groundless.
(2) Issue 5-1B (Breach of requirements for correction)
Description 1 has the following statements: "[0027] While the machine tool MT iscontrolled in accordance with the ladder program, Programmable Controller Main Body
20 continues to execute the abnormality monitoring ladder program stored in RAM 23
at a predetermined time interval ... ." and "[0029] The ladder program for abnormality
monitoring has a ladder circuit that inputs an element that switches the signal state by
the occurrence of the abnormal phenomenon when said abnormal phenomenon occurs
and switches the operation state of the output element that has been assigned for eachtype of abnormality in advance. The ladder circuit … rewrites data stored in the address
in RAM 23 that has been assigned in advance to the output element ... ." According tothese statements, the programmable controller main body has a "ladder program forabnormality monitoring" in RAM 23 and the "ladder program for abnormality
monitoring" monitors the occurrence of abnormal phenomena in the controlled object(machine tool MT).
On the other hand, [0031] of Description 1 has the following statement: "Operation
Panel 10 … is programmed to read the details of address of RAM 23 ... of Programmable
Controller Main Body 20 and recognizes changes to the data of the address that
responds to the occurrence of an abnormal phenomenon. In other words, … theabnormal data table ... is also stored in RAM 13. ... Operation Panel 10 recognizes thetype of the abnormal phenomenon that has occurred based on the data table." According35

to this statement, Operation Panel 10 has a program that recognizes the type of abnormal
phenomenon that occurred with the controlled object (machine tool MT) by recognizingchanges in RAM 23 data of the programmable controller main body. It is understoodthat the function is to monitor the occurrence of abnormal phenomena of controlled
objects through changes in RAM 23 data of the programmable controller main body.
As described above, in Description 1, the program to monitor the occur rence ofabnormal phenomena of the controlled object through changes in RAM 23 data of the
programmable controller main body is disclosed as the program of the display device.
Then, a person skilled in the art, who came across Description 1 through before andafter the Prior-instance Correction and the Correction, would have understood that the"program to monitor the occurrence of abnormal phenomena of the controlled object"
before the Prior-instance Correction, the "program to monitor the occurrence ofabnormal phenomena of the controlled object" after the Prior-instance Correction(Constituent Feature 1B), and the "program to monitor the occurrence of abnormal
phenomena of the controlled object that recognizes the changes in the data of address
corresponding to said programmable controller in response to the occurrence ofabnormal phenomena" after the Correction (Constituent Feature 1B') all refer to thesame program that a display device originally had.
Therefore, the First-instance Defendant's allegation that the "program to monitor
the occurrence of abnormal phenomena of the controlled device" became a completely
different program by the Correction cannot be accepted.
As described above, the First-instance Defendant's grounds for invalidation related
to the breach of requirements for correction are groundless.
6. Issue 5-8 (Grounds for invalidation of Patent 4: Lack of an inventive step based on
Exhibit Otsu 6) and Issue 5-9 (Grounds for invalidation of Patent 4: Lack of an inventive
step for which Exhibit Otsu 6 serves as the primary prior art)
(1) Invention 4
The technical meaning of Invention 4 is as stated in the section from the beginningof line 11, page 163 to the end of line 17, page 164 of the judgment in prior instance,
and therefore, it is cited. However, the term "[0005]," is added before "[0007]" in line
10, page 164.
(2) Finding on Exhibit Otsu 6 Invention
According to the statement in Unexamined Patent Application Publication No.
1992-139503 (Exhibit Otsu 6; hereinafter referred to as "Exhibit Otsu 6 Document"),
Exhibit Otsu 6 Invention is found to be as follows.
4a" and 4f" an operation panel for equipment in the production line, whose data setting
36

device can change the display mode of display elements and which is connected with asequence control unit that controls a sequence for operations to be performed by eachpiece of equipment sequentially, and displays an operation screen where multiple Cells
C are aligned as display elements (including operation elements, such as switches, etc.)
to display operation monitoring on the face plate unit, and in which a correspondence
relationship displayed in the face plate unit between the position of each of Cells C andthe position on the touch panel is set;
(page 2, lower right column, line 18 through page 3, upper left column, line 9; page 3,
upper right column, line 20 through page 3, lower left column, line 16; page 6, upper
left column, line 6 through page 6, upper right column, line 17; Figure 1; and Figure 3)(page 3, upper left column, line 20 through page 3, lower left column, line 16)
4b" based on the operation panel data map that is set by having the details displayed on
the screen of said operation panel correspond to the cell number of Cell C (Table -A),(page 3, lower right column, lines 4 through 13; page 4, Table-A; page 4, lower left
column, lines 1 through 14; and Figure 3)4c" in the operation panel data map (Table-A), multiple information items consisting of
the names to be set in Cells C (matters to be displayed), property (display or switch),display color (ON color, OFF color), and names of devices (Operation DEV, Display
DEV) are aligned and stored on Hard Disc Device 77;(page 3, lower right column, lines 4 through 13; page 4, Table-A; and page 4, lower left
column, lines 1 through 14)
4d" the data setting windows (W1, W2, and W3) to select and input said multiple
information items that are specified by the operation panel data map;
(page 2, lower right column, line 18 through page 3, upper left column, line 9; page 4,
lower left column, line 15 through page 4, lower right column, line 15; and Figure 3)4e" and the information items input on the operation panel data map by Cell C that are
set on the operation panel data map and data setting windows (W1, W2, and W3),
displays the name (matters to be displayed) and the display color on each Cell C andimplements the screen definition that associates the face plate unit of CRT78 with thedevice of the sequence control unit.
(page 6, upper left column, line 6 through page 6, upper right column, line 17; andFigure 3)(3) Comparison between Invention 4 and Exhibit Otsu 6 Invention
Based on the findings in (2) above, Exhibit Otsu 6 Document has the following
statement "If 'data editing' is selected by touch-input, cell editing (copy, transfer, insert,etc.) can be performed by Keyboard 79 (P6) and, at the same time, if 'data setting' is37

selected by touch-input on the first window W1, the second window W2 opens on the
online operation screen and requests a decision to be made on the operation panel data,such as the name, operation device, property, display color (ON color, OFF color), etc.,
to change display mode (P7, P8, P9, etc.)." (page 6, upper left column, line 19 throughpage 6, upper right column, line 8). The "display element" refers to "name, operation
device name, property, and display color." In Figure 3, it is stated that color and text("name," "Operation DEV," and "display color") alone are displayed. However,"pictures of operation keys and lamps" in Invention 4 refer to "drawings or picturesindicating lamps, operation keys, counters, etc. by defining the shape, size, color, etc."(Description 4, [0003], and [FIG.5]).
Then, Invention 4 and Exhibit Otsu 6 Invention are different in regards to thefollowing points: in Invention 4, in the means to set areas of Constituent Feature B,"pictures of operation keys and lamps" and information to identify multiple sections todisplay them have been configured in advance; in the means to store the screen
definition matrix of Constituent Feature 4C, multiple information items to identify"pictures of operation keys and lamps" are stored; in the screen definition means ofConstituent Feature 4E, pictures are drawn by combining "pictures of operation keys
and lamps" with multiple information items to identify them, while in Exhibit Otsu 6
Invention, data setting and display are not "pictures of operation keys and lamps," butonly colors and matters (Difference 4-1) (hereinafter referred to as "Difference 4-1"),
and the remaining points are common features.
On the other hand, the First-instance Plaintiff alleged that Exhibit Otsu 6 Document
does not disclose that the device in Exhibit Otsu 6 Invention is a screen definition device
and does not disclose drawing function, and therefore, the Constituent Features 4A and4E are not disclosed. However, in Exhibit Otsu 6 Document, it is stated that CRT
Operation Panel Device 53 includes Hard Disc Device 77 in which an operation panel
data map is stored and that a voluntary screen can be created by setting items of theoperation panel data map (page 3, lower right column, line 4 through page 4, lower left
column, line 14). Therefore, it is obvious that the device in Exhibit Otsu 6 Invention isa screen definition device and the fact that the device in Exhibit Otsu 6 Invention is anoperation panel does not establish a substantial difference from the screen definition
device of the operation panel in Invention 4.
(4) Novelty
As described in (3) above, it is found that there is Difference 4-1 between Invention
4 and Exhibit Otsu 6 Invention, and therefore, Invention 4 has novelty.
(5) Inventive step38

A. Finding on Exhibit Otsu 55 technical matters
Exhibit Otsu 55 Document has the following statements along with the following
drawing.
"Basic monitor
Basic function as an electronic operation panel
Basic functions as an electronic operation panel, such as functions of switches andlamps, display of numerical data and message, etc., are enhanced. Sprites, including
touch-switches, can be freely located at 1-dot intervals. This allows a flexible layout on
the screen.""

Alarm list

Lamp

FiguresSingle display

In
decima l

A-line supply conveyor
is suspended. Pleasecheck the power.

In
he x ad eci m alInbinaryActua lnu mber

Multiple displays
Clock

Hydraulic pressure decreased.
Abnormal arm lowering.
Number of processing pieces
exceeded.

Date
HH:MM:SS

Comment

Graph

Panel meter

Granular materials areunder preparation.

SwitchLevel"
According to the statements and drawing above, it is found that in Exhibit Otsu 55
Document, technology for displaying the functions of switches and lamps as anelectronic operation panel in the form of touch switches with pictures (hereinafterreferred to as "Exhibit Otsu 55 Technical Matter") is stated.
B. Whether Difference 4-1 could have been conceived of by a person skilled in the art
As described in A. above, in Exhibit Otsu 55 Document, Exhibit Otsu 55 Technical39

Matter, which is a technology for displaying the functions of switches and lamps as anelectronic operation panel in the form of touch switches with pictures, is stated.
Applying this technology to Exhibit Otsu 6 Invention to display pictures of said
operation keys and lamps in addition to display matters and to include it as a structureof Invention 4 related to Difference 4-1 is found to create a motivation for combination
due to a commonality of the field, but no precluding factors are found. Therefor e,
Difference 4-1 could have been easily conceived of by a person skilled in the art.
The First-instance Plaintiff alleged that there is no motivation to apply Exhibit Otsu
55 Technical Matter to Exhibit Otsu 6 Invention. Since the technical fields of E xhibit
Otsu 6 Invention and Exhibit Otsu 55 Technical Matter are very close, it is found to be
sufficient motivation for a person skilled in the art to include Exhibit Otsu 55 Technical
Matter that implement screen setting of pictures of switches and lamps in Exhibit Otsu
6 Invention, for which the problem is "to provide data setting method of the operation
panel where the display mode of each display element on the display operation panel
can be changed accurately to the desired mode" (Page 2, upper right column, lines 4
through 7 of Exhibit Otsu 6) and to solve the problem, and, therefore, it could havebeen easily conceived of by a person skilled in the art.
(6) Summary
As mentioned above, it is found that Invention 4 should be invalidated by a trial forpatent invalidation.
Consequently, the First-instance Plaintiff cannot exercise Patent Right 4 against theFirst-instance Defendant (therefore, there is no need to make determinations on Issue
4.).
7. Issue 7 (Whether there are grounds to hinder the exercise of the rights related toPatent Right 1 and whether there is a breach of the principle of good faith in a lawsuit)
The First-instance Defendant newly alleged, as stated in No. 2, 4. (17) (The First instance Defendant's allegation) above, that since the First-instance Plaintiff obtained
Patent 1 by giving a false explanation of the contact search, the exercise of the right ishindered or the scope of the patent claim must be interpreted based on the false
explanation; and that the First-instance Plaintiff alleged that the Plaintiff's products areproducts working Invention 1 although they are not and this allegation represents theFirst-instance Plaintiff's attitude that the contact search is not an important part, andtherefore, under the principle of good faith, the First-instance Plaintiff cannot allege
that the contact search is essential for solving the problem of Invention 1.
However, as explained in 2. (2) B. (F) above, the contact search in Invention 1 isalso found to contribute to identifying the cause of abnormality and to have a function40

to return to the original ladder circuit. In addition, even though the First -instancePlaintiff emphasized the aspect that the contact search in Invention 1 does not need tosecure storage capacity to store the original ladder circuit to return to the original circuit,as a difference from the prior art that has a function to return to the original laddercircuit (Exhibit Otsu 25), this cannot be said to be a sufficient means to obtain a patentillegally and it is also difficult to find the fact to consider that the allegation caused
examiners to fall into a mistake and misconstrue the inventive step. Therefore, it cannot
be a basis for construing the scope of the patent claim in a limited manner.
In addition, the allegation of the First-instance Plaintiff that the Plaintiff's products
are products working Invention 1 is only found to be a simple mistake and there arelittle grounds for considering the allegation to be a breach of the principle of good faithby revealing the mistake purposely.
Consequently, all the aforementioned allegations of the First-instance Defendant are
unreasonable.
8. Issue 6 (Amount of damages to the First-instance Plaintiff due to infringement ofPatent Rights by the First-instance Defendant)
According to the determinations on issues above, indirect infringement (Article 101,
item (ii) of the Patent Act) of Patent Right 1 is established concerning the production
and transfer of Defendant's Indicator A and Defendant's Product 3 and the licensing(leasing) of the computer program related to Defendant's Product 3 by the First-instance
Defendant. The amount of damages to the First-instance Plaintiff from said indirect
infringement is examined below.
(1) The Plaintiff's products
The facts found in this case related to the Plaintiff's products are as stated in thesection from the beginning of line 13, page 173 through the end of line 19, page 176 of
the judgment in prior instance, and therefore, they are cited. However, the term "セット[set]" in line 5, page 176 is altered to "リセット[re-set]".
(2) Defendant's Indicator A and Defendant's Product 3
Quantities sold, sales amounts, etc. of Defendant's Product 1, Defendant's Product2, and Defendant's Product 3 for the period from April 1, 2013 through the end of March
2020 are as stated in Attachments 3 through 6 (there are no disputes between the parties).
(3) Damages based on Article 102, paragraph (1) of the Patent Act
A. Application(A) Amendment by Act No. 3 of 2019
The infringement of Patent Right 1 ended by March 31, 2020 due to expiry of thepatent term. Article 102, paragraph (1) of the Patent Act after amendment by Act No. 3
41

of 2019 came into effect on April 1, 2020. Since there are no transitional measures inthe supplementary provisions to the amended Act, Article 102, paragraph (1) of the
Patent Act after said amendment is applied to the infringement of Patent Right 1.
The First-instance Defendant alleged that paragraph (1) of the former Act should beapplied, instead of applying the amended Act retroactively (see No. 2, 4. (16) above).
Article 102, paragraph (1), item (ii) of the Patent Act after the amendment stipulates
that the amount equivalent to the royalties based on the quantity exceeding the workable
quantity or specified quantity (limited to cases where non-exclusive licensing could
have been granted) is to be the amount of damages. However, it cannot be found thatthe damages of the amount equivalent to the royalties would not accrue under thesubstantive laws, and therefore, it cannot be said that the amended Act newly createdthe right to claim under substantive laws. Consequently, said item is only a provision
to estimate damages under the substantive laws that could have constituted damages
since before the amendment objectively. Therefore, the aforementioned allegation of
the First-instance Defendant cannot be accepted.
(B) Whether Article 102, paragraph (1) of the Patent Act may be applied to indirect
infringement
The First-instance Defendant alleged that Article 102, paragraph (1) of the Patent
Act is not applied to indirect infringement (see No. 2, 4. (16) above). Therefore, thispoint is examined below.
The main clause of Article 102, paragraph (1) of the Patent Act stipulates that theamount obtained by multiplying the "quantity transferred" of "articles that constitutethe act of infringement" by an infringer by "the amount of profit per unit" for "thearticles" that the patentee, etc. "would have been able to sell if the infringement had nottaken place," can be considered as the amount of damages to the patentee, etc. This
provision is based on the purport to reduce the burden on the patentee, etc. to prove theamount of damages on the assumption that there is the relationship that the patent ee,
etc. would have been able to gain profits if the infringement had not taken place, andtherefore, it is found that damages to the patentee, etc. occurred. Based on thecalculation method of the amount of damages specified in this provision, it is construed
to be based on the assumption that the amount of damages calculated based on thismethod is the amount of damages related to the lost profit of the patentee, etc. for"articles that would have been able to be sold if the infringement had not taken pla ce"and that the infringer's act of transferring "articles that constitute the act of
infringement" and the act of the patentee, etc. of selling "articles that would have beenable to be sold if the infringement had not taken place" are in a competitive relationship42

on the same market.
On the other hand, indirect infringement related to an invention that is a productcovers the transfer, etc. of "any article used in the production" of products working theinvention. Not only the transfer, etc. of components constituting the products working
the invention, but also the transfer, etc. of tools, raw materials, etc. for producing the
products working the invention are included. Therefore, the infringer's act of transfer
of indirectly infringing products and the act of the patentee, etc. of selling the products(they may be components, etc. or finished products) do not always become competitiveon the same market. In addition, in cases where indirectly infringing products arecomponents and where articles sold by the patentee, etc. are finished products like inthis case, the former target the components market and the latter target the finishedproduct market. Therefore, both parties' acts of transfer and sale are not directlycompetitive on the same market. However, also in this case, the products working theinvention that are directly infringing products produced using components that areindirectly infringing products and the finished products sold by the patentee, etc. areindirectly competitive over profits on the same market of finished products andcomponents carrying the same function are included in both products. Based on theabove, to the extent related to market profits for the portion of components on thefinished product market, the act of transferring components that are indirectly
infringing products is in a competitive relationship with the act of selling the portion ofcomponents included in the finished products of the patentee, etc. through the act of
production or transfer of finished products using said components. Therefore, to that
extent, Article 102, paragraph (1) of the Patent Act may be applied to the indirect
infringement in this case.
Consequently, the aforementioned allegation of the First-instance Defendant cannot
be accepted.
B. "Articles that would have been able to be sold if the infringement had not takenplace"(A) "Articles that would have been able to be sold if the infringement had not takenplace" should be interpreted to be nothing but products of a patentee or an exclus ive
licensee (hereinafter collectively referred to as the "patentee, etc.") who suffer an
impact on their quantity sold due to the infringement, in other words, products of thepatentee, etc. who are in a competitive relationship in the market with infringing
products.
According to the explanation in A. above, it is reasonable to interpret "articles thatwould have been able to be sold if the infringement had not taken place" to be the43portion equivalent to indirectly infringing products of an infringer from among finishedproducts sold by the patentee, etc.
(B) Looking at the above in this case, as is found in (1) above, the Plaintiff's products
and Defendant's Indicator A on which the OS of Defendant's Product 3 are installed canbe said to be goods substituting each other with the same usages, and therefore, the partequivalent to software unit of the Plaintiff's products can be considered to be an "article
that would have been able to be sold if the infringement had not taken place" of
Defendant's Product 3 that was produced, etc. and the part equivalent to the hardware
unit of the Plaintiff's products can be considered to be an "article that would have beenable to be sold if the infringement had not taken place" of Defendant's Indicator A thatwas produced, etc. Eventually, in this case, the Plaintiff's products overall are found tobe "articles that would have been able to be sold if the infringement had not takenplace."(C) The First-instance Defendant alleged that Defendant's Indicator A on which t he OSof Defendant's Product 3 is installed is a product working Invention 1 only when it isconnected to the sequencer manufactured by the First-instance Defendant; and that thePlaintiff's products cannot be connected to the sequencer manufactured by the Firstinstance Defendant, and therefore, there is no relationship that if Defendant's Indicator
A is not sold, the Plaintiff's products are sold, and both products are not competitive on
the market (see No. 2, 4. (16) above).
However, in order for certain products to fall under "articles that would have beenable to be sold if the infringement had not taken place," it is enough that they are theproducts of the patentee, etc. who may be in a competitive relationship with infringing
products from the perspective of the overall structure of the market, and it does not go
so far as to require the existence of a relationship, in consideration of specific customers,
where said customers purchase the patentee's products as a replacement if there arenone of said infringing products. Even if compatibility between a programmablecontroller and a programmable indicator is limited, it is enough to examine thecompetitive relationship on the market by including persons who do not yet have aprogrammable controller and persons who already have a programmable controller
compatible with an indicator (the latter have no hindrance on purchasing the Plaintiff's
products) in potential customers. Therefore, the competitive relationship on the market
should not be discussed only for persons who have a programmable controller
compatible with the Plaintiff's products.
Consequently, the aforementioned allegation of the First-instance Defendant cannot
be accepted.
44

C. "The amount of profit per unit"
There are no disputes between the parties that the amount of marginal profit per
piece of the Plaintiff's product is as stated in (1) of Attachment 1-1.
D. Quantity transferred, etc. of "articles that constitute the act of infringement"(A) Quantity soldIn this case, establishment of indirect infringement is found for the acts of the
production, transfer, etc. of Defendant's Indicator A and Defendant's Product 3 by theFirst-instance Defendant. Defendant's Product 3 constitutes an act of infringement to
the extent of producing products equivalent to Defendant's Indicator A and thePlaintiff's products by providing the OS to Defendant's Indicator A. Therefore, whencalculating damages as defined in Article 102, paragraph (1) of the Patent Act, it is no t
necessary to argue the quantity transferred independently from Defendant's Indicator A.
Consequently, when calculating damages as defined in Article 102, paragraph (1) of
the Patent Act, it is enough to use the quantity transferred of Defendant's Indi cator A
alone as the basis for the calculation.
There are no disputes between the parties that the quantities sold of Defendant's
Indicator A for the period from April 1, 2013 to March 31, 2020 are as stated in
Attachment 5. (Concerning Defendant's Indicator A, the quantity sold per month is notclear. Therefore, hereinafter, the amount of damages is calculated based on thequantities sold every 6 months as stated in Attachment 5. In addition, as stated in 2. (2)E. above, indirect infringement of Patent Right 1 was established on April 2, 2013 andthereafter. The presence of the quantity sold of Defendant's Indicator A as of April 1,2013 or the relevant figure is not clear; however, the transfer, etc. on that day has little
impact on the overall amount of damages for the period of seven years, and thedifference in whether the portion of said one day is included or not is absorbed in thefollowing calculation, and is unlikely to have any impact. Therefore, the quantity soldon that day will not be calculated again and the quantities sold as indicated in
Attachment 5 are used as they are.)(B) Quantity transferred
The First-instance Defendant alleged that "articles that constitute the act of
infringement" are directly infringing products and not all of persons who purchased
Defendant's Indicator A and Defendant's Product 3 produce products working Invention
1 (directly infringing products) (see No. 2, 4. (16) above).
However, an act of indirect infringement is "deemed to constitute infringement" ofa patent right (Article 101 of the Patent Act) and the amount of damages from patent
infringement is stipulated for "articles that constitute the act of infringement" (Article
45

102, paragraph (1) of said Act). As stated in A. (B) above, it is construed that a s longas Article 102 of said Act also applies to indirect infringement, "articles that constitutethe act of infringement" should be construed to refer to indirectly infringing products.
However, components, etc. that are indirectly infringing products as stipulated in
Article 101, item (ii) of the Patent Act may be used with an aim or in a manner not toinfringe a patent right. In addition, in cases where it is found to have high possibility tocause patent infringement by the transfer, etc. of said components, etc., said transfer ofcomponents, etc. constitutes indirect infringement regardless of the use mode by atransferee; however, in cases where the components, etc. are not used with an aim or ina manner to infringe a patent right by a transferee, eventually said patent right does notcontribute to the sale of indirectly infringing products. Then, concerning said transferee,
it cannot be said that the patentee's products could have been sold if no indirect
infringement had taken place, and damages to profits that the patentee, etc. could havereceived from the transfer of articles of the patented invention do not occur. Therefore,
the amount of profits obtained from the transfer of said articles cannot be estimated as
the amount of damages to the patentee, etc. In addition, it is reasonable to construe thatsuch case falls under "circumstances that render the patentee or the exclusive licensee
unable to sell" as defined in Article 102, paragraph (1), item (i) of said Act. The
allegation of the First-instance Defendant is construed to include the intention that if
the allegation to use the quantity used for the production of directly infringing products
alone as the basis for the calculation of damages is not accepted, the same circumstances
are alleged as "circumstances that render the patentee or the exclusive licensee unable
to sell," and it is accepted to that extent.
Therefore, when calculating the amount of damages to the patentee, etc., it isreasonable to construe that said quantity sold is deducted from the "quantity
transferred" as defined in Article 102, paragraph (1) of the Patent Act.
E. "Circumstances that render the patentee or the exclusive licensee unable to sell"(A) Circumstances that render the patentee or the exclusive licensee unable to sell (1)The First-instance Defendant alleged that [i] the Plaintiff's products can only beconnected to the programmable controller manufactured by the First-instance Plaintiff;[ii] since the First-instance Plaintiff does not have a meaningful share on the market ofindicators for programmable controllers and the contribution of the technical featuresof Invention 1 to the sale is extremely small, most of the purchasers of Defendant's
Indicator A and Defendant's Product 3 purchase products of manufacturers other thanthe First-instance Plaintiff; [iii] since the Plaintiff's products are not products working
Invention 1, there is no room for damages to the First-instance Plaintiff to occur by the46

infringement of Patent Right 1 (hereinafter circumstances related to these allegations
are referred to as "circumstances that render the patentee or the exclusive licensee
unable to sell (1)").
The "circumstances that render the patentee or the exclusive licensee unable to sell"
as defined in Article 102, paragraph (1), item (i) of the Patent Act refer to circumstances
to hinder a corresponding causal relationship between the act of infringement andreduction in the sales of the patentee's products.
As found in 2. (2) B. (B) above, the characteristic technical means of Invention 1 isonly a contact research by touch when an abnormality occurs and is not an overall
circuit monitoring function; and there are products, as conventional products, whichdisplay a ladder circuit that monitored the occurrence of abnormal phenomena
corresponding to the type of abnormalities that have been specified after specifying thespecific type of abnormalities displayed on the monitor by touch, and then, the coil orcontact causing the type of abnormality is specified by inputting the device name ordevice number on the input screen of the touch panel. Then, even if there are no products
other than the Plaintiff's products that can use all functions related to Invention 1, there
are products with which the coil or contract is specified by inputting the device nameor device number on the input screen on the touch panel. Therefore, such products can
specify the true cause of an abnormality without referring to ladder circuit diagrams
when an abnormal phenomenon occurs or can retrieve ladder circuits one after the otherin order to specify causes, which does not require very complicated operations.
Furthermore, if a display device, which is not included in the technical scope ofInvention 1, can perform a coil search only when an abnormality occurs and has a return
function without using the search function when returning to the original circuit, it isdifficult to consider that such display device has a hindrance to achieve objectives tospecify the true cause of abnormality without referring to ladder circuit diagrams whenan abnormal phenomenon occurs and to retrieve ladder circuits one after the other tospecify causes. In addition, the contact search, which is the characteristic technicalmeans of Invention 1, is not used even with the Plaintiff's products. Therefore, it isobvious that this characteristic technical means does not contribute to the sale of thePlaintiff's products. And the contact search, which is the characteristic means, is related
to only one point from among many functions of Defendant's Indicator A andDefendant's Product 3, and it accounts for a very limited part of the functions.
Based on the above, it is difficult to presume that the technical characteristic partof Invention 1 greatly contributed to the quantity sold of Defendant's Indicator A andDefendant's Product 3. In addition, the First-instance Plaintiff's share on the market of47

programmable indicators (display devices) is included in (Other) in Attachment 7 -2,
which is very small (Exhibit Ko 31). The Plaintiff's products can be connected only tothe programmable controller manufactured by the First-instance Plaintiff (there are nodisputes). Therefore, even if the quantity sold slightly decreased because Defendant's
Indicator A and Defendant's Product 3 do not have the characteristic technical part ofInvention 1, it is difficult to presume that all demand to offset the portion of that
decrease will lead to products of the First-instance Plaintiff.
Consequently, in this case, it should be found that the corresponding causal
relationship between the decrease in sales of the Plaintiff's products and theinfringement of Patent 1 by Defendant's Indicator A and Defendant's Product 3 ishindered to a significant extent and it is reasonable to find that there are circumstanceswhere 99% of the quantity sold of Defendant's Indicator A cannot be sold.
(B) Circumstances that render the patentee or the exclusive licensee unable to sell (2)As stated in D. (B) above, the quantity of Defendant's Indicator A used for the
production of directly infringing products as alleged by the First-instance Defendant
can be considered as one element of the "circumstances that render the patentee or the
exclusive licensee unable to sell." The First-instance Defendant alleged, as stated in No.
2, 4. (16) above (No. 3, 18. (The Defendant's allegation) (1) A. (D) c. of the judgmentin prior instance), that [i] exclusion of export; [ii] exclusion of usage mode without
connecting to a programmable controller; [iii] circumstances calculated based on thepercentage of usage mode to connect to a sequencer, etc. manufactured by the First instance Defendant; [iv] circumstances calculated based on the usage mode to connect
to a compatible sequencer, etc.; [v] circumstances calculated based on the percentageof purchase of an optional function board for Defendant's Product 1-2; and [vi]circumstances calculated based on the percentage of Defendant's Indicator A that has
project data using a one-touch circuit jump function (see No. 2, 4. (16) above;
hereinafter the circumstances related to these allegations are referred to as"circumstances that render the patentee or the exclusive licensee unable to sell (2).").
They are examined below. First, it is found that the quantities of exports of
Defendant's Indicator A identified by the First-instance Defendant are as stated in 1. of
Attachment 7; the quantities sold, sales amounts, and market shares in Japan ofprogrammable indicators manufactured by the First-instance Defendant in 2013 are asstated in 2. of Attachment 7; the total quantities sold in Japan and market shares inJapan of programmable controllers of the First-instance Defendant from 2013 to 2020are as stated in 3. of Attachment 7; the sales results of sequencers (program mablecontrollers) manufactured by the First-instance Defendant and the percentages of48

sequencers, etc. with which the circuit monitoring function can be executed are as statedin 4. of Attachment 7; and the quantities sold of optional function boards attachable toGT15 (Defendant's Product 1-2) are as stated in 5. of Attachment 7 (Exhibit Ko 31,
Exhibits Otsu 58 through 64; and the entire import of oral arguments), and there is noevidence against the allegation.
Examining further based on the aforementioned facts found in this case, [i]concerning Defendant's Indicator A exported abroad, Invention 1 is worked outside
Japan and the infringement of Patent Right 1 cannot occur based on the principle ofterritoriality, and, therefore, it is reasonable to exclude the quantity of exports disclosedby the First-instance Defendant. The First-instance Defendant alleged that the Firstinstance Defendant identified the quantities of exports as stated in 1. of Attachment 7
and there are no grounds to question it. However, the percentages of these quantities in
the overall quantities sold are very small. [ii] Infringement of Patent Right 1 does notoccur with Defendant's Indicator A that is not connected to a programmable controller
either. The quantities are only indicated by approximate percentages even by the Firstinstance Defendant (Attachment 2-1), but as stated in 2. (2) D. (C) above, users willtake reasonable actions to use the circuit monitoring function, etc. in order to fully use
the functions of Defendant's Indicator A, which is an expensive device, and therefore,
it is assumed that the percentage of those connecting Defendant's Indicator A to a
programmable controller becomes very high. [iii] Concerning the percentage of usage
mode to connect to the sequencer, etc. manufactured by the First-instance Defendant,
as stated in 2. (2) D. above, it is presumed that there is a trend to prepare aprogrammable controller and a programmable indicator of the same manufacturer, andtherefore, it is unnatural that Defendant's Indicator A is connected to the sequencer
manufactured by the First-instance Defendant at the percentage in accordance with themarket share in Japan of the sequencer manufactured by the First-instance Defendant(Attachment 7-3). It is reasonable to presume that Defendant's Indicator A is connectedto the sequencer manufactured by the First-instance Defendant at a percentage higher
than the percentage of said share to a certain extent; however, it is difficult to find thatthe combinations with products of other companies are very small in number. [iv]Concerning the percentage of usage mode to connect to a compatible sequencer, etc.,
there is no evidence to find that there is a special trend to use Defendant's Indicator A
with a specific sequencer from the perspective of its specifications, functions, etc.
Therefore, it is reasonable to consider the percentage of sales of sequencers that cannot
use the circuit monitoring function (Attachment 7-4) as it is. [v] Concerning thepercentage of users who purchased optional function boards for Defendant's Product 149

2 (approximately one-fourth at a maximum), a certain consideration is to be given;however, the percentage of Defendant's Product 1-2 in Defendant's Indicator A is only
approximately ● percent. Therefore, in any case, it has almost no impact on overall
Defendant's Indicator A. Lastly, [vi] concerning the percentage of users that create
project data using the one-touch circuit jump function, as found in No. 4, 2. (2) of thejudgment in prior instance related to the citation (the section amended in 1. (2) aboveof this judgment), in light of the facts that the First-instance Defendant used the onetouch circuit jump function as a key point for advertisement, a user who purchased, etc.
Defendant's Indicator A and Defendant's Product 3 is strongly motivated to use thecircuit monitoring function, and the possibility that the function is installed isconsiderably high, etc., it is considered that the number of persons who intend to use
the one-touch circuit jump function is considerably high; however, there is no data to
determine the specific percentage.
From the aforementioned perspectives, concerning [i], [ii], and [v] above, theimpact on the quantity of Defendant's Indicator A used for the production of directly
infringing products is little or small; however, concerning [iv] and [vi] above, theimpact on the quantity of Defendant's Indicator A used for the production of directly
infringing products is very large, and [iii] also has considerable impa ct. These
circumstances have been considered as independent elements up until now. However,users who create project data using the one-touch circuit jump function, for example,
have a device that can use the circuit monitoring function, etc. and these elements may
have a mutual relationship in some cases. Then, considering the aforementioned
circumstances together while also adding these points, it is reasonable to presume that●●% of the quantity sold of Defendant's Indicator A was not used for the productionof directly infringing products. Consequently, it is found that there are "circumstancesthat render the patentee or the exclusive licensee unable to sell" to that extent.
(C) The First-instance Defendant's allegation
The First-Instance Defendant alleged that the quantity of Defendant's Indicator A
used for the production of products working Invention 1 can be estimated based on the
project data obtained from users in response to actions for users' requests for defectinvestigation or technical support (see No. 2, 4. (16) above). However, said project data
refers to those obtained from users who requested technical support from the First instance Defendant, users who returned products as defective products, and users who
switched from indicators manufactured by other companies to the First-instance
Defendant's products (Exhibit Otsu 72), and they are not randomized at all. It is difficult
to find that said users are at the average technical level of all users of the First -instance50

Defendant's products, and therefore, the aforementioned allegation cannot be accepted.
Other allegations of the First-instance Defendant also do not have an impact on thefindings in (A) and (B) above.
(D) The First-instance Plaintiff's allegation
The First-instance Plaintiff alleged, concerning the circumstances defined in (B)[iii] above, as stated in No. 3, 18. (1) A. (D) c. of the judgment in prior instance related
to the citation (the section amended in No. 2, 4. (12) above in this judgment), that theuse mode to connect a programmable indicator to a programmable controller
manufactured by another company is minor. However, there is a company whose market
share of programmable controllers is low but whose market share of programmableindicators is high (Exhibits Otsu 58 through 64). Such company's programmableindicators are considered to be produced on the assumption of being connected toprogrammable controllers manufactured by other companies. In consideration of thesepoints, it is presumed to be a possible action in the industry to combine a programmableindicator and a programmable controller that are manufactured by different companies.
Then, even if the compatibility between a programmable indicator and a programmablecontroller is preferred, it cannot be found that combinations with devices manufactured
by different companies are minor. Therefore, the aforementioned allegation of the First instance Plaintiff cannot be accepted.
In addition, the First-instance Plaintiff alleged, as stated in No. 3, 18. (1) A. (D) c.
(b) of the judgment in prior instance related to the citation (the section amended in No.
2, 4. (12) above in this judgment), that [i] it is hardly possible for users who purchased
a sequencer that cannot be connected to Defendant's Indicator A in some cases, such as"MELSEC QnA series," "MELSEC A series," "MELDAS C6/C64," "MELSEC iQ-L
series," and "CNC C80 series," etc., purchase Defendant's Indicator A; and [ii] there areno users who connect an expensive Defendant's Indicator A, which has a circu itmonitoring function, etc., with a sequencer for stand-alone for which the use mode issimple. Concerning [i] above, if the sequencer indicated by the First-instance Plaintiff
cannot be connected to Defendant's Indicator A, as stated in 4. of Attachment 7, thepercentage of its sales among all sequencers manufactured by the First -instance
Defendant is ● to ●●●%, which is very small and has no impact on the overall trend
at all. Concerning [ii] above, there is no evidence to find that it can be said withconfidence as alleged by the First-instance Defendant.
Other allegations of the First-instance Plaintiff also do not have impact on thefindings in (A) and (B) above.
(E) As described above, the deduction of 99% mainly from the perspective related to51

the contribution to the sales of Invention 1 as "circumstances that render the patentee
or the exclusive licensee unable to sell (1)," and the deduction of ●●% from theperspective of not being used for the production of directly infringing products as"circumstances that render the patentee or the exclusive licensee unable to sell (2)" areadmitted. Both are deduction elements that can be considered independently, andtherefore, eventually as stated in Attachment 8, it is reasonable to find "circumstancesthat render the patentee or the exclusive licensee unable to sell" for the quantity
obtained by deducting 99% of the quantity transferred, and then further deducting●●% of the quantity transferred (quantity deducted accounts for ●●●●% in total)from the quantity transferred of Defendant's Indicator A (this figure does not fall below
59/60 ≒ 0.983, which the First-instance Plaintiff admitted.).
F. Damages defined in Article 102, paragraph (1), item (i) of the Patent Act
Based on the decision in B. through E. above, it is reasonable to find that the amountof damages to the First-instance Plaintiff based on Article 102, paragraph (1), item (i)of the Patent Act is 50,629,205 yen as stated in Attachment 8.
G. Damages defined in Article 102, paragraph (1), item (ii) of the Patent Act
Article 102, paragraph (1), item (ii) of the Patent Act stipulates that, if there is
specified quantity, the amount equivalent to royalties based on the quantity may be
determined as the amount of damages. On the other hand, however, the entry inparentheses in said item excludes the part other than the part where it is not found thatthe patentee, etc. could have granted the license for the patent right of said patentee,
etc. Therefore, if it cannot be said that the patentee lost an opportunity for licensing due
to the act of the infringer's infringement, it is stipulated that lost profits of the amountequivalent to royalties will not be generated.
As stated in E. above, the specified quantity found in this case is the total sum of
the quantity for which it is not found that the characteristic technical part of Invention
1 contributes to the quantity sold of Defendant's Indicator A and Defendant's Product 3,
the quantity of user demand that does not go to the Plaintiff's products, but to thepurchase of products manufactured by any company other than the First -instancePlaintiff due to restrictions on function or based on the percentage of the share of theFirst-instance Plaintiff, and the quantity of indicators that are not used for the
production of directly infringing products and do not belong to the technical scope ofInvention 1. Therefore, it is not found that the First-instance Plaintiff could havelicensed Invention 1 to the First-instance Defendant for the products for which
Invention 1 could not contribute to increasing the quantity sold and the products soldby companies other than the First-instance Defendant.
52

Consequently, damages defined in Article 102, paragraph (1), item (ii) of the Patent
Act cannot be found.
(4) Damages based on Article 102, paragraph (2) of the Patent Act
A. Whether Article 102, paragraph (2) of the Patent Act can be applied to an indirect
infringement in this case
Article 102, paragraph (2) of the Patent Act stipulates that the amount of profit thatthe infringer received from the act of infringement is estimated to be the amount ofdamages to the patentee, etc. The purport of this provision is construed to be the sameas stated concerning paragraph (1) of said Article above. Consequently, based on thesame idea stated about paragraph (1) of said Article above, it is reasonable to affirm theapplication of paragraph (2) of said Article to this case.
B. The amount of profit that the infringer received from the act of infringement
There are no disputes between the parties that the amounts of sales of Defendant's
Indicator A and Defendant's Product 3 for the period from April 2013 to March 2020are as stated in Attachments 3 through 6; the marginal profit rates of Defendant's
Indicator A are not less than 20%; and the marginal profit rates of Defendant's Product3 are as stated in the Attachment to the judgment in prior instance "Details of the
Defendant's Variable Costs, Weighted Average Price, and Marginal Profit Rate."
C. Grounds for rebuttal of presumption(A) Article 102, paragraph (2) of the Patent Act is a provision for presumption.
Therefore, if the infringer alleged and verified that the corresponding causal
relationship with the damages to the patentee is missing for all or part of the profits thatthe infringer received, the aforementioned presumption is rebutted to that extent.
If indirectly infringing products defined in Article 101, item (ii) of the Patent Act
were not actually used for the production of directly infringing products, as a result,they are not in the relationship where the articles of the patented invention could havebeen transferred if the infringement had not taken place, and damages on profits thatthe patentee could have received from the transfer of articles of patented inventions do
not occur. Accordingly, it is impossible to presume that the amount of profits received
from the transfer of said articles is the amount of damages to the patentee. It isreasonable to construe that such case falls under circumstances to rebut the presumption
defined in Article 102, paragraph (2) of said Act. Then, the circumstances statedregarding Article 102, paragraph (1), item (i) of the Patent Act above ((3) E. (C) above;
hereinafter referred to as "grounds for rebuttal of presumption (1)") can be deemed to
be grounds for rebuttal of presumption as defined in Article 102, paragraph (2) of the
Patent Act. Therefore, it is reasonable to find that there are grounds for rebuttal for 99%
53

of profits from Defendant's Indicator A and Defendant's Product 3. Furthermore, it
should be said that there are circumstances to rebut the presumption that the portion
that was not used for the production of directly infringing products from among
Defendant's Indicator A and Defendant's Product 3 is the amount of damages to theFirst-instance Plaintiff (hereinafter referred to as "grounds for rebuttal of presumption(2)"); however, the quantity of Defendant's Indicators A that were not used for the
production of directly infringing products is found to amount to ●●% of the entirety
due to the same reasons as (3) E. (B) above. Therefore, it is reasonable to find that thepresumption is rebutted for ●●% of the profits. In addition, concerning Defendant's
Product 3 as well, there is the portion that was used for the production of directly
infringing products and the portion that was not; however, there is no particularevidence of bias in favor of either of them. Therefore, it is reasonable to find that thepresumption is rebutted for ●●% of the profits at the same percentage of Indicator A,
on which Defendant's Product 3 is installed.
(B) As stated above, it is found that the amount is reduced by 99%, which is led mainly
from the perspective related to the contribution to the sales of Invention 1, as grounds
for rebuttal of presumption (1), and the amount is reduced by ●●%, which is led fromthe perspective of whether it is used for the production of directly infringing products,
as grounds for rebuttal of presumption (2). Since both are reduction elements that canbe considered independently, eventually, it is reasonable to find grounds for rebuttal ofpresumption at ●●●●% of the amount from among the profits received (this figure
is not less than 59/60 ≒ 0.983, which the First-instance Plaintiff admitted.).
D. Damages defined in Article 102, paragraph (2) of the Patent Act
Based on the determinations in B. and C. above, it is reasonable to find that th eamount of damages to the First-instance Plaintiff based on Article 102, paragraph (2)of the Patent Act is 24,247,080 yen as stated in Attachment 9.
E. Double application defined in Article 102, paragraph (3) of the Patent Act
Even if double application of Article 102, paragraph (2) and paragraph (3) of the
Patent Act is not excluded due to the interpretation of the Patent Act, the application
should meet the purport of paragraph (1), item (ii) of said Article. In this case, as statedin C. (A) and (B) above, the grounds for rebuttal defined in paragraph (2) of said Article
are originally applicable in the case where paragraph (1), item (ii) of said Article is notapplied. Therefore, this is not a case where paragraph (3) of said Article can apply
doubly.
Consequently, in any case, the aforementioned allegation of the First -instancePlaintiff cannot be accepted.
54

(5) Summary
Based on the determinations made in (3) and (4) above, since the amount of damages
to the Plaintiff (50,629,205 yen) based on Article 102, paragraph (1) of the Patent Act
that is found in (3) above is higher, the amount is found to be the damages to the First instance Plaintiff.
(6) Attorney's fees
The First-instance Plaintiff entrusted the Plaintiff's litigation representative to
conduct, etc. this litigation (obvious facts to this court). It is reasonable to find that theamount of attorney's fees that have a corresponding causal relationship with the act ofpatent infringement by the First-instance Defendant is 5,000,000 yen.
(7) Overview
Based on the above, the amount of damages to the First-instance Plaintiff is
55,629,205 yen in total.
9. Conclusion
Consequently, the claim of the First-instance Plaintiff has grounds to the extent of
seeking the payment of 55,629,205 yen as compensation for damages based on the tort
of infringement of Patent Right 1, and the amounts of delay damages accrued on the
portion of 12,302,476 yen ("Sales period" sections 1 through 4 of Attachment "List ofAmount of Monthly Damage") for the period from September 26, 2015, which is the
day after the tort and the day following the day on which the complaint was served,
until the completion of the payment, and the amounts accrued on the portion of theamounts indicated in each column for "Amount of monthly damage" in "Sales period"
sections 5 through 14 as indicated in Attachment 10 "List of Amount of Monthly
Damage" for the periods from dates indicated in each column for "Start date of delay
damages" corresponding to said sections until the completion of each payment at therate of 5% per annum as prescribed by the Civil Code before amendment by Act No. 44
of 2017. The remaining claims based on the tort of infringement of Patent Right 1 inthis case and claims based on the infringement of Patent Rights 2 through 4 aregroundless, and therefore, they are dismissed.
Consequently, the judgment in prior instance is altered based on the appeal of theFirst-instance Plaintiff and the appeal of the First-instance Defendant is groundless anddismissed. The judgment is rendered as stated in the main text.
Intellectual Property High Court, Fourth Division
Presiding judge: KANNO Masayuki
Judge: MOTOYOSHI Hiroyuki
55Judge: NAKAMURA Kyo
Attachments 1 through 10: Omitted.

56