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＜第 8 回知的財産翻訳検定【第 5 回和文英訳試験】＞答案用紙★★★

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ID 番 号：００１１３
受験番号：０８ＩＰＬ００７
級／科目：1 級／知財法務実務==================================================================※以下に解答を設置問題順に記入してください。
1. About the decision
The following are a summary of a (remarkable) appeal decision made by theIntellectual Property High Court (hereinafter “IP High Court”) on a patentinfringement case appealed by the Tokyo District Court to the IP High Court.
A. Facts
Canon Incorporated (hereinafter “Canon”), the patentee of Japanese Patent No.
3278410, have been manufacturing and selling ink cartridges as recited in claim 1 of theabove-referenced patent (hereinafter “Canon product”).

The Canon product ismanufactured according to the manufacturing method as recited in claim 10 of thepatent.
Recycle Assist Co., Ltd. (hereinafter “Recycle Assist”) have been importing ink
cartridges completed by refilling a used Canon product with ink (hereinafter “Recycle
Assist Product”).

The used ink cartridge was originally sold in Japan or overseas byCanon or its licensee.
Canon requested suspension of import and sale of the Recycle Assist Product aswell as disposal of remaining Recycle Assist products held by Recycle Assist.
B. Allegations of the opposing parties
Recycle Assist asserted that, regarding the Recycle Assist product made fromthe Canon product sold in Japan or the Canon product sold overseas, the patent right ofCanon had “exhausted” and Canon should not be permitted to enforce the patent lighton its product.
In opposition to the Recycle Assist’s allegation, Canon asserted that Recycle
Assist fills a used Canon product with ink, which means that Recycle Assist

manufactured the product covered by the technical scope of claim 1 of theabove-referenced patent, according to the manufacturing method as recited in claim 10of the patent, and therefore, it was unreasonable that Canon was not permitted toenforce the patent right on the Recycle Assist product.
2. Decision of the IP High Court and Grounds of the Decision
A. Doctrine of patent exhaustion for invention of productIn the case where a patentee of a patent (for an invention of a product) or its
licensee transfers the patented product in Japan, the patent right is exhausted as thepatentee is rewarded by the patent right.

Accordingly, the patentee is no more

permitted to enforce its patent right by requesting suspension of an act such as use,transfer or rent of the patented product.
In the case, however, where any of the following conditions is satisfied, thepatent right is not exhausted and the patentee is permitted to enforce its right:(i) the patented product is reused or recycled after its ordinary reasonableproduct lifetime (Condition 1); and(ii) a third party replaces or reconstructs the whole or a part of the essentialpart(s) of the patented product (Condition 2).
B. Application of exhaustion doctrine to the present case
It was held that the present case did not satisfy Condition 1.
The parts of the Canon product were not physically changed or reconstructed
except that ink had been consumed.

Therefore, the Canon product could be recycled as

an ink cartridge by refilling the cartridge with ink.

The IP High Court accordingly

decided that, at the time when the ink having originally filling the cartridge wasconsumed, the Canon product had not reached the ordinary reasonable product lifetime.
It was, however, held that the present case satisfied Condition 2.
An object of the invention recited in claim 1 is to solve a problem in theconventional ink cartridges.

Specifically, the object is to prevent leakage of ink when

the ink cartridge is opened, while achieving the effect of stably supplying ink, which isthe same as that of the conventional ink cartridge.
In order to achieve this object, the invention claimed in claim 1 has twoessential structural features H and K.

These features H and K will be lost some time

after the ink cartridge whose ink has been used is removed from the printer.
At the time when Recycle Assist cleans the inside of the ink cartridge, namely
the used Canon product, and fills the cartridge with ink to a level exceeding a certain
level indicated in the cartridge, these features H and K are restored into the Recycle
Assist product.
It was accordingly held that Condition 2 was satisfied and the patent right for
the invention claimed in claim 1 had not been exhausted.