Patent
Right

Date
Case number

February 28, 2020
2019(Ne) 10003

Intellectual
Property
High Court, Special
Division- The "product that could have been sold if there had been no infringement"prescribed in Article 102, paragraph (1) of the Patent Act only needs to be a productof the patentee whose sales quantity is affected by the infringement; that is, a productof the patentee having a competitive relationship with the infringement product inthe market.
- The "amount of profit per unit" prescribed in Article 102, paragraph (1) of the
Patent Act is an amount of marginal profit obtained by deducting the costadditionally required in direct relation with the manufacture/sales of theaforementioned product for the patentee from the sales of the product of the patentee,
and its burden of allegation/proof resides on the side of the patentee.
- A case in which, in calculation of the damage by the patent right infringement
pursuant to Article 102, paragraph (1) of the Patent Act, under the held circumstancesin which [i] the patent invention is an invention characterized by shapes of innerperipheral surfaces of a bearing member and a rotary body of a beauty instrument
constituted by members such as the rotary body, a support shaft, the bearing member,a handle, and the like; [ii] the product of the patentee which worked the patentinvention is a beauty instrument for picking up the skin and giving an esthetic action
to the skin by pressing a pair of rolling portions rotatably supported by the support
shaft to the skin and by rotating them, and the aforementioned feature portions arepart of the product; [iii] a portion having a great attraction for customers in the
product is the structure of the rolling portion, and the feature portion of the patentinvention cannot be considered to contribute to all the profit by sales of the productby the patentee; even if the feature portion of the patent invention is only a part
thereof in the product of the patentee which worked the patent invention, it is actually
presumed that the total amount of the marginal profit obtained by the sales of the
product of the patentee is the lost profit of the patentee.
However, bycomprehensively considering the circumstances such as positioning of the feature
portion in the patentee's product, features provided in the patentee's product otherthan the feature portion and the attraction for the customer thereof and the like, theactual presumption should be overturned by approximately 60%, and this should be
deducted from the marginal profit- The "ability to work" prescribed in Article 102, paragraph (1) of the Patent Act
only needs to be a potential ability, and it should be considered that the ability towork exists if the number of products corresponding to the sales quantity of theinfringement product can be supplied by a method of production subcontracting or
the like, and the burden of allegation/proof resides on the patentee sid e.
- The "circumstances due to which the patentee would have been unable to sell "prescribed in the proviso to Article 102, paragraph (1) of the Patent Act refer tocircumstances which hinder considerable causal relations between the infringement
and the sales decrease of the product of the patentee, and circumstances such as [i]presence of a difference in the business forms, prices, and the like between thepatentee and the infringer (non-identicality of the market); [ii] presence ofcompetitive products in the market; [iii] sales efforts (brand strength, advertisement)of the infringer; and [iv] presence of differences in performances of the infringement
i

Court

product and the product of the patentee (features other than the patent invention suchas functions, designs, and the like) should fall under them, and the burden of
allegation/proof of the aforementioned circumstances and the quantity corresponding
to the circumstances resides on the infringer side.
Case type: Compensation
Result: Modification of the prior instance judgment
References: Article 102, paragraph (1) of the Patent Act, Article 709 of the Civil CodeRelated rights, etc.: Patent No. 5356625, Patent No. 5847904
Summary of the Judgment
1. Outline of the case(1) This case is a case in which Plaintiff of the first instance having Present Patent Right
1 (registration number: Patent No. 5356625) and Present Patent Right 2 (Patent No.
5847904) of the invention titled "BEAUTY INSTRUMENT" alleges that sales andthe like by Defendant of the first instance of Defendant's product (9 types of beauty
instruments including a beauty instrument named "Germa-mirror ball beauty roller
shine") infringe each of the aforementioned Patent Rights, and made claims for
injunction thereof, disposal, and payment of damages of 500,000,000 yen (partial
claim) under Article 102, paragraph (1) of the Patent Act from Defendant of the first
instance.
(2) Issues of this case are as follows.
A. Whether Defendant's product belongs to the technical scope of Present Invention
1.
B. Whether Present Patent 1 should be invalidated through a trial for patent
invalidation.
C. Whether Defendant's product belongs to the technical scope of Present Invention
2.
D. Whether Present Patent 2 should be invalidated through a trial for patent
invalidation.
E. Amount of damages of Plaintiff of the first instance(3) The court of prior instance judged that sales and the like of Defendant 's productinfringe Present Patent Right 2 and affirmed injunction of sales and the like anddisposal of Defendant's products and a part of payment of the claim forcompensation for damage.
In calculation of the amount of damages under Article 102, paragraph (1) of the
Patent Act, the court of prior instance deducted 50% as the circumstances in theproviso of the paragraph from the amount obtained by multiplying the numberiitransferred of Defendant's product by the amount of profit per unit from Plaintiff's
product and moreover, made 90% of reduction in the amount by considering thedegree of contribution.
(4) Both Plaintiff of the first instance and Defendant of the first instance appealed
against the judgment of the court of prior instance.

It is to be noted that, Plaintiffof the first instance expanded the amount of compensation for damage from
300,000,000 yen to 500,000,000 yen in the appeal.
2. Outline of the judgment
The judgment affirmed injunction of sales and the like and disposal of Defendant 's
product, since Defendant's product does not belong to the technical scope of Present
Invention 1 and thus, the sales and the like thereof do not infringe Present Patent Right
1 but infringe Present Patent Right 2, found that the amount of damages under Article
102, paragraph (1) of the Patent Act by the infringement of Present Patent Right 2 to be
440,060,000 yen, and modified the judgment of the court of prior instance on theamount of damages.
The outline of the judgment on damage theory of the judgment is as follows.
(1) Article 102, paragraph (1) of the Patent Act is the provision prescribing the
calculation method of the amount of damage when compensation for lost profits by
a decrease in sales quantity is claimed under Article 709 of the Civil Code, and in
the main text of Article 102, paragraph (1) of the Patent Act, it is provided that theamount calculated by multiplying the number of articles transferred by the infringer
by amount of profit per unit from the products that the patentee or exclusive licensee(hereinafter, referred to as the "patentee or the like") could have sold if there had
been no infringement, may be fixed as the amount of the damage that the patentee
or the like has incurred, within the limits of an amount proportionate to the abilityof the patentee or the like to work the patented invention, and in the proviso thereto,
it is provided that if the circumstances due to which the patentee or the like would
have been unable to sell a number of products equivalent to all or part of number
transferred are proved by the infringer, an amount proportionate to the number of
products that could not have been sold due to such circumstances is to be deducted
for the purpose of more flexible finding of a decrease in the sales quantity bypromoting a shift to the burden of proof of the decrease in the number sold having
a considerable causal relations with the infringement.
(2) Amount of profit per unit from the product that could have been sold if there had
been no infringementiii

A. Product that could have been sold if there had been no infringement
The "product that could have been sold if there had been no infringement" only
needs to be a product of the patentee or the like influenced in sales quantity by the
infringement; that is, a product of the patentee or the like having a competitive
relationship in the market with the infringement product.

Since Plaintiff's product isthe worked product of Present Invention 2, it obviously falls under the "product that
could have been sold if there had been no infringement".
B. Amount of profit per unit(a)The "amount of profit per unit" prescribed in Article 102, paragraph (1) of the

Patent Act is the amount of marginal profit obtained by deducting the cost additionallyrequired in direct relation with the manufacture/sales thereof for the patentee or the likeby the manufacture/sales of the product from the sales of the product of the patentee or
the like, and its burden of allegation/proof should be interpreted to reside on the side of
the patentee.
Defendant of the first instance alleges that all the costs of Plaintiff of the first
instance should be deducted from the sales of Plaintiff's product in accordance with thesales ratio of Plaintiff's product to all the products of Plaintiff of the first instance.
However, Article 102, paragraph (1) of the Patent Act is the provision prescribing
the calculation method of the amount of damage when compensation for lost profits by
a decrease in sales quantity is claimed under Article 709 of the Civil Code, and theamount calculated by multiplying the number of articles transferred by the infringer byamount of profit per unit from the products that the patentee or the like could have soldif there had been no infringement is fixed as the aforementioned amount of damage.
As described above, the amount of damage in the paragraph is the lost profits for the
product of the patentee or the like that the patentee or the like could have sold if there
had been no infringement and thus, in calculation of the "amount of profits per unit" inthe paragraph, it is not reasonable to deduct the costs not in direct relation with the
manufacture/sales of the product of the patentee or the like from the sales, and a labor
cost of a management division, communication and transportation expenses , and thelike usually fall under that.

Moreover, Plaintiff of the first instance had alreadymanufactured/sold Plaintiff's product, and it is not reasonable, either to deduct costs
required for that and having been already paid (costs required for and havin g been
already paid for equipment and facilities required for manufacturing the product, forexample) from the sales.
(b)Present Invention 2 is the invention of a beauty instrument constituted bymembers such as the rotary body, the support shaft, the bearing member, the handle,iv

and the like, and the invention is characterized by the shapes of the inner peripheral
surfaces of the bearing member and the rotary body (hereinafter, this portion is referred
to as the "present feature portion").

Since Plaintiff's product is a beauty instrument

which is to give an esthetic action to the skin by pressing the pair of rolling portions
rotatably supported by the support shaft to the skin and rotating it so as to pick up theskin, the present feature portion is only a part of Plaintiff's product.
In the product of the patentee or the like which worked the patent invention, even
if the feature portion of the patent invention is only a part thereof, it is actually
presumed that the total amount of the marginal profit obtained by sales of the productof the patentee is the lost profit of the patentee or the like.
For Plaintiff's product, realizing favorable rotation of the rolling portion is also
important, and it can be considered that the present feature portion which is a member
required for that; that is, the shapes of the inner peripheral surfaces of the bearing
member and the rotary body, also contribute to the profit by sales of Plaintiff's productcorrespondingly.
However, Plaintiff's product is a beauty instrument which gives an esthetic action
by pressing the pair of rolling portions to the skin and rotating it so as to pick up theskin and thus, the portion having a great attraction for customers in Plaintiff 's productis found to be the structure of the rolling portion, and Plaintiff's product includes a solar
panel so as to generate a microcurrent, whereby the attraction for customers is found to
be enhanced.

From these circumstances, it cannot be considered that the present

feature portion contributes to all the profits by the sales of Plaintiff 's product and thus,
it is not reasonable to find that the total amount of the marginal profit obtained by salesof Plaintiff's product is the lost profit of Plaintiff and thus, the aforementioned actual
presumption should be partially overturned in Plaintiff's product.
By comprehensively considering the circumstances appearing in this case such as
the positioning of the aforementioned present feature portion in Plaintiff's product,
features provided in Plaintiff's product other than the present feature portion and theattraction for the customer thereof, it is reasonable to admit that a degree of theoverturning is approximately 60% of the total.
As described above, in calculation of the "amount of profit per unit" from Plaintiff's
product, it is reasonable to deduct approximately 60% from 5,546 yen which is theamount of the marginal profit of the entire Plaintiff's product, and the amount of the
profit per unit from Plaintiff's product is 2,218 yen (5,546 yen × 0.4 ≈ 2,218 yen).
(3) Amount proportionate to ability to work
A. The "ability to work" in Article 102, paragraph (1) of the Patent Act only needsv

to be a potential ability, and it should be interpreted that the ability to work exists evenin the case where the number of products corresponding to the sales quantity of theinfringement product can be supplied by a method of production subcontracting or the
like, and the burden of allegation/proof resides on the patentee side.
B. Since it can be presumed that Plaintiff of the first instance has the ability tosupply extra products of approximately 30,000 units to the average sales quantity permonth, it is reasonable to find that Plaintiff of the first instance had the ability toadditionally sell Plaintiff's product in the quantity of approximately 20,000 units on amonthly average within this extra product supply ability.
Therefore, it is found that Plaintiff of the first instance had the ability to sell
Plaintiff's product in the quantity of Defendant's product sold by Defendant of the first
instance.
(4) Circumstances due to which sales could have been impossible
A. The proviso to Article 102, paragraph (1) of the Patent Act provides that if there
are circumstances due to which the patentee would have been unable to sell a numberof products equivalent to all or part of number transferred of the infringement product(hereinafter, referred to as the "circumstances due to which sales would have been
impossible"), the amount according to a number equivalent to the circumstances due towhich the sales would have been unable shall be deducted, and if the infringer
alleges/proves the circumstances found to be the circumstances due to which sales
would have been impossible and an amount according to the number proportionate to
the circumstances, the amount according to the number of products is deducted fromthe amount of damage found by the main text of the paragraph.
The "circumstances due to which sales would have been impossible" refer tocircumstances hindering the considerable causal relations between the infringement andthe sales decrease of the product of the patentee or the like, and circumstances such as[i] presence of a difference in the business forms, prices, and the like between thepatentee and the infringer (non-identicality of the market); [ii] presence of competitive
products in the market; [iii] sales efforts (brand strength, advertisement) of theinfringer; and [iv] presence of differences in performances of the infringed product andthe product of the patentee (features other than the patent invention such as functions,designs, and the like) should fall under them.
B. Defendant of the first instance alleges as the circumstances due to which sales
would have been impossible [i] a difference in prices and a difference in vendors
between Plaintiff's product and Defendant's product; [ii] presence of a large number ofcompetitive products; [iii] the manufacturing cost for the bearing in Defendant's productvi

is only a small part of the total manufacturing cost; [iv] the bearing portion cannot berecognized from an appearance and that there is an alternative art; [v] Plaintiff's producthas a mechanism for generating microcurrent but Defendant's product does not havesuch a mechanism; and [vi] sales efforts of Defendant of the first instance.

Withregard to the aforementioned [i], in view that Plaintiff's product is a relatively expensive
beauty instrument, while Defendant's product is sold at an inexpensive price atapproximately one-eighth to one-fifth of the price of Plaintiff's product, it cannot benecessarily considered that those who purchased Defendant's product would havepurchased Plaintiff's product if there had not been Defendant's product.

Therefore, thedifference in the sales price can be found as the circumstances due to which sales would
have been impossible, but the difference in the sales form cannot be found as thecircumstances due to which sales would have been impossible.

With regard to [ii], inthe market, it is not enough to find that products in a competitive relation with Plaintiff 's
product were sold during the present infringement period (December 4, 2015 to May 8,2017) on the evidence and thus, this point cannot be found to be the circumstances due
to which sales would have been impossible.

With regard to [iii], it has been alreadyconsidered in calculation of the amount of profit per unit from Plaintiff's product andthus, it is not necessary to repeatedly consider this as the circumstances due to whichsales would have been impossible.

With regard to [iv], it is applicable to both

Defendant's product and Plaintiff's product and thus, it cannot be considered that in thecase where there is no Defendant's product, the demand for Defendant's product does
not go toward Plaintiff's product due to presence of the circumstances and thus, thesecircumstances cannot be found to be the circumstances due to which sales would havebeen impossible.

With regard to [v], the circumstances mean that Defendant's productis poor in attraction for customers in relation to Plaintiff's product and thus, it cannot
be circumstances which defer the demand to go toward Plaintiff's product if there is no
Defendant's product.

Therefore, it cannot be found to be the circumstances due towhich sales would have been impossible.

With regard to [vi], on the evidence, it is

not found that Defendant of the first instance made sales efforts at such a degree that isenough to be found as the circumstances due to which sales would have been impossible.
With regard to the aforementioned [i], in view that the price difference between
Plaintiff's product and Defendant's product is not small, the quantity corresponding to
the circumstances due to which sales would have been impossible by presence of thecircumstances is found not to be small.

On the other hand, both products are beauty

instruments, and in view of the characteristic of a product as a beauty instrument, it
should be presumed that some of the consumers do not put emphasis on the price andvii

would purchase an inexpensive product, if any, but if there is no inexpensive product,
not a small number of the consumers would purchase an expensive product.

Moreover,Plaintiff's product has the surface of the roller applied with platinum coating, and asolar panel is mounted so as to generate microcurrent and thus, the quality should behigher than Defendant's product without such equipment and thus, even though
Plaintiff's product has the sales price of approximately 24,000 yen, it can take in acertain number of the consumers of Defendant's product at the sales price ofapproximately 3,000 to 5,000 yen.

As described above, it cannot be found that thequantity corresponding to the circumstances due to which sales would have been
impossible because of the presence of the price difference between Plaintiff's productand Defendant's product mounts to a considerable quantity.

By considering suchcircumstances, it is reasonable to find that the quantity corresponding to thecircumstances due to which sales would have been impossible is approximately 50% of
the total.
(5) Whether amount of damage should be decreased by considering contribution degreeof Present Invention 2
Even if the allegation of Defendant of the first instance has a point that the amountof damage should be decreased by considering the rate of contribution of Present
Invention 2 to the sales of Defendant's product separately from these deductions, there
are no provisions approving it, or there are no grounds for approving it, either, and thus,
such decrease by considering the contribution degree shall not be approved.
(6) Amount of damage
The amount of damage of Plaintiff of the first instance under Article 102, paragraph(1) of the Patent Act is 390,060,000 yen (2,218 yen × 351,724 units × 0.5 ≈ 390,060,000yen) by deducting the portion of the circumstances that approximately 50% of thenumber transferred of 351,724 units of Defendant's product could not have been soldand by multiplying the sales quantity after the deduction by the profit amount of 2,218
yen per unit of Plaintiff's product.
It is reasonable that lawyer's fees having a considerable causal relation with the
infringement of Present Patent Right 2 by Defendant of the first instance are found to
be 50,000,000 yen by considering the approved amount, a difficulty degree of thislawsuit, and that the injunction claim by Plaintiff of the first instance are approved.
Therefore, the amount of damage of Plaintiff of the first instance is 440,060,000
yen in total.

viii

Judgment rendered on February 28, 20202019 (Ne) 10003 Appeal case of seeking injunction against patent infringement (Courtof Prior Instance: Osaka District Court, 2016 (Wa) 5345)
Date of conclusion of oral argument: January 24, 2020
Judgment
Appellant and Appellee: MTG CO., LTD. (hereinafter, referred to as "Plaintiff of first
instance")
Counsel attorney: SEKI Kenichi
Patent attorney as counsel: KOBAYASHI Tokuo
Appellee and Appellant: FIVE STARS INC. (hereinafter, referred to as "Defendant of
first instance")
Counsel attorney: FUKE Megumi
The same: NISHIMURA Kei
Patent attorney as an assistant in court: TAKAYAMA Yoshinari

Main text
1. The judgment in prior instance shall be modified as follows on the basis of theappeal and amendment of claim by Plaintiff of first instance.
(1) Defendant of first instance must not transfer or offer to transfer the beauty
instrument described in the lists of Defendant's Products 1 to 9 attached tothe judgment in prior instance.
(2) Defendant of first instance must dispose of the beauty instrument describedin the lists of Defendant's Products 1 to 9 attached to the judgment in priorinstance.
(3) Defendant of first instance must pay to Plaintiff of first instance money of
440,060,000 yen and the rate of 5% per annum for 38,100,000 yen from June15, 2016, for 4,050,000 yen from August 26, 2017, for 257,850,000 yen from
November 17 of the same year, and for 140,060,000 yen from May 15, 2019
until completion of each of the payments.
(4) The remaining claims by Plaintiff of the first instance shall be dismissed.
2. The appeal by Defendant of first instance shall be dismissed.
3. The court costs shall be divided by 20 throughout the first instance and the1second instance, one part of them shall be borne by Plaintiff of first instance,
and the remaining by Defendant of first instance.
4. This judgment can be provisionally executed only for the first clause (1), (2),and (3).
Facts and reasonsNo. 1 Gist of the appeal
1. Plaintiff of first instance(1) The judgment in prior instance shall be modified as follows:(2) Defendant of first instance must not transfer or offer to transfer the beauty
instrument described in the lists of Defendant's Products 1 to 9 attached to the
judgment in prior instance.
(3) Defendant of first instance must dispose of the beauty instrument described in
the lists of Defendant's Products 1 to 9 attached to the judgment in prior instance.
(4) Defendant of first instance must pay to Plaintiff of first instance money of
500,000,000 yen and the rate of 5% per annum for 38,100,000 yen from June 15,
2016, for 4,050,000 yen from August 26, 2017, for 257,850,000 yen from
November 17 of the same year, and for 200,000,000 yen from May 15, 2019
until completion of each of the payments.
(Plaintiff of first instance withdrew the lawsuit seeking injunction of
manufacture, use, lease, export, and offer of lease of the beauty instrument andexpanded the claim for damages of 300,000,000 yen as above in this court).
2. Defendant of first instance(1) The part that Defendant of first instance lost in the judgment in prior instanceshall be reversed.
(2) The claim by Plaintiff of first instance related to the reversed part shall bedismissed.
No. 2 Outline of the case
1. Outline of lawsuit(1) This case is a case in which Plaintiff of first instance holding each of the patentrightsin2(2)described

below

of

the

invention

titled"BEAUTY

INSTRUMENT" alleged to Defendant of first instance that manufacture, use,transfer, lease, export, or offer of transfer or lease by Defendant of first instanceof the beauty instrument described in the "lists of Defendant's Products" 1 to 9
attached to the judgment in prior instance (hereinafter, each referred to as
2

"Defendant's Product 1" and the like and collectively referred to as "Defendant's
Products") infringe each of the patent rights, and [i] made claims for injunctionof manufacture/sales and the like of Defendant's Products by each of the patentrights and for disposal on the basis of Article 100, paragraph (1) and paragraph(2) of the Patent Act; and [ii] made a claim for payment of damages of
300,000,000 yen by infringement of the patent rights in 2(2)B below under
Article 102, paragraph (1) of the Patent Act and the delay damages at the rate of
5% per annum prescribed in the Civil Code for 38,100,000 yen from June 15,2016 (the day following the date of delivery of the bill), for 4,050,000 yen from
August 26, 2017 (the day following the date of delivery of the written motion ofamendment of claim as of August 15, 2017), and for 257,850,000 yen from
November 17 of the same year (the day following the date of delivery of thewritten motion of amendment of claim (2) as of November 13, 2017) until
completion of each of the payments on the basis of Article 709 of the Civil Codeas a partial claim.
(2) The court of prior instance judged that the manufacture, sales, and the like ofDefendant's Products infringe the patent right in 2(2)B below, and then affirmed
the claim by Plaintiff of the first instance with the limit of requesting injunctionof the manufacture, sales, and the like and disposal of Defendant's Products andpayment of damages of 107,350,651 yen and delay damages at the rate of 5%
per annum for 38,100,000 yen from June 15, 2016, for 4,050,000 yen from
August 26, 2017, and for 65,200,651 yen from November 17 of the same year
until completion of each of the payments, and dismissed the remaining claims.
(3) Both Plaintiff of the first instance and Defendant of the first instance appealed
against the judgment in prior instance.
Moreover, Plaintiff of first instance withdrew the suit seeking injunction of
manufacture, use, lease, export, and offer of lease of Defendant's Products, madea claim for damages by infringement of the patent rights in 2(2)A below, andexpanded the claim and made a claim for 500,000,000 yen and the delay
damages at the rate of 5% per annum prescribed in the Civil Code for 38,100,000
yen from June 15, 2016, for 4,050,000 yen from August 26, 2017, for257,850,000 yen from November 17 of the same year, and for 200,000,000 yen
from May 15, 2019 (the day following the date of delivery of the written motionof amendment of claim as of May 14, 2019) until completion of each of thepayments as a partial claim in this court.

32. Basic Facts (facts not disputable between the parties or found by the evidences
described later, and the entire import of the oral argument)(1) Parties
Plaintiff of the first instance is a stock company doing businesses of planning,development, manufacture, sales, and the like of healthcare appliances, beauty
instruments, medical appliances, and quasi drugs.
Defendant of the first instance is a stock company doing businesses of sales,
import/export, and the like of healthcare appliances, beauty instruments, and thelike.
(2) Patent rights held by Plaintiff of the first instance (Exhibits Ko 1 to 4)
Plaintiff of the first instance has the patent rights according to the patents of thefollowing A and B (hereinafter, each of the patents is referred to as "Present Patent1", "Present Patent 2", and the invention according to Present Patent 1 as "Present
Invention 1", the patent right according to Present Invention 1 as "Present Patent
Right 1", the invention according to Claim 1 of Present Patent 2 as "Present
Invention 2", the patent right according to Present Invention 2 as "Present Patent
Right 2", and the description and the drawings according to Present Patent 1 andPresent Patent 2 as "Present Description 1" and "Present Description 2",
respectively. See Patent Gazette attached to the judgment in prior instance).
A. Present Patent 1
Registration number: Patent No. 5356625
Title of the invention: BEAUTY INSTRUMENT
Date of filing: June 20, 2013
(original date of filing: November 16, 2011)
Application No.: Patent Application No. 2013-129765
Date of registration: September 6, 2013
B. Present Patent 2
Registration number: Patent No. 5847904
Title of the invention: BEAUTY INSTRUMENT
Date of filing: September 26, 2014
(original date of filing: November 16, 2011)
Application No.: Patent Application No. 2014-197056
Date of registration: December 4, 2015
(3)

Situation of trial for invalidation related to Present Patents 1 and 2 (Exhibits

Ko 14, 37, 46, 53, Exhibits Otsu 153 and 165, entire import of oral argument)
With regard to the trial for invalidation (Invalidation Trial No. 2016-800086)
4according to Present Patent 1 claimed by Defendant of the first instance, the Japan
Patent Office approved correction of the Scope of Claims and the Description andmade a trial decision that the claim was not established on October 24, 2017.

With

regard to the lawsuit seeking rescission of the JPO decision (2017 (Gyo-ke) 10201
case, hereinafter, referred to as the "Other Lawsuit 1"), the Intellectual Property
High Court rendered the judgment that the claim shall be dismissed on September
4, 2018, and since the judgment was finalized, the JPO decision was also finalized.
With regard to the trial for invalidation (Invalidation Trial No. 2017-800074)
according to Present Patent 2 claimed by Defendant of the first instance, the Japan
Patent Office made a trial decision that the claim was not established on March 29of the same year, and with regard to the suit against the JPO decision (2018 (Gyoke) 10048, hereinafter, referred to as "Other Lawsuit 2"), the Intellectual Property
High Court dismissed the claim on February 6, 2019.
(4) Scope of Claims
A. The description in the Scope of Claims in Present Patent 1 is as follows:
A beauty instrument in which a pair of balls is supported on a distal end portionof a handle at an interval from each other and rotatably around one axis, respectively,
characterized in that the axis of the ball is constituted to be inclined forward withrespect to a center line of the handle so that the axis of the ball can maintain a certain
angle with respect to a skin surface during a reciprocating operation, an opening
angle of a pair of ball support shafts is set to 65 to 80 degrees, and an interval
between outer peripheral surfaces of the pair of balls is set to 10 to 13 mm, the ballis supported by the ball support shaft through a bearing member in a non-penetratingstate, and constituted such that the skin is picked up by pressing the outer peripheral
surface of the ball to the skin and moving it from the distal end of the handle to ward
a base end direction.
B. The description in Claim 1 of the Scope of Claims of Present Patent 2 is asfollows.
A beauty instrument including a support shaft retained by/fixed to a handle at abase end and a rotary body rotatably supported on the distal end side of the support
shaft and configured to give an esthetic action to the body by the rotary body,characterized in that the rotary body has a hole only on the base end side; the rotarybody is supported by the support shaft through a bearing member in a non penetrating state where a distal end of the support shaft is located inside thereof ;the bearing member is retained by the support shaft at the distal end which is on aside opposite to the hole in the rotary body; a lock claw capable of elastic
5

deformation protrudes from the bearing member and the bearing member has aflange portion on the base end side of the lock claw; the lock claw has a slanted
surface whose distance to a rotation center of the rotary body in the bearing member
becomes smaller as it gets closer to the distal end side; the rotary body has a stepped
portion capable of being engaged with the lock claw on an inner periphery; and the
stepped portion is locked on the base end side of the lock claw and is locatedbetween the lock claw and the flange portion.
(5) Separate description of constituent features
A. Separate description of constituent features of Present Invention 1
The constituent features of Present Invention 1 are separately described asfollows:
A. A beauty instrument in which a pair of balls is supported on a distal end portionof a handle at an interval from each other and rotatably around one axis,
respectively.
B. The axis of the ball is constituted to be inclined forward with respect to a centerline of the handle so that the axis of the ball can maintain a certain angle withrespect to a skin surface during a reciprocating operation.
C. An opening angle of a pair of ball support shafts is set to 65 to 80 degrees .
D. An interval between outer peripheral surfaces of the pair of balls is set to 10 to
13 mm.
X. The ball is supported by the ball support shaft through a bearing member in a
non-penetrating state.
E. It is constituted such that the skin is picked up by pressing the outer peripheral
surface of the ball to the skin and moving it from the distal end of the handle
toward a base end direction.
B. Separate description of constituent features of Present Invention 2
The constituent features of Present Invention 2 are separately described asfollows:
F. A beauty instrument including a support shaft retained by/fixed to a handle at abase end and a rotary body rotatably supported on the distal end side of the
support shaft and configured to give an esthetic action to the body by the rotarybody.
G. The rotary body has a hole only on the base end side, and the rotary body is
supported by the support shaft through a bearing member in a non-penetratingstate where a distal end of the support shaft is located inside thereof .
H. The bearing member is retained by the support shaft at the distal end which is on
6

a side opposite to the hole in the rotary body.
I. A lock claw capable of elastic deformation protrudes from the bearing member .
J. The bearing member has a flange portion on the base end side of the lock claw.
K. The lock claw has a slanted surface whose distance to a rotation center of therotary body in the bearing member becomes smaller as it gets closer to the distal
end side.
L. The rotary body has a stepped portion capable of being engaged with the lockclaw on an inner periphery, and the stepped portion is locked on the base end
side of the lock claw and is located between the lock claw and the flange portion.
(6) Act of Defendant of first instance (Exhibits Ko 21, 22, Exhibits Otsu 1 to 7,
entire import of oral argument)
Defendant of the first instance sold or offered sales of Defendant 's Products as
a business at least from December 4, 2015 to May 8, 2017.
(7) Structure of Defendant's Products
A. Structures of Defendant's Products 1 to 7 pertaining to relations with Present
Invention 1
a. A beauty instrument in which a pair of pear-shaped rolling portions is supported
rotatably around a support shaft on a distal end portion of a body portion made of agrip and a bifurcated portion inserted into and mounted on a distal end of the grip.
b. The two support shafts are inclined forward with respect to the grip.
c. An opening angle between the two support shafts is 74 to 75 degrees.
d. An interval between outer peripheral surfaces of the rolling portions i s as in"photos 1 to 7" in the attachment of this judgment, respectively.
x. The two rolling portions are supported by the two support shafts through thebearing member, respectively, in a non-penetrating state.
e. It is constituted such that the skin is picked up by pressing the outer peripheral
surface of the two rolling portions to the skin and moving the bodies from the distal
end of the grip toward a base end direction.
B. Structures of Defendant's Products 8 and 9 pertaining to the relations withPresent Invention 1
a. A beauty instrument in which a pair of pear-shaped rolling portions is supported
rotatably around a support shaft on a distal end portion of a body portion made of agrip and a bifurcated portion inserted into and mounted on a distal end of the grip.
b. The two support shafts are inclined forward with respect to the grip.
c. An opening angle between the two support shafts is 75.5 to 76 degrees.
d. An interval between outer peripheral surfaces of the rolling portions is as in7

"photos 8, 9" in the attachment of this judgment, respectively.
x. The two rolling portions are supported by the two support shafts through thebearing member, respectively, in a non-penetrating state.
e. It is constituted such that the skin is picked up by pressing the outer peripheral
surface of the two rolling portions to the skin and moving the bodies from the distal
end of the grip toward a base end direction.
C. Structures of Defendant's Products 1 to 9 pertaining to the relations with Present
Invention 2 (see "1 to 3 in reference drawing 1" in the attachment of the judgment for
Defendant's Products 1 to 4, and see "1 to 3 in reference drawing 2" in the attachmentof the judgment for Defendant's Products 4 to 9.

Defendant's Product 4 has two typesof structures, that is, "1 to 3 in reference drawing 1" in the attachment of the judgmentand "1 to 3 in reference drawing 2" in the attachment of the judgment.)
f. A beauty instrument in which a support shaft is retained by/fixed to a distal endof a bifurcated portion on a base end, and a rolling portion is rotatably supported on the
support shaft and configured to give an esthetic action to the body by the rolling portion.
g. The rolling portion is a hollow material having an opening only on the base end
side, and a cylindrical fitting 1 (cylindrical member) and a ring-shaped fitting 2(cylindrical ring) are fitted from the distal end side, incapable of relative rotation withthe rolling portion 1 in the hollow in a state where a gap is provided on the distal end
side.
Moreover, the rolling portion is in a non-penetrating state in which the distal end of
the support shaft is located in the hollow, and the rolling portion, the cylindrical fitting
1 (cylindrical member), and the ring-shaped fitting 2 (cylindrical ring) are rotatably
supported by the support shaft through a bearing member.
h. The bearing member is retained by a retaining member with respect to the support
shaft on the distal end side which is on a side opposite to the opening of the rolling
portion.
i. A lock claw protrudes on a peripheral surface of the bearing member.
j. A flange portion is provided on the base end side of the bearing member.
k. The lock claw of the bearing member has a slanted surface whose distance to arotation center of the bearing member becomes smaller as it goes toward the distal end
side.
l. The cylindrical fitting 1 (cylindrical member) in the hollow of the rolling portion
has a large diameter portion with an inner diameter larger than the other portions on an
inner peripheral surface on the base end side, and the lock claw is located on the large
diameter portion.

The ring-shaped fitting 2 (cylindrical ring) in the hollow of the8rolling portion is locked on the base end side of the lock claw and located between thelock claw and the flange portion.
3. Issues(1) Whether Defendant's Products belong to the technical scope of Present Invention
1 (issue (1)).
(2) Whether Present Patent 1 should be invalidated through a trial for patent
invalidation (issue (2)).
(The allegation of lack of inventive step with Korean Design Publication No. 300408623 (Exhibit Otsu 31-1) as the primarily cited reference was withdrawn in thiscourt.)
A. Presence/absence of violation of clarity requirement (Article 36, paragraph (6),item (ii) of the Patent Act) (issue (2)A) (issue added in this court)
B. Presence/absence of lack of inventive step with French Publication No. 2891137(Exhibit Otsu 50-1, hereinafter, referred to as the "Exhibit Otsu 50 document")
as the primarily cited reference (issue (2)B) (issue added in this court)
C. Presence/absence of lack of inventive step with the Registered Utility Model No.
3159255 (Exhibit Otsu 45, hereinafter, referred to as the "Exhibit Otsu 45
document") as the primarily cited reference (issue (2)C) (issue added in thiscourt)(3) Whether Defendant's Products belong to the technical scope of Present Invention
2 (issue (3)).
(4) Whether Present Patent 2 according to Present Invention 2 should be invalidated
through a trial for patent invalidation (issue (4)).
(The allegation of lack of inventive step with Unexamined Utility Model
Application Publication No. 1994-36635 (Exhibit Otsu 44, hereinafter, referred toas the "Exhibit Otsu 44 document") as the primarily cited reference was withdrawn
in this court.)
A. Presence/absence of lack of inventive step with the Exhibit Otsu 45 document as
the primarily cited reference (issue (4)A)
B. Presence/absence of lack of inventive step with Unexamined Patent Application
Publication No. 1990-104359 (Exhibit Otsu 135, hereinafter, referred to as the"Exhibit Otsu 135 document") as the primarily cited reference (issue (4)B)(issue added in this court)(5) Amount of damages of Plaintiff of first instance (issue (5))

9No. 3 Allegation of the parties on issues
1. Whether Defendant's Products belong to the technical scope of Present Invention
1 (issue (1))[Allegation of Plaintiff of the first instance](1) Fulfillment of constituent feature A
A. The "grip" and the "bifurcated portion" of Defendant's Product correspond to the"handle" of Present Invention 1.
B. Present Description 1 describes that the "ball" of Present Invention 1 includes aballoon shape, an oval sectional shape, an elliptic sectional shape, and the like(paragraphs [0050], [0052]) and thus, the "pear-shaped" rolling portion of
Defendant's Product is also included in the "ball" of Present Invention 1.
Defendant of the first instance alleges that the "ball" of Present Invention 1
should have a distal end side of the support portion having a semi-sphericalshape which is the same as the completely circular ball, but there is no reason
for such limited interpretation.

The judgment of Other Lawsuit 1 does notmake such limited interpretation.
Therefore, the "rolling portion" of Defendant's Product corresponds to the"ball" of Present Invention 1.
C. The "rolling portion" of Defendant's Product is supported rotatably around the
support shaft.
D. Thus, Defendant's Product fulfills constituent feature A of Present Invention 1.
(2) Fulfillment of constituent feature B
A. Since the "grip" and the "bifurcated portion" of Defendant's Product correspondto the "handle" of Present Invention 1, the "rolling portion" of Defendant's
Product corresponds to the "ball" of Present Invention 1, and this rolling portion
is supported rotatably around the support shaft, the axis of the support shaft of
the rolling portion corresponds to the "axis of the ball" of Present Invention 1.
B. In view of paragraph [0018] and Figures 3 and 5 of Present Description 1, it isobvious that the "center line" of Present Invention 1 is a line in parallel with aline dividing an angle between outer peripheral tangents of the thickest part of
the handle on a side directional view of the handle into two parts.
Since the axis of the support shaft of the rolling portion of Defendant 's
Product is inclined forward with respect to the "center line" of the handle in the
aforementioned meaning, Defendant's Product fulfills the phrase in Present
Invention 1 that "the axis of the ball is inclined forward with respect to the centerline of the handle".
10

C. Therefore, Defendant's Product fulfills the constituent feature B of Present
Invention 1.
(3) Fulfillment of constituent feature C
Defendant's Product fulfills constituent feature C of Present Invention 1.
(4) Fulfillment of constituent feature D
A. The "rolling portion" of Defendant's Product corresponds to the "ball" of Present
Invention 1.
B. Paragraph [0021] of Present Description 1 has description that "the interval D of
the outer peripheral surfaces of the balls 17 is for appropriately picking up
particularly the skin 20 ... when the interval D between the outer peripheral
surfaces of the balls 17 is less than 8 mm, a picking-up effect to the skin 20
located between the balls 17 acts too strongly, which is not preferable", and inview of the description, it is obvious that the "interval between the outer
peripheral surfaces of the pair of balls" of Present Invention 1 is based on a spot
where the interval is the narrowest when the skin is sandwiched.

Referencecharacter D (interval) in Figure 5 of Present Description 1 also illustrates theminimum interval between the pair of balls, and by considering the figure andthe description in the aforementioned paragraph, the "interval between the outer
peripheral surfaces of the pair of balls" of Present Invention 1 should be
regarded to mean a distance between the outer peripheral surfaces between thepair of balls which are the closest to each other.
The minimum interval between the rolling portions of Defendant's Productis as in the following list, and they are all within a range from 10 to 13 mm andthus, Defendant's Product fulfills that "the interval between the outer peripheral
surfaces of the pair of balls is set to 10 to 13 mm".
Defendant's Product 1
Defendant's Product 2
Defendant's Product 3
Defendant's Product 4
Defendant's Product 5
Defendant's Product 6
Defendant's Product 7
Defendant's Product 8
Defendant's Product 911.58 mm
11.62 mm
12.11 mm10.73 mm
10.54 mm12.08 mm
10.44 mm10.00 mm
11.52 mm

C. Therefore, Defendant's Product fulfills constituent feature D of Present Invention
1.
11

(5) Fulfillment of constituent feature X
Since the "rolling portion" of Defendant's Product corresponds to the "ball" in
Present Invention 1, and the rolling portion is supported by the support shaft throughthe bearing member without the support shaft's penetration through the rolling
portion, Defendant's Product fulfills constituent feature X of Present Invention 1.
(6) Fulfillment of constituent feature E
Since the "rolling portion" of Defendant's Product corresponds to the "ball" of
Present Invention 1, Defendant's Product fulfills constituent feature E of Present
Invention 1.
[Allegation of Defendant of first instance](1) It is found that Defendant's Product fulfills constituent feature C of Present
Invention 1.
(2) The "ball" (constituent features A, B, D, E, and X) of Present Invention 1 is notincluded.
A. Meaning of the "ball" of Present Invention 1
The judgment of Other Lawsuit 1 found that the shape of the "ball" of Present
Invention 1 has a completely circular shape, and the distal end side of the support
shaft has the semi-spherical shape which is the same as the ball having thecompletely circular shape, and the handle 11 side has a curved surface shape with acurvature larger than that of the semi-sphere.

And the aforementioned judgment

judged on the premise of the finding that, since the article as above can pick up theskin and moreover, can hold the picking-up state for a long time, it exerts thefunction and effect of Present Invention 1.
Therefore, the "ball" of Present Invention 1 should have the semi-sphericalshape on the distal end side of the support shaft which is the same as the ball withthe completely circular shape.
B. Fulfillment of Defendant's Product
The rolling portion of Defendant's Product does not have the distal end side of
the support shaft with the semi-spherical shape which is the same as the ball having
the completely circular shape (Exhibit Otsu 149), and Defendant's Product does notexert the function and effect found by the aforementioned judgment (Exhibits Otsu
150 to 152 [including branch number]).
C. Therefore, Defendant's Product does not include the "ball" of Present Invention
1 or does not fulfill constituent features A, B, D, E, and X of Present Invention
1.
(3) The "axis of the ball is inclined forward with respect to the center line of the12handle" (constituent feature B) of Present Invention 1 is not fulfilled
A. Meaning of the "center line of the handle"
When the "center line of the handle" of Present Invention 1 is interpretedwith technical consistency, the following three interpretations can be established
for the constituent feature B.
[i] With limitation to the handle having the shape illustrated in Figure 3 of Present
Description 1, it is supposed to be the "center line (a line in parallel with a line
dividing an angle between outer peripheral tangents z of the thickest portion of
the handle 11 into two parts) x of the handle 11" (paragraph [0018]).
[ii] On the basis only of the description of paragraph [0018] of Present Description
1, it is supposed to be the "center line (a line in parallel with a line dividing anangle between outer peripheral tangents z of the thickest portion of the handle
into two parts) x of the handle 11".
[iii] Paragraph [0057] of Present Description 1 has the description that the shapeof the handle can be changed to a cylindrical shape, a columnar shape, a prism
shape and the like, and since these shapes are symmetrical shapes from which
the "center" can be conceived, the "handle" is supposed to be a symmetricalshape from which the center line can be conceived.
B. Fulfillment of Defendant's Product(a) In the case of interpretation of the aforementioned A[i]Since the handle having the shape described in Figure 3 of Present Description
1 and the grip of Defendant's Product have different shapes, Defendant's Productdoes not fulfill the "axis of the ball is inclined forward with respect to the centerline of the handle" of Present Invention 1.
(b) In the case of interpretation of the aforementioned A[ii]Since the thickest portion of the grip of Defendant's Product is a root portion of
the grip on a front view (Exhibits Otsu 1 to 7), the center line of the grip is the line
dividing the angle between the outer peripheral tangents of the root portions of thegrip into two parts, but the axis of the rolling portion of Defendant 's Product is notinclined forward with respect to the center line.
Therefore, Defendant's Product does not fulfill the "axis of the ball is inclined
forward with respect to the center line of the handle" of Present Invention 1.
(c) In the case of interpretation of the aforementioned A[iii]The two support shafts of Defendant's Product are inclined forward with respect
to the grip, but since the shape of the grip is an asymmetrical shape in a front viewand the center line cannot be conceived therefrom, it does not have the structure of13the "center line of the handle" of constituent feature B, and the axis is not inclined
forward with respect to the center line of the handle.
Therefore, Defendant's Product does not fulfill the "axis of the ball is inclined
forward with respect to the center line of the handle" of Present Invention 1.
C. Thus, Defendant's product does not fulfill constituent feature B of Present
Invention 1.
(4) Defendant's product does not fulfill the "interval between the outer peripheral
surfaces of the pair of balls is set to 10 to 13 mm" (constituent feature D) of
Present Invention 1
A. Meaning of the "interval between the outer peripheral surfaces of the pair ofballs"(a) In the balloon-shaped balls, the picked-up skin is not held at a spot where thedistance between the pair of balls is shortest but between spots moved slightly
closer to the support shaft base end side than a diameter portion.
In Figure 5 of Present Description 1, by using a ratio between a distance M
from the distal end of the ball 17 to a diameter L and a distance N from thediameter L of the ball to the interval D spot, the spot of the aforementioned"slightly closer to the support shaft base end side" can be specified, and the ratio
between the aforementioned N and M is 0.7 (N/M = 0.7).
Present Description 1 does not have a figure separately illustrating theinterval between the outer peripheral surfaces of the balls on the balloon-shapedroller and thus, Figure 5 needs to be applicable also to Figures 8 and 9 for theinterval between the outer peripheral surfaces of the balloon-shaped balls to bedisclosed in Present Description 1 and then, the interval between the outer
peripheral surfaces of the pair of balloon-shaped balls 17 is a distance between
spots moved in parallel from a center m of the diameter of the balloon-shapedball 17 only by 0.7 times of a radius M.
(b) Plaintiff of the first instance alleges that the "interval between the outer
peripheral surfaces of the pair of balls" of Present Invention 1 means the distance
between the outer peripheral surfaces of the pair of balls which are the closest.
However, the Scope of Claims of Present Invention 1 does not limit thenarrowest portion to the interval between the outer peripheral surfaces of thepair of balls, and Present Description 1 does not describe that the narrowest
portion is the interval between the outer peripheral surfaces of the pair of balls,
either.
Moreover, assuming that the "interval between the outer peripheral surfaces
14

of the pair of balls" is the distance between the outer peripheral surfaces of theballs which are the closest in the balloon-shaped roller, if the base end portionof the roller is extended so as to have the interval of the narrowest portion lessthan 10 mm, it is no longer included in the technical scope of Present Invention
1 even though the portion in contact with the skin stays the same and the functionand effect is not changed, which causes technical conflict.
Therefore, the aforementioned allegation by Plaintiff of the first instance has
no ground.
B. Fulfillment of Defendant's ProductThe interval between the spots on the outer peripheral surfaces when moved
in parallel to the base end side from the center with respect to the distance M
from the center of the maximum diameter of the pair of rolling portions to the
distal end side only by 0.7 times in Defendant's Product is larger than 13 mm inany case (Exhibits Otsu 177 to 189).
Therefore, Defendant's Product does not fulfill the "interval between theouter peripheral surfaces of the pair of balls" of Present Invention 1" is set to 10
to 13 mm".
C. Thus, Defendant's Product does not fulfill constituent feature D of Present
Invention 1.
2. Whether Present Patent 1 should be invalidated through a trial for patent
invalidation (issue (2))
The allegations by the parties on A to C of issue (2) are as the "allegations
by the parties on issue (2)" in the attachment.
3. Whether Defendant's Product belongs to the technical scope of Present Invention
2 (issue (3))[Allegation of Plaintiff of first instance](1) Defendant's product includes the "rotary body" of Present Invention 2
A. The cap material 29 is not described as a specifying matter in the Scope of Claims
according to Present Invention 2, and Present Description 2 does not describethat the cap material 29 is an indispensable constituent element of Present
Invention 2, either.
Therefore, since the cap material 29 cannot be interpreted to be a constituent
element of Present Invention 2, it cannot be considered that constituent features15

F, G, H, K, and L are not fulfilled because Defendant's Product does not include
the cap material 29.
B. Defendant of the first instance alleges in Other Lawsuit 2 that Plaintiff of thefirst instance alleged that the cap material 29 was the constituent element of the"rotary body" of Present Invention 2 and it was also found as such in the
judgment of the lawsuit.
However, Plaintiff of the first instance alleged in Other Lawsuit 2 that thecap material 29 at the working example level was a part of the "rotary body" ofthe constituent feature of Present Invention 2 and did not allege that the
aforementioned "rotary body" had the cap material 29 as an indispensable
constituent element or the judgment did not find such, either.
(2) Defendant's Product fulfills constituent feature F of Present Invention 2
By reading the wording that "rotatably supported on the distal end side of
the support shaft" of Present Invention 2, a person ordinarily skilled in the art
can understand that the rotary body is supported not on the base end side of the
support shaft but on the distal end side thereof.
In Defendant's Product, the support shaft is retained by/fixed to the distal
end of the bifurcated portion on the base end side thereof, and although there isa gap on the distal end side of the support shaft itself on the distal end side
opposite thereto, since the rolling portion is supported through the bearing
member, and it is a beauty instrument configured to give an esthetic action to
the body by the rolling portion, Defendant's Product fulfills constituent featureF.
(3) Defendant's Product fulfills constituent feature G of Present Invention 2
Defendant's Product should be regarded to correspond to the "rotary body"as a collective body of the rolling portion, the cylindrical ring (fitting 2), andthe cylindrical member (fitting 1), and since it is obvious that the distal end of
the support shaft is located inside the rotary body as the collective body in the
non-penetrating state, and is supported by the support shaft through the bearing
member, Defendant's Product fulfills constituent feature G.
(4) Defendant's Product fulfills constituent feature 1 of Present Invention 2
A. Meaning of "lock claw capable of elastic deformation"
The "lock claw" of Present Invention 2 means the whole body combining theslanted surface in the portion protruding from the bearing member (hereinafter,
referred to as the "slanted portion") and a rectangular-shaped portion(hereinafter, referred to as the "rectangular portion"), and if there is no16

rectangular portion, it means the slanted portion, and if such a portion is capableof elastic deformation, it corresponds to the "lock claw capable of elastic
deformation".
The reasons are as follows.
(a) According to Figure 8 of Present Description 2, the portion corresponding to
the "lock claw" of constituent feature 1 is supposed to mean the whole body
combining the slanted portion and the rectangular portion.
(b) Constituent feature K reads that "the lock claw ... has a slanted surface" andthus, the lock claw is not only the slanted portion but can be considered to
be a portion including the slanted portion.
B. Fulfillment of Defendant's ProductWith regard to the portion protruding from the bearing member ofDefendant's Product and engaged with the stepped portion of the rotary body(hereinafter, referred to as the "portion corresponding to lock claw"), when
the rectangular portion is curved and elastically deformed, the slanted
portion formed integrally with that is also elastically deformed and thus, itcorresponds to the "lock claw capable of elastic deformation" of Present
Invention 2 and thus, Defendant's product fulfills constituent feature I.
C. Defendant of the first instance alleges that the judgment of Other Lawsuit 2
finds that only the slanted portion corresponds to the "lock claw" of Present
Invention 2, but the judgment finds that the slanted portion and therectangular portion integrally form the "lock claw", and the aforementioned
allegation by Defendant of the first instance has no ground.
(5) Defendant's Product fulfills constituent feature L of Present Invention 2
In interpretation of constituent feature L of Present Invention 2, there is noneed to make interpretation with limitation to the specific structure illustrated
in the embodiment.
In Defendant's Product, the collective body including the rolling portion, thecylindrical ring, and the cylindrical member corresponds to the "rotary body",
and a step is formed on an inner periphery of the rolling portion by thecylindrical ring and the cylindrical member.
That is, since the stepped portion is formed by combination of the large
diameter portion with a larger inner diameter as compared with the otherportions of the fitting 1 (where the lock claw is located) and the fitting 2 locatedbetween the lock claw and the flange portion on the inner peripheral surface ofthe base end side, Defendant's Product fulfills constituent feature L.
17

(6) Other than the above, since Defendant's Product fulfills constituent features
H, J, and K of Present Invention 2, Defendant's Product belongs to thetechnical scope of Present Invention 2.
[Allegation of Defendant of the first instance]
As will be described below, Defendant's Product does not belong to thetechnical scope of Present Invention 2.
(1) Defendant's Product does not include the "rotary body" of Present Invention
2
A. Meaning of the "rotary body"
The "rotary body" of Present Invention 2 has the cap material 29 in theworking example of Present Invention 2 as an indispensable element, and amember not including the cap material 29 does not correspond to the "rotarybody" of Present Invention 2.
The reasons are as follows.
(a) In the structure of Present Invention 2, the cap material 29 is needed in orderto make the rotary body stable.
(b) Finding of the gist of the invention of Present Invention 2 made an issue in
Other Lawsuit 2, and Plaintiff of the first instance alleged in that issue thatthe cap material 29 was the constituent element of the "rotary body" of
Present Invention 2, and the judgment of the lawsuit also judged as such.
As described above, in the finding of the gist of the invention of Present
Invention 2, although the cap material 29 was found to be the constituent
element of the "rotary body", if the cap material 29 is found not to be theconstituent element of the "rotary body" in the finding of the technical scopeof Present Invention 2 in the infringement lawsuit, the technical scope of theinvention becomes wider than the gist of the invention, which is irrational.
Moreover, since Plaintiff of first instance alleged in Other Lawsuit 2 thatthe cap material 29 is a constituent element of the "rotary body" of Present
Invention 2, to make allegation contradicting the allegation in this lawsuit
violates the obligation of trust and sincerity in the legal procedures and is
not allowed under application of analogy of Article 2 of the Code of Civil
Procedure.
(c) If the positional relation between the rotary body and the support shaft thatthe rotary body is rotatably supported on the distal end side is to be specified,
it only needs to be specified as the "rotary body rotatably supported by the
support shaft", but the Scope of Claims according to Present Invention 2
18

specifies it as the "rotary body rotatably supported on the distal end side of
the support shaft" and from this point, too, it is found that the cap material
29 is an indispensable constituent element in Present Invention 2.
B. Fulfillment of Defendant's Product
Since Defendant's Product does not include the cap material 29, it does
not include the "rotary body" of Present Invention 2.

Therefore, it does not

fulfill constituent features F, G, H, K, and L of Present Invention 2.
(2) Defendant's Product does not fulfill that the "rotary body supported ... on
the distal end side of the support shaft" (constituent feature F) of Present
Invention 2
As described in the aforementioned (1), in Present Invention 2, the capmaterial 29 is an indispensable structure in order to make the rotary bodystable and thus, constituent feature F is limited to that the rotary body is
supported "on the distal end side of the support shaft" in the form as
illustrated in Figure 4 of Present Description 2.
Since the two rotary bodies in Defendant's Product are rotatably
supported by the portion other than the distal end side of the support shaft(Exhibits Otsu 1 to 7-3b), Defendant's Product does not fulfill constituent
feature F.
(3) Defendant's Product does not fulfill the "rotary body has a hole only on thebase end side" (constituent feature G) of Present Invention 2
The rotary body of Present Invention 2 refers to each of the members
supported by the support shaft through the bearing member.
In Defendant's Product, since the rolling portion, the cylindrical ring, andthe cylindrical member are rotatably supported by the bearing member, these
are all included in the "rotary body", respectively.

Moreover, although thehole is provided in the rolling member only on the base end side, since thehole is provided on both the base end side and the distal end side of thecylindrical ring and the cylindrical member, the hole is supposed to beprovided on the distal end side of the rotary body, which does not fulfill
constituent feature G.
(4) Defendant's Product does not include the "lock claw capable of elastic
deformation" of Present Invention 2 (constituent feature I)
A. Meaning of the "lock claw capable of elastic deformation"
To be the "lock claw capable of elastic deformation" of Present Invention
2, the slanted portion is required to be capable of elastic deformation, and if
19the slanted portion is not elastically deformed, even if the rectangular portionis elastically deformed, whereby the slanted portion sinks toward an innerside in a radial direction, it cannot be the "lock claw capable of elastic
deformation".
The reasons are as follows.
(a) In view of the expression "the lock claw capable of elastic deformation
protrudes from the bearing member." of constituent feature I, the "lock claw"of the constituent feature is a portion protruding from the bearing member,but according to figures 4 and 8 of Present Description 2, the portion
protruding from the bearing member is only the slanted portion, and therectangular portion does not protrude.
(b) The judgment of Other Lawsuit 2 finds that the lock claw and the rectangularportion have different structures, and the slanted portion configured
separately from the rectangular portion is elastically deformed.
(c) Even though the slanted portion is not elastically deformed, if such astructure that the slanted portion sinks toward the inner side in the radial
direction by elastic deformation of the rectangular portion is included, thescope of claims specifies that "when the slanted surface is pressed, theportion having the rectangular shape is elastically deformed, and the slanted
surface sinks toward the inner side in the radial direction and is then restored,
whereby the stepped portion is locked on the base end side of the lock claw"
not as the "lock claw capable of elastic deformation".
(d) The structure that "when the slanted surface is pressed, the portion having
the rectangular shape is elastically deformed, and the slanted surface sinks
toward the inner side in the radial direction and is then restored, whereby
the stepped portion is locked on the base end side of the lock claw" without
elastic deformation of the lock claw is a publicly known art.

Present

Invention 2 does not employ such a publicly-known structure but specifies
that the "lock claw capable of elastic deformation protrudes from the bearing
member", whereby Present Invention 2 was granted a patent.
(e) When the "lock claw" is interpreted as the whole combining the slanted
portion and the rectangular portion, the "base end side of the lock claw" also
includes the rectangular portion and the portion connected to a peripheral
surface of a cylindrical portion and includes an art engaged with the stepped
portion on the portion side, but such an art is irrational.
B. Fulfillment of Defendant's Product20

In the portion corresponding to the lock claw of Defendant's Product, therectangular portion is elastically deformed, and the slanted portion i s notelastically deformed and thus, it does not correspond to the "lock claw
capable of elastic deformation" and thus, Defendant's Product does not fulfill
constituent feature I.
Even if the "lock claw" of Present Invention 2 is interpreted as the
combination of the slanted portion and the rectangular portion, in all
Defendant's Products 1 to 3 and a part of Defendant's Product 4, the portion
corresponding to the lock claw is constituted only of the slanted portion andthus, these Defendant's Products do not have the "lock claw" of Present
Invention 2 and therefore, do not fulfill constituent feature I.
(5) Defendant's Product does not include the "stepped portion" of Present
Invention 2 (constituent feature L)
The literal meaning of the "step" is a "difference of elevation where a
step is formed", and a spot having a difference of elevation on an innerperiphery of the rotary body of Present Invention 2 is the "stepped portion".
According to Present Description 2, the written amendment (Exhibit Otsu22), and the written statement (Exhibit Otsu 23), in Present Invention 2, thestructure of the stepped portion is limited to the stepped portion 28a formedon the inner periphery of a core material 28 illustrated in Figure 4 of Present
Description 2, and to make the stepped portion a member separate from thecore material is not assumed.
In Defendant's Product, the rotary body has the rolling portion and thecylindrical ring and the cylindrical member fitted in the inner periphery of
the rolling portion, and the cylindrical ring has the structure locked on thebase end side of the lack claw of the bearing and located between the lockclaw and the flange portion.

The rolling portion and the cylindrical ring of

Defendant's Product are different members, and even if they are regarded as
one rotary body, the cylindrical ring is not the stepped portion having a
difference of elevation as formed on the inner periphery of the rotary body.
Therefore, there is no stepped portion on an inner peripheral portion of
the rotary body in Defendant's Product and it does not fulfill constituent
feature L.
4. Whether Present Patent 2 should be invalidated through a trial for patent
invalidation (presence/absence of lack of inventive step with Exhibit Otsu 45
21

document as the primarily cited reference) (issue (4)A)[Allegation of Defendant of first instance](1) Primarily cited reference
A. The Exhibit Otsu 45 document has description on the following invention(hereinafter, referred to as the "Exhibit Otsu 45 invention alleged by Defendantof first instance".)"A magnet beauty roller including a small-diameter portion 4b which is a
support shaft for rotating a roller portion 5 and a roller portion 5 rotatably supportedby the small-diameter portion 4b in a roller support portion 4 provided on an upper
part of a grip portion 3 and configured such that an esthetic action is given to a bodyby the roller portion 5, in which the roller portion 5 has a hole only on a base end
side, the roller portion 5 is supported by the small-diameter portion 4b through abearing 8 in a non-penetrating state where a distal end of the small-diameter portion
4b is located inside thereof, the bearing 8 is retained by the small -diameter portion
4b, and the roller portion 5 retains the bearing 8 on an inner periphery"
B. The "grip portion 3" of the Exhibit Otsu 45 invention alleged by Plaintiff of thefirst instance corresponds to the "handle" of Present Invention 2, and hereinafter,
similarly, the "roller portion 5" to the "rotary body", the "small-diameter portion
4b" to the "support shaft", and the "bearing 8" to the "bearing member".
(2) Common features and different features
Common features and different features between Present Invention 2 and the
Exhibit Otsu 45 invention alleged by Defendant of the first instance are as follows.
A. Common Features"A beauty instrument including a support shaft provided on a handle and a rotarybody rotatably supported by the support shaft and configured to give an esthetic
action to a body by the rotary body, in which the rotary body has a hole only on abase end side, the rotary body is supported by the support shaft through a bearing
member in a non-penetrating state where a distal end of the support shaft is locatedinside thereof, and the bearing member is retained by the support shaft, and therotary body retains the bearing member on an inner periphery"
B. Different Features(a) Different Feature 1
In Present Invention 2, the support shaft is retained by/fixed to the base end of
the handle, while in the Exhibit Otsu 45 invention alleged by Defendant of the first
instance, the small-diameter portion 4b is formed integrally with the grip portion 3
and is not retained by/fixed to the grip portion 3
22

(b) Different Feature 2
In Present Invention 2, the rotary body is rotatably supported on the distal end
side of the support shaft, while in the Exhibit Otsu 45 invention alleged by
Defendant of the first instance, the roller portion 5 is rotatably supported by a
portion other than the distal end side of the small-diameter portion 4b(c) Different Feature 3
In Present Invention 2, the bearing member is retained by the support shaft at
the distal end which is on a side opposite to the hole of the rotary body, while in the
Exhibit Otsu 45 invention alleged by Defendant of first instance, retention of the
bearing 8 is not performed on the distal end of the small-diameter portion 4b(d) Different Feature 4
The structure of the bearing member of Present Invention 2 and the structure of
the bearing 8 of the Exhibit Otsu 45 invention alleged by Defendant of the first
instance are different(e) Different Feature 5
In the rotary body of Present Invention 2, the stepped portion located between
the lock claw and the flange portion of the bearing member is provided, wh ereas in
the Exhibit Otsu 45 invention alleged by Defendant of the first instance, there is nosuch structure on the inner periphery of the roller portion 5.
(3) How the Different Features could have been easily conceived of
A. Different Feature 1
In a beauty massaging tool using a rotary body, whether the support shaft isretained by/fixed to the handle or integrally formed with the handle is only a designmater.

In Exhibit Otsu 24, a core shaft which is the support shaft of the rotarybody is retained by/fixed to the handle, and in Exhibit Otsu 25, the spindle isretrained by /fixed to the handle, while in Exhibits Otsu 28 and 29, the support shaft
is integrally formed with the handle.
Therefore, in the Exhibit Otsu 45 invention alleged by Defendant of the first
instance, too, to retain/fix the small-diameter portion 4b which is the support shaftof the roller portion 5 to the grip portion 3 could have been easily conceived of bya person ordinarily skilled in the art.
B. Different Feature 2
In the Exhibit Otsu 45 invention alleged by Defendant of the first instance, todispose the bearing 8 on the distal end side of the small-diameter portion 4b is only
a design matter, while by disposing the bearing 8 on the distal end side of the smalldiameter portion 4b, the roller portion 5 is rotatably supported on the distal end side23

of the small-diameter portion 4b and thus, to dispose the roller portion 5 on the
distal end side of the small-diameter portion 4b so as to rotatably support it could
have been easily conceived of by a person ordinarily skilled in the art.
C. Different Feature 3(a) In the Exhibit Otsu 45 invention alleged by Defendant of the first instance, acase in which a rolling bearing is used as the bearing 8 is assumed, and paragraph[0014] in the Exhibit Otsu 45 document describes that a sliding bearing such asa plastic bearing or the like is preferable as a substitution example of the bearing
8.

And when the sliding bearing made of plastic is used, a person ordinarily

skilled in the art could have easily conceived of retaining with a structure of aretaining ring or the like on the distal end of the small-diameter portion 4b sothat the bearing is not removed.
(b) The judgment in prior instance states that, in the invention described in the
Exhibit Otsu 45 document, it is assumed that the bearing 8 is replaced by asliding bearing made of plastic, but whether the retention is needed or not at thistime is not described in the Exhibit Otsu 45 document, and even if the ret ention
is needed, a position where the retention is performed cannot be unambiguously
determined by a person ordinarily skilled in the art, and held that the structure
according to Different Feature 3 could not have been easily conceived of by aperson ordinarily skilled in the art.
However, in the Exhibit Otsu 45 invention alleged by Defendant of the first
instance, the description that the support shaft slides on the bearing made ofplastic and is capable of rotation in a scheduled direction means that the support
shaft is movable in a rotating direction and a perpendicular direction (a directionin which the support shaft is removed from the bearing) and thus, it is technicallyinevitable that the retaining member is needed in the sliding bearing.
And if the retaining member is needed, to retain the distal end portion of theholding component (the bearing in this case) by a retaining ring or the like as ina lower drawing illustrated in the Exhibit Otsu 59 is a generally-known art.
Moreover, as described in the Exhibit Otsu 44 document (paragraph [0006]) andthe Exhibit Otsu 163 (page 6, lines 3 to 14), the art in which the bearing member
is retained at the distal end of the support shaft is a well-known art, and a similar
judgment was made also in the Japan Patent Office (Exhibits Otsu 158, 160).
Therefore, in the Exhibit Otsu 45 invention alleged by Defendant of the first
instance, when the sliding bearing made of plastic is used, and the retaining
member is to be mounted, the retaining ring or the like is supposed to be
24

mounted on the distal end portion which is on a side opposite to the hole in theroller portion 5 of the bearing 8.
retaining ringholding component
axis

Figure 4

GRIP RETAINING RING(c) Plaintiff of the first instance alleges that Present Invention 2 is not such an art
that "the bearing member is retained at the distal end of the support shaft " butthe bearing member of Present Invention 2 is retained by the support shaft at the
distal end on a side opposite to the hole of the rotary body.
However, in the Exhibit Otsu 163, the art can be confirmed such that the"collar 12 is retained by the support shaft 4 at the distal end which is on a side
opposite to the hole of the rotary body".
And it is obvious that the art that the "bearing member is retained by the
support shaft at the distal end which is on a side opposite to the hole of the rotarybody" is a well-known art also from the judgment by the Japan Patent Office(Exhibits Otsu 158, 160).
D. Different Feature 4(a) Unexamined Patent Application Publication No. 2002-340001 (Exhibit Otsu 46,
hereinafter, referred to as the "Exhibit Otsu 46 document") describes thefollowing art (hereinafter, referred to as the "Exhibit Otsu 46 art").
"a sliding bearing with flange which has an elastic lock piece capable ofelastic deformation protruding and a flange on a base end side of the elastic lockpiece, and the elastic lock piece has a slanted surface whose distance to a rotation
center becomes smaller as it goes toward the distal end side."(b) Utility Model Publication No. 1996-9455 (Exhibit Otsu 47, hereinafter, referred
to as the "Exhibit Otsu 47 document") describes each of the following arts
(hereinafter, referred to as the "Exhibit Otsu 47-1 art" and the like, respectively,
and also as the "Exhibit Otsu 47 art".).
a. Exhibit Otsu 47-1 art"An inclined surface portion capable of elastic deformation protrudes
25

from the bearing, the bearing has a flange portion on the base end side of theinclined surface portion, and the inclined surface portion has a slanted
surface whose distance to the rotation center in the bearing becomes smaller
as it goes toward the distal end side."b. Exhibit Otsu 47-2 art"A tongue piece portion capable of elastic deformation protrudes fromthe bearing, the bearing has a flange portion on the base end side of the
tongue piece portion, and the tongue piece portion has a slanted surface
whose distance to the rotation center becomes smaller as it goes toward the
distal end side."c. Exhibit Otsu 47-3 art"Two tongue piece portions capable of elastic deformation protrude fromthe bearing, the bearing has a flange portion on the base end side of the
tongue piece portion, and the tongue piece portion has a slanted surface
whose distance to the rotation center in the bearing becomes smaller as itgoes toward the distal end side."(c) As in the aforementioned C, replacement of the roller bearing with the sliding
bearing made of plastic is easy for a person ordinarily skilled in the art.

And

the Exhibit Otsu 46 art and the Exhibit Otsu 47 art have the same structure as
the bearing member in Present Invention 2.
Therefore, replacement of the bearing 8 of the Exhibit Otsu 45 invention
alleged by Defendant of the first instance with the bearing of the Exhibit Otsu
46 art or the Exhibit Otsu 47 art could have been easily conceived of.
(d) The judgment in prior instance holds that the bearing disclosed in the Exhibit
Otsu 46 document has an elastic lock piece and a flange for supporting a platematerial between them, an outer peripheral surface is not circumferential, and alength in an axial direction is relatively small, the bearing disclosed in the
Exhibit Otsu 47 document also has a flange portion having an annular groove to
be fitted with a plate-shaped mounting member and the tongue piece portion andthe flange portion for sandwiching and supporting the mounting member
between them, the outer peripheral surface is not circumferential, and the length
in the axial direction is also relatively small and thus, they do not have the shapecapable of being attached to the large-diameter portion 4a of the invention
described in the Exhibit Otsu 45 document for supporting the roller portion 5
and thus, the invention described in the Exhibit Otsu 45 document is different
from the Exhibit Otsu 46 art or the Exhibit Otsu 47 art in terms of problems,26purposes, applications, and functions and thus, there is no motivation for using
each of the aforementioned arts as the bearing of the invention described in the
Exhibit Otsu 45 document.
However, the bearing member is a publicly-known art and is mounted on
various housings, and to tune the shape of the housing in accordance with theshape of the bearing when the bearing is to be mounted on the housing is withina range of a simple design change for a person ordinarily skilled in the art.
And the bearing of the Exhibit Otsu 46 art is to position the housing
between the elastic lock piece and the flange, and a person ordinarily skilled in
the art could have easily conceived of an idea that a stepped portion locatedbetween the lock piece and the flange only needs to be provided on the innerperiphery of the roller portion 5.

Moreover, the bearing of the Exhibit Otsu 47

art is to position the housing between the inclined surface portion and the flange
portion or between the tongue piece portion and the flange portion, and a person
ordinarily skilled in the art could have easily conceived of the idea that the
stepped portion located between them only needs to be provided on the innerperiphery of the roller portion 5.
Moreover, the bearing is not limited to the beauty instruments but is widely
known as a mechanism having general purposes (Exhibits Otsu 56 to 59), andprovided that the Exhibit Otsu 45 invention alleged by Defendant of the first
instance has the same function as the Exhibit Otsu 46 art and the Exhibit Otsu
47 art, the different features between the two in terms of the problems, purposes,
and applications do not constitute reasons that deny the motivation.
Furthermore, as described in the Exhibit Otsu 164, the bearing having a
projection with a deflecting distal end is not limited to mounting on the plateshaped article and thus, the bearing described in the Exhibit Otsu 46 art and the
Exhibit Otsu 47 art is not limited to mounting on the plate-shaped article.
Therefore, the determination on Different Feature 4 in the judgment in priorinstance is wrong.
E. Different Feature 5(a) The Exhibit Otsu 44 document describes the following art (hereinafter, referred
to as the "Exhibit Otsu 44 art").
"A beauty massaging tool including a support shaft retained by/fixed to a handle
on a base end and a massage member rotatably supported on a distal end side of the
support shaft and giving an esthetic action to the body by the massage member, inwhich the massage member has a hole only on the base end side, the massage
27

member is supported by the support shaft through a cylindrical body in a nonpenetrating state where the distal end of the support shaft is located inside thereof,
the cylindrical body is retained by a nut to the support shaft at the distal end which
is on a side opposite to the hole of the massage member, a stepped portion protrudes
from the cylindrical body, the massage member has a projecting portion capable ofbeing engaged with the stepped portion on an inner periphery, and the projecting
portion is located on the base end side of the stepped portion".
(b)

As described in the aforementioned D, replacement of the bearing 8 of the

Exhibit Otsu 45 invention alleged by Defendant of the first instance with thebearing of the Exhibit Otsu 46 art or the Exhibit Otsu 47 art could have been easily
conceived of, and in that case, to provide a stepped portion located between theelastic lock piece and the flange of the Exhibit Otsu 46 art, between the inclined
surface portion and the flange portion of the Exhibit Otsu 47-1 art, and between the
tongue piece portion and the flange portion of the Exhibit Otsu 47-2 art and the
Exhibit Otsu 47-3 art on the inner periphery of the roller portion 5 of the Exhibit
Otsu 45 invention alleged by Defendant of the first instance could have been easily
conceived of.
Moreover, by employing the projecting portion of the Exhibit Otsu 44 art for
the Exhibit Otsu 45 invention alleged by Defendant of the first instance, mountingof the bearing of the Exhibit Otsu 46 art or the Exhibit Otsu 47 art on the roller
portion 5 of the Exhibit Otsu 45 invention alleged by Defendant of the first instancecould have been easily conceived of.
Therefore, the structure of Different Feature 5 could have been easily conceivedof by applying [i] the Exhibit Otsu 44 art and [ii] either one of the Exhibit Otsu 46
art and the Exhibit Otsu 47 art to the Exhibit Otsu 45 invention alleged by Defendantof the first instance.
[Allegation of Plaintiff of first instance](1) The Exhibit Otsu 45 document describes the following invention (hereinafter,
referred to as the "Exhibit Otsu 45 invention alleged by Plaintiff of first
instance").
"A magnet beauty roller including a small-diameter portion 4b which is a
support shaft for rotating a roller portion 5 and the roller portion 5 rotatably
supported by the small-diameter portion 4b in a roller support portion 4 provided
on an upper part of a grip portion 3 and configured such that an esthetic action is
given to a body by the roller portion 5, characterized in that the roller portion 5 has
a hole only on a base end side, the roller portion 5 is supported by the small-diameter
28

portion 4b through a bearing 8 in a non-penetrating state where a distal end of thesmall-diameter portion 4b is located inside thereof, the bearing 8 is retained by thesmall-diameter portion 4b, the bearing 8 has an outer peripheral surface having acylindrical shape, and an inner periphery of a large diameter hole of the roller
portion 5 has a cylindrical shape".
(2) Different Features
Different Features between Present Invention 2 and the Exhibit Otsu 45
invention alleged by Plaintiff of the first instance are as follows other than Different
Feature 1 and Different Feature 2.
A. Different Feature 3'
In Present Invention 2, the bearing member is retained by the support shaft at
the distal end which is on a side opposite to the hole of the rotary body, while in the
Exhibit Otsu 45 invention alleged by Plaintiff of the first instance, presence/absenceof specific retaining of the bearing 8 is not clear.
B. Different Feature 4'
In Present Invention 2, the lock claw capable of elastic deformation protrudes
from the bearing member, the bearing member has a flange portion on the base end
side of the lock claw, and the lock claw has a slanted surface whose distance to therotation center of the rotary body in the bearing member becomes smaller as it goes
toward the distal end side, while the bearing 8 of the Exhibit Otsu 45 invention
alleged by Plaintiff of the first instance has an outer peripheral surface having acylindrical shape.
C. Different Feature 5'
In Present Invention 2, the rotary body has a stepped portion capable of being
engaged with the lock claw on an inner periphery of the rotary body, and the stepped
portion is locked on the base end side of the lock claw and located between the lockclaw and the flange portion, while in the Exhibit Otsu 45 invention alleged by
Plaintiff of the first instance, an inner periphery of a large diameter hole of the roller
portion 5 has a cylindrical shape.
(3) The structure according to the Different Features could not have been easily
conceived of
A. Different Feature 1
The Exhibits Otsu 24 and 25 cited by Defendant of the first instance are the one
having four axes in a circumferential direction and the one having a structure inwhich the spindle can move in the axial direction, which are different in the
structure from the Exhibit Otsu 45 invention alleged by Plaintiff of the first instance29

and thus, there is no motivation for employing these structures.
Moreover, even though the Exhibit Otsu 45 invention alleged by Plaintiff of thefirst instance is combined with the Exhibits Otsu 24 and 25, the point that "the rotarybody is supported by the support shaft with the distal end non-penetrating" is thedifferent feature and thus, it does not reach Present Invention 2.
B. Different Feature 2
Defendant of the first instance alleges that by disposing the bearing 8 on the
distal end side of the small-diameter portion 4b of the Exhibit Otsu 45 invention
alleged by Defendant of the first instance, the roller portion 5 is rotatably supported
on the distal end side of the small-diameter portion 4b, and this point is a design
matter, but there are no explanation for grounds for the aforementioned points to be
the design matter or for motivation for performing such changes, and theaforementioned changes could not have been easily conceived of.
C. Different Feature 3'(a) Even though the bearing 8 of the Exhibit Otsu 45 invention alleged by Plaintiffof the first instance is replaced with the sliding bearing made of plastic, whether
retention is needed or not is not clear.

Even if the retention is needed, at what

portion the retaining measure is to be taken is not determined unamb iguously
and thus, to take the retaining measure at the distal end of the small -diameter
portion 4b could not have been easily conceived of.
(b) Defendant of the first instance refers to the Exhibit Otsu 59 on the premise ofpresence of Different Feature 3 between Present Invention 2 and the invention
described in the Exhibit Otsu 45 document so as to point out that there is a
publicly-known art that retention is needed when the sliding bearing made ofplastic is used and then, alleges that the retaining ring is needed for the distal
end portion of the bearing and the judgment in prior instance is erroneous.
However, even though the point that the "retaining ring" is used as theretaining member can be found by the Exhibit Otsu 59, at what portion and inwhat form the retention is to be performed is not determined unambiguously fora person ordinarily skilled in the art and thus, in the case where the sliding
bearing made of plastic is used for the Exhibit Otsu 45 invention alleged by
Plaintiff of the first instance, it cannot be so evaluated that even the points thatthe retaining member is needed, the "retaining ring" described in the Exhibit
Otsu 59 is mounted as the retaining member, and the "retaining ring" is disposedon the distal end side which is on a side opposite to the hole of the rotary body
could have been easily conceived of.
30

Moreover, Defendant of the first instance alleges that, from the describedmatter in the Exhibit Otsu 44 document and the Exhibit Otsu 163, the "art thatthe bearing member is retained at the distal end of the support shaft " is only awell-known art.
However, the "bearing member is retained by the support shaft at the distal
end which is on a side opposite to the hole of the rotary body" in Present
Invention 2, and the "distal end" here refers to the distal end of the "bearing
member" and not the distal end of the support shaft.

And in Figure 1 of the

Exhibit Otsu 44 document, the "cylindrical body 15" corresponding to thebearing member is retained closer to an inner side (right in the figure) than the
distal end (left end in the figure) and cannot be the distal end.
D. Different Feature 4'(a) The bearing 8 of the Exhibit Otsu 45 invention alleged by Plaintiff of thefirst instance has the outer peripheral surface thereof formed having acylindrical shape and is inserted into the large-diameter portion of the roller
portion formed similarly having the cylindrical shape, and it can beunderstood that the roller portion 5 is supported by this whole outer
peripheral surface.

Even if the bearing 8 having such a shape is replacedwith the sliding bearing made of plastic, the outer peripheral surface of thesliding bearing made of plastic to be applied also has a cylindrical shape
conforming to the aforementioned shape of the outer diameter portion of theroller portion 5 and should have a structure which supports the roller portion
5 by the outer peripheral surface.
On the other hand, the bearing of the Exhibit Otsu 46 art has the elastic
lock piece and the flange for supporting/fixing the support plate between
them and does not have a shape that can be attached to the large-diameter
portion 4a of the roller portion 5.
The bearing of the Exhibit Otsu 47 art also has the tongue piece portionand the flange portion in order to support/fix the thin plate between them anddoes not have a shape that can be attached to the large-diameter portion 4aof the roller portion 5 of the Exhibit Otsu 45 invention alleged by Plaintiffof the first instance.
Therefore, since the problems, purposes, applications, and functions aredifferent, there is no motivation for using the bearing of the Exhibit Otsu 46
art or the Exhibit Otsu 47 art for the bearing of the large-diameter portion 4aof the roller portion 5 of the Exhibit Otsu 45 invention alleged by Plaintiff
31

of the first instance.
(b) Defendant of the first instance alleges that the bearing of the Exhibit Otsu
46 art is to position the housing between the elastic lock piece and the flange,
while the bearing of the Exhibit Otsu 47 art is to position the housing
between the inclined surface portion and the flange portion or between the
tongue piece portion and the flange portion, and a person ordinarily skilledin the art could have easily conceived of the idea that the stepped portion
located between them only needs to be provided on the inner periphery of
the roller portion 5.
However, even if the "bearing" itself is widely known not only as abeauty tool but also as a mechanism with general purposes, Different Feature
4' is not a simple "bearing" but is present for the specific structure of the
bearing.

The aforementioned allegation of Defendant of the first instanceignores this point and is unreasonable.
A target to be supported in the bearing in the Exhibit Otsu 45 invention
alleged by Plaintiff of the first instance is the roller portion 5 and more
specifically, the large-diameter portion 54 having the cylindrical innerperipheral surface is supported.

Therefore, the bearing used for the Exhibit

Otsu 45 invention alleged by Plaintiff of the first instance needs to be capableof supporting the cylindrical inner peripheral surface.
On the other hand, the bearing of the Exhibit Otsu 46 art has the elastic
lock piece and the flange, does not have a shape capable of being attachedto the large-diameter portion 54 of the roller portion 5 in the Exhibit Otsu 45
invention alleged by Plaintiff of the first instance, has a problem that thetarget is a plate material, has a function for locking the plate material, and isused for the application of locking the plate material.

Moreover, thebearing of the Exhibit Otsu 47 art also has the inclined surface
portion/tongue piece portion and the flange portion, does not have a shapecapable of being attached to the large-diameter portion 54 of the roller
portion 5 of the Exhibit Otsu 45 invention alleged by Plaintiff of the first
instance, has a problem that the target is a thin plate, has a function forlocking the thin plate, and is used for the application of locking the thin plate.
Therefore, the bearings of the Exhibit Otsu 45 invention alleged by
Plaintiff of the first instance, the Exhibit Otsu 46 art, and the Exhibit Otsu
47 art are different in terms of the problems, purposes, functions, andapplications, there is no motivation for using the bearings of the Exhibit Otsu
32

46 art and the Exhibit Otsu 47 art as the bearing of the Exhibit Otsu 45
invention alleged by Plaintiff of the first instance, and Different Feature 4'
could not have been easily conceived of by a person ordinarily skilled in theart.
(c) Defendant of the first instance alleges that the Exhibit Otsu 164 does not
limit a mounting target of a bush to the plate-shaped article, and byconsidering this point, the bearings described in the Exhibit Otsu 46
document and the Exhibit Otsu 47 document are not limited to the plate
shaped articles.
However, whether the target of the bush in the Exhibit Otsu 164 is limited
to the plate shaped article or not does not have any relation with whether or
not the targets of the bearings in the Exhibit Otsu 46 document and the
Exhibit Otsu 47 document are limited to the plate shaped articles, and what
the bearings in the Exhibit Otsu 46 document and the Exhibit Otsu 47
document are targeted to fix should be determined on the basis of thedescriptions in the documents.
E. Different Feature 5'(a) As described in the aforementioned D, since there is no motivation itself forusing the bearing in the Exhibit Otsu 46 art or in the Exhibit Otsu 47 art forthe bearing of the large-diameter portion of the roller portion in the Exhibit
Otsu 45 invention alleged by Plaintiff of the first instance, Different Feature
5' could not have been easily conceived of, either.
Moreover, Defendant of the first instance alleges that, by employing the
projecting portion of the massage member of the Exhibit Otsu 44 art for theinvention described in the Exhibit Otsu 45 document, mounting of the
bearing of the Exhibit Otsu 46 art or the Exhibit Otsu 47 art to the roller
portion 5 of the Exhibit Otsu 45 invention alleged by Defendant of the first
instance could have been easily conceived of, but since the bearing 8 of the
Exhibit Otsu 45 invention alleged by Plaintiff of the first instance has theouter peripheral surface with the cylindrical shape and does not have theprojecting portion, no motivation is obtained for employing the projecting
portion of the Exhibit Otsu 44 art when the sliding bearing made of plastic
is to be used.
(b) Defendant of the first instance alleges that the bearing of the Exhibit Otsu
46 art is to position the housing between the elastic lock piece and the flange
and a person ordinarily skilled in the art could have easily conceived that the33

stepped portion located between them only needs to be provided on the innerperiphery of the roller portion 5, and the bearing of the Exhibit Otsu 47 art
is to position the housing between the inclined surface portion and the flange
portion or between the tongue piece portion and the flange portion and aperson ordinarily skilled in the art could have easily conceived that the
stepped portion located between them only needs to be provided on the innerperiphery of the roller portion 5.
However, as described in the aforementioned D, since there is no
motivation for applying the bearings in the Exhibit Otsu 46 art and the
Exhibit Otsu 47 art for the Exhibit Otsu 45 invention alleged by Plaintiff ofthe first instance, there is no motivation for employing the structure ofproviding the stepped portion capable of being engaged with the lock claw
(the elastic lock piece of the Exhibit Otsu 46, the inclined surface portionand the tongue piece portion of the Exhibit Otsu 47) on the inner peripheryof the roller portion 5 of the Exhibit Otsu 45 invention alleged by Plaintiffof the first instance.
5. Whether Present Patent 2 should be invalidated through a trial for patent
invalidation (presence/absence of lack of inventive step with the Exhibit Otsu
135 document as the primarily cited reference) (issue (4)B)[Allegation of Defendant of the first instance](1) Primarily cited reference
A. The Exhibit Otsu 135 document describes the following invention(hereinafter, referred to as the "Exhibit Otsu 135 invention alleged by
Defendant of the first instance".)"A roller for skin including support fitting 15, 150 fixed to a grip tool
13, a support shaft 16, 160, 161 mounted on the support fitting 15, 150, anda roller body 2, 103, 104 rotatably supported on a distal end side of the
support shaft 16, 160, 161 and configured to give an esthetic action to thebody by the roller body 2, 103, 104, in which the roller body 2, 103, 104 has
a hole only on a base end side, the roller body 2, 103, 104 is supported by
the support shaft 16, 160, 161 in a non-penetrating state where the distal endof the support shaft 16, 160, 161 is located inside thereof through a rotationrod 17, the rotation rod 17 is retained by the support shaft 16, 160, 161 at a
distal end which is on a side opposite to the hole of the roller body 2, 103,
104, a flange 12 protrudes from the rotation rod 17, and the roller body 2,34

103, 104 has an engagement hole 6 capable of being engaged with the flange
12 on an inner periphery."B. The "grip tool 13" of the Exhibit Otsu 135 invention alleged by Defendantof the first instance corresponds to the "handle" in Present Invention 2, the"support shaft 16, 160, 161" to the "support shaft", the "roller body 2, 103,
104" to the "rotary body", the "roller for skin" to the "beauty instrument",
and the "rotation rod 17" to the "bearing member".
(2) Common features and different features
The common features and different features between Present Invention 2 andthe Exhibit Otsu 135 invention alleged by Defendant of the first instance are as
follows.
A. Common Feature
The point that "a beauty instrument including a support shaft mounted on ahandle and a rotary body rotatably supported on a distal end side of the support shaft
and configured to give an esthetic action to the body by the rotary body,characterized in that the rotary body is supported by the support shaft through abearing member in a state where the distal end of the support shaft is located insidethereof, the bearing member is retained by the support shaft at the distal end, aprojecting portion protrudes from the bearing member, the rotary body has a stepped
portion capable of being engaged with the projecting portion on an inner periphery,
and the stepped portion is locked by the base end side of the projecting portion"
B. Different Features(a) Different Feature 1
The bearing member in Present Invention 2 has the lock claw capable of elastic
deformation and the flange portion provided on the base end side of the lock claw,
and the lock claw has the slanted surface whose distance to the rotation center ofthe rotary body in the bearing member becomes smaller as it goes toward the distal
end side, while the rotation rod 17 in the Exhibit Otsu 135 invention alleged by
Defendant of the first instance has only the flange 12 protruding from the rod body
21 and does not have the lock claw having the slanted surface and capable of elastic
deformation and the flange portion.
(b) Different Feature 2
The point that the rotary body in Present Invention 2 has the stepped portion
capable of being engaged with the lock claw on the inner periphery, the stepped
portion is locked on the base end side of the lock claw and is located between
the lock claw and the flange portion, while the roller body 2, 103, 104 in the35

Exhibit Otsu 135 invention alleged by Defendant of the first instance only has a
stepped portion on the base end side of an engagement hole 6 capable of being
engaged with the flange 12.
(c) Different Feature 3
The point that, in Present Invention 2, the support shaft is retained by/fixed
to the handle, while in the Exhibit Otsu 135 invention alleged by Defendant of
the first instance, the support shaft 16, 160, 161 is fixed to the grip tool 13
through the support fitting 15, 150.
(3) How the different features could have been easily conceived of
A. Different Feature 1(a) U.S. Patent Application Publication No. 2010/191161 published on July 29,
2010 (Exhibit Otsu 194-1, hereinafter, referred to as the "Exhibit Otsu 194 document".)
describes the following art (hereinafter, referred to as the "Exhibit Otsu 194 art").
"A plug 200, 220 for rotatably mounting a module 130, 140 for massaging the bodyaround a lock pin 240, having a projection 205 capable of elastic deformation that
protrudes and a flange 201 on the base end side of the projection 205, and the projection
205 having a slanted surface whose distance to a rotation center becomes smaller as itgoes toward the distal end side.""The module 130, 140 has a stepped portion capable of being engaged with the
projection 205 on an inner periphery.

The stepped portion is locked on the base end

side of the projection 205 and is located between the projection 205 and the flange 201."(b) Application of the Exhibit Otsu 194 art
a. The plug 200, 220 of the Exhibit Otsu 194 art is means for rotatably mounting
the module 130, 140 for massaging the body around the lock pin 240, and the mounting
means is in common with the rotation rod 17 of the Exhibit Otsu 135 invention alleged
by Defendant of the first instance in a point that it is a member for rotating the rotarybody used for massaging around the support shaft and in a point that it is used for a
non-penetrating rotary body.
Moreover, the Exhibit Otsu 135 document suggests that mounting means other than
the rotation rod 17 may be used as a structure for rotatably mounting the roller 1 to therotation shaft 11 (page 4, upper right column, lines 2 to 4).
Furthermore, the Exhibit Otsu 135 document describes that the roller 1 can berotatably mounted without projecting the flange 12 (page 4, upper left column, line 8
to upper right column, line 1).
Therefore, to employ the structure of the mounting means of the Exhibit Otsu 194
art for the rotation rod 17 of the Exhibit Otsu 135 invention alleged by Defendant of36

the first instance so as to have the projection 205 and the flange 201 capable of elastic
deformation of the Exhibit Otsu 194 art is easy for a person ordinarily skilled in the a rt.
b. Plaintiff of the first instance alleges that the plug 200, 220 of the Exhibit Otsu
194 art does not function as a bearing member and that the lock pin 240 does not
function as a rotation shaft.
However, paragraph [0155] in the Exhibit Otsu 194 document has the descriptionthat "the latch arm 204 and the latch recess portion are capable of preventing
unintentional withdrawal of the plug 200 from the opening, but the plug 200 can be stillrotated with respect to the opening even if the latch arm 204 and the latch recess portion
are meshed with each other." and paragraph [0166] has the description that "thediameter of the first portion 242 in the shaft 241 of the lock pin 240 is slightly smaller
than the diameter of the opening extending through the modules 100, 120, 130, and 140
and the plugs 154, 200, 210, 220, and 230 and thus, the shaft 241 can be inserted throughthose openings.", respectively and thus, it is obvious for a person ordinarily skilled in
the art that the plug 200, 220 functions as the bearing member, and the lock pin 240 as
the rotation shaft.
Therefore, the aforementioned allegation of Plaintiff of the first instance has no
grounds.
c. Plaintiff of the first instance alleges that when the rotation rod 17 supported by
the support shaft 16 described in the Exhibit Otsu 135 document is replaced with theplug 200, 220, the support shaft 16 is brought into a state inserted into the plug 200,
220, whereby inward movement of the latch arm 204 is fixed so as to prevent removalof the latch arm 204 of the plug 200, 220 from the latch recess portion similarly to thecase where the lock pin 240 is inserted, and the latch arm 204 does not make sense when
the roller body 2, 103, 104 is to be attached.
However, as described in the Exhibit Otsu 135 document that "the support shaft 16
is integrally formed by drilling an annular engagement groove 20 in a distal end portion
19 of a shaft body 18 made by an outer diameter smaller than an inner diameter of therotation rod 17, and the rotation rod 17 is formed by providing three pieces of elastic
pieces 22 by drilling three long grooves 23 (only one of the long grooves is illustrated
in Figure 3) at positions dividing a space in an outer circumferential direction into threeequal parts on the hollow-state rod body 21 having an inner diameter larger than theouter diameter of the support shaft 16 and on the distal end portion side of this rod body
21 toward a rear end portion side where the flange 12 is projected and moreover, an
engagement projection 24 engaged with the engagement groove 20 of the support shaft
16 is projected inside the distal end of each of the elastic pieces 22." (page 3, upper left
37

column, line 17 to upper right column, line 9), since the diameter of the support shaft
16 is smaller than the inner diameter of the rotation rod 17, a clearance is found between
the support shaft 16 and the rotation rod 17, and even if the plug 200, 220 is applied,
the latch arm 204 can move inward due to the presence of this clearance.
Therefore, the aforementioned allegation of Plaintiff of the first instance has no
grounds.
d. Plaintiff of the first instance alleges that there is no need to make the latch arm
204 capable of elastic deformation if the latch arm 204 is configured harder than theroller 1, 101, 102 and by employing the "structure which makes the latch arm 204
having the projection 205 capable of elastic deformation" in the Exhibit Otsu 194
document for the rotation rod 17 in the Exhibit Otsu 135 document, elasticity of thelatch arm 204 needs to be configured softer (easier to be deformed) than the roller 1,
101, 102 and then, when a load in a removing direction acts on the roller 1, 101, 102,
the latch arm 204 is easily deformed, or the stepped portion (portion locked by the
projection 205) of the roller 1, 101, 102 itself is also elastically deformed, the roller 1,
101, 102 easily rides over the projection 205 and is removed from the rotation rod 17.
However, when the roller 1 is deformed and then, the latch arm 204 is elas tically
deformed, mounting of the roller 1 is made easier and thus, it cannot be said that it is
not necessary that the latch arm 204 has to be made capable of elastic deformation if
the roller 1 is deformed.

Moreover, if the roller 1, 101, 102 is deformed, the roller 1,

101, 102 is engaged with the latch arm 204 regardless of hardness of the latch arm 204
and thus, there is no need to configure the latch arm 204 softer (easier to be deformed)
than the roller 1, 101, 102.

Furthermore, whether or not the roller 1, 101, 102 isremoved from the rotation rod 17 exclusively depends on a degree of a shape change ofthe roller 1, 101, 102 or friction or fitting between the roller 1, 101, 102 and the rotationrod 17 and thus, it does not mean that the roller 1, 101, 102 is removed from the rotationrod 17 by a change in the shape.
Therefore, the aforementioned allegation of Plaintiff of the first instance has no
grounds.
e. Plaintiff of the first instance alleges that, by forming a structure which enables
elastic deformation of the latch arm 204 having the projection 205, costs increase,which makes a hindrance.
However, a case where the cost increase makes the hindrance is when the cost
remarkably increases, and a person ordinarily skilled in the art would not employ a
specific structure, but since the plug 200, 220 is a resin-molded product, a product unit
price does not rise extremely as compared with the rotation rod 17.
38

B. Different Feature 2
As described in the aforementioned A, to apply the projection 205 capable of elastic
deformation and the flange 201 of the Exhibit Otsu 194 art to the rotation rod 17 of the
Exhibit Otsu 135 invention alleged by Defendant of the first instance by employing thestructure of the mounting means in the Exhibit Otsu 194 art is easy for a person
ordinarily skilled in the art, but since the Exhibit Otsu 194 document discloses the
stepped portion capable of being engaged with the projection 205 on the inner peripheryof the module 130, 140, when the Exhibit Otsu 194 art is to be applied to the Exhibit
Otsu 135 invention alleged by Defendant of the first instance, there is motivation toprovide the stepped portion of the Exhibit Otsu 194 art on the inner periphery of theroller body 2, 103, 104 of the Exhibit Otsu 135 invention alleged by Defendant of thefirst instance.
Moreover, replacement of the stepped portion provided in the Exhibit Otsu 135
invention alleged by Defendant of the first instance with the stepped portion of the
Exhibit Otsu 194 art is only replacement of the engagement hole 6 of the Exhibit Otsu
135 invention alleged by Defendant of the first instance with the one suitable for thesize of the projection 205 of the Exhibit Otsu 194 art, and there is no particularhindrance in this.
Therefore, to apply the Exhibit Otsu 194 art to the Exhibit Otsu 135 invention
alleged by Defendant of the first instance so as to have the structure according to the
Different Feature 2 is easy for a person ordinarily skilled in the art.
C. Different Feature 3(a) Registered Utility Model No. 3036898 published on May 6, 1997 (Exhibit Otsu
136, hereinafter, referred to as the "Exhibit Otsu 136 document") describes thefollowing art (hereinafter, referred to as the "Exhibit Otsu 136 art"). (Figures of theworking example of the Exhibit Otsu 136 document are illustrated below.)"A pressure-point healthcare tool in which a head portion 3 is rotatably supported
by a tapping screw 36 by screwing the head portion 3 with a barrel portion 2 by thetapping screw 36 and by retaining/fixing the tapping screw 36"

39

[Figure 2](b) Registered Utility Model No. 3166202 published on February 24, 2011 (Exhibit
Otsu 193, hereinafter, referred to as the "Exhibit Otsu 193 document") describes thefollowing art (hereinafter, referred to as the "Exhibit Otsu 193 art"). (Figures of theworking example of the Exhibit Otsu 193 document are illustrated below.)"A massage roller in which a roller 3 is rotatably supported by a connection
component 31 by retaining/fixing the connection component 31 to a spherical head 22
on one end of a handle 2"[Figure 2](c) International Publication No. 2011/004627 (Exhibit Otsu 137, hereinafter,
referred to as the "Exhibit Otsu 137 document") describes the following art (hereinafter,
referred to as the "Exhibit Otsu 137 art"). (Figures of the working example of the40

Exhibit Otsu 137 document are illustrated below.)"A beauty instrument in which a roller support shaft 17 is fitted in and retained/fixed
in a space formed in a bifurcated portion 12a of a handle 12, and a roller 18 is rotatably
supported by the roller support shaft 17."
[Figure 4](d) Application of the Exhibit Otsu 136 art, the Exhibit Otsu 193 art, and the Exhibit
Otsu 137 art
The Exhibit Otsu 135 document describes that “other publicly-known structures
which can rotatably support the roller 1 can be employed for the grip portion (page 3,
lower right column", and the Exhibit Otsu 135 invention alleged by Defendant of thefirst instance has common technical matters with the Exhibit Otsu 136 art, the Exhibit
Otsu 193 art, and the Exhibit Otsu 137 art and thus, there is motivation to apply any
one of the Exhibit Otsu 136 art, the Exhibit Otsu 193 art, and the Exhibit Otsu 137 art
to the Exhibit Otsu 135 invention alleged by Defendant of the first instance, and there
is no hindrance in that.
Therefore, it is easy to retain/fix the support shaft 16, 160, 161 in the Exhibit Otsu
135 invention alleged by Defendant of the first instance to the grip tool 13 by applying
any one of the Exhibit Otsu 136 art, the Exhibit Otsu 193 art, and the Exhibit Otsu 137
art to the Exhibit Otsu 135 invention alleged by Defendant of the first instance.
D. As described above, since Different Features 1 to 3 could have been easily
conceived of by applying each of the aforementioned arts, inventive step is not foundin Present Invention 2.
[Allegation of Plaintiff of first instance](1) The Exhibit Otsu 135 document describes the following invention (hereinafter,
referred to as the "Exhibit Otsu 135 invention alleged by Plaintiff of the first
instance").
41

"A roller for skin including a support shaft 16, 160, 161 supported by a suppo rt
fitting 15, 150 on a base end and a roller 1, 101, 102 rotatably supported by the support
shaft 16, 160, 161 and configured to give washing and massaging effects to the bodyby the roller 1, 101, 102, in which the roller 1, 101, 102 has an insertion por t 4 only on
the base end side, the roller 1, 101, 102 is supported by the support shaft 16, 160, 161
through a rotation rod 17 in a non-penetrating state where a distal end of the support
shaft 16, 160, 161 is located inside thereof, the rotation rod 17 is retained by the support
shaft 16, 160, 161 at a distal end which is on a side opposite to the insertion port 4 of
the roller 1, 101, 102, a flange 12 protrudes from the rotation rod 17, the roller 1, 101,
102 is capable of elastic deformation and has a stepped portion capable of being
engaged with the flange 12 on an inner periphery thereof, and the stepped portion islocked on the base end side of the flange 12"(2) Different Features between Present Invention 2 and the Exhibit Otsu 135 invention
alleged by Plaintiff of the first instanceDifferent Features between Present Invention 2 and the Exhibit Otsu 135 invention
alleged by Plaintiff of the first instance are as follows.
A. Different Feature 1' (corresponding to Different Features 1 and 2)
A point in which, in Present Invention 2, the lock claw capable of elastic
deformation protrudes from the bearing member, the bearing member has the flange
portion on the base end side of the lock claw, the lock claw has a slanted surface whose
distance to a rotation center of the rotary body in the bearing member becomes smaller
as it goes toward the distal end side, and the stepped portion of the rotary body is lockedon the base end side of the lock claw and is located between the lock claw and the flange
portion, while in the Exhibit Otsu 135 invention alleged by Plaintiff of the first instance,
only the flange 12 protrudes from the rotation rod 17, it is unclear whether or not theflange 12 is capable of elastic deformation, and the stepped portion of the roller 1, 101,
102 capable of elastic deformation is only locked on the base end side of the flange 12.
B. Different Feature 3'
In a point in which, in Present Invention 2, the support shaft is retained by/fixed
to the handle, while in the Exhibit Otsu 135 invention alleged by Plaintiff of the first
instance, the support shaft 16, 160, 161 is supported by the support fitting 15, 150 andis not retained by/fixed to the grip tool 13 (handle).
(3) How the Different Features could have been easily conceived of
A. Different Feature 1'(a) No motivationa. The "lock pin 240" and the "plug 200, 220" described in the Exhibit Otsu 194
42

document do not correspond to the "support shaft" and the "bearing" in Present
Invention 2.
And the plug 200, 220 described in the Exhibit Otsu 194 document is for fixing thetwo modules and is not the one functioning as a bearing member rotatably supporting
the rotary body with respect to the shaft by being interposed between the shaft and therotary body and thus, there is no motivation for the rotation rod 17 disposed between
the support shaft 16 and the roller body 2, 102, 104 of the Exhibit Otsu 135 invention
alleged by Plaintiff of the first instance and functioning as the bearing member to be
replaced with the plug 200, 220.
Moreover, even if the rotation rod 17 supported by the support shaft 16 of the
Exhibit Otsu 135 invention alleged by Plaintiff of the first instance is replaced with theplug 200, 220, a state in which the support shaft 16 is inserted into the plug 200, 220 isbrought about, whereby inward movement of the latch arm 204 is fixed so as to prevent
removal of the latch arm 204 of the plug 200, 220 from the latch recess portion similarly
to the case in which the lock pin 240 is inserted, and the latch arm 204 no longer makesenses when the roller body 2, 103, 104 is to be attached.
Therefore, there is no motivation to replace the rotation rod 17 of the Exhibit Otsu
135 invention alleged by Plaintiff of the first instance with the plug 200, 220 having
the latch arm 204 described in the Exhibit Otsu 194 document having a complicatedstructure as compared with the flange 12 of the rotation rod 17.
b. In the Exhibit Otsu 135 invention alleged by Plaintiff of the first instance, it isindispensable for the roller 1, 101, 102 itself to be capable of elastic deformation andthus, the roller 1, 101, 102 can be locked by the flange 12 of the rotation rod 17 byusing elasticity of the roller 1, 101, 102 without deformation of the flange 12 of therotation rod 17.
On the other hand, in the Exhibit Otsu 194 art, since the module 130, 140 is notdeformed at locking between the module 130, 140 and the plug 200, 220, the latch arm
204 having the projection 205 locked by this is configured to be capable of elastic
deformation.
Therefore, there is no motivation to apply the structure of the latch arm 204 having
the projection 205 capable of elastic deformation disclosed in the Exhibit Otsu 194
document as the structure for locking it by the roller 1, 101, 102 capable of elastic
deformation of the Exhibit Otsu 135 invention alleged by Plaintiff of the first instance.
(b) Presence of hindrance
a. If the "structure which makes the latch arm 204 having the projection 205 capableof elastic deformation" described in the Exhibit Otsu 194 document is employed for the43

rotation rod 17 of the Exhibit Otsu 135 invention alleged by Plaintiff of the first instance,
the elasticity of the latch arm 204 needs to be configured softer (easier to deform) than
the roller 1, 101, 102.

That is because, if the elasticity of the latch arm 204 is

configured harder (harder to deform) than the roller 1, 101, 102, when the latch arm
204 is brought into contact with the roller 1, 101, 102, the roller 1, 101, 102 is deformed,
and it does not make sense to configure the latch arm 204 capable of elastic deformation.
However, it is indispensable for the roller 1, 101, 102 itself of the Exhibit Otsu 135
invention alleged by Plaintiff of the first instance to be capable of elastic deformation,and moreover, the elasticity is approximately of a degree that the recess portion 3 for asuction cup formed on a surface of the roller is adsorbed by the skin (page 4, upper rightcolumn, line 4 to the last line in the Exhibit Otsu 135 document) and thus, it is soft tosuch a degree that it is deformed with respect to the skin.

Even if the latch arm 204

which is softer (easier to deform) than this roller 1, 101, 102 is provided in the Exhibit
Otsu 135 invention alleged by Plaintiff of the first instance, when a load in the removing
direction acts on the roller 1, 101, 102, the latch arm 204 is elastically deformed easily,or the stepped portion (portion locked by the projection 205) of the roller 1, 101, 102
itself is also elastically deformed, and the roller 1, 101, 102 easily rides over the
projection 205 and is removed from the rotation rod 17.
b. The roller 1, 101, 102 is made of an elastic material, and when this is attached to
the rotation rod 17, it is pushed open and deformed to such a degree that does notinterfere with the flange 12 and thus, when the roller 1, 101, 102 in an attached state ispulled, it is considered that the stepped portion of the roller 1, 101, 102 can be deformedin accordance with the shape of the engagement portion.
When the latch arm 204 described in the Exhibit Otsu 194 document is used for this,the stepped portion of the roller 1, 101, 102 acts so as to press the projection 205 of thelatch arm 204 inward in the radial direction due to the deformation as above, whichcauses a concern of disengagement.
Moreover, the flange 12 of the Exhibit Otsu 135 invention alleged by Plaintiff ofthe first instance is continuous over the entire circumference in the circumferential
direction, while the latch arm 204 described in the Exhibit Otsu 194 document can be
only provided in plural in the circumferential direction and is not continuous over theentire circumference and thus, a tensile force applied to the roller 1, 101, 102 isconcentrated only at the spot of the latch arm 204, and it is considered that the stepped
portion can be deformed at the spot more easily than in the case where the flange 12 isprovided over the entire circumference.
Moreover, in order to provide the "structure which enables elastic deformation of44

the latch arm 204 having the projection 205" on the rotation rod 17 of the Exhibit Otsu
135 invention alleged by Plaintiff of the first instance, molding separately from therotation rod 17 is needed so as to enable elastic deformation of the latch arm 204, andthe material, thickness, shape, and the like of the latch arm 204 according to the resin
need to be considered to have a predetermined elastic force.

Then, it is obvious that acost for forming the structure which enables elastic deformation of the latch arm 204
having the projection 205 rises.
c. As described above, even if the "structure which enables elastic deformation of
the latch arm 204 having the projection 205" described in the Exhibit Otsu 194
document is provided on the rotation rod 17 of the Exhibit Otsu 135 invention alleged
by Plaintiff of the first instance, the locking function is not exerted, and the cost rises
and thus, there is a hindrance in application of the art described in the Exhibit Otsu 194
document to the Exhibit Otsu 135 invention alleged by Plaintiff of the first instance.
B. Different Feature 3'
The Exhibit Otsu 135 invention alleged by Plaintiff of the first instance has the
structure "including the support shaft 16, 160, 161 supported by the support fitting 15,
150 on the base end and the roller 1, 101, 102 rotatably supported by the support shaft
16, 160, 161".
Here, the technical meaning that the Exhibit Otsu 135 invention alleged by Plaintiffof the first instance provides the "support fitting 15, 150" and the "support shaft 16" isthat, as illustrated in Figure 1 of the Exhibit Otsu 135 document, the rotation shaft 11
extending from the grip portion 13 is formed having a crank shape, and metal is suitable
as a material which can ensure elasticity and strength, while a resin is suitable as amaterial for the support shaft 16, since a distal end portion for retaining is integrally
formed.
On the other hand, the Exhibit Otsu 193 art, the Exhibit Otsu 136 art, and the Exhibit
Otsu 137 art do not have such technical meaning and thus, there is no motivation tohave the structure in which the "support shaft 16, 160, 161" of the Exhibit Otsu 135
invention alleged by Plaintiff of the first instance is retained by/fixed to the grip portion
on the basis of these arts so as to have the structure of Present Invention 2 related to
Different Feature 3'.
Therefore, a person ordinarily skilled in the art could not have easily conceived ofhaving the structure of Present Invention 2 related to Different Featur e 3' from the
Exhibit Otsu 135 invention alleged by Plaintiff of the first instance on the basis of any
one of the Exhibit Otsu 193 art, the Exhibit Otsu 136 art, and the Exhibit Otsu 137 art.
6. Amount of damages of Plaintiff of the first instance (issue (5))
45The description in No. 3, 5 in "Facts and reasons" of the judgment in the first
instance shall be cited as it is, except that the amendment was made as in (1) below andthe allegation in this court was added as in (2) below.
(1) Amendment
A. The phrase "the date of registration of Present Patent 2 (December 4, 2015) andafter) " on page 39, line 21 in the judgment in prior instance shall be revised to"a period from December 4, 2015 to May 8, 2017".
B. The term "Present Patent 2" on page 40, line 7 of the judgment in prior instanceshall be revised to "Present Patent 1 and Present Patent 2".
C. The phrase "a period from December 4, 2015 to May 8, 2017" shall be added at
the beginning on page 41, line 11 in the judgment in prior instance, and "a tortof patent right infringement during a period from December 4, 2015 to May 8,
2017" next to the phrase "to Defendant," on line 25, respectively.
(2) Allegation in this court[Allegation of Plaintiff of first instance]
A. Plaintiff of the first instance sold Plaintiff's Product (Exhibit Ko 23) in February
2009 and after, and Plaintiff's Product has the following structure and is aworked product of Present Invention 1 and Present Invention 2.
(a) Structure of Plaintiff's product in relation with Present Invention 1
a. A beauty instrument in which a pair of balls is supported on a distal end
portion of a handle at an interval from each other and rotatably around
one axis, respectively (Exhibit Ko 23).
b. The axis of the ball is configured to be inclined forward with respect toa center line of the handle so that the axis of the ball can maintain acertain angle with respect to a skin surface during a reciprocating
operation (Exhibit Ko 47).
c. An opening angle of a pair of ball support shafts is 70 degrees, and aninterval between outer peripheral surfaces of the pair of balls is 11.2 mm(Exhibit Ko 47).
d. The ball is supported by the ball support shaft through a bearing member
in a non-penetrating state (Exhibit Ko 24).
e. It is configured such that the skin is picked up by pressing the outer
peripheral surface of the ball to the skin and by moving it from a distal
end to the base end direction of the handle (Exhibit Ko 23).
(b) Structure of Plaintiff's Product in relation with Present Invention 2 (Exhibit Ko 24)
a. A beauty instrument including a support shaft retained by/fixed to a handle
46

on a base end and a rotary body rotatably supported on the distal end sideof the support shaft and configured to give an esthetic action to the bodyby the rotary body.
b. The rotary body has a hole only on the base end side and is supported by
the support shaft through the bearing member in a non-penetrating state
where the distal end of the support shaft is located inside thereof.
c. This bearing member is retained by the support shaft at the distal end
which is on a side opposite to the hole of the rotary body, a lock claw
capable of elastic deformation protrudes from the bearing member, andthe bearing member has a flange portion on the base end side of the lockclaw.
d. The lock claw has a slanted surface whose distance to a rotation center ofthe rotary body in the bearing member becomes smaller as it goes toward
the base end side.
e. The rotary body has a stepped portion capable of being engaged with thelock claw on the inner periphery, and this stepped portion is locked on
the base end side of the lock claw and is located between the lock claw
and the flange portion.
B. Defendant of the first instance sold 351,724 units of Defendant's Product in total
during a period from December 4, 2015 to May 8, 2017, and a profit per a unit quantityof Plaintiff's Product in the period was 5,547 yen, which is as found in the judgment inprior instance.
The contribution rates of Present Patent Right 1 and Present Patent Right 2 to thesales were 100%, and in this case, there are no "circumstances due to which they would
have been unable to sell" in the proviso to Article 102, paragraph (1) of the Patent Act.
Therefore, the amount of damages of Plaintiff of the first instance in pursuant to
Article 102, paragraph (1) of the Patent Act is 1,951,013,028 yen (351,724 units × 5,547
yen = 1,951,013,028 yen).

Plaintiff claimed 500,000,000 yen in that (Plaintiff claimed

300,000,000 yen in the court of prior instance but expanded to 500,000,000 yen in thiscourt).
C. The judgment in prior instance acknowledged the amount of damages for thedamage related to the infringement of Present Patent Right 2 after the amount of 90%
was reduced from the contribution rate but did not judge presence/absence of theinfringement and the amount of damages for Present Patent Right 1.
However, if the amount is reduced by the contribution rate in the acknowledgementof the amount of damages related to the infringement of Present Patent Right 2, the47

contribution rate of Present Patent Right 1 should be also acknowledged, and thecontribution rate should be added to the contribution rate of Present Patent Right 2 withthe limit of 100% in the acknowledgement of the amount of damages.
And the patent art of Present Invention 1 is an art related to the inclination of thehandle portion in the beauty instrument, the opening angle of the pair of balls, and theinterval between the outer peripheral surfaces of the pair balls, and a user canreciprocate it without a need of bending the wrist when the user grips the handle andpresses the pair of balls to the skin by the art, and it is so configured that the skin ispicked up by pressing the outer peripheral surface of the ball to the skin and by moving
it from the distal end to the base end side of the handle by the opening angle between
the pair of balls and the interval thereof, and it largely contributes to the handle, balls,
and the entire beauty instrument and thus, the contribution rate of Present Patent Right
1 to the sales of the product is found to be 100%.
Even if the amount is reduced by the contribution rate for Present Patent Right 1
and Present Patent Right 2, the contribution rates of the two patent rights should exceed
80%.
D. Allegation of Defendant of the first instance(a) Contribution rate
Defendant of the first instance alleges that the contribution rate of Present Invention
2 is 0% for the reasons that the worked portion of Present Invention 2 is not seen by aconsumer, that the effect such as smoothness of rotation of the roller which is the effectof Present Invention 2 is not appealed to the consumer, and that there is an alternativeart.
However, the contribution rate of Present Invention 2 is determined by the technicalmeaning of Present Invention 2, and whether or not it is seen by the consumer does notmatter, and since Present Invention 2 is an art related to the bearing and it smoothens
the rotation of the roller, it has the technical meaning in the entire product.
(b) Circumstances due to which they would have been unable to sella. Defendant of the first instance alleges as the circumstances due to which
they would have been unable to sell that sales channels are different
between Plaintiff's Product and Defendant's Product and effects aredifferent.
However, since Plaintiff's Product and Defendant's Product are
currently competing and used as targets of comparison/examination by
the consumers and selected (Exhibits Ko 35, 36), the circumstances
alleged by Defendant of the first instance cannot be considered to be the48

circumstances due to which they would have been unable to sell.
Moreover, the effect of the microcurrent is a fact having no relations
with Present Invention 2.
b. Defendant of the first instance alleges that, since there are 30 kinds ofproducts competing with Plaintiff's Product, the consumer can select a
product having the effect similar to that of Plaintiff's Product from atleast 30 kinds of products.
However, it is not obvious whether the competing products pointed
out by Defendant of the first instance exert the function and effect ofPresent Invention 2.
Moreover, even if there is an alternative product for Plaintiff's
Product other than Defendant's Product in the market, Defendant's
Product could be sold regardless of the presence of such alternative
products and thus, it should be considered that Plaintiff of the first
instance could have also sold Plaintiff's Product in the same quantity as
them.
[Allegation of Defendant of first instance]
A. Contribution rate
By considering the circumstances below, the contribution rate of Present Invention
2 to the sales of Defendant's product should be considered to be 0.
(a) In Defendant's Product, the bearing which is the worked portion of Present
Invention 2 is not seen by the consumer.
Moreover, in Plaintiff's product, a function for preventing removal of the roller is
not sufficient, and Plaintiff of the first instance does not appeal to the consumers theeffects of the smoothness of the roller rotation, prevention of removal of the roller fromthe support shaft, and the like which are the effects of Present Invention 2 in the salesof Plaintiff's Product, and Defendant of the first instance does not appeal theaforementioned effects, either, in the sales of Defendant's Product.
(b) The bearing is a member for supporting the shaft and causing to perform asmooth rotary motion and a basic and general-purpose member described evenin a basic mechanical engineering textbook (Exhibits Otsu 56 to 58), and when
the rotary body is used in the beauty instrument, when the rotary body is rotatedaround the support shaft, use of the bearing itself is an extremely natural matterfor a person ordinarily skilled in the art.
And technical elements of Present Invention 2 are [i] the rotary body is nonpenetrating; [ii] the rotary body is hard; and [iii] a distal end of the support shaft is49

present inside the rotary body, and there are a large number of such arts (Exhibits Otsu
45, 64, 65, 136).
B. Circumstances due to which they would have been unable to sellIn this case, there is the "circumstances due to which they would have been unable
to sell" in the proviso to Article 102, paragraph (1) of the Patent Act as follows.
(a) Difference in sales channel
Plaintiff's Product is sold mainly at major mail-order companies, department stores,
major electronics retail stores, and online malls by Plaintiff (Exhibits Otsu 94 to 110),while Defendant's Product mainly deals with wholesale to large-scale discount shops
and variety shops (Exhibits Otsu 85 to 93), and those who purchase expensive goods
handled at the major mail-order companies, department stores, major electronics retailstores, and the like do not purchase competing products sold at lower prices at the large
discount shops and variety shops and moreover, those who purchase inexpensive goods
at the large discount shops and variety shops do not purchase competing products soldat higher prices at the major mail-order companies, department stores, major electronics
retail stores, and the like.
Particularly, Plaintiff's Product is an expensive beauty instrument advertisingslimming effects of the whole body mainly for female targets (Exhibit Ko 16), andwomen who examine purchase of Plaintiff's Product by expecting such effects would
not replace it by purchase of an inexpensive Defendant's Product.
(b) Difference in effects
Plaintiff's Product has an effect of causing a microcurrent generated by a solar panel
to electrify the body through the roller, which Defendant's Product does not have
(Exhibits Otsu 111 to 115).
Those who purchase Plaintiff's Product select Plaintiff's Product by expecting anesthetic effect of this microcurrent, and those who select the goods by expecting theesthetic effect by the microcurrent would not usually select Defendant's Product without
any effect of the microcurrent.
(c) Presence of competing products
As a beauty roller having an effect similar to that of Plaintiff's product, at least 24
competing companies including Defendant of the first instance sell as many as 29 kindsof products (Exhibit Otsu 176), and the consumers can select a product having an effectsimilar to that of Plaintiff's Product from at least 30 kinds of products including
Plaintiff's Product.
On this point, Plaintiff of the first instance alleges that it is unclear whether the
bearing of an article similar to the aforementioned Plaintiff's Product has an effect50

similar to that of the Present Invention 2.
However, if the bearing of the aforementioned similar article rotatably supports theroller, it has a function and effect similar to those of Present Invention 2, and there is
no product in the aforementioned similar articles in which the roller is not rotated, andany of them is considered to have a function and effect similar to those of Present
Invention 2.
No. 4 Judgment of this court
1. Descriptions in Present Description 1 and Present Description 2(1) Present Description 1 has the following description (Exhibits Ko 2, 53)[Technical Field] [0001] This invention relates to a beauty instrument which canrealize beautiful skin by promoting a blood flow by massaging the skin of the face, thearm, and the like by a ball for massaging provided on a handle.
[Background Art] [0002] Conventionally, this type of beauty instrument has been
proposed in various ways, and a skin beautifying roller is disclosed in Patent Document
1, for example.

That is, this skin beautifying roller includes a handle and a pair ofrollers provided on one end of the handle, and a rotation shaft of the roller is set so thatthe rotation shaft of the roller forms a sharp angle with a center line in a long axis
direction of the handle.

Moreover, an angle formed by the rotation shafts of the pairof rollers is set to form a non-sharp angle.

By gripping the handle of this skinbeautifying roller by the hand and by pressing the roller in one direction to the skin, theskin is pulled and pores are opened, and by pulling it to an opposite direction whilepressing it, the skin is sandwiched between the rollers, and the pores are contracted.
Therefore, according to this skin beautifying roller, dirt in the pores can be removed
efficiently.
[Problems to be Solved by the Invention] [0004] However, with the skin beautifying
roller with the conventional structure described in Patent Document 1, since the centerline of the handle and the rotation shafts of the both rollers are on the same p lane (seeFigure 2 in Patent Document 1), when the handle of the skin beautifying roller isgripped by the hand, and both rollers are pressed onto the skin, the elbow should beraised, and the wrist should be bent so as to direct the tips of the hand to th e skin side
so as to stand the handle upright with respect to the skin.

Thus, operability of the skinbeautifying roller is poor and moreover, an acting state of the roller to the skin is greatlychanged by a wrist angle, which is a problem.
[0005] Moreover, since each of the rollers of this skin beautifying roller is formed
having an oval cylindrical shape, when the roller is pressed in one direction, a wide part51

of the skin is evenly pressed and thus, the pores cannot be opened sufficiently.
Furthermore, when the roller is pulled to the opposite direction, the skin locatedbetween the both rollers is pulled in a region corresponding to the length of the roller
and cannot be strongly sandwiched by the two rollers.

As a result, opening andcontraction of the pores are not performed sufficiently, and dirt in the pores cannot becleanly removed, which is a problem.

In addition, since the roller is formed having an

oval cylindrical shape, it is brought into linear contact with the skin, resistance against
the skin is large, movement is not smooth, and moreover, a moving direction is limited
easily.

Therefore, there is a problem that operability of the skin beautifying roller ispoor.
[0006] This invention was made in view of such problems present in the prior artsand has an object to provide a beauty instrument which can exert an excellent massaging
effect to the skin, can exert the pressing effect and the picking-up effect to the skinmarkedly and continuously, and has favorable operability.
[Means for Solving the Problems] [0007] In order to achieve the aforementioned
object, an invention of a beauty instrument described in Claim 1 is characterized in that,in a beauty instrument in which a pair of balls is supported rotatably around one axis,
respectively, at a distal end portion of a handle at an interval from each other, the axisof the ball is configured to be inclined forward with respect to a center line of the handle
so that the axis of the ball can maintain a certain angle to the skin surfac e during areciprocating operation, an opening angle of the pair of ball support shafts is set to 65
to 80 degrees, an interval between outer peripheral surfaces of the pair of balls is set to
10 to 13 mm, the ball is supported by the ball support shaft through a bearing member
in a non-penetrating state, and the skin is picked up by pressing the outer peripheral
surface of the ball to the skin and by moving it from the distal end of the handle to abase end direction.
[Advantageous Effect of the Invention] [0008] According to the beauty instrumentof the present invention, the following effects can be exerted.
The beauty instrument described in Claim 1 is configured such that a pair of balls
is supported rotatably around one axis, respectively, at a distal end portion of a handle
at an interval from each other, and the axis of the ball is inclined forward with respect
to a center line of the handle.

That is, it is configured such that the axis of the ball canmaintain a certain angle to the skin surface during a reciprocating operation of thebeauty instrument.

Thus, when the handle is gripped, and the pair of balls is applied

to the skin, there is no need to bend the wrist, but the skin can be pressed in a state
where the wrist is kept straight when the beauty instrument is moved forward, and the52skin can be picked up when the beauty instrument is moved backward.
[0009] Moreover, the portion in contact with the skin is not a cylindrical roller but
is configured by a completely circular ball and thus, the ball is locally brought into
contact with the skin.

Therefore, the ball can cause a pressing force or a picking -up

force to act concentrically on a local part of the skin, the movement of the ball to theskin can be made smooth, and a degree of freedom in a moving direction is high.
[0010] Thus, according to the beauty instrument of the present invention, an
excellent massaging effect can be exerted to the skin and at the same time, the pressing
effect and the picking-up effect to the skin can be exerted markedly and continuously,
and the effect that the operability is favorable can be also exerted.
[0012] An embodiment of the beauty instrument which embodies this invention will
be described below in accordance with Figures 1 to 7.
As illustrated in Figure 1, a bifurcated portion 11a extending having a Y-shape on
a plane is provided at a distal end of a handle 11 constituting a beauty instrument 10 ofthis embodiment. ...
[0013] As illustrated in Figure 7, a pair of support cylinders 16 is integrally formed
on a base material 12 in the bifurcated portion 11a of the handle 11, and a ball support
shaft 15 made of metal is supported by this support cylinder 16. ...
[0014] A cylindrical bearing member 19 made of a synthetic resin and plated withmetal on inner and outer peripheries is fitted with a projecting end portion of the ballsupport shaft 15 and is retained/fixed by a stop ring 25.

On the outer periphery of thisbearing member 19, a pair of elastically deformable lock claw 19a is pro jected.

On

the bearing member 19 on the ball support shaft 15, a ball 17 having a spherical shapeis rotatably inserted/supported. ...
[0018] The beauty instrument 10 of this embodiment can be applied to the face as
described above and can be also applied to the body such as the neck, arm, leg, and thelike other than that.
As illustrated in Figure 3, the axis of the ball support shaft 15 is configured to be
inclined forward to a center line x of the handle 11 so that the axis of the ball support
shaft 15 can maintain a certain angle to the skin 20 surface during a reciprocating
operation of the beauty instrument 10.

Specifically, a side projection angle α of theaxis y of the ball 17; that is, the axis y of the ball support shaft 15 to the center li ne (aline in parallel with a line dividing an angle between outer peripheral tangents z of a
thickest portion of the handle 11 into two parts) x of the handle 11 is preferably 90 to
110 degrees so that the ball 17 is inclined forward to the center line x of the handle 11
so as to make operability favorable.

This side projection angle α is more preferably53

93 to 100 degrees and most preferably 95 to 99 degrees.

If this side projection angle

α is smaller than 90 degrees or larger than 110 degrees, the forward inclination angleof the ball support shaft 15 becomes too small or too large, and the elbow needs to be
stood upright or lowered or the wrist needs to be bent greatly when the ball 17 is to be
applied to the skin 20, which makes operability of the beauty instrument 10 poorer ormakes adjustment of the angle of the ball support shaft 15 to the skin 20 surface difficult.
[0019] As illustrated in Figure 5, the opening angle of the pair of balls 17; that is,
the opening angle β of the pair of ball support shafts 15, is set preferably to 50 to 110
degrees, more preferably to 50 to 90 degrees, or particularly preferably to 65 to 80
degrees in order that the pressing effect and the picking-up effect to the skin 20 by thereciprocating operation of the balls 17 are expressed favorably.

If this opening angle

β falls below 50 degrees, the picking-up effect to the skin 20 tends to act too strongly,
which is not preferable.

On the other hand, if the opening degree β exceeds 110

degrees, it becomes difficult to pick up the skin 20 located between the balls 17, which
is not preferable.
[0020] Moreover, a diameter L of each of the balls 17 is preferably set to 15 to 60
mm, more preferably to 32 to 55 mm, particularly preferably to 38 to 45 mm in orderthat the beauty instrument 10 is applied mainly to the face and the arm.

If the diameter

L of the ball 17 is smaller than 15 mm, a range of the skin 20 where the pressing effectand the picking-up effect can be expressed becomes smaller, which is not preferable.
On the other hand, if the diameter L of the ball 17 is larger than 60 mm, the size of theball 17 is relatively larger than the size of the face or the arm and thus, it is difficult topress or pick up a narrow portion, which makes use difficult.
[0021] Moreover, an interval D between the outer peripheral surfaces of the balls
17 is preferably 8 to 25 mm, more preferably 9 to 15 mm, particularly preferably 10 to
13 mm, particularly in order that the picking up of the skin 20 is performed
appropriately.

If the interval D between the outer peripheral surfaces of the balls 17

is less than 8 mm, the picking-up effect acts too strongly to the skin 20 located between
the balls 17, which is not preferable.

On the other hand, if the interval D between theouter peripheral surfaces of the balls 17 exceeds 25 mm, it becomes difficult to pick up
the skin 20 located between the balls 17, which is not preferable.
[0022] Subsequently, the action of the beauty instrument 10 in the embodimentconfigured as above will be described.
When this beauty instrument 10 is in use, as illustrated in Figure 3, in a state wherea user grips the handle 11, when the user presses the outer peripheral surface of the ball
17 to the skin 20 of the face, the arm, and the like as indicated by a two-dot chain line54

in Figure 3 and moves it forward it from the base end of the handle 11 to the distal end
direction (left direction in the Figure 3) in contact, the ball 17 is rotated around the ballsupport shaft 15.

At this time, as indicated by the two-dot chain line in Figure 3, apressing force is applied to the skin 20 from the ball 17.

After the ball 17 is moved

forward, when the ball 17 is moved backward so as to return to the original position,
the skin 20 located between the balls 17 is picked up with the rotation of the balls 17 as
indicated by the two-dot chain line in Figure 4.
[0023] That is, as illustrated in Figure 5, when the two balls 17 are moved forward
to an arrow P1 direction, each of the balls 17 is rotated to an arrow P2 direction.
the skin 20 is pushed wide and pressed.

Thus,

On the other hand, when the two balls 17 are

moved backward in an arrow Q1 direction, each of the balls 17 is rotated in an arrow
Q2 direction.

Thus, the skin 20 located between the two balls 17 is picked up as if it

is wound up.

It is to be noted that, when the two balls 17 press the skin 20 in theforward movement, the skin 20 between the two balls 17 is picked up as a reaction to
the pressing force.
[0024] In this case, the ball support shaft 15 is inclined forward to the center line xof the handle 11, or more specifically, since the side projection angle α of the ballsupport shaft 15 to the center line x of the handle 11 is set to 90 to 110 degrees, thereciprocating operation of the beauty instrument 10 can be performed without raising
the elbow or bending the wrist too much.

Moreover, the operation can be continued

while the axis y of the ball support shaft 15 is maintained close to a right angle to theskin 20 surface.

Thus, the ball 17 can be effectively pressed to the skin 20, and themassaging action can be expressed efficiently.
[0025] Moreover, since the portion in contact with the skin 20 is constituted not by
a conventional cylindrical roller but a completely circular ball 17, the ball 17 is brought
into contact with the skin 20 in an area smaller than the roller.

Thus, the ball 17 cancause the pressing force and the picking-up force to act concentrically on a local partof the skin 20 and at the same time, the movement of the ball 17 to the skin 20 is smooth,and the moving direction can be changed easily.
[0026] Therefore, the skin 20 of the face, the arm, and the like is massaged by thepressing force involved in the rotation of the ball 17, blood flow is promoted in that
portion, and circulation of lymph is promoted.

Moreover, since the opening angle βof the pair of balls 17 is set to 50 to 110 degrees, and the interval D between the outer
peripheral surfaces of the balls 17 is set to 8 to 25 mm, the appropriate pressing force
can be made to act on the desired skin 20 portion and at the same time, the picking -upof the skin 20 can be performed not too strongly or not too weakly but comfortably.
55

Furthermore, since the diameter L of the ball 17 is set to 15 to 60 mm, it canappropriately handle the face or arm, and the operation of the beauty instrument 10 canbe swiftly proceeded with.

Thus, lift-up massage can be performed to a loose portionof the skin 20, for example, as desired.
[0027] In addition, when the skin 20 is pulled by the pressing force of the ball 17,
pores are opened, while when the skin 20 is picked up between the balls 17, the poresare contracted, and dirt in the pores is removed.

Moreover, the skin 20 of the user isin contact with the outer peripheral surface of the ball 17, and the hand of the user is incontact with a conductive portion on the handle 11 surface and thus, a microcurrent
flows from the ball 17 through the skin 20 and the user's hand as illustrated in Figure 3
by power generated by a solar cell panel 24 and stimulates the skin 20, and the bloodflow or circulation of lymph is promoted.

Thus, the massaging action, thepressing/picking-up action, the lift-up action, the action to remove dirt in the pores, theelectric stimulus action, and the like work on the skin 20 synergistically and integrally,
and a desirable skin beautifying action is exerted.
[Working example] [0031] Hereinafter, the embodiment will be explained further
specifically by citing working examples.
(Working examples 1 to 6, evaluation of side projection angle α)
In the beauty instrument 10 suitable for both the face and the body illustrated in theembodiment, the opening angle β of the balls 17 was set to 70 degrees, the diameter Lof the ball 17 to 40 mm, and the interval D between the outer peripheral surfaces of theballs 17 to 11 mm, and by changing the side projection angle α from 90 to 110 degrees,
the side projection angle α was evaluated.

That is, the beauty instrument 10 was

applied to the face or the body such as the arm, the neck, and the like, and function
evaluation was made on the impression from use.
[0032] In a method of the function evaluation, the number of evaluators who use
the beauty instrument 10 was set to 10, and when 8 evaluators or more in them felt good,it was given ◎, when 5 to 7 evaluators felt good, it was given○, when 3 or 4 evaluators
felt good, it was given △, and when two evaluators or less felt good it was given ×.
[0033] Those results are shown in Table 1.
[0034] [Table 1]

Working Example 1

Side projection angle α(degrees)

Evaluation

90

△

56

Working Example 2

93○

Working Example 3

97◎

Working Example 4

99◎

Working Example 5

100○

Working Example 6110△

As illustrated in Table 1, the results of Working Example 3 with the side projection
angle α at 97 degrees and Working Example 4 at 99 degrees were the most favorable.
Then, the results of Working Example 2 with the side projection angle α at 93 degree s
and Working Example 5 at 100 degrees were favorable.

Moreover, the results ofWorking Example 1 with the side projection angle α at 90 degrees and Working
Example 6 at 110 degrees were also determined to be possible.
[0035] Therefore, the side projection angle α of the beauty instrument 10 ispreferably within a range from 90 to 110 degrees, and the range from 93 to 100 degrees
was found to be a more preferable range.
(Working Examples 7 to 15, evaluation of opening degree β)
The opening angle β in the beauty instrument 10 suitable for both the face and the
body was evaluated.

That is, by setting the side projection angle α of the beauty

instrument 10 to 97 degrees, the diameter L of the ball 17 to 40 mm, and the interval D
between the outer peripheral surfaces of the balls 17 to 11 mm, the opening angle β was
evaluated by changing the opening angle β from 40 to 120 degrees.
method was similar to that of Working Example 1.

The obtained results are shown in

Table 2.
[0036] [Table 2]Opening angle β(degree)

Evaluation

Working Example 7

40△

Working Example 8

50○

Working Example 955○

Working Example 1060○

Working Example 11

70◎

Working Example 12

90○

Working Example 13

100

○

57

The evaluation

Working Example 14

110○

Working Example 15120△

As illustrated in Table 1, the result of Working Example 11 with the opening angle
β at 70 degrees is the most favorable.

Then, the results of Working Examples 8 to 10

with the opening angle β at 50 to 60 degrees and Working Examples 12 to 14 at 90 to
110 degrees were favorable.

Moreover, the results of Working Example 7 with the

opening angle β at 40 degrees and Working Example 15 at 120 degrees were determined
to be possible.
[0037] Therefore, the opening angle β of the beauty instrument 10 is preferably
within a range from 50 to 110 degrees, and the range from 65 to 80 degrees was foundto be the most favorable.
(Working Examples 16 to 23, evaluation of diameter L of ball 17)
The diameter L of the ball 17 was evaluated for the beauty instrument 10 suitablefor both the face and the body.

That is, by setting the side projection angle α of thebeauty instrument 10 to 97 degrees, the opening angle β of the balls 17 to 70 degrees,
and the interval D between the outer peripheral surfaces of the balls 17 to 11 mm, thediameter L of the ball 17 was evaluated by changing the diameter L of the ball 17 from
20 to 40 mm.

The evaluation method was similar to that of Working Example 1.

Theobtained results are shown in Table 3.
[0038] [Table 3]

Working Example 16

Ball diameter
L(mm)
20

Working Example 17

25△

Working Example 18

27.5

△

Working Example 19

30△

Working Example 20

32.5

△

Working Example 21

35○

Working Example 22

38.3

◎

Working Example 23

40◎

Evaluation△

As illustrated in Table 3, the results of Working Example 22 with the diameter L of
the ball 17 at 38.3 mm and Working Example 23 at 40 mm were the most favorable.

58

Then, the result of Working Example 21 with the diameter L of the ball 17 at 35 mm
was favorable.

Moreover, the results of Working Examples 16 to 20 with the diameter

L of the ball 17 at 20 to 31.5 mm were also determined to be possible.
[0039] Therefore, the diameter L of the ball 17 of the beauty instrument 10 ispreferably within the range from 20 to 40 mm, the range from 35 to 40 mm is more
preferable, and the range from 38.3 to 40 mm was found to be the most preferable.
(Working Examples 24 to 28, evaluation of interval D between outer peripheral surfacesof balls 17)
The interval D between the outer peripheral surfaces of the balls 17 was evaluatedfor the beauty instrument 10 suitable for both the face and body.

That is, by setting

the side projection angle α of the beauty instrument 10 to 97 degrees, the opening angle
β of the balls 17 to 70 degrees, and the diameter L of the ball 17 to 40 mm, the interval
D between the outer peripheral surfaces of the balls 17 was evaluated by changing theinterval D between the outer peripheral surfaces of the ball 17 from 8 to 15 mm.
evaluation method was similar to that of Working Example 1.

The

The obtained results

are shown in Table 4.
[0040] [Table 4]

Working Example 24

Interval D (mm)between balls
8

Working Example 25

10○

Working Example 26

11◎

Working Example 27

12○

Working Example 28

15△

Evaluation△

As illustrated in Table 4, the result of Working Example 26 with the interval D
between the outer peripheral surfaces of the balls 17 at 11 mm was the most favorable.
Then, the results of Working Example 25 with the interval D between the outer
peripheral surfaces of the balls 17 at 10 mm and Working Example 27 at 12 mm werefavorable.

Moreover, the results of Working Example 24 with the interval D between

the outer peripheral surfaces of the balls 17 at 8 mm and Working Example 28 at 15mm were also determined to be possible.
[0041] Therefore, the interval D between the outer peripheral surfaces of the balls
17 of the beauty instrument 10 is preferably within the range from 8 to 15 mm, and therange from 10 to 12 mm is found to be more preferable.

59

(Working Examples 29 to 38, evaluation of diameter L of ball 17)
The diameter L of the ball 17 was evaluated for the beauty instrument 10 suitable
mainly for the face.

That is, by setting the side projection angle α of the beauty

instrument 10 to 97 degrees, the opening angle β of the balls 17 to 70 degrees, and theinterval D between the outer peripheral surfaces of the balls 17 to 11 mm, the diameter
L of the ball 17 was evaluated by changing the diameter L of the ball 17 from 15 to 40
mm.

The evaluation method was similar to that of Working Example 1.

Theobtained results are shown in Table 5.
[0042] [Table 5]
Evaluation

Working Example 29

Ball diameter L(mm)
15

Working Example 30

17○

Working Example 31

20○

Working Example 32

25◎

Working Example 33

27.5

◎

Working Example 34

30○

Working Example 35

32.5

△

Working Example 36

35△

Working Example 37

38.3

△

Working Example 38

40

△

○

As illustrated in Table 5, when the beauty instrument 10 is for the face, the resultsof Working Example 32 with the diameter L of the ball 17 at 25 mm and Working
Example 33 at 27.5 mm were the most favorable.

Then, the results of Working

Examples 29 to 31 with the diameter L of the ball 17 at 15 to 20 mm and Working
Example 34 with the diameter L of the ball 17 at 30 mm were favorable.

Moreover,the results of Working Examples 35 to 38 with the diameter L of the ball 17 at 32.5 mm
to 40 mm were also determined to be possible.
[0043] Therefore, when the beauty instrument 10 is suitable for the face, thediameter L of the ball 17 is preferably within the range from 15 to 40 mm, and the range
from 15 to 30 mm was found to be more preferable.
(Working Examples 39 to 44, evaluation of interval D between outer peripheral surfaces

60

of balls 17)
The interval D between the outer peripheral surfaces of the balls 17 was evaluatedfor the beauty instrument 10 suitable mainly for the face.

That is, by setting the side

projection angle α of the beauty instrument 10 to 97 degrees, the opening angle β of theballs 17 to 70 degrees, and the diameter L of the ball 17 to 40 mm, the interval D
between the outer peripheral surfaces of the balls 17 was evaluated by changing theinterval D between the outer peripheral surfaces of the balls 17 from 6 to 15 mm.
evaluation method was similar to that of Working Example 1.

The

The obtained results

are shown in Table 6.
[0044] [Table 6]
Evaluation

Working Example 39

Interval D (mm)between balls
6

Working Example 40

8○Working Example 41

10○Working Example 42

11◎

Working Example 43

12○

Working Example 44

15

△

△

As illustrated in Table 6, when the beauty instrument 10 is for the face, the resultof Working Example 42 with the interval D between the outer peripheral surfaces ofthe balls 17 at 11 mm was the most favorable.

Then, the results of Working Example

40 with the interval D between the outer peripheral surfaces of the balls 17 at 8 mm,
Working Example 41 at 10 mm, and Working Example 43 at 12 mm were favorable.
Moreover, the results of Working Example 39 with the interval D between the outer
peripheral surfaces of the balls 17 at 6 mm and Working Example 44 at 15 mm werealso determined to be possible.
[0045] Therefore, when the beauty instrument 10 is for the face, the interval D
between the outer peripheral surfaces of the balls 17 is preferably within the range from
6 to 15 mm, and the range from 8 to 12 mm was found to be more preferable.
(Working Examples 45 to 51, evaluation of diameter L of ball 17)
The diameter L of the ball 17 was evaluated for the beauty instrument 10 suitable
mainly for the body.

That is, by setting the side projection angle α of the beauty

instrument 10 to 97 degrees, the opening angle β of the balls 17 to 70 degrees, and theinterval D between the outer peripheral surfaces of the balls 17 to 11 mm, the diameter61

L of the ball 17 was evaluated by changing the diameter L of the ball 17 from 30 to 60
mm.

The evaluation method was similar to that of Working Example 1.

Theobtained results are shown in Table 7.
[0046] [Table 7]

Working Example 45

Ball diameter L(mm)
30

Working Example 46

32.5

△

Working Example 47

35△

Working Example 48

38.3

○

Working Example 49

40○

Working Example 50

50◎Working Example 51

60◎

Evaluation△

As illustrated in Table 7, the results of Working Example 50 with the diameter L of
the ball 17 at 50 mm and Working Example 51 at 60 mm were the most favorable.
Then, the results of Working Example 48 with the diameter L of the ball 17 at 38.3 mm
and Working Example 49 with the diameter L of the ball 17 at 40 mm were favorable.
Moreover, the results of Working Examples 45 to 47 with the diameter L of the ball 17
at 30 mm to 35 mm were also determined to be possible.
[0047] Therefore, when the beauty instrument 10 is for the body, the diameter L of
the ball 17 is preferably within the range from 30 to 60 mm, and the range from 38.3 to60 mm was found to be more preferable.
(Working Examples 52 to 58, evaluation of interval D between outer peripheral surfacesof balls 17)
The interval D between the outer peripheral surfaces of the balls 17 was evaluatedfor the beauty instrument 10 suitable mainly for the body.

That is, by setting the side

projection angle α of the beauty instrument 10 to 97 degrees, the opening angle β of theballs 17 to 70 degrees, and the diameter L of the ball 17 to 40 mm, the interval D
between the outer peripheral surfaces of the balls 17 was evaluated by changing theinterval D between the outer peripheral surfaces of the balls 17 from 8 to 25 mm.
evaluation method was similar to that of Working Example 1.
are shown in Table 8.

62

The

The obtained results

[0048] [Table 8]

Working Example 52

Interval D (mm)between balls
8

Working Example 53

10○Working Example 54

11○

Working Example 55

12◎Working Example 56

15◎

Working Example 57

20○

Working Example 58

25○

Evaluation△

As illustrated in Table 8, the results of Working Example 55 with the interval D
between the outer peripheral surfaces of the balls 17 at 12 mm and Working Example
56 at 15 mm were the most favorable.

Then, the results of Working Example 53 andWorking Example 54 with the interval D between the outer peripheral surfaces of theballs 17 at 10 to 11 mm, and Working Example 57 and Working Example 58 at 20 to
25 mm were favorable.

Moreover, the result of Working Example 52 with the interval

D between the outer peripheral surfaces of the balls 17 at 8 mm was also determined to
be possible.
[0049] Therefore, when the beauty instrument 10 is for the body, the interval D
between the outer peripheral surfaces of the balls 17 is preferably within the range from
8 to 25 mm, and the range from 10 to 25 mm was found to be more preferable.
By comprehensively considering the results of Working Examples 1 to 58 describedabove, it was determined that the side projection angle α of the beauty instrument 10
needs to be 90 to 110 degrees, 93 to 110 degrees is preferable, and 95 to 99 degrees isparticularly preferable.

It was determined that the opening angle β of the balls 17 ispreferably 50 to 110 degrees, 50 to 90 degrees is more preferable, and 65 to 80 degrees
is particularly preferable.

It was determined that the diameter L of the ball 17 ispreferably 15 to 60 mm, 32 to 55 mm is more preferable, and 38 to 45 mm is particularly
preferable.

It was determined that the interval D between the outer peripheral sur facesof the balls 17 is preferably 8 to 25 mm, 9 to 15 mm is more preferable, and 10 to 13
mm is particularly preferable.
[0050] It is to be noted that the embodiment can be embodied with the following

63changes.
∙ As illustrated in Figures 8 and 9, the shape of the ball 17 can be formed having aballoon shape so that a curvature of the outer peripheral surface of the ball 17 on thehandle 11 side becomes larger than the curvature of the ball support shaft 15 on the
distal end side.

When configured as such, since the skin can be picked up by the

portion with a smaller curvature, and a picked-up state can be held by the portion witha larger curvature, the picking-up effect of the skin 20 when the ball 17 is moved
backward can be improved.
[0051]∙ It is also possible to configure a space between the handle 11 and the bifurcatedportion 11a thereof rotatable so that the side projection angle α of the axis y of the ball
17 with respect to the center line x of the handle 11 is made variable.

In this case, theangle of the axis y of the ball 17 to the skin 20 can be easily changed, and usability canbe improved.
[0052]∙ The shape of the ball 17 can be changed as appropriate to an oval sectional shape,
an elliptic circular sectional shape, and the like. ...
[Figure 5]64[Figure 8][Figure 9](2) Present Description 2 has the following description (Exhibit Ko 4).
[0001] This invention relates to a beauty instrument which gives an esthetic action
such as a skin beautifying effect and the like to a user by rotating a rotary body on thebody.
[0002] Conventionally, for this type of beauty instrument, a structure disclosed in
Patent Document 1, for example, has been proposed.

In this beauty instrument withthe conventional structure, a bifurcated portion is provided at a distal end of the handle.
By pressing each of the rotary bodies to the skin of the body and rotating it, an esthetic
action such as a skin beautifying effect and the like is said to be given to the body.
[Problems to be Solved by the Invention] [0004] In the aforementioned Patent
Document 1, a support structure such as a shaft for supporting the rotary body is notdisclosed.
An object of this invention is to provide a beauty instrument which can rotatably
65

support the rotary body with respect to the support shaft.
[Means for Solving the Problems] [0005] In order to achieve the aforementioned
object, this invention is a beauty instrument including a support shaft retained/fixed ona base end and a rotary body rotatably supported on a distal end side of the support shaft
and configured such that the esthetic action is given to the body by the rotary body.
[0006] Moreover, the rotary body has a hole only on the base end side, and therotary body is supported by the support shaft through a bearing member in a non penetrating state where a distal end of the support shaft is located inside thereof, thebearing member is retained by the support shaft at the distal end which is on a side
opposite to the hole of the rotary body, a lock claw capable of elastic deformation
protrudes from the bearing member, the bearing member has a flange portion on thebase end side of the lock claw, the lock claw has a slanted surface whose distance to arotation center of the rotary body in the bearing member becomes smaller as it goes
toward the distal end side, the rotary body has a stepped portion capable of being
engaged with the lock claw on an inner periphery, and the stepped portion is locked on
the base end sided of the lock claw and is located between the lock claw and the flange
portion.
[Advantageous Effect of the Invention] [0008] As described above, according tothis invention, the effect that the rotary body can be rotatably supported with respect tothe support shaft is exerted.
[0015] As illustrated in Figure 4, a cylindrical bearing member 25 made of asynthetic resin is fitted with a projecting end portion of each of the support shafts 20
and is retained/fixed by a stop ring 26.

An outer front surface including both front andrear surfaces of this bearing member 25 is plated with metal, and conductivity between
the bearing member 25 and the support shaft 20 is ensured.

Moreover, instead of metal

plating, conductivity may be ensured by configuring the bearing member 25 by aconductive resin.

As illustrated in Figures 4 and 8, on the outer periphery of each of

the bearing members 25, a pair of elastically deformable lock claws 25a is project ed.
On the bearing member 25 on each of the support shafts 20, a pair of rotary bodies 27
each forming a substantially spherical shape is rotatably fitted in and supported.

Eachof the rotary bodies 27 is configured by a core material 28 made of a synthetic resin, acap material 29 made of a synthetic resin fitted on an inner periphery of a distal end of
the core material 28, and an outer sheath material 30 made of a synthetic resin
coated/molded on the outer periphery of the core material 28 and the cap material 29.
On an outer surface of the outer sheath material 30, conductive metal plating is applied
as a conductive portion, and conductivity with the bearing member 25 is ensured.
66

Onthe inner periphery of the core material 28, a stepped portion 28a capable of being
engaged with the lock claw 25a of the bearing member 25 is formed.

The lock claw

25a is engaged with the stepped portion 28a in a state where the rotary body 27 is fitted
in the bearing member 25, and the rotary body 27 is retained/held with respect to thebearing member 25.
[0019] Therefore, according to this embodiment, the following effects can beobtained.
(1) In this beauty instrument, the pair of support shafts 20 located on crossing axes
L1 and L2 is provided on the distal end portion of the handle 12.

The rotary body 27

is rotatably supported on the distal end side of each of the support shafts 20, and theesthetic action is given to the body by those rotary bodies 27. ...
[Figure 1]

67

[Figure 4][Figure 8]

2. Whether Defendant's product belongs to the technical scope of Present Invention 1(issue (1))(1) Present Invention 1
According to the description in Present Description 1 held in the aforementioned
1(1), Present Invention 1 is found to have the following features.
That is, Present Invention 1 is an invention related to a beauty instrument capableof realizing a beautiful skin through promotion of a blood flow by massaging the skinsuch as the face, the arm, and the like by a ball for massaging provided on a handle(paragraph [0001]), but in this type of conventional beauty instrument, there areproblems that, [i] since the center line of a handle and a rotation shaft of a pair of rollers
are on one plane, when the handle of the skin beautifying roller is gripped by the handand both rollers are pressed onto the skin, the elbow should be raised, the wrist should
be bent so that the hand tip is directed to the skin side, and the handle is made uprightwith respect to the skin, which makes for poor operability, and there is a problem that68

an acting state of the roller to the skin is greatly changed by a wrist angle; and [ii] sinceeach of the rollers of the skin beautifying roller is formed having an elliptic cylindricalshape, a wide portion on the skin is evenly pressed, whereby sufficient opening of porescannot be obtained, and the skin is not sandwiched by the rollers strongly enough,whereby opening or contraction of the pores is not performed sufficiently, dirt in the
pores cannot be cleanly removed, and moreover, it is brought into linear contact withthe skin, and resistance to the skin is large, the movement is not smooth, and a moving
direction is easily limited (paragraphs [0002], [0004], [0005]).

Thus, in Present

Invention 1, in a beauty instrument in which a pair of balls is supported on a distal end
portion of a handle at an interval from each other and rotatably around one axis,
respectively, an axis of the ball is constituted to be inclined forward with respect to acenter line of the handle so that the axis of the ball can maintain a certain angle withrespect to a skin surface during a reciprocating operation, an opening angle of a pair ofball support shafts is set to 65 to 80 degrees, and an interval between outer peripheral
surfaces of the pair of balls is set to 10 to 13 mm ([Claim 1]), so that the axis of the ball
can maintain a certain angle with respect to the skin surface during the reciprocating
operation of the beauty instrument, and by constituting the portion in contact with theskin not by a cylindrical roller but by a completely circular ball, the ball is brought into
local contact with the skin and causes a pressing force and a picking-up force to act
concentrically, movement of the balls to the skin can be made smooth, and a deg ree of
freedom in the moving direction is improved (paragraphs [0008], [0009]), whereby anexcellent massaging effect to the skin can be exerted and at the same time, the pressing
effect and the picking-up effect to the skin can be exerted markedly and continuously,
and the effect that the operability is favorable can be also exerted (paragraph [0010]).
Paragraph [0025] of Present Description 1 describes that "since the portion incontact with the skin 20 is constituted not by a conventional cylindrical roller but by acompletely circular ball 17, the ball 17 is brought into contact with the skin 20 in anarea smaller than with the roller.

Thus, the ball 17 can cause the pressing force andthe picking-up force to act concentrically on a local part of the skin 20 and ...", andparagraph [0050] describes that "As illustrated in Figures 8 and 9, the shape of the ball
17 can be formed having a balloon shape so that a curvature of the outer peripheral
surface of the ball 17 on the handle 11 side becomes larger than the curvature of theball support shaft 15 on the distal end side.

When configured as such, since the skincan be picked up by the portion with a smaller curvature, and a picked -up state can beheld by the portion with a larger curvature, the picking-up effect of the skin 20 when
the ball 17 is moved backward can be improved.", and by considering these descriptions
69

with the feature of Present Invention 1, one of the effects of Present Invention 1 is foundto be that, in the case of the cylindrical roller, sandwiching is performed in a region
corresponding to a length of the roller, and an acting picking-up force is weak, while inthe case of the completely circular ball, the ball is brought into contact with the skin in
an area smaller as compared with the cylindrical roller, and the picking-up force can beexerted concentrically to a local part of the skin, and when the shape of the ball is madea balloon shape, it is found that the completely circular portion with a small radius ofcurvature has a function of picking up the skin, while a cylindrical portion with a large
radius of curvature has a function of holding the picked-up skin.
(2) Fulfillment of constituent feature D
A. Positions of two spots for measuring the "interval between the outer p eripheral
surfaces of the pair of balls" of constituent feature D(a) The "interval between outer peripheral surfaces of a pair of balls" is interpreted
to mean a “distance between the outer peripheral surfaces of the pair of balls", andpositions of the two spots for measuring the distance will be examined below byconsidering the description in Present Description 1.
Present Description 1 does not have description defining the "interval between outer
peripheral surfaces of a pair of balls", but paragraph [0021] describes that "an interval
D between the outer peripheral surfaces of the balls 17 is preferably 8 to 25 mm, more
preferably 9 to 15 mm, particularly preferably 10 to 13 mm, particularly in order thatthe picking up of the skin 20 is performed appropriately.

If the interval D between theouter peripheral surfaces of the balls 17 is less than 8 mm, the picking-up effect acts
too strongly to the skin 20 located between the balls 17, which is not preferable.

Onthe other hand, if the interval D between the outer peripheral surfaces of the balls 17
exceeds 25 mm, it becomes difficult to pick up the skin 20 located between the balls 17,
which is not preferable." and from the description, a numerical value suitable for
performing picking-up of the skin appropriately is selected as the numerical value ofthe interval D between the outer peripheral surfaces of the balls, and thus it is reasonable
to interpret that the interval D between the outer peripheral surfaces of the balls means
an interval of the portions which pick up the skin.
And as in the aforementioned (1), in Present Invention 1, in the case where the shapeof the ball is a balloon shape, the completely circular portion with a small radius ofcurvature has the function of picking up the skin, while the cylindrical portion with alarge radius of curvature has the function of holding the picked-up skin and does nothave the function of picking up the skin and thus, it is reasonable to interpret that thepositions of the two spots for measuring the "interval between the outer peripheral
70surfaces of the pair of balls" in the case where the ball has the balloon shape arepositions where the interval between the outer peripheral surfaces of the completely
circular or substantially completely circular portions with the small radius of curvature
being the smallest.

Moreover, Present Description 1 describes only the functional

evaluation when the shape of the ball is completely circular (Exhibits Ko 2, 53), andthis is consistent with the understanding that constituent feature D specifies the interval
between the outer peripheral surfaces of the completely circular or substantiallycompletely circular portions with a small radius of curvature when the shape of the ballis a balloon shape, too, and should be considered to support the aforementioned
interpretation on the "interval between the outer peripheral surfaces of the pair of balls".
In this point, in Figure 5 illustrating the working example of Present Invention 1,
reference character D indicating an interval between the outer peripheral surfaces of thepair of completely circular balls is illustrated, and it can be understood that reference
character D is a distance of the portion where the interval between the outer peripheral
surfaces of the two balls is the smallest, and the figure is based on the case where theshape of the ball is completely circular, and when the shape of the ball is a balloon
shape, it should be understood that reference character D is applicable to the completely
circular or substantially completely circular portion of the ball.
(b) Plaintiff of the first instance alleges that, from the description in paragraph[0021] in Present Description 1, it is obvious that the "interval between the outer
peripheral surfaces of the pair of balls" in Present Invention 1 is based on a spot where
the interval is the smallest when the skin is sandwiched, and reference character D(interval) in Figure 5 in Present Description 1 also indicates the minimum interval
between the pair of balls and thus, the "interval between the outer peripheral surfacesof the pair of balls” of Present Invention 1 means a distance between the outer
peripheral surfaces which are the closest of the pair of balls.
However, as described in the aforementioned (a), from the description in paragraph[0021], the numerical value suitable for performing the picking-up of the skinappropriately is selected as the numerical value of the interval D between the outer
peripheral surfaces of the balls, and thus it is reasonable to interpret that the interval D
between the outer peripheral surfaces of the balls means the interval between the
portions for picking up the skin, and in the case where the shape of the ball is a balloon
shape, the completely circular or substantially completely circular portion with a small
radius of curvature has the function of picking up the skin, while the cylindrical portion
with a large radius of curvature does not have the function of picking up the skin andthus, the "interval between the outer peripheral surfaces of the pair of balls" when the71shape of the ball is a balloon shape means a distance between the outer peripheral
surfaces at positions where the interval between the outer peripheral surfaces of thecompletely circular or substantially completely circular portions with a small radius ofcurvature is the closest and is not necessarily the distance between the outer peripheral
surfaces at the position where the interval between the outer peripheral surfaces of theballs is the closest.
And as described in the aforementioned (a), Figure 5 of Present Description 1 isbased on the case where the shape of the ball is completely circular, and when the shapeof the ball is a balloon shape, it should be understood that reference character D isapplicable to the completely circular portion of the ball.
Moreover, from Figure of Present Description 1, when the shape of the ball is aballoon shape, it is found that a part closer to the handle has a smaller distance between
the outer peripheral surfaces and thus, if the "interval between the outer peripheral
surfaces of the pair of balls" is interpreted to mean the distance of the portion where thedistance between the outer peripheral surfaces is the smallest as alleged by Plaintiff ofthe first instance, in the case where the shape of the ball is a balloon shape, even theball having the same shape except that a length of the cylindrical portion with a large
radius of curvature is different fulfills or does not fulfill the constituent feature D
depending on the length of the cylindrical portion.

However, it is hard to accept thatthe length of the cylindrical portion influences the function and effect of Present
Invention 1 of giving the esthetic action, and according to the aforementioned
interpretation by Plaintiff of the first instance, fulfillment of constituent feature D
differs depending on the difference of the portion not influencing the function and effectof Present Invention 1, and the aforementioned interpretation by Plaintiff of the first
instance is irrational.
Thus, the aforementioned allegation of Plaintiff of the first instance has no grounds.
B. Application
The shape of the rolling portion in Defendant's Products 1 to 9 and the interval
between the outer peripheral surfaces of the rolling are as in "photos 1 to 9" in theattachment to this judgment, and according to "photos 1 to 9" in the attachment of thisjudgment and evidences (Exhibits Otsu 140 to 149, 177 to 188 (including branchnumbers.)), it is found that the rolling portion of Defendant's Product is found to havea balloon shape in which an upper part is a substantially completely circular ball witha small radius of curvature and a lower part is a cylindrical ball with a large radius ofcurvature, and it is also found that a distance between the rolling portions at a position
where the interval between the outer peripheral surfaces of the substantially completely72

circular portion with a small radius of curvature is the smallest does not exceed 13 mm
in any case.
Therefore, none of Defendant's Products fulfills constituent feature D of Present
Invention 1.
(3) Summary
According to the above, none of the claims on the ground of infringement of Present
Patent Right 1 of Plaintiff of the first instance has grounds.
3. Whether Defendant's product belongs to the technical scope of the present invention
2 (issue (3))(1) Whether Defendant's product includes the "rotary body" of Present Invention 2(constituent features F, G, H, K, L)
A. According to the description in the Scope of Claims of Present Invention 2 foundin the aforementioned No. 2, 2 and the description in Present Description 2 found in the
aforementioned 1(2), the "rotary body" of Present Invention 2 is found to mean amember having a hole only on the base end side and rotatably supported on the distal
end side of the support shaft through the bearing member in a non-penetrating state
where the distal end of the support shaft is located inside thereof.
According to Reference Figures 1-1 to 3, 2-1 to 3 in the attachment to this judgment,
the evidences (Exhibits Otsu 1 to 7, 167, 168), and the entire import of the oral argument,
it is found that the rolling portion of Defendant's Product has a hole only on the baseend side and is rotatably supported on the distal end side of the support shaft throughthe bearing member in a non-penetrating state where the distal end of the support shaft
is located inside thereof and thus, it is found to fall under the "rotary body" in Present
Invention 2.
Therefore, Defendant's product includes the "rotary body" of Present Invention 2.
B. Defendant of the first instance alleges that the "rotary body" of Present Invention
2 is the one with the cap material 29 in the working example of Present Invention 2 as
an indispensable element, and a member not including the cap material 29 does not fallunder the "rotary body" in Present Invention 2 for the reasons that [i] in the structure ofPresent Invention 2, the cap material 29 is necessary for making the rotary body stable;[ii] in Other Lawsuit 2, Plaintiff of the first instance alleges that the cap material 29 isa constituent element of the "rotary body" of Present Invention 2 and the judgment of
the lawsuit also judged as such; and [iii] the Scope of Claims of Present Invention 2 isthat "rotatably supported on the distal end side of the support shaft".
However, the Scope of Claims of Present Invention 2 is as found in the73

aforementioned No. 2, 2, and the Scope of Claims does not have the description that thecap material 29 is a constituent element of the rotary body.
Present Invention 2 is that the "rotary body" is rotatably supported on the "distal
end side of the support shaft" (as described in D below, the side without the hole of therotary body in the support shaft), and is not such that the "rotary body" is supported bythe "distal end portion of the support shaft" and thus, inclusion of the member such as
the cap material 29 on the distal end portion of the support shaft of the rotary body is
not an indispensable structure.
Figure 4 in Present Description 2 illustrates the cap material 29, but the figure is
only one of the working examples of Present Invention 2, and Present Description 2
does not have the description indicating that Present Invention 2 is limited to thestructure of the figure (Exhibit Ko 4).
And in Present Invention 2, various structures can be considered as the structure forstably supporting the rotary body on the support shaft, and it cannot necessarily befound that the cap material 29 is needed.
Moreover, according to the evidence (Exhibit Otsu 165), in Other Lawsuit 2, when
the court judged the allegation of Defendant of the first instance (Plaintiff of thelawsuit) that the "rotary body" is rotatably supported only by the "flange portion" andthe "lock claw" in Present Invention 2, Present Invention 2 holds that the cap material
29 constitutes a part of the rotary body in the working example and also holds that"there is no description in the present description that the cap material 29 is anindispensable structure for preventing rattling." and thus, it does not hold that the capmaterial 29 is included in the "rotary body" as a constituent feature of Present Invention
2, and the allegation of the Plaintiff of the first instance (Defendant of the lawsuit) in
the lawsuit can be also understood to that effect.
According to the above, the allegation of the Defendant of the first instance cannot
be employed, and the cap material 29 cannot be considered to be an indispensable
structure of the "rotary body" of Present Invention 2.
C. Defendant of the first instance alleges that, in Defendant's Product, the rolling
portion, the cylindrical ring, and the cylindrical member integrally constitute the "rotarybody" of Present Invention 2, and since the cylindrical ring and the cylindrical member
have holes provided on both the base end side and the distal end side, Defendant's
product does not fulfill the "rotary body has a hole only on the base end side" of Present
Invention 2 (constituent feature G).
However, as described in the aforementioned A, in Defendant's Product, themember corresponding to the "rotary body" of Present Invention 2 is the rolling portion,74

and according to Reference Figures 1-1 to 3, 2-1 to 3 in the attachment to this judgment,
the evidences (Exhibits Otsu 1 to 7, 167, 168), and the entire import of the oral argument,
it is not found that the rolling portion has a hole provided both on the distal end sideand the base end side and thus, the aforementioned allegation of Plaintiff of th e first
instance has no grounds.
D. Defendant of the first instance alleges that the rolling portion of Defendant's productis not rotatably supported on the "distal end side of the support shaft" (constituent
feature F).
(a) The term "distal end side" is different from the distal end portion and should beunderstood to usually mean on a side of the distal end.

And as described in the

aforementioned No. 2, 2, in the Scope of Claims of Present Invention 2, the terms "distal
end side" and "base end side" are used as "the rotary body rotatably supported on the
distal end side of the support shaft", "the rotary body has a hole only on the base endside", "the lock claw has a slanted surface whose distance to a rotation center of therotary body in a bearing member becomes smaller as it goes toward the distal end side",and “the stepped portion is locked on the base end side of the lock claw" and thus, in
Present Invention 2, the "distal end side" and the "base end side" are used as words
forming a pair indicating a positional relationship, it is found that the "distal end side"means a direction of a portion where a hole is not opened in the rotary body, while the"base end side" indicates a direction where the hole is opened in the rotary body.
Therefore, it is reasonable to interpret that the "distal end side of the support shaft"of Present Invention 2 means the side where there is no hole in the rotary body in the
support shaft when the support shaft is inserted into the rotary body and does not meana distal end portion in the same direction of the support shaft.
(b) According to Reference Figures 1-1 to 3, 2-1 to 3 in the attachment of thisjudgment, the evidences (Exhibits Otsu 1 to 7, 167, 168), and the entire import of theoral argument, it is found that the rolling portion of Defendant's Product is rotatably
supported on the support shaft on the side where there is no hole in the rotary body inthe support shaft and thus, it can be considered that the rolling portion is rotatably
supported on the "distal end side of the support shaft" of Present Invention 2.
(2) Whether Defendant's Product includes the "lock claw capable of elastic
deformation" of Present Invention 2
A. According to the description in the Scope of Claims of Present Invention 2 foundin No. 2, 2 and the description in Present Description 2 found in the aforementioned
1(2), it is found that Present Invention 2 has the structure of the Scope of Claims inorder to achieve the object to provide a beauty instrument which can rotatably support75

the rotary body with respect to the support shaft, and from the aforementioned
description, it is found that the lock claw capable of elastic deformation is provided on
the bearing member so as to protrude because the rotary body is rotatably supported by
the support shaft through the bearing member by causing the stepped portion engaged
with the lock claw, and the shape of the lock claw is made to have a slanted surface
whose distance to the rotation center of the rotary body in the bearing member becomes
smaller as it goes toward the distal end side and is made elastically deformable because,
when the bearing member is inserted into the rotary body from the base end side of therotary body, the lock claw is elastically deformed to the direction of the rotation centerof the rotary body (inward direction) so as to ride over the stepped portion, and after itrides over the stepped portion, it returns to the original state and is engaged with the
stepped portion, whereby the bearing member is not removed from the rotary body.
And in the aforementioned structure of Present Invention 2, there is no need for the
shape itself of the lock claw to be deformed for the lock claw to ride over the stepped
portion, and the lock claw can ride over the stepped portion even by sinking to thecircumferential direction, and it cannot be interpreted that means for riding over the
stepped portion is limited to the structure that the shape itself of the lock claw isdeformed from wording of the "lock claw capable of elastic deformation" and thus, if
the lock claw sinks toward the circumferential direction when it rides over the stepped
portion and returns to the original state after it rides over the stepped portion, it should
be considered that the lock claw falls under the "lock claw capable of elastic
deformation" even if the shape itself of the lock claw is not deformed.
B. According to Reference Figures 1-1 to 3, 2-1 to 3 in the attachment of thisjudgment, the evidences (Exhibits Otsu 1 to 7, 167, 168), and the entire import of theoral argument, it is found that the lock claw of Defendant's Product sinks toward thecircumferential direction when it rides over the stepped portion and returns to theoriginal state after it rides over the stepped portion whether it is the one in Reference
Figures 1-1 to 3 or 2-1 to 3 in the attachment to this judgment and thus, it falls underthe "lock claw capable of elastic deformation" of Present Invention 2.
C. Allegation of Defendant of the first instance(a) Defendant of the first instance alleges that to be the "lock claw capable of elastic
deformation", the slanted surface portion needs to be elastically deformed with theexpression that "the lock claw capable of elastic deformation protrudes from the bearing
member" of constituent feature I as the reason.
However, even if constituent feature I specifies that the lock claw protrudes fromthe bearing member, there is no reason that the meaning of "capable of elastic
76

deformation" of the lock claw should be interpreted as alleged by Defendant of the first
instance.
(b) Defendant of the first instance alleges that, even if the slanted surface portion
itself is not elastically deformed, if a structure that the slanted surface portion sinks
toward the circumferential direction by elastic deformation of the rectangular portionis included, the Scope of Claims should be specified as "when the slanted surface ispressed, the portion having the rectangular shape is elastically deformed, and theslanted surface sinks toward the inner side in the radial direction and then restored,
whereby the stepped portion is locked on the base end side of the lock claw" and not
specified as the "lock claw capable of elastic deformation".
However, it should be considered that inclusion of the structure that, when the lockclaw rides over the stepped portion, it sinks toward the rotation center direction of therotary body and returns to the original state after it rides over the stepped portion canbe sufficiently recognized from the expression of the "lock claw capable of elastic
deformation" and thus, it cannot be found that the Scope of Claims should have theexpression pointed out by Defendant of the first instance.
(c) Defendant of the first instance alleges that the structure that "when the slanted
surface is pressed, whereby the portion having the rectangular shape is elastically
deformed, and the slanted surface sinks to the inner side in the radial direction and thenrestored, the stepped portion is locked on the base end side of the lock claw" without
elastic deformation of the lock claw is a publicly-known art, and the present invention
2 does not employ the structure but specifies that "the lock claw capable of elastic
deformation protrudes from the bearing member".
However, even if the aforementioned structure pointed out by Defendant of the first
instance is publicly known as the structure that the lock claw is engaged with the
stepped portion, it is only a structure of a part of Present Invention 2 and thus, it does
not make a reason why the aforementioned structure pointed out by Defendant of thefirst instance is not employed as the structure that the lock claw is engaged with the
stepped portion in Present Invention 2.
(d) Defendant of the first instance alleges that the judgment of Other Lawsuit 2 findsthat the lock claw and the rectangular portion have different structures, and the slanted
surface portion constituted separately from the rectangular portion is elastically
deformed.
However, according to the evidence (Exhibit Otsu 165), in the judgment of Other
Lawsuit 2, it is found that the court does not hold that the lock claw and the rectangularportion have different structures or that the slanted surface portion itself of the lock77

claw needs to be elastically deformed.
(e) Defendant of the first instance alleges that, if the "lock claw"" is interpreted tobe the whole combining the slanted surface portion and the rectangular portion, the"base end side of the lock claw" includes the portion connected to a peripheral surfaceof the rectangular portion and the cylindrical portion, and the art of being engaged withthe stepped portion on the portion side is also included, but such an art is irrational.
However, as described in the aforementioned A, the action in which, when the lockclaw rides over the stepped portion, it sinks toward the circumferential direction andreturns to the original state after it rides over the stepped portion is interpreted to be"capable of elastic deformation", and it is not that the "lock claw" is interpreted to be
the whole combining the slanted surface portion and the rectangular portion and thus,
the aforementioned allegation of Defendant of the first instance lacks premise.
(f) As described above, the allegation of Defendant of the first instance cannot be
employed.
(3) Whether Defendant's product includes the "stepped portion" of Present
Invention 2 (constituent feature L)
A. According to the description in the scope of claims of Present Invention 2 foundin the aforementioned No. 2, 2 and the description in Present Description 2 found in the
aforementioned 1(2), it is found that the "stepped portion" of Present Invention 2 is amember on the inner periphery of the rotary body, locked on the base end side of thelock claw, and located between the lock claw and the flange portion.
According to Reference Figures 1-1, 2-1 in the attachment to this judgment, theevidences (Exhibits Otsu 1 to 7, 167, 168), and the entire import of the oral argument,
in Defendant's Product, the fitting 2 (cylindrical ring) is found to be a member locatedon the inner periphery of the rotary body, locked on the base end side of the lock claw,
and located between the lock claw and the flange portion and thus, it falls under the"stepped portion" of Present Invention 2, and Defendant's product includes the "stepped
portion" of Present Invention 2.
B. Defendant of the first instance alleges that the "stepped portion" of Present
Invention 2 is limited to a stepped portion formed integrally with the cor e material of
the rotary body and does not include a stepped portion formed of a member separate
from the core material of the rotary body.
However, the Scope of Claims describes that "the rotary body ... has a stepped
portion", and even if the stepped portion is a member separate from the rotary body, if
it is a member having the function as the stepped portion, it should fall under the
aforementioned "stepped portion" in wording.
78

And even by examining the description

in Present Description 2, there is no description to the effect of limitation that the
stepped portion is the same member as the rotary body.
Therefore, it should be considered that the "stepped portion" of Present Invention 2
only needs to be the one located on the inner periphery of the rotary body and having afunction to be engaged with the lock claw and does not have to be formed integrallywith the rotary body.
(4) Summary
As described above, Defendant's Product has the "rotary body", the "lock claw
capable of elastic deformation", and the "stepped portion" of Present Invention 2 andfulfills the "rotary body supported ... on the distal end side of the support shaft"(constituent feature F), "the rotary body has a hole only on the base end side"(constituent feature G), and there is no issue on fulfillment other than them.

And since

the structure of Defendant's Product is as found in the aforementioned No. 2, 2,
Defendant's Product is found to belong to the technical scope of Present Invention 2.
4. Whether Present Patent 2 according to Present Invention 2 should be invalidated bytrial for patent invalidation (presence/absence of lack of inventive step with Exhibit
Otsu 45 document as primarily cited reference) (issue (4)A)(1) finding of Cited Invention
A. The Exhibit Otsu 45 document has the following description (Exhibit Otsu 45).
[0008] However, the conventional beautifying roller as described above has
nonconformities that a rotating state of the roller is not favorable, and stimulus to theskin is not sufficient, the structure is complicated, a contact state with the skin is notfavorable, and the like.
[0009] Thus, this device is to provide a magnet beautifying roller in which therotation of the roller is smooth, the contact state with the skin is favorable, and an effectby magnetism is also added.
[Means for Solving the Problems] [0010] From the above, the magnet beautifying
roller according to this device is characterized by being constituted by a handle body
portion and a roller portion rotatably held by the handle body portion, the handle body
portion is constituted by a grip portion with a predetermined length held by a user anda pair of roller holding portions extending from one end of the grip portion so as to be
inclined at a first angle from the grip portion to a length direction of the grip portionand each of them being opened at a second angle, and the roller portion is formed by amagnet and is rotatably held by each of the roller holding portions.
[0014] Moreover, an inserting/fitting hole into which the roller holding portion is79

inserted/fitted is formed in the roller portion, and a bearing is provided between it andthe roller holding portion so that the roller portion is made rotatable.

As this bearing,a rolling bearing such as a ball bearing and a roller bearing or a sliding bearing such asa plastic bearing, a spherical sliding bearing, a sintered oil retaining bearing, and thelike are desirable.
[0020] The handle body portion 2 is molded of a zinc alloy in this working example,
and as illustrated in Figures 2 and 3, it is constituted by the grip portion 3 held by theuser and the roller holding portion 4 inclined from this grip portion 3 to one side or toa front side, for example, at an angle α and extending so as to spread to both sides at anangle β and moreover, the roller holding portion 4 is constituted by a large-diameter
portion 4a branching from the grip portion 3 and extending, and a small -diameter
portion 4b formed integrally at a distal end thereof.
a bearing 8 described below is fixed.

To this small-diameter portion 4b,Moreover, the grip portion 3 is formed so as tobecome gradually larger from a branch portion of the roller holding portion 4 on one
end side toward the other end side so as to improve ease of holding.

Moreover, in thisworking example a section of the grip portion 3 is formed having an elliptic circularshape, but it may be circular.
[0023] Moreover, in a roller body portion 50 of the roller portion 5, a small-diameterhole 53 and a large-diameter hole 54 formed in an axial direction are consecutively
provided, the small-diameter portion 4b of the roller holding portion 4 is inserted into
the small-diameter hole 53, and the bearing 8 fixed to the small-diameter portion 4b isinserted into the large-diameter hole 54 and is fixed to an inner peripheral surface ofthe large-diameter hole 54.

As a result, the roller portion 5 is rotatably held withrespect to the roller holding portion 4.

80

[Figure 1][Figure 4]

B. According to the description in the Exhibit Otsu 45 document found in the
aforementioned A, the Exhibit Otsu 45 document is found to describe the following
invention (hereinafter, referred to as the "Exhibit Otsu 45 invention").
"A magnet beautifying roller including a small-diameter portion 4b which is a
support shaft for rotating a roller portion 5 and a roller portion 5 rotatably supported by
the small-diameter portion 4b in a roller support portion 4 provided on an upper part ofa grip portion 3 and configured to give an esthetic action to a body by the roller portion
5, characterized in that the roller portion 5 has a hole only on a base end side, the roller81portion 5 is supported by the small-diameter portion 4b through a bearing 8 in a nonpenetrating state where a distal end of the small-diameter portion 4b is located insidethereof, the bearing 8 is retained by the small-diameter portion 4b, the roller portion 5
retains the bearing 8 on an inner periphery, the bearing 8 has a cylindrical out er
peripheral surface, and an inner periphery of a large-diameter hole of the roller portion
5 has a cylindrical shape"
On the other hand, in the structure alleged by Defendant of the first instance as theinvention described in the Exhibit Otsu 45 document, the structure related to the shapesof the outer peripheral surface of the bearing 8 and the inner periphery of the large diameter hole of the roller portion 5 is not specified, but since the structure corresponds
to the constituent features I, J, K, L of Present Invention 2, the invention described in
the Exhibit Otsu 45 document should be found by also specifying the structure.
(2) Comparison
A. When Present Invention 2 and Exhibit Otsu 45 invention are compared, there arefound to be the following common feature and different features.
(a) Common Feature"A beauty instrument including a support shaft provided on a handle and a rotarybody rotatably supported by the support shaft and configured to give an esthetic action
to a body by the rotary body, in which the rotary body has a hole only on a base end
side, the rotary body is supported by the support shaft through a bearing member in a
non-penetrating state where a distal end of the support shaft is located inside thereof,
the bearing member is retained by the support shaft, and the rotary body retains thebearing member on an inner periphery"(B) Different Features
a. Different Feature 1 (undisputable)
In Present Invention 2, the support shaft is retained by/fixed to the base end of thehandle, while in the Exhibit Otsu 45 invention, the small-diameter portion 4b is
integrally formed with the grip portion 3 and is not retained or fixed with respect to thegrip portion 3.
b. Different Feature 2 (undisputable)
In Present Invention 2, the rotary body is rotatably supported on the distal end sideof the support shaft, while in the Exhibit Otsu 45 invention, the roller portion 5 isrotatably supported by a portion other than the distal end side of the small -diameter
portion 4b.
c. Different Feature 3'
In Present Invention 2, the bearing member is retained by the support shaft at the82distal end on a side opposite to the hole of the rotary body, while in the Exhibit Otsu
45 invention, presence/absence of specific retaining of the bearing 8 is not clear.
d. Different Feature [iv]
In Present Invention 2, the lock claw capable of elastic deformation protrudes fromthe bearing member, the bearing member has the flange portion on the base end side ofthe lock claw, the lock claw has the slanted surface whose distance to the rotation centerof the rotary body in the bearing member becomes smaller as it goes toward the distal
end side, the rotary body has the stepped portion on the inner periphery, and the stepped
portion is engaged with the lock claw between the lock claw and the flange portion,
while in the Exhibit Otsu 45 invention, the outer peripheral surface of the bearing 8 andthe inner periphery of the large-diameter hole of the roller portion 5 are both cylindrical.
B. Defendant of the first instance alleges on Different Feature [iv] that it should be
divided into two different features; that is, a Different Feature 4 which is a difference
related to the structure of the bearing member and a Different Feature 5 which i s adifference related to the structure of the rotary body, and Different Feature 4 could havebeen easily conceived of by applying the Exhibit Otsu 46 art and the Exhibit Otsu 47
art, and Different Feature 5 by applying the Exhibit Otsu 44 art and the Exhibit Otsu 46
art or the Exhibit Otsu 47 art.
However, Different Feature [iv] relates to the structure of an integral art, and it
should not be reasonable in finding by dividing it into the different feature related tothe structure of the bearing member and the difference feature related to the structureof the rotary body.

Thus, with regard to Different Feature [iv], whether or not it could

have been easily conceived of by applying the art described in the Exhibit Otsu 46
document, the art described in the Exhibit Otsu 47 document, and the art described in
the Exhibit Otsu 44 document will be examined.
(3) How easily Different Feature [iv] could have been conceived of
A. Description in documents(a) Exhibit Otsu 46 document
The Exhibit Otsu 46 document has the following description, and according to thedescription, it is found that the Exhibit Otsu 46 document describes the Exhibit Otsu 46
art (a sliding bearing with a flange from which an elastic lock piece capable of elastic
deformation protrudes and having a flange on the base end side of the elastic lock piece,
and the elastic lock piece has a slanted surface whose distance to the rotation center
becomes smaller as it goes toward the distal end side (Exhibit Otsu 46)).
[0001] [Technical Field] The present invention relates to a sliding bearing with aflange made of a resin optimal for support of a shaft used in a paper feeding mechanism
83such as a facsimile.
[0002] [Conventional Art] With regard to a shaft of a feeding roller used in a paper
feeding mechanism of a facsimile, since a rotation speed is not so high and a load is not
so large and moreover, a simple structure in which only a circular bearing insertion holeis provided in a commercial support plate made of a steel plate is o ften employed for amounting portion of the bearing, a sliding bearing with a flange made of a resin is
employed in many cases as a bearing for supporting the shaft.

Figures 5 to 7 illustrate

the conventional sliding bearing with a flange made of a resin used in the paper feedingmechanism of a facsimile.
[0007] [Problems to be Solved by the Invention] However, in the case of the sliding
bearing 1 with a flange illustrated in Figure 5, a ring 4 for retaining which is a separate
body is needed for fixation to a support plate 2, which incurs an increase in the numberof constituent components in the paper feeding mechanism and an increase in thenumber of assembling processes, which is problematic.
[0008] Moreover, in the case of sliding bearings 5, 7 with flanges illustrated in
Figures 6 and 7, the ring 4 for retaining is not needed, and the number of constituent
components or the number of assembling processes can be reduced.

However, in thecase of the structure illustrated in Figure 6, since a cylindrical portion 5a is pressed intoa bearing insertion hole 2a, it causes a problem that a large operation force is alsoneeded in assembling work.

Moreover, in the case of the structure illustrated in Figure

7, too, since the cylindrical portion 7a needs to be fitted in the bearing insertion hole 2a
in a diameter-reduced state, a large operation force is needed for the assembling work,
which is a problem and furthermore, an inner diameter of the cylindrical portion 7a caneasily fluctuate due to a separation 7d, and it also incurs a problem that obtaining higher
fitting accuracy with the shaft is difficult.
[0009] Moreover, in the case of the structure illustrated in Figure 7, when a plate
thickness of the support plate 2 is changed, a dimension between a flange 7b and alocking flange 7c is changed and needs to be newly designed, and the plate thicknessof the support plate 2 which can be mounted is limited, which is also problematic.
[0010] The present invention was made in view of the aforementioned
circumstances and has an object to provide a sliding bearing with a flange which does
not need a ring for retaining which is a separate body for fixation to the support plate,can reduce the number of constituent components or the number of assemblingprocesses, and moreover, does not need a large operation force during mounting, andcan promote reduction of a cost of the paper feeding mechanism and the like andimprovement of assembling performance and moreover, to provide a sliding bearing
84with a flange for which a plate thickness of a support plate which can be mounted is not
limited and which can be generally used for multiple types of paper feeding mechanisms
and the like with different plate thicknesses of the support plate.
[0011] [Means for Solving the Problems] A sliding bearing with a flange made of aresin according to the present invention in order to achieve the aforementioned object
includes a cylinder portion fitted in a bearing insertion hole penetrated/formed in a
support plate of a device, and a flange provided by extending outward in a radial
direction from an outer periphery of a base end portion of the cylinder portion andperforming positioning of the cylinder portion in an axial direction by contact with thesupport plate and rotatably supports the shaft inserted into the cylinder portion, and ischaracterized in that, on an outer peripheral surface of the cylinder portion, an elastic
lock piece which is elastically displaced inward of the cylinder portion when being
inserted through the bearing insertion hole and when having passed through the bearing
insertion hole, is elastically displaced outward of the cylinder portion and brought into
contact with a peripheral edge of the bearing insertion hole of the support plate andprevents removal of the cylinder portion from the bearing insertion hole and is
integrally formed.
[0016] [Mode for Carrying Out the Invention] Hereinafter, a preferred embodimentof the sliding bearing with a flange made of a resin according to the present inv ention
will be described in detail on the basis of the drawings.

Figure 1 illustrates anembodiment of the sliding bearing with a flange made of a resin according to the present
invention, and Figure 1 is a perspective view of the sliding bearing with a flange madeof a resin of the embodiment of the present invention, and Figure 2 is a vertical sectionalview of the sliding bearing with a flange made of a resin illustrated in Figure 1.
[0017] The sliding bearing 11 with a flange made of a resin of this embodiment isconstituted by integrally molding a cylindrical cylinder portion 11a fitted in a circularbearing insertion hole 12a penetrated/formed in a support plate 12 of a paper feedingmechanism of a facsimile device, a flange 11b provided by extending outward in aradial direction from an outer periphery of a base end portion of the cylinder portion
11a and performing positioning in an axial direction of the cylinder portion 11a bycontact with the support plate 12, and an elastic lock piece 11c protruding to the outer
periphery of the cylinder portion 11a by using a synthetic resin and which rotatably
supports the shaft inserted into the cylinder portion 11a.

The support plate 12 isformed by press molding of a commercial steel plate material conforming to the JIS
standard.
[0018] The elastic lock piece 11c is elastically displaced inward of the cylinder
85

portion 11a when being inserted through the bearing insertion hole 12a and when having
passed through the bearing insertion hole 12a, is displaced outward of the cylinder
portion 11a by an elastic restoring force, brings a distal end into contact with aperipheral edge of the bearing insertion hole 12a of the support plate 12, and prevents
removal of the cylinder portion 11a from the bearing insertion hole 12a.
[0019] In the sliding bearing 11 with a flange described above, when the cylinder
portion 11a of the bearing is inserted into the bearing insertion hole 12a of the support
plate 12, when the elastic lock piece integrally formed on the cylinder portion 11a ofthe bearing has passed the bearing insertion hole 12a, the elastic lock piece protrudes
outward of the cylinder portion 11a by the elastic restoring force, locks the peripheraledge of the bearing insertion hole 12a of the support plate 12, and performs retention.
Therefore, a ring for retaining which is a separate body is not needed for fixation of the
bearing to the support plate 12, whereby the number of constituent components or thenumber of assembling processes can be reduced.

Moreover, the elastic lock piece is asmall article formed on a part of a peripheral wall of the cylinder portion 11a and does
not require a large force for the elastic deformation.

Thus, a large operation force is

not needed during mounting, a cost of a paper feeding mechanism and the like can be
reduced, and assembling performance can be improved.
[Figure 1][Figure 2]86

[Figure 5][Figure 6][Figure 7](b) Exhibit Otsu 47 document
The Exhibit Otsu 47 document has the following description, and from thedescription, it is found that the Exhibit Otsu 47 document describes the Exhibit Otsu
47-1 art (an inclined surface portion capable of elastic deformation protrudes from abearing, the bearing has a flange portion on a base end side of the inclined surface
portion, and the inclined surface portion has a slanted surface whose distance to arotation center becomes smaller as it goes toward a distal end side), the Exhibit 47 -2
art (a tongue piece capable of elastic deformation protrudes from the bearing, thebearing has a flange portion on a base end side of the tongue piece portion, and the
tongue piece portion has a slanted surface whose distance to a rotation center in the
bearing becomes smaller as it goes toward the distal end side), and the Exhibit 47-3 art(two tongue piece portions capable of elastic deformation protrude from the bearing,87

the bearing has a flange portion on a base end side of the tongue piece portion, and the
tongue piece portion has a slanted surface whose distance to the rotation center in the
bearing becomes smaller as it goes toward the distal end side) (Exhibit Otsu 47).
a. [Field of Industrial Application]
This device relates to a fixation structure of a bearing for fixing a bearing made ofa synthetic resin to a mounting member made of a thin plate such as a metal or asynthetic resin (second column, line 14 to third column, line 2).
b. [Conventional Art]
Conventionally, when a bearing made of a synthetic resin is to be fixed to amounting member made of a thin plate, there is employed such a method that a flange
portion is formed on an outer peripheral surface of the bearing, and the fixation is
performed by means such as a set screw on the flange portion or a method that thebearing is pressed-into/fixed to the mounting member.
However, in the former fixation method, a hole for the set screw needs to be worked
in the mounting member and the flange portion of the bearing, and the fixing work has
extremely poor efficiency, which is a defect, and in addition, there is a problem that thesec screw gets loose by vibration or the like, and the bearing is removed from themounting member.
Moreover, in the latter fixation method, a difference between a diameter of the holeformed in the mounting member and an outer diameter of the bearing; that is, a so called interference, influences an inner peripheral surface of the bearing, which incurs
a problem that a variation is caused in the inner diameter of the inner peripheral surface.
In order to solve such problems, a fixation structure of the bearing illustrated in
Figure 9 is proposed.
This fixation structure is constituted by a bearing 3 including a cylinder portion 30,
a flange portion 31 provided by extending outward in the radial direction on one of endportion outer peripheral surfaces of the cylinder portion 30, an inclined surface portion
32 provided on the outer peripheral surface of the cylinder portion 30 by extending toa vicinity of a rear surface of the flange portion 31 by gradually expanding a diameterfrom a side opposite to the flange portion 31 toward the rear surface side of the flange
portion 31, and an annular groove 33 formed between the rear surface of the flange
portion 31 and an end surface of the inclined surface portion 32, and a mounting
member 4 made of a thin plate including a circular hole 40, the bearing 3 is inserted
into the circular hole 40 of the mounting member 4 from the end portion on the side
opposite to the flange portion 31 and pressed until the rear surface of the flange portion
31 is brought into contact with the mounting member 4 while elastically deforming the88

outer peripheral surface inclined surface portion 32 of the bearing 3, and has the annulargroove 33 of the bearing 3 fitted with the mounting member 4 so as to be fixed to themounting member 4. (the above, third column, lines 3 to 30)
c. [Problems to be Solved by the Device]
However, with the fixation structure described above, retaining means of the
bearing 3 against the mounting member 4 is realized by a fitting force between theannular groove 33 of the bearing 3 and the mounting member 4 fitted with the annulargroove 33 and thus, there is a concern that it is rotated between the circular hole 40 of
the mounting member 4 and the annular groove 33 of the bearing 3 by a change in thefitting force, which would result in abrasion on the annular groove 33, and rattling
occurs between the bearing 3 and the mounting member 4 at an early stage, which areproblematic.
Moreover, this fixation structure is limited to the mounting member having the same
thickness (plate thickness) as a width of the annular groove formed on the outer
peripheral surface of the bearing and cannot handle the mounting member with adifferent thickness (plate thickness), and there is also a problem of economy that thebearing should be manufactured for each plate thickness of the mounting member.
In view of the aforementioned problems, this device has an object to obtain afixation structure of a bearing which has good efficiency of a fixing work of the bearing
to the mounting member, includes retention of the bearing, and can manage themounting members with different plate thicknesses with one bearing. (the above, thirdcolumn, line 36 to fourth column, line 4)
d. [Means for Solving the Problems]
In order to achieve the aforementioned object, the device employs the following
structure.
That is, it is a fixation structure of a bearing for fixing a bearing made of a synthetic
resin to a hole formed in a mounting member made of a thin plate, configured such that,on the mounting member in which a circular hole and at least one notch groovecontinuing to the circular hole are formed, a bearing including a cylinder portion, aflange portion provided on an outer peripheral surface of the cylinder portion byextending outward in a radial direction, at least one tongue piece portion provided on
an outer peripheral surface of the cylinder portion by extending in a diagonal direction
to the flange portion side from the outer peripheral surface, an engagement piece portion
provided on an end portion of the tongue piece portion by extending toward the flange
portion side, and a plurality of stepped portions formed on the engagement piece portion
so that a gap from the flange portion rear surface is gradually reduced is fixed by89

causing the engagement piece portion to be engaged with the notch groove and by
sandwiching the mounting member in the gap between the flange portion rear surface
and a stepped portion of the engagement piece portion.
...
Reference numeral 1 denotes the bearing made of a synthetic resin, and the bearing
1 includes the cylinder portion 10, the flange portion 11 provided on one of end -portion
outer peripheral surfaces of the cylinder portion 10 by extending outward in the radial
direction, the one tongue piece portion 12 provided on the outer peripheral surface ofthe cylinder portion 10 by extending in the diagonal direction to the flange portion 11
side from the outer peripheral surface, the engagement piece portion 13 provided on theend portion of the tongue piece portion 12 by extending toward the flange portion 11
side, and a plurality of stepped portions 14 (three in this working example) formed on
the engagement piece portion 13 so that gaps t 1, t2, and t3 from the rear surface of theflange portion 11 are gradually reduced.
Reference numeral 2 denotes the mounting member made of a thin plate such as ametal or a synthetic resin, and the circular hole 20 and the notch groove 22 having abottom portion 21 continuing to the circular hole 20 are formed in the mounting member
2.
The circular hole 20 is drilled with substantially the same diameter as an outer
diameter of the bearing 1, and a width W of the notch groove 22 is formed substantiallythe same as a width w of the engagement piece portion 13 formed on the outer peripheral
surface of the bearing 1.
Moreover, a depth D of the notch groove 22 is adjusted as appropriate depending
on a thickness T of the mounting member 2.
...
Figure 6 and Figure 7 illustrate a second working example of this device.
In this working example, the circular hole 20 and the notch groove 22 continuing to
the circular hole 20; that is, two elements, are formed by facing each other on themounting member 2, and two pieces of the tongue piece portions 12 each including theengagement piece portion 13 are formed on an end portion of the outer peripheral
surface of the cylinder portion 10 in the bearing 1 by facing each other. (the above,
fourth column, line 5 to fifth column, line 38)90

[Figure 1][Figure 2][Figure 6]91

[Figure 9](C) Exhibit Otsu 44 document
The Exhibit Otsu 44 document has the following description.
[0001] [Industrial Application Field] This device relates to a beautifying massager
having a massaging member made of a rubber-state elastic member, having a large
number of recesses formed on a surface of a cylindrical shape, and rotationally moved
along the surface of the skin.
[0006] [Working Example] Hereinafter, a working example of this device will be
described by referring to the drawings.
In one working example of this device illustrated in the figures, reference numeral
10 denotes a handle, and one shaft 12 so as to extend to both sides is fixed to a distal
end portion.

A thread 13 is made on both end portions of this shaft.

Reference

numeral 15 denotes a cylindrical body rotatably fitted from the both end portions of thisshaft, respectively, and is retained by screwing a nut 16 with the screw portion 13.
Reference numeral 18 denotes two massaging members made of a material having
rubber-state elasticity each having a substantially cylindrical surface, fitted in outersides of the cylindrical body 15 on the two sides, respectively, and engaged with thecylindrical stepped portion 17.

Reference numeral 20 denotes a large number ofrecesses formed on the surface of this massaging member, and an annular projecting
portion 22 projected slightly outward by approximately 0.5 mm or the like, for example,
is formed on a periphery of each of these recesses.

92

[Figure 1]

B. Examination(a) a. According to the description in the Exhibit Otsu 45 document found in the
aforementioned (1), the Exhibit Otsu 45 invention is an art with the contents that theroller portion 5 is rotatably held in the roller holding portion 4, to make a rotating stateof the roller portion 5 favorable is one of the problems, and it is found that the roller
portion 5 is made rotatable by the structure that the roller portion 5 is supported by thesmall-diameter portion 4b through the bearing 8, and according to the descriptions in
the Exhibit Otsu 46 document and the Exhibit Otsu 47 document found in the
aforementioned A, the Exhibit Otsu 46 art and the Exhibit Otsu 47 art are arts that asliding bearing with a flange or a bearing is engaged with a support plate or a mounting
member, but even if the support plate or the mounting member corresponds to the roller
portion 5, and the sliding bearing with a flange or the bearing corresponds to the bearing
8, the support plate or the mounting member is fixed, and it is found that the shaft on
the side of the sliding bearing with a flange or the bearing is rotated and thus, the Exhibit
Otsu 45 invention should be considered to have a technical idea greatly differ ent fromthose of the Exhibit Otsu 46 art and the Exhibit Otsu 47 art.
Moreover, according to the Exhibit Otsu 45 document, the Exhibit Otsu 45
invention is an invention related to the beautifying massager, and it is found that a
conventional beautifying roller has problems that the rotating state of the roller is notfavorable and stimulus to the skin is not sufficient, the structure is complicated, the93contact state with the skin is not favorable and the like and thus, this was invented inorder to solve the problems, but according to the description in the Exhibit Otsu 46
document, the Exhibit Otsu 46 art is an art related to a bearing for supporting a shaft
used in a paper feeding mechanism such as a facsimile and the like, and the ring 4 which
is a separate body for retaining was needed in the conventional art, which incurs anincrease in the number of constituent components and the number of assemblingprocesses, and if the ring for retaining is made unnecessary, a large operation force isrequired for the assembling work or fitting accuracy with the shaft cannot be easily
made higher and the like, which are problems, and it is found that the art is for solving
these problems, and according to the description in the Exhibit Otsu 47 document, theExhibit Otsu 47 art is an art related to the fixation structure of the bearing for fixing thebearing to the mounting member made of a thin plate, and in the conventional art, there
was employed such a method that the flange portion is formed on the outer peripher alsurface of the bearing, and fixation is realized by means such as a set screw or the likein the flange portion or such a method that the bearing is pressed-into/fixed to themounting member, but these arts have problems that efficiency of the fixing wo rk ispoor, the inner diameter of the inner peripheral surface of the bearing fluctuates, andthe like, and even the art for solving these problems has problems that the bearing is
rotated and abrasion occurs in the contact portion of the bearing with the mounting
member and thus, it is found that the art is for solving these problems.

As describedabove, the Exhibit Otsu 45 invention has technical fields and problems different fromthose of the Exhibit Otsu 46 art and the Exhibit Otsu 47 art.
Therefore, the motivation to apply the Exhibit Otsu 46 art and the Exhibit Otsu 47
art to the Exhibit Otsu 45 invention is not found.
b. In response to that, Defendant of the first instance alleges that the bearing is
widely known as a general-purpose mechanism, not limited to the beauty instrument(Exhibits Otsu 56 to 59) and thus, since the function of the Exhibit Otsu 45 invention
is the same as those of the Exhibit Otsu 46 art and the Exhibit Otsu 47 art, differencesin terms of the problems, objects, and applications do not constitute reasons for denying
the motivation.

However, as described in the aforementioned a, the technical idea isgreatly different between the two and moreover, by considering that the technical fields
and problems are also different, even if the function as the bearing is the same, themotivation to apply the Exhibit Otsu 46 art or the Exhibit Otsu 47 art to the Exhibit
Otsu 45 invention should not be found.
(b) If the Exhibit Otsu 46 art or the Exhibit Otsu 47 art is applied to the Ex hibit
Otsu 45 invention, and the bearing 8 of the Exhibit Otsu 45 invention is replaced with94

the sliding bearing with a flange of the Exhibit Otsu 46 art or the bearing of the Exhibit
Otsu 47 art, it does not reach Present Invention 2, since there is no st epped portion in
the roller portion 5 of the Exhibit Otsu 45 invention.
In this point, Defendant of the first instance alleges that the Exhibit Otsu 44
document describes the art corresponding to the stepped portion of Present Invention 2
and moreover, by applying the art, it reaches Present Invention 2, but after the Exhibit
Otsu 46 art or the Exhibit Otsu 47 art is applied to the Exhibit Otsu 45 invention, tofurther apply the art described in the Exhibit Otsu 44 document is not found easy for a
person ordinarily skilled in the art.
(4) Summary
As described above, it is not found that Present Invention 2 lacks inventive stepwith the Exhibit Otsu 45 document as the primarily cited reference.
5. Whether Present Patent 2 according to Present Invention 2 should be invalidated
through a trial for patent invalidation (presence/absence of lack of inventive step with
the Exhibit Otsu 135 document as the primarily cited reference) (issue (4)B)(1) Finding of Cited Invention
A. The Exhibit Otsu 135 document has the following description (Exhibit Otsu 135).
[Scope of Claims](1) A roller for bare skin characterized in that a roller made of an elastic material on
which a plurality of suction recess portions are disposed is constituted by being
mounted on a grip portion, capable of rotation and attachment/detachment.
(5) A roller for bare skin characterized in that a roller made of an elastic material on
which a plurality of suction recess portions are disposed is mounted on a grip portion
capable of rotation and attachment/detachment.
[Detailed Description of the Invention][Industrial Application Field] The present invention relates to a roller for bare skin used
for cleansing, massaging, and the like of the bare skin.
[Problems to be Solved by the invention] Therefore, in order to respond to a demandfor bare skin beauty currently depending on functions and effects of cosmetics, anobject is to provide a roller for bare skin as a tool which promot es, in addition to amassaging effect, active cleansing and activating actions to the bare skin with use of
the cosmetics at the same time and can obtain a wrinkle smoothing effect and the likeand moreover, a sense of use is favorable in the invention of this application.
[Means for Solving the Problems] The roller for bare skin of the present invention ismade of an invention characterized in that a roller made of an elastic material on which95a plurality of suction recess portions are disposed is rotatably mounted on a grip portionand moreover, an invention characterized in that a mounting structure of the roller insuch structure is constituted capable of rotation and attachment/detachment is a second
invention thereof, and furthermore, in addition to a third invention characterized bybeing constituted by a pair of left and right rollers on each of which a plurality of suction
recess portions are disposed on an outer peripheral surface of a roller body made ofsilicone such as dimethyl polysiloxane and others and a grip portion including a pair ofleft and right rotation shafts rotatably supporting the pair of left and right rollers, and afourth invention characterized in that the pair of rollers in the structure of such third
invention is supported capable of rotation and attachment/detachment with respect tothe pair of left and right rotation shafts of the grip portion, which form the roller forbare skin of the present invention.
[Operation] The plurality of suction recess portions included in the structure of theroller for bare skin of this application invention are sucked to the bare skin with rotationof the roller including such suction recess portions, cause old keratin which was hard
to remove and dirt to be floated, a cleansing action of the bare skin is exerted, and at
the same time, appropriate stimulus is given to the bare skin so as to promote blood
circulation, allows nutrition and energy in the blood to penetrate into the bare skin, andexerts metabolism.
[Working Example]...
(First Working Example)...
In Figure 1, reference numeral 1 denotes a roller formed by disposing a plurality ofsemi-spherical suction recess portions 3 on an outer peripheral surface of an elliptic
spherical roller body 2, and this roller 1 is attached to a rotation shaft 11 of a grip
portion 10, capable of rotation and attachment/detachment.
Moreover, as illustrated in Figure 2, the roller body 2 of the roller 1 is integrally
formed of dimethyl polysiloxane, which is silicone, by opening an insertion port 4 fo r
the rotation shaft 11 at a center part on a side portion and by providing an attachment
hole 5 for the rotation shaft 11, communicating with the insertion port 4 at a center partof the roller body 2.
And an annular engagement hole 6 engaged with a flange 12 of the rotation shaft 11
is provided in the attachment hole 5 for the rotation shaft 11 in communication
therewith.
Moreover, the grip portion 10 is constituted by projecting a support fitting 15 on a96

distal end portion 14 of the flat-plate shaped grip 13 and by providing the rotation shaft
11 on the support fitting 15.
And the rotation shaft 11 is formed by mounting the support shaft 16 on the support
fitting 15 as illustrated in Figure 3, and a hollow-state rotation rod 17 is rotatably
attached to this support shaft 16.
Moreover, the support shaft 16 is formed integrally by drilling an annularengagement groove 20 in a distal end portion 19 of a shaft body 18 having an outer
diameter smaller than an inner diameter of the rotation rod 17, and the rotation rod 17
is formed by providing a hollow-state rod body 21 having an inner diameter larger thanthe outer diameter of the support shaft 16, and three pieces of elastic pieces 22 bydrilling three long grooves 23 (only one of the long grooves is illustrated in Figure 3)
at positions dividing an outer peripheral direction into three equal parts toward a rearend portion side where the flange 12 is projected on a distal end portion side of this rod
body 21 and further by projecting an engagement projection 24 engaged with theengagement groove 20 of the support shaft 16 on a distal end inner periphery of eachof the elastic pieces 22.
It is to be noted that the inner diameter between the projected portions of theengagement projection 24 is smaller than the outer diameter of the support shaft 16 andslightly larger than the outer diameter of the engagement groove 20.
Therefore, the rotation rod 17 is attached in the support shaft 16 through the distal
end portion 19 of the support shaft 16 through the opening of the rod body 21 on theflange 12 side and causes the engagement projection 24 of each of the elastic pieces 22
to ride over the distal end portion 19 of the support shaft 16 by using elasticity of theelastic piece 22 and then, to be engaged with the annular engagement groove 20 of the
support shaft 16 so as to be rotatably attached to the support shaft 16, andremoval/detachment thereof is prevented by engagement of the engagement projection
24 of each of the elastic pieces 22 with the engagement groove 20, whereby the rotation
shaft 11 is constituted by the aforementioned structure.
By attaching the rotation shaft 11 of the grip portion 10 made of the aforementioned
structure into the attachment hole 5 through the insertion port 4 of the roller 1 and by
engaging the flange 12 in the engagement hole 6 of the attachment hole 5, the roller 1
is attached to the grip portion 10, and is capable of rotation and attachment/detachment
so as to constitute the roller 30 for bare skin.
It is to be noted that the inner diameter of the attachment hole 5 of the roller 1 isformed slightly smaller than the outer diameter of the rotation rod 17 of the rotation
shaft 11, but the outer diameter of the flange 12 is larger than the inner diameter of the97attachment hole 5, and at the attachment of the rotation rod 17, the engagement of theflange 12 with the engagement hole 6 can be performed by forcedly expanding theinsertion port 4 by using the elasticity of the roller 1.
Moreover, in the aforementioned structure of the roller 30 for bare skin, the roller
1 is formed integrally of dimethyl siloxane but can be also formed integrally of silicone
other than dimethyl siloxane; that is, silicone obtained by partially co -polymerizing
diphenyl siloxane or by co-polymerizing vinyl methyl siloxane and the like or formed
integrally of an elastic material such as other synthetic resins, synthetic rubber, and thelike having elasticity.
Moreover, with regard to a molding material of the support shaft 16 and the rotationrod 17, they may be molded integrally by a synthetic resin such as Teflon resin, hardpolyethylene and the like, respectively.
With regard to the shape of the roller 1, it can be formed with a columnar shape, a
conical shape, or shapes similar to them and the like other than the illustrated elliptic
spherical shape, and with regard to the shape of the suction recess portion 3 disposedon the outer peripheral surface, it can be worked by forming it of an arbitrary shaped
recess portion such as a semi-elliptic spherical shape and a recess portion having ashape similar to them or a shape with a polygonal section and the like other than theillustrated semi-spherical shape.
Moreover, with regard to the structure of the grip portion 10, it is not limited to theaforementioned structure of the rotation shaft 11 but can be worked by employing otherpublicly-known structures sufficient to be able to rotatably support the roller 1, and thegrip 13 can be worked with structures, in addition to provision of an engagement recess
portion 26 for fingers at a center part of the distal end portion 14 as illustrated in Figure
1, having the shape of the grip 13 with a columnar body having an elliptic section as
illustrated in Figures 5a and 5b or a circular rod body whose diameter is thinned as itreaches the distal end portion 14 as illustrated in Figures 6a and 6b.
Moreover, with regard to the structure for supporting the roller 1 with respect to thegrip portion 10, capable of rotation and attachment/detachment, it is not limited to theillustrated structure and moreover, it can be worked also by rotatably supporting theroller 1 in order to obtain desired function and effect.
That is, instead of the structure in which the engagement hole 6 is provided in theattachment hole 5 of the roller 1, and the flange 12 is projected on the rotation shaft 11,
there can be cited such structures that the flange 12 of the rotation shaft 11 is notprojected, the inner diameter of the attachment hole 5 of the roller 1 is madesubstantially the same as the outer diameter of the rotation shaft 11, and the rotation98

shaft 11 is forcedly attached into the attachment hole 5 by using an elastic actio n of theroller 1 so as to attach the roller 1 to the rotation shaft 11, or such that the roller 1 is
fixed to the rotation shaft 11 by fixing means such as an adhesive or the like or moreover,such that the roller 1 is mounted on the rotation shaft 11 through other mounting means
and the like.
When the roller 30 for bare skin made of the aforementioned structure is to be used,
the grip 13 is gripped by the hand and then, the roller 1 is pressed onto the bare skinportion of the body or the face surface, for example, while being rotated in use.
Then, when the outer peripheral surface on which the suction recess portions 3 aredisposed is pressed onto the bare skin while rotating the roller 1, each of the suction
recess portions 3 is suctioned to the bare skin and rotated, and when each of the suction
recess portions 3 is suctioned to the bare skin, sebum and dirt clogging pores in the bareskin are pulled out or old keratin and dirt between keratin bodies are floated, and dirt
adhering to the skin surface is floated so as to be removed easily, and by applying lotion
to the bare skin prior to use of the roller 1, cleansing can be performed more effectively,
adhesion of the lotion to the bare skin is improved and moisture retaining property isensured, and massaging effect can be improved.
Moreover, by performing the use while taking a bath or the like, such effects are
obtained that blood vessels are stimulated, metabolism is activated, blood circulation is
improved, nutrition is given to skin cells, an action of sebaceous glands is made smoothso that a state of the sebaceous glands is controlled, and the like and moreover, thewrinkle smoothing effect and the like can be obtained by massaging the bare skin in
addition to a simple massaging effect.
Particularly, when the roller l is formed of dimethyl polysiloxane or other silicones,
it is high in chemical resistance, water resistance, and durability, and feeling to the bareskin is extremely good, and the aforementioned function and effect can be obt ained
effectively as compared with other elastic materials.
...
(Second Working Example)...
A roller 40 for bare skin of the second working example has the structure as
illustrated in Figures 7 and 8 such that a pair of left and right rollers 101 an d 102 aresupported capable of rotation and attachment/detachment with respect to the grip
portion 100, respectively, and the structure such that the pair of left and right rotation
shafts 110 and 111 are provided through a connection portion 151 with resp ect to the
support fitting 150 of the grip portion 100, and the shapes of the roller bodies 103 and99

104 of the pair of left and right rollers 101 and 102 are formed conically, respectively,
which are different from that of the first working example.
Then, the support fitting 150 of the grip portion 100 is made by projecting one pinon the distal end portion 14 of the grip 13, the connection portion 151 is made of a discshaped plate body 15 and is formed integrally by projecting support shafts 160 and 16 1
constituting the pair of left and right rotation shafts 110 and 111 on both the left andright side portions of this plate body 152 and moreover, it is constituted by integrally
fixing the plate body 152 of the connection portion 151 to the distal end po rtion of the
support fitting 150.
Moreover, the structure such that a plurality of semi-spherical suction recess
portions 3 are disposed on the outer peripheral surfaces of the roller bodies 103 and 104of the pair of left and right rollers 101 and 102, the insertion port 4 of the rotation shafts
110 and 111 is opened at the center part on the large-diameter portion side of the roller
bodies 103 and 104, and the attachment hole 5 of the rotation shafts 110 and 111,
communicating with the insertion port 4 is provided at the center part of the roller
bodies 103 and 104 and integrally formed of dimethyl polysiloxane, and the annularengagement hole 6 to be engaged with the flange 12 of the rotation shaft 11 is provided
in communication in the attachment hole 5 of the rotation shafts 110 and 111, and thestructure of the support shafts 160 and 161 constituting the rotation shafts 110 and 111
and the rotation rod 17 rotatably attached thereto are similar to the structure of the firstworking example, and the same reference numerals are given to the same structural
portions and the explanation therefor will be omitted.
Thus, when the roller 40 for bare skin is to be assembled by each of the portions
illustrated in Figure 7, the rotation rod 17 is rotatably attached to the support shafts 160
and 161 of the grip portion 100 by a method similar to that of the first working example
so as to constitute the rotation shafts 110 and 111 and then, the left and right rollers 101
and 102 are attached to the rotation shafts 110 and 111, capable of rotation andattachment/detachment, by attachment into the attachment hole 5 through the insertion
port 4 and engagement of the flange 12 with the engagement hole 6 by a method similar
to that of the first working example, whereby the roller 40 for bare skin illustrated in
Figure 8 can be constituted.

100

Figure 1

Figure 2

1 roller2 roller body
3 suction recess portion
10 grip portion
11 rotation shaft
13 grip
14 distal end portion
15 support fitting
26 engagement recess
portion30 roller for bare skin

Figure 7

Figure 3101

Figure 8

Figure 9
Figure 10

B. According to the description in the Exhibit Otsu 135 document found in the
aforementioned A, the Exhibit Otsu 135 document is found to describe the invention as
below (hereinafter, referred to as the "Exhibit Otsu 135 invention").
"A roller 30, 40 for bare skin including a support fitting 15, 150 projected on a distal
end portion 14 of a grip 13, 100, a support shaft 16, 160, 161 mounted on a dista l end
portion of the support fitting 15, 150, and a roller 1, 101, 102 rotatably supported at a
distal end from a base end of the support shaft 16, 160, 161 and used for cleansing,massaging, wrinkle smoothing, metabolism action, and the like to the bare s kin of abody by the roller 1, 101, 102, in which the roller 1, 101, 102 has an insertion port 4
only on a base end side, the roller 1, 101, 102 is supported by the support shaft 16, 160,
161 through a rotation rod 17 in a non-penetrating state in which a distal end of the
support shaft 16, 160, 161 is located inside thereof, in the rotation rod 17, when an
102

engagement projection 24 of each of the elastic pieces 22 on a side opposite to theinsertion port 4 of the roller 1, 101, 102 is engaged with an annular engagement groove
20 drilled on the base end side of the distal end portion 19 having a diameter larger thanan inner diameter of the rotation rod 17 provided at a distal end of the support shaft 16,
160, 161, whereby removal of the rotation rod 17 from the support shaft 16, 160, 161
is prevented, a flange 12 protrudes from the rotation rod 17, the roller 1, 101, 102 madeof an elastic material on which a plurality of suction recess portions are disposed has a
portion on the base end side of an engagement hole 6 capable of being engaged withthe flange 12 on an inner periphery, and the portion on the base end side of theengagement hole 6 is locked on the base end side of the flange 12"(2) Comparison
A. When Present Invention 2 is compared with the Exhibit Otsu 135 invention foundin the aforementioned (1)B, it is found that there are following common feature anddifferent features.
(a) Common Feature
A point that "A beauty instrument including a support shaft mounted on a handle
on a base end and a rotary body rotatably supported on a distal end side of the support
shaft and configured to give an esthetic action to a body by the rotary body, in which
the rotary body has a hole only on a base end side and is supported by the support shaft
through a bearing member in a non-penetrating state where a distal end of the support
shaft is located inside thereof, the bearing member is retained by the support shaft at a
distal end which is on a side opposite to the hole of the rotary body, a projecting po rtion
protrudes from the bearing member, the rotary body has a stepped portion capable ofbeing engaged with the projecting portion on an inner periphery, and the stepped portionis locked on the base end side of the projecting portion"(b) Different Features
a. Different Feature [i]A point that, in Present Invention 2, the lock claw capable of elastic deformation
protrudes from the bearing member, the bearing member has the flange portion on thebase end side of the lock claw, the lock claw has a slanted surface whose distance tothe rotation center of the rotary body in the bearing member becomes smaller as it goes
toward the distal end side, the rotary body has a stepped portion capable of being
engaged with the lock claw on an inner periphery, and the stepped portion is locked on
the base end side of the lock claw and is located between the lock claw and the flange
portion, while the Exhibit Otsu 135 invention includes the flange 12 from the rotationrod 17 but it is not clear whether or not the flange 12 is capable of elastic deformation
103

and the flange 12 is not the "lock claw" "having a slanted surface whose distance to therotation center of the rotary body in the bearing member becomes smaller as it goes
toward the distal end side", the rotation rod 17 (bearing member) does not have the"flange portion" "on the base end side of the lock claw", "the rotary body is not capableof being engaged with the lock claw on the inner periphery", or does not include the"stepped portion" "locked on the base end side of the lock claw and located between
the lock claw and the flange portion"
b. Different Feature [iii]A point that, in Present Invention 2, the support shaft is retained by/fixed to thehandle, while in the Exhibit Otsu 135 invention, it is not specified whether the support
shaft 16, 160, 161 is fixed to or retained by the grip 13, 100 (handle)
B. Defendant in the first instance alleges the difference in the structure of the
bearing member separately from the difference in the structure of the rotary body withregard to Different Feature [i], but Different Feature [i] relates to a structure of an
integral art, and it should be unreasonable to find them separately as the differences as
alleged by Defendant of the first instance.
(3) How easily Different Feature [i] could have been conceived of
A. The Exhibit Otsu 194 document has the following description (Exhibit Otsu 194 1, 2).
[0018] An exercise tool according to the present invention can be configured as anarbitrary suitable type of exercise tool.

For example, the tool can be configured as a

musculoskeletal treatment tool such as a massaging tool and the like, for example ...
[0020] Regardless of a specific type of the tool constituting the exercise tool, thetool can be constituted by a user so as to conform to those specific needs andrequirements.

For example, if the exercise tool is to be constituted as a massaging

tool, the massaging tool can be constituted in a plurality of various methods so that it
can serve various people or can be used for massaging specific parts of a human body.
[0068] [Figure 12] Figure 12 is a view illustrating a person using the exercise toolaccording to a first preferred embodiment of the present invention so as to massage theupper thoracic vertebrae of himself/herself and the upper trapezius muscle and thelevator scapulae muscle of himself/herself at the same time.
[0116] By referring to Figure 17, a rod module 100 of the exercise tool according
to a second preferred embodiment of the present invention has a substantially
cylindrical shape.
[0119] A plurality of parallel circular openings 106 separated at an equal interval
extends laterally by passing through the rod module 100.
104

The opening 106 isperpendicular to an opening 105 extending through the module 100.

Moreover, theopening 106 crosses the opening 105.
[0151] Figure 29 illustrates a plug 200 which can be used for fixing two of themodules 100, 120, 130, and 140 together in an arbitrary combination.

The plug 200

is made of plastic and includes a circular flange 201 positioned between two cylindricalportions 202.

Each of cylindrical portions 203 with a smaller width extends from eachof the cylindrical portions 202.

Each of the portions 203 with a smaller width includes

a pair of elastic latch arms 204 faced in a diameter direction.

Each of the latch arms

204 includes a projection 205 positioned on an end of the arm 204 and extending
outward from the plug 200.

The circular opening 206 extends from one end of theplug 200 to the other end of the plug 200.
[0152] Two of modules 100, 120, 130, and 140 can be fixed with the plug 200,
capable of attachment/detachment by inserting each end of the plug 200 into therespective opening of each module.

When the plug 200 is inserted into the opening,

the portion 203 with a smaller width of the plug 200 is received by the portion with asmaller width of the opening, while the portion 202 with a larger width of the plug 200
is received by the portion with a larger width of the opening.
[0153] When the plug 200 is inserted into the opening, the portion with a smaller
width of the opening is pressed onto the projection 205 of each of the latch arms 204,
whereby the elastic latch arms 204 are moved toward each other.

When the plug 200

is completely inserted into the opening, the projection 205 is received by a latch recess
portion of the opening so that the latch arms 204 jump to their original positions andare meshed with the latch recess portions.

Therefore, the latch arms 204 and the latch

recess portions can prevent the plug 200 from being unintentionally pulled out of the
opening of the module.
[0155] The latch arm 204 and the latch recess portion can prevent the plug 200 frombeing unintentionally pulled out of the opening, but in spite of that, the plug 200 canstill rotate with respect to the opening even if the latch arm 204 and the latch recess
portion are meshed with each other.
[0160] Figure 31 illustrates a plug 220 similar to the plug 200.

For convenience,

similar features of the plugs 200 and 220 are referred to by using similar reference
numerals.
[0161] The plug 220 is different from the plug 200 in a point that the cylindricalportion 203 with a smaller width thereof is longer than the cylindrical portion with asmaller width of the plug 200.

Moreover, the cylindrical portion 203 of the plug 220

includes each of a plurality of grooves 204.
105

[0162] Unlike the cylindrical portion 203 of the plug 200, the cylindrical portion
203 of the plug 220 is sufficiently long so that it can close the other opening of themodule crossing the opening when it is inserted into the opening of one of the modules
100, 120, 130, and 140.

Moreover, an additional length of the plug 220 means thatthe tool forming a part can be better reinforced as compared with the plug 200.
[0165] By referring to Figure 33, a lock pin 240 of the multi-functional exercise
tool according to the second preferred embodiment of the present invention includes an
elongated cylindrical shaft 241.

The shaft 241 includes a first portion 242, a second

portion 243, and a third portion 244.

A substantially flat plastic head 245 is over -molded on the third portion 244 of the shaft 241.
[0166] A diameter of the first portion 242 of the shaft 241 in the lock pin 240 isslightly smaller than the diameter of the opening extending through the modules 100,
120, 130, and 140 and the plugs 154, 200, 210, 220, and 230 and thus, the shaft 241 canbe inserted through those openings.
[0168] When the shaft 241 of the lock pin 240 is inserted into the plug 154, 200,
210, 220, or 230 into which itself is inserted into one of the openings of the modules
100, 120, 130, and 140, the shaft 241 can prevent the latch arm of the plug fromremoving the latch recess portion of the opening of the module.

The lock pin 240 can

prevent the plug from being unintentionally removed from the opening by preventing
removal of the latch arm from the latch recess portion or at least further defers it.
Therefore, the lock pin is particularly suitable for use in which the tool is exposed to a
relatively high twist load which is likely to heighten the risk of unintentional removalof the latch arm from the latch recess portion which would cause unintentional pullingout of the plug from the opening of the module.
[0169] Figure 34 illustrates the lock pin 240 when the shaft 241 of the lock pin 240
is inserted into the opening 206 of the plug 200 itself inserted to the other end of the
opening 141 so that it is fixed to a ball module 140 in the middle through the one endof the opening 141 and to the module 140.
[0170] The projection 205 of the latch arm 204 of the plug 200 received by the
opening 141 is received by the latch recess portion 250 positioned in the opening 141,
and thus, the plug 200 is prevented from being pulled out of the opening 141 by that.
In the shaft 241 of the lock pin 240, removal of the projection 205 from the latch recess
portion 250 is prevented by the latch arms 204 pressed to each other.

When the loc k

pin 240 is removed from the plug 200, the latch arm 204 can solely move as describedabove.

106

[Figure 29][Figure 31][Figure 34]

B.(a) According to the description in the Exhibit Otsu 194 document found in the
aforementioned A, it is found that the Exhibit Otsu 194 document describes thefollowing art.
"A massage tool rotatably supporting a module 130, 140 through a plug 200, 220,
in which the plug 200, 220 has an elastic latch arm 204 including a projection 205
extending outward and has a flange 201 on a base end side of the latch arm 204, theprojection 205 has a slanted surface whose distance to a rotation center of the module
130, 140 in the plug 200, 220 becomes smaller as it goes toward a distal end side, themodule 130, 140 has a stepped portion locked on the base end side of the projection
205 of the latch arm 204 on an inner periphery, and the stepped portion is locked on thebase end side of the projection 205 and is disposed between the projection 205 and theflange 201"
107

(b) Defendant of the first instance alleges that the plug 200, 220 described in the
Exhibit Otsu 194 document is for mounting the module 130, 140 rotatably around thelock pin 240.
However, as described in the aforementioned A, paragraphs [0151], [0152] in the
Exhibit Otsu 194 document describe that the plug can be used for fixing two of themodules in an arbitrary combination and that they can be fixed together with the plugby inserting each end of the plug into the respective opening of each module, and fromthe description, the plug is found to be a member for fixing by connecting the twomodules.
Moreover, paragraphs [0168], [0170] in the Exhibit Otsu 194 document describe
that, when the shaft of the lock pin is inserted into the plug inserted into the module,
since the shaft prevents removal of the latch arm of the plug from the latch recess
portion of the opening of the module, the lock pin is particularly suitable for use in thecase where there is a high risk of removal of the latch arm from the latch recess portion,and the shaft prevents removal of the projection from the latch recess portion, and when
the lock pin is removed from the plug, the latch arm can move, and from the description,
the lock pin is found to be used for the purpose of preventing the removal of the plugfrom the module.
Therefore, the plug 200, 220 is used as a member for fixation by connecting themodule 130, 140, it cannot be considered that the plug 200, 220 is interposed between
the lock pin 240 and the module 130, 140 and is used as a bearing for the module 130,
140 to be rotatably supported by the lock pin 240, and the aforementioned allegation of
the Defendant of the first instance has no grounds.
C. How easily application of the art described in the Exhibit Otsu 194 document to
the Exhibit Otsu 135 invention could have been conceived of(a) As described in the aforementioned B, the plug 200, 220 described in the Exhibit
Otsu 194 document is a member for fixing by connecting the two modules and is not
for functioning as a bearing member for rotatably supporting the rotary body withrespect to the shaft by being interposed between the shaft and the rotary body and thus,
there should not be motivation to replace it with the rotation rod 17 functioning as abearing member in the Exhibit Otsu 135 invention.
(b) Allegation of Defendant of the first instancea. Defendant of the first instance alleges that the Exhibit Otsu 135 document
suggests that mounting means other than the rotation rod 17 may be used as the structure
for rotatably mounting the roller 1, 101, 102 on the rotation shaft 11, 110, 111 anddescribes that even if the flange 12 does not project, the roller 1, 101, 102 can be108rotatably mounted and thus, employing the structure of the mounting means of the
Exhibit Otsu 194 art and having the projection 205 and the flange 201 capable of elastic
deformation of the Exhibit Otsu 194 art for the rotation rod 17 of the Exhibit Otsu 135
invention is easy for a person ordinarily skilled in the art.
However, even if the rotation rod 17 can be replaced with another bearing member,since the plug described in the Exhibit Otsu 194 document is not a bearing member asin the aforementioned B, there should not be motivation to replace the rotation rod withthe plug described in the Exhibit Otsu 194 document and to employ the structures ofthe projection of the plug and the flange.
Therefore, the aforementioned allegation of Defendant of the first instance has no
grounds.
b. Defendant of the first instance alleges that, from the description in paragraph[0155] of the Exhibit Otsu 194 document that "the latch arm 204 and the latch recess
portion can prevent the plug 200 from being unintentionally pulled out of the opening,but the plug 200 can still rotate with respect to the opening even if the latch arm 204
and the latch recess portion are meshed with each other." and the description inparagraph [0166] that "a diameter of the first portion 242 of the shaft 241 in the lockpin 240 is slightly smaller than the diameter of the opening extending through themodules 100, 120, 130, and 140 and the plugs 154, 200, 210, 220, and 230 and thus,
the shaft 241 can be inserted through those openings.", it is obvious that the plug 200,
220 functions as the bearing member, and the lock pin 240 functions as the rotation
shaft.
However, paragraph [0155] of the Exhibit Otsu 194 document explains that the plug
200 is rotatable with respect to the module and does not describe that the plug 200
functions as the bearing member for supporting the module rotatably with respect to thelock pin 240.

Moreover, paragraph [0166] only describes that the diameter of the shaft

is slightly smaller than the diameter of the opening extending through the module andthe plug and thus, it can be inserted through the openings of them and does not describethat the plug functions as the bearing member.
Therefore, the aforementioned allegation of Defendant of the first instance has no
grounds.
(4) Summary
As described above, Present Invention 2 is not found to lack inventive step with the
Exhibit Otsu 135 document as the primarily cited reference.
6. Claims for injunction and disposal
109

According to the aforementioned 3 to 5, the act of sales and the like of Defendant's
Product by Defendant of the first instance infringes Present Patent Right 2.

Thus,

claims of Plaintiff of the first instance for injunction of transfer and offer of tr ansfer
and the claim for disposal of Defendant's Product from Defendant of the first instanceunder Article 100 of the Patent Act has grounds.
Defendant of the first instance alleges that the design of the structure of the bearingof Defendant's Product was changed, but since fulfillment of the constituent features isdisputed, and the defense of invalidity of the patent was made in this lawsuit, theconcern of transfer or the like of Defendant's Product has not ceased to exist.
7. Amount of damage of Plaintiff of first instance (issue (5))(1) Article 102, paragraph (1) of the Patent Act
Article 102, paragraph (1) of the Patent Act is the provision prescribing the
calculation method of the amount of damage when damages for lost profits by adecrease in sales quantity is claimed under Article 709 of the Civil Code, and in themain text of Article 102, paragraph (1) of the Patent Act, it is provided that the amountcalculated by multiplying the number of articles so transferred by amount of profi t perunit from the products that the patentee or exclusive licensee (hereinafter, referred toas the "patentee or the like") could have sold if there had been no infringement, may be
fixed as the amount of the damage that the patentee has incurred, within the limits ofan amount proportionate to the ability of the patentee or the like to work the patented
invention, and in the proviso thereto, it is provided that if there are circumstances due
to which the patentee or the like would have been unable to sell a number of products
equivalent to all or part of number transferred, which are proved by the infringer, anamount proportionate to the number of products that could not have been sold due tosuch circumstances is to be deducted from the amount of damage thus calculated forthe purpose of more flexible finding of a decrease in the sales quantity by promoting ashift to the burden of proof of the decrease in the number sold having a considerable
cause and effect relationship with the infringement.
In view of the wording in Article 102, paragraph (1) of the Patent Act and theaforementioned gist, it should be interpreted that the "article that could have sold" by
the patentee or the like "if there had been no infringement" only needs to be a productof the patentee or the like whose sales quantity is affected by the infringement; that is,
the product of the patentee or the like having a competitive relationship with the
infringement product in the market.
Moreover, the "amount of profit per unit" is an amount (amount of marginal profit)110

obtained by deducting the cost additionally required in direct relation with the
manufacture/sales of the aforementioned product for the patentee or the like from thesales of the product of the patentee or the like, and its burden of allegation/proof should
be interpreted to reside on the side of the patentee including the ability of the patentee
or the like to work.
Furthermore, with regard to the "circumstances due to which the patentee or the likewould have been unable to sell" a number of products equivalent to all or part of number
transferred, prescribed in the proviso to Article 102, paragraph (1) of the Patent Act,the infringer takes the burden of allegation/proof, and the amount according to thenumber corresponding to the circumstances shall be deducted when presence of suchcircumstances is alleged/proved.
(2) Transferred number of articles constituting the infringement
A. As described in the aforementioned 3 to 5, the transfer of Defendant's Productinfringes Present Patent Right 2, and Defendant's product falls under the "article
constituting the infringement".
B. The transferred number of Defendant's Product during a period from December
4, 2015 to May 8, 2017 (hereinafter, referred to as the "present infringement period"),which is a period of the tort on which Plaintiff of the first instance made the claim fordamages in the present lawsuit is as follows, and it is found that Defendant transferred
Defendant's Product in the number of 351,724 units in total and approximately 20,690
units on a monthly average (not disputable).
Defendant's Product 1 (DR-250A)

71,077 units

Defendant's Product 2 (DR-250C)

141,135 units

Defendant's Product 3 (FS-800)

15,114 units

Defendant's Product 4 (DR-250P)

82,584 units

Defendant's Product 5 (DR-250G)

18,526 units

Defendant's Product 6 (DR-250SW)

8,263 units

Defendant's Product 7 (JDR-300)

416 units

Defendant's Product 8 (DR-260BK)

6,088 units

Defendant's Product 9 (DR-260C)

8,521 units

C. Defendant's Products are wholesaled mainly to discount stores and variety shops,
and may have price indication of 15,000 yen (without tax) according to the document
prepared by Defendant of the first instance (Exhibits Ko 7 to 13), but they are actuallysold at the price of approximately 3,000 to 5,000 yen (Exhibits Otsu 85 to 93).
Defendant's Products are described as Germa-mirror ball using particles ofgermanium, but they do not have a mechanism for generating microcurrents as111

Plaintiff's Product which will be described later (Exhibits Ko 7 to 13).
(3) Amount of profit per unit from the product that could have been sold if there
had been no infringement
A. Product that could have been sold if there had been no infringement
As in the aforementioned (1), the "product that could have been sold if there had
been no infringement" only needs to be a product of the patentee or the like influenced
by the sales quantity by the infringement; that is, a product of the patentee or the likehaving a competitive relationship in the market with the infringement product.
Plaintiff of the first instance has sold the beauty instrument with the name "ReFa Carat"(hereinafter, referred to as "Plaintiff's Product") as the worked product of Present
Invention 2 since February of 2009 (Exhibits Ko 23, 24, entire import of the oral
argument), and it is obvious that Plaintiff's Product falls under the "product that could
have been sold if there had been no infringement".
Plaintiff's Product is a beauty instrument which presses a pair of rolling portions
applied with platinum coating on the surface of the roller and rotatably supported by
the support shaft to the skin and rotates it so as to pick up the skin and to give an esthetic
action to the skin (entire import of the oral argument) and has a mechanism forgenerating microcurrent by a mounted solar panel (Exhibit Ko 23).
Plaintiff's Product is sold at Plaintiff's shop, major mail-order companies,
department stores, and major electronics retail stores at 23,800 yen, which is a desirable
retail price, or a price close to that (Exhibits Ko 23, Otsu 94 to 108).
Plaintiff of the first instance had sold 1,256,410 units of Plaintiff's Product from
October in 2015 to August in 2017 (monthly average: 54,626 units (fractions smaller
than one yen omitted)), 18,770 units in the month with the lowest sales (January of2016), and 85,492 units in the month with the highest sales (December of 2016) (Exhibit
Ko 38).
B. Meaning of the amount of profit per unit
As in the aforementioned (1), the "amount of profit per unit" prescribed in Article
102, paragraph (1) of the Patent Act is the amount of marginal profit obtained bydeducting the cost additionally required in direct relation with the manufacture/sales
thereof for the patentee or the like from the sales of the product of the patentee or the
like by the manufacture/sales of the product, and its burden of allegation/proof should
be interpreted to reside on the side of the patentee.
C. Amount of marginal profit of Plaintiff's Product(a) Sales and manufacturing cost
The total sales quantity of Plaintiff's Product from October in 2015 to August in112

2017 is 1,256,410 units, the sales are 13,246,061,089 yen, and the manufacturing cost
is ●●●●●●●●●●●●● (Exhibits Ko 38, 39).
(b) Costs to be deducted other than the manufacturing costa. The sales of all the products of Plaintiff of the first instance during the period in
the aforementioned (a) is 67,109,681,552 yen (Exhibit Ko 40), and a sales ratio of
Plaintiff's Product to all the products of Plaintiff of the first instance is 19.74%(13,246,061,089 yen ÷ 67,109,681,552 yen ≈ 0.1974).
b. Moreover, the sales of the entire products of the "ReFa" brand including
Plaintiff's Product during the period in the aforementioned (a) is 34,209,586,196 yen(Exhibit Ko 28), and the sales ratio of Plaintiff's Product occupying the sales is 38.72%(13,246,061,089 yen ÷ 34,209,586,196 yen ≈ 0.3872).
c. The cost additionally required in direct relation with the manufacture/sales ofPlaintiff's Product during the period in the aforementioned (a) is as in [i] to [ix] below
other than the manufacturing cost in the aforementioned (a), and the amounts are
obtained by multiplying each cost incurred for all the products of Plaintiff of the first
instance (Exhibit Ko 40) by the ratio in the aforementioned a for [i], [ iii], [iv], and [vi]to [ix] and by multiplying each cost (Exhibits Ko 32, 33) incurred for the "ReFa" brandproduct by the ratio in the aforementioned b for [ii] and [v] (fractions smaller than one
yen omitted).
[i] Sales commission: ●●●●●●●●●●●●[ii] Sales promotion cost: 257,984,777 yen[iii] Point reserve: 7,417,870 yen[iv] Sample cost: 53,439,379 yen[v] Advertising cost: 520,753,024 yen[vi] Packing and freight cost: 455,780,084 yen[vii] Complaint handling cost: 65,485,934 yen[viii] Product guarantee reserve transferred: 5,902,260 yen[ix] Marketing research cost: 10,385,182 yen
Total amount of [i] to [ix]: ●●●●●●●●●●●●●
d. Defendant of the first instance alleges that all the costs of Plaintiff of the first
instance should be deducted from the sales of Plaintiff's Products in accordance withthe sales ratio of Plaintiff's Product.
However, as in the aforementioned (1), Article 102, paragraph (1) of the Patent Act
is the provision prescribing the calculation method of the amount of damage whe ndamages for lost profits by a decrease in sales quantity is claimed under Article 709 of
the Civil Code, and the amount calculated by multiplying the number of articles
113transferred by the infringer by the amount of profit per unit from the products that thepatentee or the like could have sold if there had been no infringement is fixed as theaforementioned amount of damage.

As described above, the amount of damage in theparagraph is the lost profits for the product of the patentee or the like which could havebeen sold by the patentee or the like if there had been no infringement and thus, incalculation of the "amount of profits per unit" in the paragraph, it is not reasonable todeduct the costs not in direct relation with the manufacture/sales of the product of thepatentee or the like from the sales, and a labor cost of a management division,communication and transportation expenses, and the like usually fall under that.
Moreover, plaintiff of the first instance had already manufactured/sold Plaint iff's
Product, and it is not reasonable, either to deduct costs required for that and having
already been paid (costs required for and having already been paid for equipment andfacilities required for manufacturing the product, for example) from the sales .
In the aforementioned costs that, Defendant of the first instance alleges, should be
deducted from the sales, all the costs other than the costs in [i] to [ix] in the
aforementioned c should be considered to be costs that are not reasonable to be dedu cted
from the aforementioned sales and thus, the aforementioned allegation of Defendant of
the first instance has no grounds.
(c) The amount of marginal profit of Plaintiff's Product is 6,968,092,706 yen
obtained by deducting the manufacturing cost in the aforementioned (a) and the total
amounts of each cost in the aforementioned (b)c from the sales in the aforementioned(a) of Plaintiff's Product, and by dividing this by the sales quantity 1,256,410 units of
Plaintiff's Product in the period in the aforementioned (a) is 5,546 yen (6,968,092,706
yen ÷ 1,256,410 yen ≈ 5,546.03 yen.

Fractions smaller than one yen are omitted).

(d) According to the description in the Scope of Claims of Present Invention 2 foundin the aforementioned No. 2, 2 and the description in Present Description 2 found in the
aforementioned 1, Present Invention 2 is the invention of a beauty instrument
constituted by members such as the rotary body, the support shaft, the bearing member,
handles, and the like, and it is found to be an invention characterized by the shapes of
the inner peripheral surfaces of the bearing member and the rotary body (hereinafter,
this portion is referred to as the "Present Feature Portion".).
Since Plaintiff's Product is a beauty instrument which is to give an esthetic action
to the skin by pressing the pair of rolling portions rotatably supported by the support
shaft to the skin and rotating it so as to pick up the skin as described in the
aforementioned A, the Present Feature Portion is only a part of Plaintiff's Product.
Incidentally, even if the feature portion of the patent invention is only a part thereof114

in a product of a patentee who worked the patent invention as in this case, it is actually
presumed that the total amount of the marginal profit obtained by sales of the productof the patentee is the lost profit of the patentee.
And for Plaintiff's Product, to realize favorable rotation of the rolling portion is also
important, and it can be considered that the Present Feature Portion which is a member
required for that; that is, the shapes of the inner peripheral surfaces of the bearing
member and the rotary body, also contribute to the profit by sales of Plaintiff's Productcorrespondingly.
However, as described above, Plaintiff's Product is a beauty instrument which gives
an esthetic action by pressing the pair of rolling portions to the skin and rotating it soas to pick up the skin and thus, the portion having a great attraction for customers in
Plaintiff's Product is found to be the structure of the rolling portion, and as in the
aforementioned A, Plaintiff's Product includes a solar panel so as to generate a
microcurrent, whereby the attraction for customers is found to be enhanced.

From

these circumstances, it cannot be considered that the Present Feature Portion contributes
to all the profits by the sales of Plaintiff's Product and thus, it is not reasonable to findthat the total amount of the marginal profit obtained by sales of Plaintiff's Product isthe lost profit of Plaintiff and thus, the aforementioned actual presumption should bepartially overturned in Plaintiff's Product.
And by comprehensively considering the circumstances appearing in this case suchas the positioning of the Present Feature Portion held in the above in Plaintiff's Product,
features provided in Plaintiff's Product other than the Present Feature Portion, and theattraction for the customer thereof, it is reasonable to admit that a degree of theoverturning is approximately 60% of the total.
In this point, Defendant of the first instance alleges that the ratio of the
manufacturing cost of the bearing in the manufacturing cost of the entire Plaintiff's
Product should be the degree of contribution, but the aforementioned overturning ofpresumption is made by paying attention to the degree of contribution of the Present
Feature Portion to the profit by the sales of Plaintiff's Product and should not be madeonly by the ratio of the manufacturing cost of the portion.

Moreover, Defendant of

the first instance alleges that, since the function for preventing removal of the roller isinsufficient in Plaintiff's Product, the degree of contribution of the bearing is low, but
it cannot be found that the function for preventing removal of the roller in P laintiff's
Product is insufficient from Exhibit Otsu 138 (description in the blog related toPlaintiff's Product) used by Defendant of the first instance as the ground, and there isno other evidence sufficient to admit the fact.
115

Thus, none of the aforementioned

allegations can be employed.
As described above, in calculation of the "amount of profit per unit" from Plaintiff's
Product, it is reasonable to deduct approximately 60% from 5,546 yen which is theamount of the marginal profit of the entire Plaintiff's Product, and the amount of the
profit per unit from Plaintiff's Product is 2,218 yen (5,546 yen × 0.4 ≈ 2,218 yen).
(4) Amount proportionate to ability to work
Article 102, paragraph (1) of the Patent Act provides limitation that the amount ofdamage suffered by patentee or the like is not the total amount of the amount obtainedby multiplying the transferred quantity of the infringer by the amount of profit per unit
from the product of the patentee or the like as in the aforementioned (1) but within thelimits of an amount proportionate to the ability of the patentee or the like to work thepatented invention, and this "ability to work" only needs to be a potential ability, and it
should be interpreted that the ability to work exists even in the case where the numberof products corresponding to the sales quantity of the infringement product can besupplied by a method of production subcontracting or the like, and the burden of
allegation/proof resides on the patentee side.
And as in the aforementioned (3)A, since it can be presumed that Plaintiff of thefirst instance has the ability to supply extra products of approximately 30,000 units tothe average sales quantity per month, it is reasonable to find that Plaintiff of the first
instance had the ability to additionally sell Plaintiff's Product in the quantity of
approximately 20,000 units on a monthly average within this extra product supply
ability.
Therefore, it is found that Plaintiff of the first instance had the ability to sell
Plaintiff's Product in the quantity of Defendant's Product sold by Defendant of the first
instance during the period of the present infringement.
(5) Circumstances due to which Plaintiff of the first instance has been unable to sell
A. As in the aforementioned (1), the proviso to Article 102, paragraph (1) of the
Patent Act provides that if there are circumstances due to which the patentee would
have been unable to sell a number of products equivalent to all or part of number
transferred (hereinafter, referred to as the "circumstances due to which sales would havebeen impossible"), the amount according to a number equivalent to the circumstances
due to which the sales could not have been made shall be deducted, and if the infringer
alleges/proves the circumstances found to be the circumstances due to which sales could
not have been made and an amount according to the number proportionate to thecircumstances, the amount according to the number of products is deducted from theamount of damage found by the main text of the paragraph.
116

And the "circumstances due to which sales would have been impossible" refer tothe circumstances hindering the corresponding cause-effect relations between theinfringement and the sales decrease of the product of the patentee and the circumstancessuch as [i] presence of a difference in the business forms, prices, and the like between
the patentee or the like and the infringer (non-identicality of the market); [ii] presenceof competitive products in the market; [iii] sales efforts (brand strength, advertisement)of the infringer; and [iv] presence of differences in performances of the infringement
product and the product of the patentee (features other than the patent invention suchas functions, designs, and the like) should fall under them.
B. Hereinafter, the circumstances alleged by the Defendant of the first instance as
those due to which sales could have been impossible will be examined.
(a) Defendant of the first instance alleges the difference in the prices between
Plaintiff's Product and Defendant's Product and the difference in vendors as thecircumstances due to which sales could not have been madea. In this case, as in the aforementioned (2)C and (3)A, Plaintiff's Product is sold at
major mail-order companies and department stores at the price of 23,800 yen or close
to that, while Defendant's Product is sold at the price of approximately 3,000 yen to
5,000 yen at discount stores and variety shops, and in view that Plaintiff's Product is arelatively expensive beauty instrument as above, while Defendant's Product is sold at
an inexpensive price at approximately one-eighth to one-fifth of the price of Plaintiff's
Product, it cannot be necessarily considered that those who purchased Defendant's
Product would not purchase Plaintiff's Product if there had not been Defendant's
Product.

Therefore, the aforementioned difference in the sales price can be found as

the circumstances due to which sales could not have been made.
And since the price difference between Plaintiff's Product and Defendant's Productis not small, the quantity corresponding to the circumstances due to which sales could
not have been made by presence of the circumstances is found not to be small.
On the other hand, the both products are beauty instruments, and in view of theproperty of a product as the beauty instrument, it should be presumed that some of theconsumers do not put emphasis on the price and would purchase an inexpensive product,
if any, but if there is no inexpensive product, not a small number of the consumers
would purchase an expensive product.

Moreover, as in the aforementioned (3)A,

Plaintiff's Product has the surface of the roller applied with platinum coating, and asolar panel is mounted so as to generate microcurrent and thus, the quality should behigher than Defendant's Product without such equipment and thus, even though
Plaintiff's Product has the sales price of approximately 24,000 yen, it can take in a117certain number of the consumers of Defendant's Product at the sales price ofapproximately 3,000 to 5,000 yen.

As described above, it cannot be found that thequantity corresponding to the circumstances due to which sales could not have been
made because of the presence of the price difference between Plaintiff's P roduct andDefendant's Product mounts to a considerable quantity.
b. As described above, the difference in prices between Plaintiff's Product andDefendant's Product could influence purchase motivation of the consumers, but such an
experimental rule that those who would purchase a product at major mail-ordercompanies and department stores would not purchase a product at discount stores andvariety shops could not be found to exist and apart from the price difference, it cannot
be found that the difference in the aforementioned sales forms between Plaintiff's
Product and Defendant's Product influences the purchase motivation of the consumers,
and it should be considered that the difference in the sales form cannot be found as thecircumferences due to which sales could not have been made.
(b) Defendant of the first instance alleges the presence of a large number ofcompetitive products as the circumstances due to which sales could not have been made.
At the point of time of April in 2019, at least 29 kinds of products are found to be
sold as the product of the types similar to Plaintiff's Product and Defendant's Product(Exhibit Otsu 176, entire import of oral argument), but in the market, it is not enoughto find that the products in a competitive relation with Plaintiff's Product are sold during
the present infringement period (December 4, 2015 to May 8, 2017) on the evidencesof this case and thus, this point cannot be found to be the circumstances due to whichsales could not have been made.
(c) Defendant of the first instance alleges that Present Invention 2 is the invention
for the bearing, and the manufacturing cost of the bearing in Defendant's Product isonly a small part of the entire manufacturing cost and thus, the bearing is similar to a naccessory as the circumstances due to which sales could not have been made.
However, the aforementioned circumstances that Present Invention 2 is theinvention characterized by a part of the beauty instrument has been already consideredin calculation of the amount of profit per unit from Plaintiff's Product and thus, it is notnecessary to repeatedly consider this as the circumstances due to which sales could nothave been made.
(d) Defendant of the first instance alleges that the bearing portion c annot berecognized from an appearance and that there is an alternative art as the circumstances
due to which sales could not have been made.
However, the aforementioned circumstances alleged by Defendant of the first118

instance are applicable to both Defendant's Product and Plaintiff's Product and thus, itcannot be considered that in the case where there is no Defendant's Product, the demandfor Defendant's Product does not go toward Plaintiff's Product due to presence of thecircumstances and thus, these circumstances cannot be found to be the circumstances
due to which sales could not have been made.
(e) Defendant of the first instance alleges that Plaintiff's Product has a mechanism
for generating microcurrent but Defendant's Product does not have such a mechanism
as the circumstances due to which sales could not have been made.
It is certain that Plaintiff's Product has the mechanism for generating the
microcurrent as in the aforementioned (3)A, while Defendant's Product does not havesuch a mechanism, but this means that Defendant's Product is poor in attraction tocustomers in relation to Plaintiff's Product and thus, it cannot be circumstances which
defer the demand to go toward Plaintiff's Product if there is no Defendant's Product.
Therefore, the aforementioned point cannot be found to be the circumstances due towhich sales could not have been made.
(f) Defendant of the first instance alleges the sales efforts of Defendant of the first
instance as the circumstances due to which sales could not have been made, but on thisevidence, it is not found that Defendant of the first instance made sales efforts to sucha degree that is enough to be found as the circumstances due to which sales could nothave been made.
C. According to the above, by considering the circumstances held in the
aforementioned B(a)a, it is reasonable in this case to find that the quantity
corresponding to the circumstances due to which sales could not have been made isapproximately 50% of the total.
(6) Whether amount of damage should be decreased by considering contribution
degree of Present Invention 2
As in the aforementioned (3) and (5), in calculation of the amount of profit per unit
from Plaintiff's Product, by considering the degree of contribution of Present Invention
2 to the profit by the sales of Plaintiff's Product, it is reasonable to deduct 60% fromthe total amount of the marginal profit of Plaintiff's Product and to deduct 50% fromthe amount of damage suffered by Plaintiff of the first instance obtained by multiplying
the sales quantity of Defendant's Product by the aforementioned amount of profit perunit from Plaintiff's Product in conformity to the proviso to Article 102, paragraph (1)of the Patent Act.

Even if the allegation of Defendant of the first instance has a pointthat the amount of damage should be decreased by considering the rate of contributionof Present Invention 2 to the sales of Defendant's Product separately from these119

deductions, there are no provisions approving it and there are no grounds for approving
it, either, and thus, such decrease by considering the contribution degree shall not beapproved.
(7) Calculation of amount of damage
As described above, the amount of damage of Plaintiff of the first instance under
Article 102, paragraph (1) of the Patent Act is 390,060,000 yen (2,218 yen × 351,724
units × 0.5 ≈ 390,060,000 yen) by deducting the portion of the circumstances thatapproximately 50% of the transferred quantity of 351,724 units of Defendant's Productcould not have been sold and by multiplying the sales quantity after the deduction by
the profit amount of 2,218 yen per unit of Plaintiff's Product.
Moreover, it is reasonable that lawyer's fees having a considerable causal relation
with the infringement of Present Patent Right 2 by Defendant of the first instance arefound to be 50,000,000 yen by considering the approved amount, the difficulty degreeof this lawsuit, and that the injunction claim by Plaintiff of the first instance areapproved.
Therefore, the amount of damage of Plaintiff of the first instance is 440,060,000
yen in total.
No. 5 Conclusion
As described above, the claim by Plaintiff of the first instance from Defendant of
the first instance has grounds with the limit of requesting injunction of transfer and thelike of Defendant's Product, disposal of Defendant's Product, and payment of damagesof 440,060,000 yen and the delay damages at the rate of 5% per annum until completionof each of the payments from June 15, 2016 for 38,100,000 yen in that, from August
26, 2017 for 4,050,000 yen, from November 17 of the same year for 257,850,000 yen,and from May 15, 2019 for 140,060,000 yen, and the remaining has no grounds.

The

judgment in prior instance partially different from this shall be modified on the basis of
the appeal and amendment of claim by Plaintiff of the first instance, the appeal by
Defendant of the first instance shall be dismissed, and judged as in the main text.
Intellectual Property High Court, Special Division

Presiding Judge:
TAKABE Makiko
120

Judge:MORI Yoshiyuki

Judge:TSURUOKA ToshihikoJudge:OTAKA Ichiro

Judge:SANO Shin

121

(Attachment)

Photograph 1

122

(Attachment)

Photograph 2123

(Attachment)

Photograph 3124

(Attachment)

Photograph 4125

(Attachment)

Photograph 5126

(Attachment)

Photograph 6127

(Attachment)

Photograph 7

128

(Attachment)

Photograph 8129

(Attachment)

Photograph 9130

Attachment[Reference Figure 1-1]

131

Attachment[Reference Figure 1-2]

132

Attachment[Reference Figure 1-3]

133

Attachment[Reference Figure 2-1]

134

Attachment[Reference Figure 2-2]

E-ringrolling member
fitting 1
fitting 2
bearing member
support shaft

135

Attachment[Reference Figure 2-3]

rolling member
bearing member

E-ringgrip

fitting 1
fitting 2
support shaft

136

Attachment "Allegation of parties on issue (2)"
1. Whether Present Patent 1 should be invalidated through a trial for patent
invalidation (presence/absence of violation of clarity requirement) (Issue (2)A)[Allegation of Defendant of first instance](1) In Present Description 1, if the shape of the ball is completely circular, theinterval D between the outer peripheral surfaces of the pair of balls is located between
the diameter portion of the ball and the base-end side end portion of the ball as
illustrated in Figure 5, but this limitation of the interval is technically significant forexertion of the effect of picking up the skin.
On the other hand, if the shape of the ball is a balloon shape, it has not only the skinpicking-up effect but also the effect of holding the picked-up skin and thus, thelimitation of the interval between the balls should be technically significant for exertionof the effect of holding the picked-up skin in addition to the effect of picking up theskin, but Present Description 1 does not have specific numerical value limitation for theinterval between the outer peripheral surfaces of the pair of balls when the shape of theball is a balloon shape.
Therefore, Present Invention 1 violates the clarity requirement (Article 36,
paragraph (6), item (ii) of the Patent Act).
(2) Plaintiff of the first instance alleges that the interval between the outer peripheral
surfaces of the pair of balls is the smallest distance between the pair of balls.
However, Present Description 1 does not have description making suchspecification.

Moreover, even if the interval between the outer peripheral surfaces ofthe pair of balls is the smallest distance between the pair of balls, if the shape of theball is a balloon shape, it is not technically clear whether the effect of holding thepicked-up skin is exerted by setting the interval between the outer peripheral surfacesof the pair of balls to 10 to 13 mm.
[Allegation of Plaintiff of first instance](1) It is self-obvious that wording interpretation of the "interval between the outer
peripheral surfaces of the pair of balls" in Present Invention 1 is the interval of the
portion where the interval between the pair of balls is the smallest, and Figure 5 in
Present Description 1 also describes as such.
(2) In Present Description 1, to hold the picked-up skin means that the skin can bepicked up (picking-up is not released) by the portions.
In the ball having the shape in Figure 8 of Present Description 1, too, the skin ispicked up from the distal end portion of the ball to the base end side which is the portion137

with the smallest ball interval, but since the ball portion contributing to the picking -upof the skin is longer as compared with the ball with the shape in Figure 5, the picked up state of the skin can be held, and Present Description 1 describes that.
As described above, the picking-up of the skin is continuously performed from the
distal end side to the smallest interval portion of the balls with both the ball shape in
Figure 5 and the ball shape in Figure 8 of Present Description 1, and the limi tation on
specific numerical value due to the shape of Figure 8 is not needed.
(3) Therefore, Present Invention 1 does not violate the clarity requirement.
2. Whether Present Patent 1 should be invalidated through a trial for patent
invalidation (presence/absence of lack of inventive step with the Exhibit Otsu 50
document as the primarily cited reference) (issue (2)B)[Allegation of Defendant of first instance](1) French Gazette No. 2891137 published on March 30, 2007 (Exhibit Otsu 50
document) describes the following invention (hereinafter, referred to as the "Exhibit
Otsu 50 invention alleged by Defendant of the first instance") (drawings of the working
example of the Exhibit Otsu 50 document are illustrated below.).
"A massaging tool in which a pair of balls (2) is supported at an interval from eachother and rotatably around a shaft, respectively, by a center handle (1) having an
arbitrary shape, in which an axis of the ball (2) is configured with a certain angle withrespect to a center line of the center handle (1) so that the axis of the ball (2) can
maintain the certain angle with respect to the skin surface during a reciprocating
operation, an opening angle of the shafts of the pair of balls (2) is set to 65 to 80 degrees,a diameter of each of the pair of balls (2) to 2 to 8 cm, the ball (2) is supported by theshaft in a penetrating state, and when the handle (1) is gripped and inclined so as to put
the two balls (2) on skin (4), and a tensile force is applied, these balls (2) collect theskin restricted and sandwiched between the balls (2)"138

(2) Common Feature and Different Features
The Common Feature and Different Features between Present Invention 1 andthe Exhibit Otsu 50 invention alleged by Defendant of the first instance are as
follows.
A. Common Feature"A beauty instrument in which a pair of balls is supported on a distal end portion ofa handle at an interval from each other and rotatably around one axis, respectively,
characterized in that the axis of the ball is constituted to be inclined forward withrespect to a center line of the handle so that the axis of the ball can maintain a certain
angle with respect to a skin surface during a reciprocating operation, an opening angleof a pair of ball support shafts is set to 65 to 80 degrees, and the balls are supported by
the support shaft and are constituted such that the skin is picked up by pressing theouter peripheral surface of the ball to the skin and moving it from the distal end of thehandle toward a base end direction"
B. Different Features(a) Different Feature 1
In the Exhibit Otsu 50 invention alleged by Defendant of the first instance, thediameter of each of the pair of balls (2) is specified as 2 to 8 cm, but the interval
between the outer peripheral surfaces of the balls (2) is not specified, while in
Present Invention 1, the interval between the outer peripheral surfaces of thepair of balls is limited to 10 to 13 mm
The interval between the outer peripheral surfaces of the pair of balls (2) inthe Exhibit Otsu 50 invention alleged by Defendant of the first instance is theinterval d in the following drawing.

139

(b) Different Feature 2
The ball (2) in the Exhibit Otsu 50 invention alleged by Defendant of thefirst instance is supported by the shaft in the penetrating state, while the ball in
Present Invention 1 is supported by the ball support shaft through the bearing
member in a non-penetrating state.
(3) How easily the Different Features could have been conceived of
A. Different Feature 1(a) U.S. Patent No. 2641256 (Exhibit Otsu 154-1, hereinafter, referred to as the"Exhibit Otsu 154 document") published on June 9, 1951 describes thefollowing art (hereinafter, referred to as the "Exhibit Otsu 154 art").
[i] When a pair of rollers rotated appropriately is used for winding up the skin,
it is appropriate to have the interval between the pair of rollers at 1/2 inches(=12.7 mm)[ii] One of the pair of rollers is rotated by power[iii] In the pair of rollers 13, 15 having a diameter of 2.25 inches (= 57.15 mm),the interval between the roller 13 rotated once in 1 second and the roller 15
rotated freely is set to 1/4 inches or 1/2 inches (=12.7 mm)(b) The Exhibit Otsu 50 invention alleged by Defendant of the first instance andthe Exhibit Otsu 154 art not only have common features on the structure andthe function and effect of picking up the skin by using the pair of sphericalrollers rotated around shafts but are also in common in the diameter of thespherical rollers in use.
And for the Exhibit Otsu 154 art, a motor is not indispensable.
Therefore, there is sufficient motivation to apply [i] of the Exhibit Otsu
154 art to the Exhibit Otsu 50 invention alleged by Defendant of the first
instance, and when [i] of the Exhibit Otsu 154 art is applied to the Exhibit
Otsu 50 invention alleged by Defendant of the first instance, the interval d140

between the outer peripheral surfaces of the pair of balls (2) in the Exhibit
Otsu 50 invention alleged by Defendant of the first instance can be 12.7 mm.
As a result, by applying the Exhibit Otsu 154 art to the Exhibit Otsu 50
invention alleged by Defendant of the first instance, Different Feature 1
could have been easily conceived of.
B. Different Feature 2(a) "Croissant" Vol. 35, No. 17, pages 26 to 27 (hereinafter, referred to as
the "Exhibit Otsu 30 document") describes the following art (hereinafter,
referred to as the "Exhibit Otsu 30 art").
"A beauty instrument having a pair of spherical balls supported rotatably
in a non-penetrating state around a pair of shafts mounted at a distal end ofa handle, capable of picking up the skin by the pair of balls"(b) Well-known art
The Exhibit Otsu 45 document, the Exhibit Otsu 193 document, andUnexamined Patent Application Publication No. 2010-131090 (Exhibit Otsu
192, hereinafter, referred to as the "Exhibit Otsu 192 document") describethat "the rotary body of the beauty instrument is rotatably supported by theshaft through the bearing member in a non-penetrating state", and the art wasa well-known art at the time of filing of Present Patent 1.
(c) The Exhibit Otsu 50 invention alleged by Defendant of the first instanceand the Exhibit Otsu 30 art have common features in the structure andfunction and effect, and there is motivation to apply the Exhibi t Otsu 30
art to the Exhibit Otsu 50 invention alleged by Defendant of the first
instance.
And as in the aforementioned (b), "in a beauty instrument for
massaging using a rotary body, to have a structure in which the rotarybody is rotatably supported by the shaft through the bearing member ina non-penetrating state" was a well-known art at the time of filing ofPresent Invention 1.
Therefore, with regard to Different Feature 2, by applying the Exhibit
Otsu 30 art and the aforementioned well-known art to the Exhibit Otsu
50 invention alleged by Defendant of the first instance so as to have thestructure in which the pair of balls (2) of the Exhibit Otsu 50 invention
alleged by Defendant of the first instance is supported as the balls in the
non-penetrating state rotatably around the shaft through the bearing
member could have been easily conceived of.
141

C. As a result, Present Invention 1 could have been easily made on the basis of
the Exhibit Otsu 50 invention alleged by Defendant of the first instance, theExhibit Otsu 154 art, the Exhibit Otsu 30 art, and the well-known art.
(4) Allegation of Plaintiff of first instanceA. Different Feature A
Plaintiff of the first instance alleges that, in the invention described in the Exhibit
Otsu 50 document, the pair of balls (2) is supported by the handle (1), but it is not clear
whether they are supported at the "distal end" thereof.
However, in a beauty instrument or a massaging tool, to have the structure in which
the pair of rotary bodies is supported at the distal end portion of the handle is a wellknown art (Exhibits Otsu 24 to 31 [including branch numbers.], the Exhibits Otsu 44,
45).
And the Exhibit Otsu 50 document describes that "the handle can have a shape of aball or any other arbitrary shapes." (Exhibit Otsu 50-2, page 2, lines 19 to 20), and withregard to Different Feature A, there is motivation to apply the well -known art to the
Exhibit Otsu 50 invention alleged by Defendant of the first instance.
Therefore, to have the structure in which the pair of balls (2) is supported by the
distal end portion of the handle by applying the handle of the well-known art for thehandle of the Exhibit Otsu 50 invention alleged by Defendant of the first instance iseasy.
B. Different Feature B
Plaintiff of the first instance alleges that, in the invention described in the
Exhibit Otsu 50 document, since the center line of the handle (1) cannot be specified,there is no motivation leading to the structure in which the axis of the ball (2) is inclined
forward with respect to the center line of the handle (1), and the structure in which theaxis of the ball (2) is made to maintain a certain angle with respect to the skin surface
during the reciprocating operation could not have been conceived of, either.
However, using a rod-shaped handle by which the center line can be conceptualized
in a beauty instrument or a massaging tool is a well-known art (Exhibits Otsu 24 to 31[including branch numbers.], Exhibits Otsu 44, 45).
And the Exhibit Otsu 50 document describes that "the handle can have a shape of aball or any other arbitrary shapes." (Exhibit Otsu 50-2, page 2, lines 19 to 20), and withregard to Different Feature B, there is motivation to apply the handle of the well -known
art for the handle of the Exhibit Otsu 50 invention alleged by Defendant of the first
instance.
Moreover, when the handle of the well-known art is applied to the Exhibit Otsu 50
142invention alleged by Defendant of the first instance, the pair of balls (2) is supported at
the distal end portion of the handle, and in that case, in the Exhibit Otsu 50 invention
alleged by Defendant of the first instance, since the shaft of the ball (2) protrudes fromthe handle, such a structure that the axis of the ball (2) is inclined forward with respect
to the center line of the handle, for example, is obtained, and in that case, it is naturally
constituted so that the axis can maintain a certain angle with respect to the skin surface
as in the Exhibits Otsu 24-1 and Otsu 25-1.
Therefore, with regard to Different Feature B, having the structure in which the axisof the ball (2) is inclined forward with respect to the center line of the handle (1) so thatthe axis of the ball (2) can maintain the certain angle with respect to the skin surface
during the reciprocating operation by applying the well-known art to the Exhibit Otsu
50 invention alleged by Defendant of the first instance could have been easy for a person
ordinarily skilled in the art.
C. Different Feature 1 and Different Feature 2'
Plaintiff of the first instance alleges that Different Feature 1 and Different Feature
2' have correlation on the ground of the judgment of Other Lawsuit 1 and to grasp themas different features individually is unreasonable.
However, since the primarily cited reference in the judgment in Other Lawsuit 1 is
not the invention described in the Exhibit Otsu 50 document, the different features
between Present Invention 1 and the invention described in the Exhibit Otsu 50
document cannot be argued on the ground of the aforementioned judgment.
D. Different Feature 1(a) Plaintiff of the first instance alleges that, since the Exhibit Otsu 154 art
does not exert the function of picking up the skin by the roller and isdifferent in function from the invention described in the Exhibit Otsu 50
document in which the roller sandwiches the skin, there is no motivation
for combination.
However, the Exhibit Otsu 154 art is to lift up the flesh of a patient
by a method of sandwiching an underlying tissue, massaging and pullingit (Exhibit Otsu 154-2, page 2, lines 15 to 16).
And the skin in Present Invention 1 refers to the skin and the
subcutaneous fat below that, and the underlying tissue referred to in the
Exhibit Otsu 154 art is also the tissue including the subcutaneous fat.
Moreover, since the muscle is present below the subcutaneous fat,when the subcutaneous fat is picked up, it is natural that the muscle isalso picked up, and the function and effect of the Exhibit Otsu 154 art
143

and the function and effect of Present Invention 1 are substantially thesame.
Therefore, the allegation of Plaintiff of the first instance has no
grounds.
(b) Plaintiff of the first instance alleges that, since the Exhibit Otsu 154 art
is based on use of a motor, there is no motivation to apply the Exhibit
Otsu 154 art to the invention described in the Exhibit Otsu 50 documentin which the roller is rotated by the user’s hands.
However, since rotation speeds of the Exhibit Otsu 50 invention
alleged by Defendant of the first instance and the Exhibit Otsu 154 art
are close, even if the Exhibit Otsu 154 art is actively rotated by a drivingroller, the function and effect given to the human skin is similar to thatof the Exhibit Otsu 50 invention alleged by Defendant of the first
instance, and there can be motivation to apply the Exhibit Otsu 154 art
to the Exhibit Otsu 50 invention alleged by Defendant of the first instancein which the roller is rotated manually.
(c) Plaintiff of the first instance alleges that, on the ground that the rotating
direction of the roller in the Exhibit Otsu 154 art is not clear, there is no
motivation to combine it with the invention described in the Exhibit Otsu
50 document.
However, in the Exhibit Otsu 154 document, it is explicitly describedthat the flesh of the patient is lifted up, massaged, and pulled, and in thewell-known art illustrated in Exhibits Otsu 24 to 31 [including branchnumbers], and Exhibits Otsu 44 and 45, the art for picking up the skin byrotating the two rollers in the directions opposite to each other isdisclosed and thus, it is self-obvious that, in the Exhibit Otsu 154 art, too,similarly to the well-known art, one of the rollers is rotated as the drivingroller as the pair of rollers are rotated in the directions opposite to eachother.
(d) Plaintiff of the first instance alleges that, if the structure of the roller inthe Exhibit Otsu 154 art is applied to the ball (2) of the invention
described in the Exhibit Otsu 50 document, one of the balls (2) is driven
by a motor, which is not free rotation, whereby the "bearing member" forsmoothening the free rotation of the ball (2) in the invention described in
the Exhibit Otsu 50 document is no longer needed, and there is ahindrance.
144

However, Defendant of the first instance alleges that to apply 1/2 inch
which is an interval between the outer peripheral surfaces of the pair ofrollers disclosed in the Exhibit Otsu 154 document to the Exhibit Otsu
50 invention alleged by Defendant of the first instance is easy, but does
not allege that the roller driven by the motor in the Exhibit Otsu 154 art
is to be applied and thus, the aforementioned allegation of Plaintiff of thefirst instance has no grounds.
E. Different Feature 2'
Plaintiff of the first instance alleges that it is not clear in the Exhibit Otsu
30 document whether the ball is supported by the ball support shaft.
However, in the Exhibit Otsu 30 document, the fact that the ball is
rotatably supported by using the support shaft can be confirmed.
From the technical common sense at the time of filing of Present Pate nt
1, the structure in which the ball is rotatably supported by using the support
shaft is a self-evident matter, and creating means for rotatably supporting theball without the support shaft is extremely difficult.
Therefore, the aforementioned allegation of Plaintiff of the first instancehas no grounds.
[Allegation of Plaintiff of first instance](1) The Exhibit Otsu 50 document describes the following invention (hereinafter,
referred to as the "Exhibit Otsu 50 invention alleged by Plaintiff of the first
instance").
"A manual massaging tool in which a pair of balls (2) is supported by ahandle (1) at an interval from each other and rotatably around a shaft,respectively, in which an opening angle of the shafts of the pair of balls (2) is
set to 70 to 100 degrees, a diameter of each of the pair of balls (2) to 2 to 8 cm,
the ball (2) is supported by the shaft of the ball (2) in a penetrating state without
a bearing member, and when the handle (1) is gripped and inclined so as to put
the two balls (2) on skin (4), and a tensile force is applied, these balls (2) collectthe skin restricted and sandwiched between the balls (2)".
(2) There are the following different features between Present Invention 1 and the
Exhibit Otsu 50 invention alleged by Plaintiff of the first instance.
A. Different Feature A
In Present Invention 1, the pair of balls is supported by the "distal end of thehandle", while in the Exhibit Otsu 50 invention alleged by Plaintiff of the first
instance, the pair of balls (2) is supported by the "handle (1)", but whether it is145

supported at the "distal end" thereof is not clear.
B. Different Feature B
In Present Invention 1, the "axis of the ball is constituted to be inclined
forward with respect to the center line of the handle so that the axis of the ball
can maintain a certain angle with respect to the skin surface during thereciprocating operation", while in the Exhibit Otsu 50 invention alleged by
Plaintiff of the first instance, since the center line of the handle (1) cannot be
specified, it is not clear whether the axis of the ball (2) is inclined forward withrespect to the center line of the handle (1), and it is not clear whether the axis of
the ball (2) can maintain the certain angle with respect to the skin surface during
the reciprocating operation.
C. Different Feature 1
In Present Invention 1, "the interval between the outer peripheral surfaces ofthe pair of balls is set to 10 to 13 mm", while in the Exhibit Otsu 50 invention
alleged by Plaintiff of the first instance, although "the diameter of the pair ofballs (2) is set to 2 to 8 cm", the interval between the outer peripheral surfacesof the pair of balls (2) is not clear.
D. Different Feature 2'
The ball in Present Invention 1 is "supported by the ball support shaft
through the bearing member in a non-penetrating state", while the ball (2) in the
Exhibit Otsu 50 invention alleged by Plaintiff of the first instance is "supportedby the shaft of the ball (2) without the bearing member in the penetrating state".
(3) How easily the different features could have been conceived of
A. Since Different Feature 1 and Different Feature 2' have correlation, howeasily they could have been conceived of should not be determined individually.
The judgment in Other Lawsuit 1 is also held as such.
B. Different Feature A
The Exhibit Otsu 50 document has the description that the shape of thehandle (1) "can be a shape of a ball or any other arbitrary shapes", but there isno description on the positional relations between the handle (1) and the ball (2).
And the "ball" shape is specifically indicated explicitly as the shape of thehandle (1), and if the pair of balls (2) is to be supported by the ball-shaped handle(1), it is generally considered that support is made at the center (a positionpassing through the center) of the ball-shaped handle (1).
Therefore, in the Exhibit Otsu 50 invention alleged by Plaintiff of the first
instance, even if the support position of the ball (2) with respect to the handle146

(1) is presumed, it is the center of the handle (1), and the structure in which thepair of balls (2) is supported at the distal end of the handle (1) could not havebeen conceived of.
Therefore, Different Feature A could not have been easily conceived of.
C. Different Feature B
In the Exhibit Otsu 50 invention alleged by Plaintiff of the first instance, theonly shape of the handle (1) that can be assumed specifically is spherical, butwith this shape, the center line of the handle (1) cannot be specified, and there
is no motivation to reach the structure that the axis of the ball (2) is inclined
forward with respect to the center line, and the structure in which the relations
between the center line of the handle (1) and the axis of the ball (2) is devisedso that the axis of the ball (2) can maintain the certain angle with respect to theskin surface during the reciprocating operation could not have been conceivedof, either.
Therefore, Different Feature B could not have been easily conceived of.
D. Different Feature 1(a) The Exhibit Otsu 154 art has a function that the roller winds up the skin andthe subcutaneous tissue without sandwiching the skin, massages and pulls it,
and from the description of the Exhibit Otsu 154 document that "the roller
does not sandwich the skin in use but ... in a way that the subcutaneous tissue
is massaged, ... the flesh of the patient is lifted up, massaged, and pulled", to"sandwich the skin (= to pick up the skin)" and "to wind up the subcutaneous
tissue, to massage and to pull it" are considered to be different functions.
Therefore, the Exhibit Otsu 154 art is not to exert the function of
sandwiching and picking up the skin by the roller, and since the function isdifferent from that of the exhibit Otsu 50 invention alleged by Plaintiff ofthe first instance in which the roller sandwiches the skin, there is no
motivation to combine the Exhibit Otsu 154 art with the Exhibit Otsu 50
invention alleged by Plaintiff of the first instance.
(b) The Exhibit Otsu 154 art is an art in which, on the premise of the massaging
device in which the motor is indispensable and one roller is rotated by the
motor, the interval between the two rollers is 1/2 inches.
On the other hand, the Exhibit Otsu 50 invention alleged by Plaintiff ofthe first instance is a roller pushed by the hand and corresponds to the priorart of the Exhibit Otsu 154 art and moreover, the structure is different fromthat of the Exhibit Otsu 154 art in which the active rotation is made by the147

driving roller.
And the interval between the rollers in the Exhibit Otsu 154 art is theinterval on the premise that the roller making the active rotation by thedriving roller is employed, and there is no motivation to apply only this rollerinterval to the Exhibit Otsu 50 invention alleged by Plaintiff of the first
instance corresponding to the prior art of the Exhibit Otsu 154 art.
(c) In the Exhibit Otsu 154 art, in what direction the roller is rotated is
not obvious, and there is no motivation to combine it with the Exhibit Otsu
50 invention alleged by Plaintiff of the first instance in which the two balls(2) are rotated in directions opposite to each other.
(d) When the structure of the roller of the Exhibit Otsu 154 art is applied
to the ball (2) of the Exhibit Otsu 50 invention alleged by Plaintiff of thefirst instance, one of the balls (2) is driven by the motor, which no longer
makes free rotation.
Then, in the Exhibit Otsu 50 invention alleged by Plaintiff of the first
instance, the "bearing member" for smoothening the free rotation of the ball(2) with respect to the shaft is no longer needed, and there is a hindrance inapplication of the Exhibit Otsu 154 art to the Exhibit Otsu 50 invention
alleged by Plaintiff of the first instance.
(e) As described above, Different Feature 1 could not have been easily
conceived of.
E. Different Feature 2'(a) From the description in the Exhibit Otsu 30 document pointed out by
Plaintiff of the first instance, presence/absence of the shaft of the ball is not
specified, and it is not clear whether or not the ball is supported by the ballsupport shaft in the non-penetrating state.
Therefore, the Exhibit Otsu 30 document does not disclose the structureof Present Invention 1 related to Different Feature D.
(b) "In the beauty instrument for massaging by using a rotary body, to have thestructure that the rotary body is rotatably supported by a shaft through abearing member in a non-penetrating state" is not well known.

Moreover,the arts described in the Exhibit Otsu 45 document, the Exhibit Otsu 193
document, and the Exhibit Otsu 192 document are not the arts for smoothrotation of the roller, and the Exhibit Otsu 50 invention alleged by Plaintiffof the first instance does not have a problem of smooth rotation of the balland thus, there is no motivation which leads to Present Invention 1 in which148the ball is supported by the ball support shaft through the bearing member in
the non-penetrating state for the smooth rotation of the ball by applying eachof the aforementioned arts to the Exhibit Otsu 50 invention alleged by
Plaintiff of the first instance.
(c) Therefore, Different Feature 2' could not have been easily conceived of.
3. Whether Present Patent 1 should be invalidated through a trial for patent
invalidation (presence/absence of lack of inventive step with the Exhibit Otsu 45
document as the primarily cited reference) (issue (2)C)[Allegation of Defendant of first instance](1) The Exhibit Otsu 45 document describes the following invention (hereinafter,
referred to as the “Exhibit Otsu 45 invention 1 alleged by Defendant of the first
instance").
"In a magnet beautifying roller in which a pair of cylindrical roller portions
5 are supported on a distal end portion of a handle body portion 2 at an intervalfrom each other and rotatably around an axis of a small-diameter portion 4b, theaxis of the roller portion 5 is constituted by being inclined at a first angle withrespect to a center line of the handle body portion 2 so that the axis of the roller
portion 5 can maintain a certain angle with respect to the skin surface during areciprocating operation, an opening angle of the axes of the pair of small diameter portions 4b is set to a second angle, the roller portion 5 is supportedby the small-diameter portion 4b through a bearing 8 in a non-penetrating state,and since the roller portion 5 is inclined to a front side at the first angle and thesecond angle is opened, it can touch the skin on the face efficiently, whereby anesthetic effect can be improved"(2) Common feature and different features
The common feature and different features between Present Invention 1 andthe Exhibit Otsu 45 invention 1 alleged by Plaintiff of the first instance are as
follows.
A. Common Feature"A beauty instrument in which a pair of rotary bodies are supported on a
distal end portion of a handle at an interval from each other and rotatably
around an axis, respectively, in which the axis of the rotary body isconstituted to be inclined forward with respect to a center line of the handle
so that the axis of the rotary body can maintain a certain angle with respect
to a skin surface during a reciprocating operation, an opening angle of the149pair of support shafts is a certain angle, the rotary body is supported by the
support shaft through a bearing member, and an outer peripheral surface ofthe rotary body is pressed onto the skin for massaging"
B. Different features(a) Different Feature 1
The roller portion 5 of the Exhibit Otsu 45 invention 1 alleged by
Defendant of the first instance has a cylindrical shape and none of acompletely circular shape, a balloon shape, an elliptic circular section,
and a long circular shape(b) Different Feature 2
In the Exhibit Otsu 45 invention 1 alleged by Defendant of the first
instance, the opening angle of the axes of the pair of small-diameter
portions 4b is a predetermined angle as the second angle, while theopening angle of the pair of ball support shafts of Present Invention 1 is
set to 65 to 80 degrees(c) Different Feature 3
In the Exhibit Otsu 45 invention 1 alleged by Defendant of the first
instance, the interval between the outer peripheral surfaces of the pair ofroller portions 5 is not specified at all, while in Present Invention 1, theinterval between the outer peripheral surfaces of the pair of balls is
specified to 10 to 13 mm(d) Different Feature 4
In the Exhibit Otsu 45 invention 1 alleged by Defendant of the first
instance, it is not clear whether or not it is constituted such that the skinis picked up by moving from the distal end of the handle body portion 2
to the base end direction.
(3) How easily the differences could have been conceived of
A. Different Feature 1(a) Application of Exhibit Otsu 30 art
Since the Exhibit Otsu 45 invention 1 alleged by Defendant of thefirst instance and the Exhibit Otsu 30 art have common features in the
structure and the purpose of use, there is motivation to apply the Exhibit
Otsu 30 art to the Exhibit Otsu 45 invention 1 alleged by Defendant of
the first instance.
Therefore, applying the Exhibit Otsu 30 art to the Exhibit Otsu 45
invention 1 alleged by Defendant of the first instance so as to have the150

structure in which the pair of roller portions 5 of the Exhibit Otsu 45
invention 1 alleged by Defendant of the first instance are rotatably
supported as the ball in the non-penetrating state around the roller support
portion through the bearing 8 (bearing member) of the Exhibit Otsu 45
invention 1 alleged by Defendant of the first instance is easy for a person
ordinarily skilled in the art, and Different Feature 1 could have been
easily conceived of.
(b) Application of the art described in Unexamined Patent Application
Publication No. 2000-24065 (Exhibit Otsu 155, hereinafter, referred toas the “Exhibit Otsu 155 document".)
a. The Exhibit Otsu 155 document describes the following art(hereinafter, referred to as the "Exhibit Otsu 155 art").
"In a massaging tool 1 including a grip portion 4 whose distal
end portion B is inclined approximately 20 to 40 degrees ascompared with a base-end side linear portion A and a pair of elastic
bodies in a non-penetrating state and supported rotatably by a rotary
shaft body 8 provided on one end of the grip portion 4, a sphericalbody may be used instead of a columnar body 3 as the elastic body."b. Since the Exhibit Otsu 45 invention 1 alleged by Defendant of thefirst instance and the Exhibit Otsu 155 art have the common featuresin the structure and the purpose of use, there is motivation to apply
the Exhibit Otsu 155 art to the Exhibit Otsu 45 invention 1 alleged
by Defendant of the first instance.
Therefore, applying the Exhibit Otsu 155 art to the Exhibit Otsu
45 invention 1 alleged by Defendant of the first instance so as tohave the structure in which the pair of roller portions 5 in the Exhibit
Otsu 45 invention 1 alleged by Defendant of the first instance are
made a spherical body in the non-penetrating state and are supported
rotatably around the roller support portion through the bearing 8(bearing member) of the Exhibit Otsu 45 invention 1 alleged by
Defendant of the first instance is easy for a person ordinarily skilledin the art, and Different Feature 1 could have been easily conceivedof.
B. Different Feature 2
In the tool for massaging the skin by using a pair of rotary bodies, to havethe opening angle of the axes within a range from 65 to 80 degrees was only151

a matter of technical common sense at the time of filing of Present Patent 1
as a design matter (Exhibits Otsu 50-1, Otsu 161, 162).
C. Different Feature 3
The Exhibit Otsu 45 invention 1 alleged by Defendant of the first instanceis for generating a function of picking up the skin, and a person ordinarily
skilled in the art would select disposition of the spherical body where thisfunction is exerted efficiently, and when the ball of a spherical body in the
Exhibit Otsu 154 art is applied to the Exhibit Otsu 45 invention 1 alleged by
Defendant of the first instance, the interval of the Exhibit Otsu 154 art (theinterval between the outer peripheral surfaces is 1/2 inches (12.7 mm)) isemployed.
Therefore, the structure related to Different Feature 3 in which theinterval between the balls in the Exhibit Otsu 45 invention 1 alleged by
Defendant of the first instance which employs the ball of a spherical body is
set to 10 to 13 mm could have been easily conceived of.
D. Different Feature 4
The function of picking up the skin when the rotary body is moved so as
to be rotated in the beauty instrument using a pair of the rotary bodies was amatter of technical common sense at the time of filing of Present Patent 1
and thus, constitution of the Exhibit Otsu 45 invention 1 alleged by
Defendant of the first instance in which the skin picking-up function is
generated similarly to the Present Invention 1 is obvious for a person
ordinarily skilled in the art, and Different Feature 4 is not a substantial
difference.
E. Therefore, Present Invention 1 could have been easily invented on the basisof the Exhibit Otsu 45 invention 1 alleged by Defendant of the first instance,
the Exhibit Otsu 154 art, the Exhibit Otsu 30 art, and the Exhibit Otsu 155
art.
(4) Allegation of Plaintiff of first instanceA. Plaintiff of the first instance alleges that the opening angle of the axes in theinvention described in the Exhibit Otsu 45 document should be found to be
100 to 140 degrees.
However, Claim 1 of the Exhibit Otsu 45 document has description that"a pair of roller holding portions extending from one end of the grip portio n
so as to be opened at the second angle", and the opening angle of the axes is
not limited and thus, the aforementioned allegation of Plaintiff of the first152

instance has no grounds.
Even if the opening angle of the axes in the Exhibit Otsu 45 invention 1
alleged by Defendant of the first instance is found to be 100 to 140 degrees,
the opening angle is conceptualized as the second angle in the Exhibit Otsu
45 document, and the opening angle of the axes at 100 to 140 degrees is nota technical requisite, and to set the opening angle to 80 degrees as describedabove is a well-known art and thus, to set the opening angle of the axes at
100 to 140 degrees in the Exhibit Otsu 45 invention 1 alleged by Defendantof the first instance to 80 degrees to have a range from 65 to 80 degrees isonly a design matter.
B. Plaintiff of the first instance alleges that the allegation of Defendant of thefirst instance on how easily Different Feature 3 could have been conceivedof is applicable to so-called "easily conceived of based on the matter which
could have been easily conceived of".
However, with regard to Different Feature 1', when the matter describedin the Exhibit Otsu 30 document is applied to the Exhibit Otsu 45 invention
1 alleged by Defendant of the first instance, how to set the interval between
the balls needs to be considered as a design matter, but at that time, to set theinterval between the balls to 1/2 inches (12.7 mm) on the basis of the Exhibit
Otsu 154 document could have been easily conceived of, and such a thought
is only applying the Exhibit Otsu 30 art and the Exhibit Otsu 154 art to the
Exhibit Otsu 45 invention 1 alleged by Defendant of the first instance inparallel and at the same time, and it is different from the "easily conceivedof based on the matter which could have been easily conceived of" that still
another secondarily cited reference is applied to the one reached on the basisof a secondarily cited reference.
C. Plaintiff of the first instance alleges that Different Feature 2' and Different
Feature 3 are differences related to the opening angle of the support shafts
and the interval between the outer peripheral surfaces of the balls in Present
Invention 1, and they are closely related to each other and thus, they could
not have been easily conceived of on the basis of the different documents.
However, the aforementioned allegation of Plaintiff of the first instanceis based on the judgment of Other Lawsuit 1, and the judgment was renderedon the allegation different from the invalidation allegation in this lawsuit andthus, the aforementioned allegation of Plaintiff of the first instance based on
the judgment has no grounds.
153

[Allegation of Plaintiff of first instance](1) The Exhibit Otsu 45 document describes the following invention (hereinafter,
referred to as the "Exhibit Otsu 45 invention 1 alleged by Plaintiff of the first
instance").
"In a magnet beauty roller in which a pair of cylindrical roller portions (5) aresupported on a distal end portion of a handle body portion (2) at an interval from eachother and rotatably around an axis of a small-diameter portion (4b), an axis of the roller
portion (5) is constituted to be inclined at a first angle with respect to a center line of
the handle body portion (2) so that the axis of the roller portion (5) can maintain acertain angle with respect to a skin surface during a reciprocating operation, an opening
angle of the axes of the pair of small-diameter portions (4b) is set to 100 to 140 degrees,
the roller portion (5) is supported by the small-diameter portion (4b) through a bearing(8) in a non-penetrating state, and the roller portion (5) can be brought into contact withthe skin of the face efficiently so as to improve an esthetic effect."(2) There are following different features between Present Invention 1 and the
Exhibit Otsu 45 invention 1 alleged by Plaintiff of the first instance.
A. Different Feature 1'
Present Invention 1 is a "ball", while the roller portion 5 of Exhibit Otsu
45 invention 1 alleged by Plaintiff of the first instance has a cylindrical shapeand is not a ball.
B. Different Feature 2'
In Present Invention 1, the opening angle between the pair of ball support
shafts is "65 to 80 degrees", while in the Exhibit Otsu 45 invention 1 alleged
by Plaintiff of the first instance, the opening angle between the axes of thepair of small-diameter portions 4b is "100 to 140 degrees"
C. Different Feature 3
In Present Invention 1, the interval between the outer peripheral surfacesof the pair of balls is set to 10 to 13 mm, while in the Exhibit Otsu 45
invention 1 alleged by Plaintiff of the first instance, the interval between theouter peripheral surfaces of the pair of roller portions 5 is not speci fied atall.
D. Different Feature 4'
In Present Invention 1, the skin is picked up by pressing the outer
peripheral surface of the ball to the skin and by moving it from the distal endof the handle to the base end direction, while it is not known whether or not
the Exhibit Otsu 45 invention 1 alleged by Plaintiff of the first instance is154constituted such that the skin is picked up by moving from the distal end of
the handle body portion 2 to the base end direction.
(3) How easily the different features could have been conceived of
A. Different Feature 2' and Different Feature 3 are differences on the opening
angle between the support shafts and the interval between the outer
peripheral surfaces of the balls in Present Invention 1, and they are in close
relation with each other and thus, it cannot be considered that they could
have been easily conceived of on the basis of different documents (see thejudgment in Other Lawsuit 1).
B. Different Feature 1'
The cylindrical roller portion 5 of the Exhibit Otsu 45 invention 1 alleged
by Plaintiff of the first instance is intended to have a favorable contact statewith the skin, and the contact state with the skin is largely related to theshape of the roller portion and thus, if the roller portion 5 of the Exhibit Otsu
45 invention 1 alleged by Plaintiff of the first instance is changed from acylindrical shape to a spherical shape, it is obvious that a contact surface
with the skin is reduced, and the contact area is not made favorable.
Therefore, in the Exhibit Otsu 45 invention 1 alleged by Plaintiff of thefirst instance, there is no motivation to add the shape change of the roller
portion 5, and Different Feature 1' could not have been easily conceived of.
C. Different Feature 2'(a) The Exhibit Otsu 45 document describes that 100 to 140 degrees ispreferable as the opening angle (paragraphs [0011], [0021]), but this iscaused by the purpose of the Exhibit Otsu 45 invention 1 alleged by
Plaintiff of the first instance that the contact state with the skin is madefavorable by using the cylindrical roller (paragraph [0009]).
In the Exhibit Otsu 45 invention 1 alleged by Plaintiff of the first
instance, in combination with use of the cylindrical roller, the opening
angle needs to be set from a viewpoint that the contact state with the skinof the cylindrical surface of the cylindrical roller is made favorable inorder to make the contact state with the skin favorable also for the angleof the pair of small-diameter portions and thus, to set the opening angleof the pair of small-diameter portions 4b to a range from 65 to 80 degrees
in the Exhibit Otsu 45 invention 1 alleged by Plaintiff of the first instancecannot be considered from the purpose, or rather it is likely to contradict
the purpose and makes a hindrance in the Exhibit Otsu 45 invention 1
155alleged by Plaintiff of the first instance using the cylindrical roller.
Therefore, a person ordinarily skilled in the art who comes into
contact with the Exhibit Otsu 45 document might set the opening angle
within the range from 100 to 140 degrees as the opening angle in the
Exhibit Otsu 45 invention 1 alleged by Plaintiff of the first instance on
the basis of the explicit description, but could not have been easily
conceived of the change of the opening angle to 65 to 80 degrees.
(b) Moreover, 65 to 80 degrees which, is the range of the opening angle ofPresent Invention 1, and the support on the ball support shaft through thebearing member in the non-penetrating state have a marked effect ofcontribution to the smooth rotation of the ball.
(c) Therefore, Different Feature 2' could not have been easily conceived of.
D. Different Feature 3(a) The Exhibit Otsu 154 document has the description that the interval of
the roller is 1/2 inches (12.7 mm) and the description that it is 1/4 inches(6.35 mm) mixed, and it is unknown which one is correct and thus, thedocument cannot be considered to disclose the structure that "the interval
between the outer peripheral surfaces of the pair of balls is set to 10 to
13 mm" as a technical matter.
(b) The allegation of Defendant of the first instance is that, in order to reachthe structure of Different Feature 3, with the invention described in the
Exhibit Otsu 45 document as a starting point, after the change (roller ischanged to a spherical body) related to Different Feature 1' on the basisof the Exhibit Otsu 30 art and the like is made, the change is made to thespherical body of the same change spot on the basis of the Exhibit Otsu
154 art.

That is, according to the allegation of defendant of the first

instance, Different Feature 3 cannot be conceived of only by changing
the pair of roller portions 5 in the invention described in the Exhibit Otsu
45 document to a spherical body, but a further change that the interval
between the spherical bodies is changed needs to be made, which isapplicable to so-called "easily conceived of based on the matter which
could have been easily conceived of", and Different Feature 3 could nothave been easily conceived of.
(c) As in the aforementioned 2(3)D(a), the Exhibit Otsu 154 art does notexert the function of sandwiching and picking up the skin by the rollers
and has a function different from that of the Exhibit Otsu 45 invention 1
156

alleged by Plaintiff of the first instance and thus, there is no motivation
to combine the Exhibit Otsu 154 art with the Exhibit Otsu 45 invention
1 alleged by Plaintiff of the first instance.
(d) As in the aforementioned 2(3)D(b), the Exhibit Otsu 50 invention alleged
by Plaintiff of the first instance is a roller pushed by the hand andcorresponds to the prior art of the Exhibit Otsu 154 art and moreover, it
is different in structure from the Exhibit Otsu 154 art which makes active
rotation by the driving roller.
And the roller interval in the Exhibit Otsu 154 art is the interval on
the premise that the roller making active rotation by the driving roller is
employed, and there is no motivation to apply only this roller interval to
the Exhibit Otsu 45 invention 1 alleged by Plaintiff of the first instancecorresponding to the prior art of the Exhibit Otsu 154 art.
(e) In the Exhibit Otsu 154 art, in what operation the roller is rotated is not
obvious, and there is no motivation to combine it with the Exhibit Otsu
45 invention 1 alleged by Plaintiff of the first instance in which the pairof rollers are rotated in the directions opposite to each other.
(f) When the Exhibit Otsu 154 art is applied to the roller portion 5 of the
Exhibit Otsu 45 invention 1 alleged by Plaintiff of the first instance, oneof the roller portions is driven by the motor and no longer makes freerotation.
Then, in the Exhibit Otsu 45 invention 1 alleged by Plaintiff of thefirst instance, the bearing for smoothening the free rotation of the roller
portion 5 with respect to the small-diameter portion 4b is not needed atall, and the application of the Exhibit Otsu 154 art to the Exhibit Otsu 45
invention 1 alleged by Plaintiff of the first instance generates a newdifferent feature (presence/absence of the bearing member), andcombination of the two has a hindrance.
(g) As described above, Different Feature 3 could not have been easily
conceived of.

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