PatentDate

March 27, 2024

RightCase2023 (Gyo-Ke) 10034

Court

Intellectual Property High
Court, Second Division

number- A case in which the court determined that a JPO decision contains an error in thedetermination regarding novelty and the inventor, and rescinded the JPO decision.
Case type: Rescission of Trial Decision to Maintain
Result: Granted
Reference: Article 123, paragraph (1), item (ii), Article 29, paragraph (1), item (i), andArticle 123, paragraph (1), item (vi) and paragraph (2) of the Patent Act
Related rights, etc.: Patent No. 6304634Decision of the JPO: Invalidation Trial No. 2020-800045
Summary of the Judgment
1. This case is a lawsuit to seek rescission of a JPO decision (the "JPO Decision") thatdismissed a request for a trial for invalidation of a patent for an invention titled"Method for manufacturing napped sheet" (number of claims: 4; filing date: December
27, 2016; filed by the Defendant while specifying Q as the inventor). The major issues
are [i] whether the invention lacks novelty and [ii] whether the application falls undera misappropriated application. The Plaintiff alleged that the inventor of the inventionsin question (the "Inventions") is P and that the Plaintiff has received transfer of part of
P's right to obtain a patent, and filed a request for a trial together with P. P died before
the JPO Decision was rendered, and the whole right to obtain a patent that had beenpossessed by P belongs to the Plaintiff.
2. In this judgment, the court first found facts based on the results of examination of awitness, etc. and then found that the Plaintiff's claim is well-grounded, and thus
rescinded the JPO Decision. The grounds for the rescission are as outlined below.
(1) Whether the invention lacks novelty
The invention stated in Claim 1 in the claims (Invention 1; an invention of a method
pertaining to a dyeing process) is the same as the process stated in a document that wasexchanged among three companies including the Defendant (the Defendant, Company
S, and Company T) around October 2011 without confidentiality obligation (Exhibit
Ko 53-1), and the same process was being implemented by Company S around thattime.
In addition, Invention 1 is the same as the invention stated in a document that waspresented by the then representative of Company S to multiple third parties (C ompany1M, etc.) around July 2014 without confidentiality obligation (Exhibit Ko 2), and theprocess stated in Exhibit Ko 2 is the same as the process described in Exhibit Ko 531.
Based on the above, Invention 1 is found to have been publicly known by aroundOctober 2011. Therefore, the patent pertaining to Invention 1 was granted in violationof the provisions of Article 29, paragraph (1), item (i) of the Patent Act and involves
a ground for invalidation as referred to in Article 123, paragraph (1), item (ii) of thePatent Act. Consequently, the JPO Decision contains an error in the determination thatthe patent does not contain the ground for invalidation based on lack of novelty as theproduction process of Exhibit Ko 2 (which is the process stated in Exhibit Ko 2 and isalso the process stated in Exhibit Ko 53-1) cannot be considered to have been publiclyknown.
(2) Misappropriated application
Only persons with the right to obtain a patent can file a request for an invalidation
trial on the grounds of a misappropriated application (Article 123, paragraph (2) andparagraph (1), item (vi) of the Patent Act). Therefore, the Plaintiff is required to provethat it is a person with the right to obtain a patent. As the right to obtain a patent
pertaining to the Inventions as alleged by the Plaintiff is originated from the right toobtain a patent pertaining to the Inventions which P had had as the inventor of theInventions, P must be found to be the inventor of the Inventions in order to say that
the Plaintiff is a person with the right to obtain a patent.
The term "inventor" means a person who has actually had a hand in the act of
creating technical ideas of an invention and has actually gotten involved in thecompletion of a characteristic part of an invention pertaining to a means for solving aproblem. Comprehensively considering the statements in the description in question,
the characteristic part of the Inventions exists in the achievement of a high level ofnapping property by using both a steaming step and a drying step. In addition, thecharacteristic part of Invention 3 is also found to lie in that a drying machine with abrush has become unnecessary by the use of a tumbler.
As mentioned in (1) above, Invention 1 was completed by October 2011. AtCompany S, dyeing processing was being conducted by using the process taught by P
(who was the representative of the company until March 2009) around July 2009. In
light of P's career and notes, etc. created thereby, P is considered to have had sufficientknowledge to make the Inventions. In a written statement, P specifically stated thebackground to the development of the Inventions and the content of the Inventions. P
had been engaged in dyeing processing in commission in Kyoto for a decade starting2

in 1975. At the time of launch of Company S, P took up the position of therepresentative of Company S in response to Q's invitation. P brought a tumbler drying
machine from Kyoto and installed it at Company S and taught the then representativeof the Defendant about the details of dyeing processing. In light of such developments,
it is reasonable to presumptively recognize that P had completed the Invention s before
March 2009 when P retired from Company S.
The Defendant alleges that Q is the inventor of the Inventions. However, the detailsof the dyeing process that had been conducted at Company S as alleged by theDefendant and as stated by Q in a written statement have significantly changed during
the proceedings of this action, and these changes in the contents of the allegation andthe statement have an extremely significant influence on the problem to be solved by
the Inventions itself, the necessity of the Inventions, and the process of creating theInventions. Therefore, if Q is the true inventor, it is generally unlikely that Q wouldchange the contents of the allegation and the statement as mentioned above due to asimple memory lapse, etc. The Defendant alleges that it has not conducted a preset inthe past. However, the details of trial and error stated by Q are about the order of thepreset step in the dyeing process, which hints that the preset step itself had alreadyexisted. Even if Q used various ingenuities in relation to the dyeing process, none ofthem is included in the content of the claims pertaining to the Inventions. Therefore,
the Defendant's allegation that Q is the inventor is not acceptable.
Therefore, it is reasonable to find that the inventor of the Inventions is P.
Consequently, the application in question falls under a misappropriated appl ication,and the Patent involves a ground for invalidation as referred to in Article 123,
paragraph (1), item (vi) of the Patent Act. The JPO Decision contains an error in thedetermination that the Patent does not involve the ground for invalidation based on amisappropriated application.

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