Patent

Date

March 30, 2022

Right

Case

2021

number2021 (Ne) 10069

(Ne)

Court

10049,

Intellectual Property High
Court, Second Division- A case in which, regarding the claim to demand the injunction against the
manufacturing and sale, etc. of the product based on the patent right for a patented
invention titled "Dart of a blowgun" and the compensation for damages, the court
denied both the establishment of literal infringement and infringement under thedoctrine of equivalents and reversed the judgment in prior instance that found theestablishment of literal infringement and partially upheld the claim.
Case type: Injunction
Results: Reversal of the prior instance judgment
References: Article 100, paragraphs (1) and (2) of the Patent Act; Article 709 of the
Civil CodeRelated rights, etc.: Patent No. 4910074
Judgment in prior instance: Tokyo District Court, 2019 (Wa) 2675, rendered on May 18,
2021
Summary of the Judgment
1. In this case, the Appellee (the "Prior Instance Plaintiff"), who has the patent right(the "Patent Right") for a patented invention titled "Dart of a blowgun," alleged against
the Appellant (the "Prior Instance Defendant") that the Defendant's product that is adart of a blowgun manufactured, etc. by the Appellant (the "Defendant's Product")belongs to the technical scope of an invention indicated in Claim 2 in the claims of thepatent (the "Invention"), demanded, based on Article 100, paragraphs (1) and (2) of the
Patent Act, the injunction against the manufacturing and sale, etc. of the Defendant's
Product and the disposal thereof, and based on Article 709 of the Civil Code, also
demanded the payment of compensation for damages (the amount of damages estimatedpursuant to Article 102, paragraph (2) of the Patent Act and legal fees) and delay
damages.
2. The court of prior instance found the establishment of literal infringement, upheld
the Appellee's claim to demand the injunction and disposal, and partially upheld theclaim to demand the compensation for damages. Dissatisfied with this judgment, theAppellant filed an appeal and the Appellee filed an incidental appeal , respectively.
3. In this judgment, the court determined that neither literal infringement nor
infringement under the doctrine of equivalents are established with respect to theiDefendant's Product on the following grounds as outlined below, rescinded thejudgment in prior instance, and dismissed all of the Appellee's claim.
(1) Literal infringement
A. In light of the dictionary meaning, the term "oval form" does not include "egg-shaped
form" as its original meaning. In cases of comparing curve lines near both ends of anoval (two points where the oval and its long axis cross), whether the term "oval form"
is used as one that includes a form where one of the curve lines has a smaller curvaturethan the other curve line (hereinafter referred to as a "form with different curvatures")should be determined based on the context, etc. in the description.
B. (A) There is no statement, etc. on the meaning of "oval form" in the description inquestion (the "Description"). However, in consideration of the fact that "spherical form"and "oval form" are used differently in the invention in Claim 1 in the claims and in the
Description, the term "oval form" as used in the Invention does not have a broad
meaning that can include a circle.
(B) The problems to be solved by the Invention are understood as follows: problems
caused by a "barb" at the tip of a dart with respect to prior art are: [i] when removing adart from a target, the pin of a round nail alone remained on the target and the film
alone was pulled out; and [ii] in cases of an overlapped hit, when pulling out the second
dart, the film came off from a round nail pin and the pin of the second dart remained in
the film of the first dart; and a problem caused by the misalignment between the head
and the cylinder of the tip of a dart and the overlapping of film: [iii] there is a bias
towards the center of gravity in an up-and-down direction. The form of a tip for which"the cross-section in the longitudinal direction is an oval form" of the Invention isunderstood to have been adopted as one of the means to solve the aforementioned
problems [i] and [ii] and it may be also understood to be adopted as one of the means
to solve the aforementioned problem [iii]; however, from any perspective, it suffices
for the form of the tip to be the form of a geometric ellipse and the relevant form does
not have to be a form with different curvatures. Rather, in cases of a form with different
curvatures, there may be hindrance to solving the aforementioned problems dependingon the specific form. In the Description, there is no statement, such as data, etc., thatserves as material for judging the range of "oval form" with which the aforementioned
problems can be solved appropriately.
(C) The cross-section in the longitudinal direction of the tip in the embodiment of theInvention is a form that should be called "Koban-gata (a form of an oval gold coin)" or"cross-section of Tawara-gata (a form of a bale)" and, although it is different from theform of a geometric ellipse, both ends in the longitudinal direction have the sameii

curvature. Experiment results concerning said forms are stated in the Description and
it is difficult to find circumstances that may cause a hindrance to the solution of the
problems mentioned in (B) above.
C. Based on A. and B. above, it is reasonable to understand that the "oval form" of theInvention is a form close to the form of a geometric ellipse or a form close to an oval
and includes the form where both ends in the longitudinal direction have the same
curvature, but does not include the form with different curvatures. The form of the edgeof the pin of the Defendant's Product, which should be described as a form where anedge of the form with different curvatures is cut in the specified range, does not meet
the aforementioned requirements.
(2) Infringement under the doctrine of equivalents
A. (A) Concerning the Invention, the characteristic part that composes a unique
technical idea, which is not seen in prior art, is understood to be in the point of solving
the aforementioned problems by adopting the following composition in a blowgun
consisting of a pin and wrapped film: "a pin consisting of a tip, for which the crosssection in the longitudinal direction is an oval form, and a cylinder that extends fromthat tip in the rear direction," "a film with a tip into which the cylinder of theaforementioned pin is completely inserted, ...," and "the oval-formed part of the pin isconnected consecutively to the edge of the film as a weight."(B) Concerning the form of the tip of the pin, compared with the Invention, it can besaid that both are different in that the Defendant's Product [i] has a form where, basedon the form with different curvatures, "the front part of the cross section in thelongitudinal direction has a curved line form with low curvature and the rear part has
the form of a circular arc to form a substantially circular cone" and [ii] a stepped partcaused by the difference between the diameter at the base of the tip of the pin and thediameter of the cylinder. Concerning [i] above, based on the point mentioned in (1), B.
(B) above, the identification of the form for which the "cross-section in the longitudinal
direction is an oval form" of the Invention should be included in the essential part of
the Invention and replacement with the form of the Defendant's Product falls under achange of the essential part of an invention and does not meet the first requirement forthe doctrine of equivalents.
B. Even based on all articles of the evidence for this case, concerning the replacementof the form for which the "cross-section in the longitudinal direction is an oval form"of the Invention with the form of the Defendant's Product, as stated in (1), B. (B) above,a change to a form with different curvatures may hinder the solution of the problem.
While there is no statement in the Description that serves as material for judging theiii

scope of a change in which the aforementioned problems can be solved appropriately,
no common general technical knowledge, etc. is found to say that a person skilled in
the art could have easily conceived of the aforementioned replacement at the time of
manufacturing, etc. of the Defendant's Product. The third requirement for the doctrineof equivalents is not met either.
C. Consequently, without the need to make determinations on the remaining issues,
infringement under the doctrine of equivalents is not found.

iv

Judgment rendered on March 30, 2022
2021(Ne)10049, 2021(Ne)10069, Appeal case of seeking injunction against patent
infringement, appeal case incidental thereto (Court of prior instance: Tokyo District
Court, 2019(Wa)2675)
Date of conclusion of oral argument: January 26, 2022
Judgment
Appellant and incidental Appellee (hereinafter referred to as the "Appellant")
Kabushiki Kaisha Trust Crew
(omitted)Appellee and incidental Appellant (hereinafter referred to as the "Appellee")Kabushiki Kaisha Daiseiko(omitted)
Main text
1. The judgment in prior instance is rescinded.
2. All of the Appellee's claims shall be dismissed.
3. The Appeal incidental to this case shall be dismissed.
4. The Appellee shall bear the court costs for both the first instance and second instance.
Facts and reasons
The abbreviation of terms and meaning of the abbreviations shall be subject to the
judgment in prior instance excluding those defined in this judgment and all uses of theterm, "Attachment," in the citation of the judgment in prior instance shall be replacedwith "Attachment attached to the judgment in prior instance."
No. 1 Judgment sought by parties
1. Object of the Appellant's appeal
The same as paragraphs 1, 2, and 4 of the main text.
2. Object of the Appellee's incidental appeal(1) The part of the judgment in prior instance which is against the Appellee shall be
rescinded.
(2) The Appellant shall pay to the Appellee 9,693,096 yen and an amount accrued
thereon at the rate of 3% per annum for the period from June 25, 2020 until thecompletion of the payment.
1(3) The Appellant shall bear the court costs for both the first instance and second
instance.
No. 2 Outline of the case
1. Outline of the case(1) In this case, the Appellee (the Plaintiff of the prior instance ), who has the patentright (the "Patent Right") for a patented invention titled "Dart of a blowgun," alleged
against the Appellant (the Defendant of the prior instance) that the Defendant's product,
which is a dart of the blowgun manufactured or otherwise handled by the Appellant (the"Defendant's Product"), belongs to the technical scope of an invention (the "Invention")stated in Claim 2 in the claims of the patent (the "Patent"), demanded, based on Article
100, paragraphs (1) and (2) of the Patent Act , the injunction against the manufacturing
and sale, etc. of the Defendant's Product and the disposal thereof (including semi finished products), and based on Article 709 of the Civil Code, also demanded thepayment of 45,653,456 yen (total sum of the amount of damages estimated pursuant to
Article 102, paragraph (2) of the Patent Act (41,503,142 yen) and legal fees (4,150,314yen)) as compensation for damages, and delay damages accrued thereon at the rate of
3% per annum as specified in the Civil Code for the period from June 25, 2020, whichis the date of the last tort, until the completion of the payment.
(2) The court of prior instance determined that the Defendant's Product literally fulfills
constituent features of the Invention and belongs to the technical scope thereof, andfound infringement of the Patent Right. The court of prior instance upheld theAppellee's claims for the injunction and disposal, partially upheld the Appellee's claim
for the payment of compensation for damages to the extent of 35,960,360 yen and thepayment of delay damages accrued on the aforementioned amount, and dismissed theremaining claims for compensation for damages.
(3) Dissatisfied with the judgment in prior instance, the Appellant filed an appeal andthe Appellee filed an incidental appeal, respectively.
2. The basic facts, issues, and allegations of parties related to the issues shall be alteredas follows. The supplementary allegations of the parties in this instance as indicated in
3. below are added and additional allegations of the parties in this instance as indicatedin 4. below are added respectively. The remaining parts are as indicated in 2. through 4.
in "No. 2 Outline of the case" in the "Facts and reasons" section in the judgment in priorinstance and therefore they are cited.
(1) After line 7, page 4 of the judgment in prior instance, "are identical to ....", thefollowing is added: "However, the Appellant alleged that the more accurate form of apin at the tip of the Defendant's Product is as shown in Exhibit Otsu 1. As indicated2below, in the allegation of the infringement under the doctrine of equivalents, theAppellee also alleged based on the dimensions stated in Exhibit Otsu 1." The details of
Exhibit Otsu 1 are as shown in the Attachment, Exhibit Otsu 1. In addition, the phrase"low curvature" in line 10, page 4 (Constituent Features b of the Defendant's Product)means "small curvature (low bend)" and, in the same way, the term "low" is used in thesense of "small" curvature in some cases hereinafter in light of the development of theexamination, etc.
(2) The phrase "with the Defendant's Product" in line 10, page 8 of the judgment inprior instance is altered to "concerning the Defendant's Product" and the phrase "There
are no" in line 22 on the same page is altered to "There was no prior art, such as...."
After the phrase "overlapped hit" in line 14, page 9, the following is added: "(mean ing
that a blown dart enters deeply into the conical film of the preceding dart which has
been blown and stuck into the target; hereinafter, in cases of simply referring to"overlap," it refers to the same as above.)." The phrase "a spherical pin (Plaintiff's
Product)" in line 3, page 10 is altered to "a spherical pin related to the product that theAppellee manufactures and sells as an embodiment of an invention related to the Patent(hereinafter referred to as the "Plaintiff's Product")." The phrase "with the Defendant's
Product" in line 11, page 17 is altered to "concerning the Defendant's Product," and thephrase "Exhibit Otsu No. 9 Publication" in line 10, page 14 is altered to "Exhibit Otsu
9 Publication" respectively. Before the term "composition" in line 20, page 14, thephrase "based on the" is added.
(3) The term "the Invention" in line 10, page 17 of the judgment in prior instance isaltered to "an invention related to the Patent"; the phrase "Fukiya Association members"in line 11, page 20 is altered to "members of the Fukiya Association"; the phrase"amount of damages to the Plaintiff" in line 24, page 20 and line 6, page 21 isrespectively altered to "damages to the Appellee,"; the phrase "equipment of anothergroup (Plaintiff)" in line 18, page 22 is altered to "the Plaintiff's Product that is
manufactured to conform to the standards of another group (the Fukiya Association)";the phrase "impression of infringement" in line 16, page 23 is altered to "impressionthat patent infringement was established"; the phrase "to customers other than the
Plaintiff and the Defendant" in line 10, page 24 is altered to "by groups other than the
Fukiya Association"; and the phrase "Defendant's Association" in line 13 to line 14,
page 24 is altered to "Fukiya Association," respectively.
(omitted)3

No. 3 Judgment of this court
1. This court determines as follows: since the Defendant's Product does not fulfill
Constituent Features B and D of the Invention, the literal infringement is not established,and since the Defendant's Product does not fulfill the first requirement and the third
requirement, the infringement under the doctrine of equivalents is not established. The
grounds are as stated below.
2. Outline of the Invention
Except for the additions as follows and the alterations of [FIG. 1] through [FIG. 3],[FIG. 21], and [FIG. 22] from among the drawings attached to the judgment in priorinstance as shown in the drawings attached to this judgment, the remaining part of thedescription of the Invention is as stated in 1. in "No. 3 Judgment of this court" in the"Facts and reasons" section in the judgment in prior instance and therefore they arecited.
(1) The following is added as a new line after the end of line 6, page 26 of the judgmentin prior instance.
"'The invention related to Claim 1 is a dart that is used for a blowgun, which isdeveloped to achieve the aforementioned purpose. This dart consists of a pin, which
consists of a spherical tip and a cylinder extending backward from the tip, wherein the
diameter of the cross-section of the cylinder is smaller than the spherical tip's diameter,
and a film wrapped in a conical shape with a tip, into which the cylinder of theaforementioned pin is completely inserted and fixed, and wherein the spherical part ofthe pin is connected consecutively to the tip of the film as a weight.' ([0013])'Based on the Invention, 1. the tip of the pin is spherical form and there is therefore
no barb on the nail head, which makes it easier to remove a dart stuck in the target fromthe target, thereby preventing as much as possible the situation where the pin alone
remains in the target and the film alone is removed. 2. Even if a dart that is blown next
overlapped the first dart that has been stuck in the target, stuck deepl y in the film of thefirst dart, thus causing a condition of an overlapped hit, it is possible to prevent thefollowing conditions as much as possible: when the second dart is removed, the film
alone is pulled and the pin comes off from the back film and the pin remains in the filmof the first dart. 3. The dart can be manufactured with extremely small alignment errorof the cylinder to the center of the spherical form and the center of gravity of the overall
dart is placed nearer to the front. Therefore, the movement at the rear end of the film inthe vertical and horizontal directions during the flight of the dart is decreased and theprobability of hitting a target is increased.' ([0014])"(2) The following is added as a new line after the end of line 17, page 27 of the judgment4

in prior instance.
"Here, detailed data on the dart is described. Descriptions of a conventional dart
and descriptions of a dart of the embodiment in question (the "Embodiment") are statedbelow. The conventional dart is a combination of the aforementioned round nail and asubstantially rectangular film.
<Descriptions of the conventional dart> The following values with ± are the scope of
manufacturing tolerances of manual manufacturing.
Overall length: 200mm ± 5mm
Outer diameter on the side of hands: 13.0mm ± 0.2mm
Weight: 0.72g ± 0.02g
Weight of a round nail: 0.250g
Position of the center of gravity: 63mm ± 2mm from the tip<Descriptions of the dart of the Embodiment> The following values with ± are the scopeof manufacturing tolerances of manual manufacturing.
Overall length: 200mm ± 5mm
Outer diameter on the side of hands: 13.0mm ± 0.2mm
Weight: 0.80g ± 0.02g
Weight of a round nail: 0.353g
Position of center gravity: 53mm ± 2mm from the tip
In a state in which a conventional substantially rectangular film 28 is wrapped in a
conical shape, the overlap margin of the rear end part is large as shown in FIG. 22.
However, the overlap margin was able to be decreased as mentioned above by adopting
the aforementioned film form. Therefore, the center of gravity of the film in the verticaldirection can be made uniform and the movement of the dart during flight is decreased
and the weight of the dart can be decreased.
The weight of the pin is increased by 0.1g from a conventional round nail 26 byadopting a round pin 4 in the Embodiment; however, the weight of the film wasdecreased and the weight of the overall dart increased only by 0.08g.
In addition, in the Embodiment, the pin was changed from a conventional round nailto the one with a spherical tip and thereby, the position of the center of gravity in thelongitudinal direction of the dart was moved to the tip direction of the dart. T his change
further decreased movement during the flight of the dart and increased the probabilityof hitting a target.' ([0046] through [0051])"(3) The following is added as a new line after the end of line 2, page 28 of the judgmentin prior instance.
"'Example of modification of the Embodiment is explained.' ([0064])"5

(4) The following is added as a new line after the end of line 13, page 28 of the judgmentin prior instance.
"'Descriptions of the dart in the example of modification are stated below.' ([0067])"(5) The part from the beginning of line 14, page 29 to the end of line 1, page 30 of thejudgment in prior instance is altered as follows.
"According to the description, etc. in (1) above, an object where a plastic film is
wrapped conically and a round nail is fixed at the tip was used as a dart of a conventional
blowgun. Since the head of the round nail of the dart has a 'barb,' there are the following
problems: [i] when removing a dart from a target, the pin of the round nail alone
remained in the target and the film alone was pulled out; [ii] in cases of an overlapped
hit, the 'barb' on the head of the round nail of the second dart stuck in the film of thefirst dart, and when pulling out the second dart, the film came off the round nail pin andthe pin of the second dart remained in the film of the first dart; in addition, since thecylinder of a commercially available round nail does not always go through the centerof the head and if a substantially rectangular plastic film, which is disclosed as a priorart, is wrapped conically, the overlap margin at the rear end of the film in the wrappedstate increased; and there is, therefore, the problem that [iii] the center of gravity in thevertical direction is not uniform in this structure. By adopting the structure of theInvention, [i] since the cross-section in the longitudinal direction of the tip of the pin isan oval form, when removing a dart stuck in the target, the dart can be removed easily
and it can prevent the condition as much as possible that the pin alone remains in thetarget and the film alone is pulled out; [ii] even in cases of an overlapped hit, it can
prevent the following condition as much as possible that when the second dart is pulled
out, the film alone is pulled, the pin is removed from the film at the back, and the pin
remains in the film of the first dart; and [iii] the dart can be manufactured with anextremely small alignment error of the cylinder extending to the back from the tip tothe center of the oval form, and the center of gravity of the overall dart is placed nearer
to the front, and therefore, movement in the vertical direction at the rear end of the film
during the flight of the dart is decreased and the probability of hitting a target isincreased. The effects of the Invention are as follows: when removing a dart from atarget, both pin and film can be pulled out together; it becomes possible to obtain a dart
where the second pin is difficult to stick into the film of the first dart even in cases ofan overlapped hit; a dart with an extremely small alignment error of the cylinder to thecenter of the oval form can be manufactured; and it becomes possible to obtain a dart
where the center of gravity in the vertical direction is uniform, the center of gravit y in
the longitudinal direction of the overall dart is placed nearer to the front, and where6movement during flight is small and the probability of hitting a target is high."
3. Issue 1-1 (Whether a pin of the Defendant's Product has a tip for which the crosssection in the longitudinal direction is an "oval form" (Constituent Features B and D))(1) General meaning of an "oval form"
A. The term "oval form" means an "oval-shaped form" and "oval" refers to "one ofconic curves (quadratic curves); In geometric terms, the trajectory of point P where thetotal of the distances from two fixed points (F, F') on a flat surface (FP + F'P) isconstant" ("Kojien Dictionary, the 6th edition" (issued on January 11, 2008, Iwanami
Shoten) p. 1705, see Exhibit Otsu 2). In this regard, according to the evidence related
to the search results on the website "Kotobank" that was submitted by the Appellee(Exhibit Ko 2; printed on May 30, 2019), the term "oval form" is explained as "an oval shaped form or a similar form thereto" (explanation of Digital Daijiten Dictionary), and"an oval-like form or in such a form; Koban-gata (the form of an oval gold coin);
Choenkei(ellipse-shape);

Sokuenkei(oval-shaped

form

used

in

Japanesemathematics)" (explanation of Nihon Kokugo Daijiten Dictionary, Selected Version).
Based on the above, generally, an "oval form" refers to an "oval-shaped form"; it
includes the form of a geometric ellipse, and it is understood that it is a term also used
for a form which is different from said form, but similar thereto.
However, as to what shape is included in the "oval form" as a form that is different
from a geometric ellipse, but similar thereto, it cannot be said that the extension of
meaning of the "oval form" is clear based on the aforementioned dictionary meaning.
B. Concerning the above, "Tamago-gata (egg-shaped form)" means "an oval form
similar to a chicken egg" (the aforementioned "Kojien Dictionary, the 6th edition," p.
1756; see Exhibit Ko 78). In addition, according to the evidence related to search resultson the website "Kotobank" that was submitted by the Appellee (Exhibit Ko 77; printed
on July 29, 2021), the term "Tamago-gata (egg-shaped form)" is defined as "an oval
form like a chicken egg and shapes similar thereto; A form that looks like an egg"
(explanation of Nihon Kokugo Daijiten Dictionary, Selected Version) and "an oval form
similar to a chicken egg; A form that looks like an egg; 'Rankei (an egg-shape)'"(explanation of Digital Daijiten Dictionary).
In addition, "Rankei (an egg-shape)" means "a form that looks like an egg; 'Tamagogata (egg-shaped form)'" (the aforementioned "Kojien Dictionary, the 6th edition," p.
2933). In the evidence (Exhibit Ko 77), "Rankei (an egg-shape)" is defined as "a form
that looks like an egg; an oval form with one end that is slightly thinner; 'Tamago-gata(egg-shaped form)'" (explanation of Nihon Kokugo Daijiten Dictionary, Selected
Version) and "a form that looks like an egg; 'Tamago-gata (egg-shaped form)'"7

(explanation of Digital Daijiten Dictionary).
The term "oval form" is used as a term including "Rankei (an egg-shape)" in somecases, but on the other hand, regarding "oval form" as defined in A. above, there is no
explanation to the effect that it is synonymous with "Rankei (an egg-shape)," as well as
an explanation of "Rankei (an egg-shape)" even as an example; as mentioned above,
regarding "Rankei (an egg-shape)," there is also no statement to the effect that it issynonymous with "oval form" without restriction, meanwhile, the term "oval form" isused with restrictions on "an oval form similar to a chicken egg" and "an oval form likea chicken egg" and it is explained as "an oval form with one end that is slightly thinner."
In light of these facts, it seems that "an oval form" does not include "Rankei (an eggshape)" as its original meaning.
C. Based on the above, the term "oval form" refers to a geometric ellipse and a form
similar thereto. When comparing curves near both ends (meaning two points where theellipse and the major axis cross) of the oval, the determination as to whether the term"oval form" is used as the one including a form where a curvature of one end is smaller
than the curvature of the other end (such as "Rankei (an egg-shape)," etc.; "A shapewhere the end in the longitudinal direction has a lower curvature than the other end" asalleged by the parties; hereinafter referred to as the "form with different curvatures")needs to be made based on the context, etc. where the term "oval form" is used in thedescriptions (including drawings).
D. Meanwhile, the Appellee alleged that the term "oval form" includes "Rankei (an eggshape)," etc. and indicated image search results on the Internet (Exhibits Ko 10 -1
through 10-6) and examples of use of the term on websites, etc. (Exhibits Ko 79 through84). However, they only show circumstances for what forms the term "oval form" isgenerally used and it is not understood to show that the term "oval form" naturally
includes various forms indicated in the articles of evidence mentioned above as its
meaning.
(2) The term "oval form" in the descriptions in question (the "Description")
A. There is no statement, etc. explaining the meaning of "oval form" in the Description.
However, in consideration of the fact that the tip is described as a "spherical form"in the invention related to Claim 1 and that "spherical form" and "oval form" are useddifferently also in the Description, it is understood that the term "oval form" as used in
the Invention does not at least include a circle (cross-section of a spherical form) anddoes not have a broad meaning that can include a circle.
B. (A) In consideration of 1. (2) of No. 3 "Judgment of this court" in the "Facts andreasons" section in the judgment in prior instance that is altered and then cited, the8problems to be solved by the Invention are understood as the following problems caused
by a "barb" at the tip of a dart with respect to prior art: [i] when removing a dart froma target, the pin of the round nail alone remained in the target and the film alone waspulled out; and [ii] in cases of an overlapped hit, when pulling out the second dart, thefilm came off from the round nail pin and the pin of the second dart remained in thefilm of the first dart (hereinafter collectively referred to as the "problem of theremaining pin"); and the problem caused by the misalignment between the head of the
tip and the cylinder of a dart and the overlapping of film, [iii] there was a bias towards
the center of gravity in a vertical direction (hereinafter referred to as the "problem of
the center of gravity").
(B) In light of the fact that the cause of the problem of the remaining pin was considered
to be the presence of a "barb" at the tip, the tip form with a "cross-section in thelongitudinal direction that is an oval form" is understood to be adopted as one of themeans for solving the problem of the remaining pin. From the perspective of eliminatingthe "barb," the tip form is sufficient with a geometric ellipse, but it does not have to bea form with different curvatures. Consequently, the circumstances where the pin form
is one of the means for solving the problem of the remaining pin do not fall underpositive circumstances where the term "oval form" in the Invention should include theform with different curvatures. Instead, if the tip is in the form with different curvatures,
depending on the specific form, there is another possibility that the tip in the form withdifferent curvatures may remain in the target or in the film of the first dart in cases ofan overlapped hit, and it may hinder the solution of the problem of the remaining pin.
In this regard, in the Description, there is no statement, such as data concerning the tip
form, etc., that serves as material for judging the range of the "oval form" w ith which
the problem of the remaining pin can be solved appropriately.
On the other hand, according to the Description, the relationship between thesolution of the problem of the center of gravity and the tip form with a "cross -sectionin the longitudinal direction that is an oval form" is not clear; however, as one of thecauses of the problem of the center of gravity, misalignment between the head of the
tip and the cylinder of a dart is indicated; although it is about an embodiment related tothe invention related to Claim 1 concerning the effects, etc. of the Invention, there is
the statement that "the pin was changed from the conventional round nail to the one
with a spherical tip and, thereby, the position of the center of gravity in the longitudinal
direction of the dart was moved to the tip direction of the dart"; and it is stated that theexample of modification is related to the Invention and there is a specific statement
concerning the weight, etc. of the round pin in comparison with the conventional round9

nail of a dart in the same way as the aforementioned embodiment. In consideration of
the above, it may also be understood that the tip form with a "cross-section in thelongitudinal direction that is an oval form" was adopted as one of the means for solving
the problem of the center of gravity from the perspective that the relevant form caneasily solve the misalignment with the cylinder, and that the tip is relatively heavier
because there is no bias towards the center of gravity in the vertical direction and it has
a tip extended longer towards the back than a conventional round nail. However, evenfrom these perspectives, it suffices for the tip form to be the form of a geometric ellipse,
and the relevant form does not have to be a form with different curvatures. Rather, if
the tip is in the form with different curvatures, depending on the specific form, it may
become difficult to adjust the position with the cylinder or its characteristics, such as
no bias towards the center of gravity in the vertical direction and the tip becoming
relatively heavier, may not be fulfilled. Therefore, it may hinder the solution of the
problem of the center of gravity. In this regard, in the Description, there is no statement,such as data concerning the tip form, etc., that serves as material for judging the rangeof the "oval form" with which the problem of the center of gravity can be solved
appropriately.
C. Examples of embodiment of the Invention are stated in [0065] through [0069] and[FIG. 3] of the Description. The cross-section of the tip in the longitudinal direction isa form where a circle, which is a cross-section in the longitudinal direction of the"spherical form" that is the tip form of the embodiment of the invention related to Claim
1 ([FIG. 2] of the Description), is divided into two pieces to the right and left (or front
and back in the moving direction of the dart) and a rectangle is pinched in between (inother words, a form where "a circle" is extended to the right and left). The cross -section
should be called "Koban-gata (the form of an oval gold coin)" or "a cross-section of
Tawara-gata (a barrel-shaped form)," etc. and although it is different from the form ofa geometric ellipse, both ends in the longitudinal direction have the same curv ature.
Concerning the aforementioned form, the experiment results are stated in the
Description. As pointed out in B. (B) above, the circumstances where it may hinder
solution of the problem of the remaining pin and the problem of the center of gravity
are difficult to find.
(3) Meaning of the term "oval form" as used in Constituent Features B and D andwhether literal infringement is established
A. Based on the points found in (1) and (2) above, it is reasonable to understand thatthe "oval form" as used in Constituent Features B and D refers to a form close to theform of a geometric ellipse or a form close to an oval and includes the form where both10

ends in the longitudinal direction have the same curvature, such as the form defined in
the embodiment of the Invention, but it does not include forms with different curvatures.
There is no evidence to find common general technical knowledge that is different fromthe above.
B. The tip of the pin of the Defendant's Product is "a tip that is in a form where the front
part of the cross section in the longitudinal direction has a curved line form with a low
curvature and the rear part has the form of a circular arc to form a substantially circularcone, the contact part with the cylinder at the back has corners at the top and bottom,
and the corners at the back are connected with a straight line" (Constituent Feature b)
and in a form where an end of the form with different curvatures is cut in the pre determined scope. Therefore, it is not included in the "oval form" as defined inConstituent Features B and D.
Consequently, it cannot be found literally that the Defendant's Product belongs to
the technical scope of the Invention.
C. The Appellee alleged that the tip of the pin in a form with different curvatures fulfills
the following technical meanings of the Invention and therefore it is included in the"oval form" of Constituent Features B and D: [i] since it has no "barb," a dart can beeasily removed; [ii] the center of gravity in the vertical direction is unif orm; and [iii] itis heavier as a weight than the nail-shaped tip, which is a prior art, and the center ofgravity in the longitudinal direction of the overall dart is placed nearer to the front.
However, in light of the points found and explained in (1) and (2) above, it cannot be
determined that the tip of the pin in the form with different curvatures is included in the"oval form" immediately based on the fact that [i] through [iii] above are fulfilled (inaddition, according to the allegation of the Appellee, the "spherical form" related to theinvention related to Claim 1 can be included in the "oval form" related to the Invention
at the same time and it is also difficult to determine that the allegation is reasonablefrom this perspective).
In addition, the Appellee alleged that the issue in this case is not the form that is
generally visualized first for an oval form, but whether a form where the end in thelongitudinal direction has a lower curvature than the other end, such as "Rankei (anegg-shape)" and "teardrop form," etc., is expressed as an "oval form." However, prior
to the decision as to whether the form of the tip of the Defendant's Product is includedin the "oval form" as defined in Constituent Features B and D of the Invention, themeaning of the "oval form" defined in Constituent Features B and D becomes an issue
of interpretation of the constituent features of the Invention first. Therefore, theaforementioned allegation of the Appellee has an error in its assumption and it does not11have an impact on the determination mentioned in A. and B. above.
4. Issue 1-2 (whether the infringement under the doctrine of equivalents is established)(1) The first requirement
A. The essential part of a patented invention should be interpreted to be the part of theclaims of the patented invention that describes the characteristic feature embodying aunique technical idea that has not been observed in prior art.
The aforementioned essential part should be determined by identifying the problem
and solution means of the patented invention and its effects based on the statements inthe claims and the description and then by determining the characteristic features
embodying a unique technical idea that has not been observed in prior art out of thestatements in the claims and the description of the patented invention. In other words,
based on the fact that the essential value of the patented invention can be determined
depending on the degree of its contribution compared with prior art in the technology
field of the patented invention, the essential part of a patented invention should bedetermined based on what is stated in the claims and the description, and, in particular,
through a comparison with prior art stated in the description. [i] If the degree ofcontribution of the patented invention is considered to be higher than that of prior art,
the patented invention should be found to be embodying a generic concept representing
some of the statements in the claims, and [ii] if the degree of contribution of the patented
invention is evaluated as not much higher than that of prior art, the patented invention
should be found to be almost exactly the same as what is stated in the claims.
However, in the case where the description states a problem that has rem ained
unsolved by prior art, if such statement is objectively found to be insufficient in lightof prior art as of the application filing date or the date of priority claim, the patented
invention's characteristic feature embodying a unique technical idea that has not been
observed in prior art should be determined also in consideration of prior art that is notstated in the description. In such case, the essential part of the patented invention would
be more precisely embodying what is stated in the claims, which would limit theapplicability of the doctrine of equivalents, than in a case where the essential part ofthe patented invention could be determined based only on what is stated in the claims
and the description. (2015 (Ne) 10014, the judgment of the Special Division of theIntellectual Property High Court on March 25, 2016))
B. (A) The problem and solution means of the Invention and its effects are as indicatedin 1. (2) and 3. (2) B. above, "No. 3 Judgment of this court" in the "Facts and reasons"section in the judgment of this court that are altered and then cited.
(B) Prior art
12

a. Matters stated in Exhibit Otsu 4 Publication
Exhibit Otsu 4 Publication is related to an application for utility model registration
for a device disclosed in 1982 and titled "Athletic safe blowgun." [i] In the part of theclaims for utility model registration, there is a statement that "a blowgun that is
equipped with a round-nosed metal dart head at the tip and hollow and conical feathers ...
formed with paper or synthetic resin and metallic foil alone or in combination at theback of the dart head integrally." (line 5 through line 9, page 1 of the description of
Exhibit Otsu 4 Publication) [ii] In the detailed explanation of the device, there is astatement that "a blowgun (7) that is formed in the overall length of approximately 10
cm by engaging and affixing hollow and conical feathers (6) ... formed by expanding
gradually with paper or synthetic resin and metal foil alone or in combination at theback of a metal dart axis (5) that has a round-nosed dart head (4) so that the tip isharmless." (line 10 through line 16, page 2 of the description of Exhibit Otsu 4
Publication) [iii] The following FIG. 3 is posted as an enlarged side view of the blowgun(part of it is cut off).

b. Matters indicated in Exhibit Otsu 5 Publication
Exhibit Otsu 5 Publication is related to an application for utility model registration
for a device disclosed on September 14, 1983 and titled "Structure of a blowgun" andExhibit Otsu 5 Publication has the following statement.
(a) Claims for utility model registration"The structure of a blowgun characterized by setting the position of the center ofgravity of the blowgun dart anterior to the one-third point of the overall length thereof
from the tip of the dart head in an athletic safe blowgun in which a metal dart head isinstalled at the tip and feathers made of light materials are installed at the back of thedart head." (line 5 through line 9, page 1 of the description of Exhibit Otsu 5
Publication)(b) Detailed explanation of the device<i> "This device is related to the improvement of the darts of an athletic safe blowgun
for competing in terms of the probability of hitting a target and, in particular, it relates
to the structure of a blowgun with a stable flying position and flying trajectory." (line11 through line 13, page 1 of the description of Exhibit Otsu 5 Publication)<ii> "Then, the creator of the device produced blowguns with various structures for13trial and tested them to find out the optimal structure of the blowgun. As a result, a sstated below, the creator confirmed that in an athletic safe blowgun that has a metal dart
head at the tip and feathers made of light materials at the back of the dart head, bysetting the position of the center of gravity of the blowgun dart anterior to the one-third
point of the overall length thereof from the tip of the dart head, the flying position of
the blowgun dart becomes stable and that the flying distance consequently increased
the most." (line 19, page 1 through line 7, page 2 of the description of Exhibit Otsu 5
Publication)<iii> "In FIG. 1, a blowgun dart (1) consists of a dart head (2) at the head and feathers(3) at the tail. The tip (5) of the feathers (3) is inserted into a rear engagement hole (4)of the dart head (2) and fixed by adhesive. The dart head (2) has a thick tip (6) and back(7) and the intermediate part constitutes a small-diameter neck (8). The blowgun dart
hitting the target is stuck in the target by the small-diameter part (8) and does not easily
come off. Therefore, the hit position can be easily checked with the blowgun dart being
stuck in the target." (line 14, page 2 through line 3, page 3 of the description of Exhibit
Otsu 5 Publication)<iv> "By adding mass to the dart head (2) and lightening the feathers (3), the po sitionof the center of gravity (G) of the overall blowgun dart (1) is set to the front. In
particular, it is preferable to position the center of gravity (G) in the part (19) at a
distance within one-third of the overall length "l" of the blowgun dart from the tip
surface (10) of the dart head (2)." (line 7 through line 11, page 3 of the description of
Exhibit Otsu 5 Publication)<v> "Various modifications of dart heads are shown in FIG. 2. In FIG. 2, (a) is a dart
head with a neck (8a) that is processed in the form of a right circular cylinder; (b) is adart head in which a neck (8b) is formed in one or multiple truncated cone shapes; and(c) is a dart head on which multiple small-width necks (8c) are installed. In addition, inorder to prevent the dart head from coming off, not only a neck is formed on a dart head(2), but also, as shown in (d) in FIG. 2, the dart head (2) may be formed in a rightcircular cylinder shape and the surface roughening may be provided to its outer
peripheral surface (11)." (the second line from the bottom, page 3 through line 6, page
4 of the description of Exhibit Otsu 5 Publication)<vi> "If the center of gravity (G) is in the rear within one-third of the overall length, asshown in FIG. 5, a blowgun dart (1)' that flies in the direction shown with the arrowed
line (18) against the resistance of air tends to fly with the center of gravity (G) in front,
and therefore, the direction is reversed, as shown in the figure, and the blowgun dart
cannot fly at distance due to increased air resistance." (line 4 through line 9, page 5 of
14the description of Exhibit Otsu 5 Publication)<vii> "This device is highly excellent when being applied to an athletic blowgun...since
the direction of a dart is not reversed due to the air resistance during flight and the dart
maintains the normal position and keeps flying, the flying distance increases due to lessair resistance and the dart can fly in a straight direction." (line 10 through line 19, page
5 of the description of Exhibit Otsu 5 Publication)(c) Figuresc. Matters stated in Exhibit Otsu 6 Publication
Exhibit Otsu 6 Publication is related to an application for a patent disclosed on July
30, 1999 and titled "Compressed air blowgun" and Exhibit Otsu 6 Publication has thefollowing statements.
(a) Detailed explanation of the invention<i> "[Technology field of the invention] This invention is related to an expiratorycompressor that holds a pre-determined expiration temporarily to increase pressure, aprojectile dart that docks tightly with the expiratory compressor, and an injection caseor automatic dart feeder that assists with the docking, in a blowgun device that shootsa projectile dart, by pressure of expiration." (Paragraph [0001] of Exhibit Otsu 6
Publication)<ii> "Due to the historical origin that blowguns were originally for fighting and hunting
and, later, for shooting games, there was the problem that it may cause injury, andproperty damage since the dart heads were sharp and hard, etc." ([0004] of Exhibit Otsu
6 Publication; it is a statement related to [Problems to be solved by the invention].)15

<iii> "A component for docking the projectile dart that docks with the expiratorycompressor mentioned in the preceding paragraph 0007 is a hemispherical tail cup. The
head also forms a similar spherical form. Therefore, if a dart collides with a humanbody or other things, it is not likely to damage them." ([0008] of Exhibit Otsu 6
Publication; it is a statement related to [Means for solving problems].)<iv> "[Embodiment examples] Explaining embodiment examples in reference tofigures, in FIG. 1 and FIG. 2, ... a projectile dart B consists of three parts, including atail cup 7 and a head 10, and a shaft 9 that connects them. Both the tail cup 7 and thehead 10 are molded in a long spherical form where the length of the axis in the flying
direction is longer than the orthogonal axis or a slightly flat and short spherical form inwhich the long and short axes are opposite. ... The projectile dart B can be made byintegrally molding the tail cup 7, the shaft 9, and the head 10 with plastic. However, thecenter of gravity must be placed to the flying direction by filling the inside of the head
10, while making the tail cup 7 hollow. ..." ([0017] of Exhibit Otsu 6 Publication)(b) Figures<i> FIG. 1<ii> FIG. 2

d. Matters stated in Exhibit Otsu 7 Publication
Exhibit Otsu 7 Publication is related to an application for a patent disclosed on May
12, 2000 and titled "Blowgun" and Exhibit Otsu 7 Publication has the following
statements.
(a) Detailed explanation of the invention<i> "[Prior art] There are projectiles for which the tip of the dart head is modified into
a blunt form to the extent of being safe so that it does not injure human beings and16animals. On the other hand, there are feathers modified by using new light and thinmaterials, such as synthetic resin, etc. so as to receive expiration effectively."(Paragraph [0002] of Exhibit Otsu 7 Publication)<ii> "[Problems to be solved by the invention] Due to the historical origin thatblowguns were originally weapons or hunting tools and, later, they became shooting
game devices, there was the problem that the danger of the dart head due to its original
character of being sharp and hard, etc. had not been removed." ([0005] of Exhibit Ots u
7 Publication)<iii> "[Means for solving problems] To eliminate the fixed idea that a dart head must
be made of wood or bamboo, animal bones, stone ware, copper ware, iron ware, or otherstrong and sharp materials, to replace both the dart head and feathers of a projectile dart,
with a soft head, and thereby pursuing full safety not only substantively but also
instinctively." ([0008] of Exhibit Otsu 7 Publication)<iv> "[Embodiment examples] Embodiment examples are explained in reference todrawings. ... First, in FIG. 1, a shaft 33 of a projectile dart D is a round bar made ofrecycled paper, wood and bamboo, or plastic with a length of 7 cm and a diameter of 4mm. Both cut edges of the shaft 33 are bonded with the cylinder or long spherical form
head a34 and head b44 with a long diameter of 10 mm and a short diameter of 7 mm
that are made of rubber, polyethylene, or other soft materials. ..." ([0016] of Exhibit
Otsu 7 Publication)<v> "By replacing both dart head and feathers of a projectile dart with a bald soft head,it can achieve the condition where the blowgun dart will not injure athletes, audienceor things and also instinctively achieve sufficient safety." ([0021] of Exhibit Otsu 7
Publication; it is a statement related to [Effects of the invention].)(b) FIG. 1

e. Matters stated in Exhibit Otsu 8-1
Exhibit Otsu 8-1 is a US patent application publication (US2011/0187053A1) for
an invention disclosed on August 4, 2011 and titled "Toy blow gun, a projectile, a target
and a set including same" and Exhibit Otsu 8-1 has the following statements.
17

"[0046] With reference to FIG. 3 and FIG. 4, in which a non-limiting embodimentof the projectile 104 is depicted. The projectile 104 comprises a projectile body 112. ...
The projectile body 112 is generally of a conical shape as shown in the figure. The
projectile body 112 comprises an apical end 114 and a rear end 115. The apical end 114
is generally blunt, but its exact shape is not particularly limited. One variation isdepicted in FIG. 5, which depicts a first variation of a blunt end, which includes a roundenlarged terminus point. Irrespective of which variation for the apical end 114 isselected, the selection may be made from among those that allow penetration of thetarget 106, as will be described in greater detail herein below. However, ... further
contributes to making the overall use of the toy kit 100 safer."[FIG. 3]

[FIG. 4]

[FIG. 5]f. Matters stated in Exhibit Otsu 9 Publication
Exhibit Otsu 9 Publication is a US patent publication for an invention patented on
May 6, 1986 and titled "Toy blow gun" and the Exhibit Otsu 9 Publication has thefollowing statements.
(a) Outline of the invention"... a spherical projectile 20 with a diameter of Z is shown in FIG. 3 ..." (line 5through line 6, paragraph 4 of Exhibit Otsu 9 Publication)"A preferred projectile for use in the invention comprises a hollow tubular projectile
having a closed end and an open end forming a closed end cavity within the projectile,
with the projectile being adapted to be inserted within the bore by blowing air throughthe blow tube and into the open end of the projectile." (line 15 through line 20,
paragraph 4 of Exhibit Otsu 9 Publication)
18

The shape of the projectile is preferably substantially conical and the closed end of
the projectile is blunt. Most preferably the blunt closed end of the projectile issubstantially spherical in shape." (line 21 through line 24, paragraph 4 of Exhibit Otsu
9 Publication)"Most preferably the aforementioned hollow tubular projectile further has a blunt
closed end for safety purposes. As depicted in FIG. 3a, the blunt closed end 24 is chosen
to be substantially spherical in shape. The primary concern in devising the blunt closed
end 24 of the projectile 22 is safety." (line 52 through line 57, paragraph 4 of Exhibit
Otsu 9 Publication)(b) FIG. 3

g. Matters stated in Exhibit Otsu 11 Catalog
In Exhibit Otsu 11 Catalog, which was published in July 2008, a photogr aph of adart of a blowgun (Exhibit Otsu 11 Blowgun) with the structure indicated in the
Description [FIG. 20] is posted. (Exhibits Otsu 11 through 13, the entire import of oral
arguments)
h. Matters stated in Exhibit Otsu 57 Publication
Exhibit Otsu 57 Publication is "Registered Utility Model" issued on January 11,2007 and for a device titled "Nail-removing tool" and Exhibit Otsu 57 Publication has
the following statements.
(a) Detailed explanation of the device<i> Background art"When blowing out a dart from the cylinder of an athletic blowgun, the user breathes
by strongly adding abdominal pressure instantaneously and it increases blood
circulation. Therefore, the athletic blowgun is considered to be effective for maintaining
and improving fitness. It has become widespread as a sport recently and athletic
blowgun competitions have been held. (See Patent Document 1.)
A dart of this type of blowgun is formed by wrapping strip sheet materials to form
approximately 200 mm of a conical cylinder, which has an opening at the tapered tip,
inserting a nail from the opening to have the round head of the nail exposed at the19tapered tip, and adhering the body to the tip with an adhesive. The cylinder, from whicha dart is ejected, is made of a pipe with a diameter of approximately 13 mm and a lengthof approximately 500 mm to 1,200 mm." ([0002] and [0003] of Exhibit Otsu 57)<ii> Problems to be solved by the device"With an athletic blowgun, there are cases where the dart that is blown next overlaps
the first dart that is stuck in the target during practice. Since the dart has speed, the nailof the second dart strongly connects to the inside of the first dart. In this case, if thesecond dart is pulled out, the nail of the second dart often remains inside the first dart.
In order to remove the nail that remains in the first dart, the only way is to massage it
while holding the first dart and it is very inconvenient." ([0004] of Exhibit Otsu 57
Publication)<iii> Embodiment examples"FIG. 1 is an exploded front view of a nail-removing tool related to the present
device; FIG. 2 (a) is a front view indicating the use conditions of the nail-removing toolin FIG. 1; FIG.2 (b) is an enlarged sectional view of A-A line in FIG. 2 (a); and FIG. 3(a), (b), and (c) are enlarged sectional views of the dart tip in order to explain the use
conditions of the nail-removing tool in FIG. 1. ([0009] of Exhibit Otsu 57 Publication)(b) FIG. 3(C) According to prior art as described in (B) above, concerning the dart of a bl owgun,
it was found to be well-known fact before filing an application for the Patent that,mainly from the perspective of safety, it is preferable that the tip of the dart is a "round nosed form," "spherical form," "long spherical form," etc. and that the flight stability
and flight distance of the dart are increased by setting the position of the center ofgravity of the dart nearer to the front of the overall dart.
However, concerning a blowgun dart comprised of a round nail or pin and wrapped20

film, the presence of prior art indicating the specific application of the aforementioned
well-known matters is not found even based on all articles of evidence of this case.
(D) In addition to Constituent Features A through E of the Invention, based on (A)through (C) above, the characteristic part of the Invention that composes a unique
technical idea, which is not observed in prior art, is understood to be in the point ofsolving the problem of the remaining pin and the problem of the center of gravity byadopting the following composition in a blowgun dart consisting of a pin and wrapped
film: in particular, from among Constituent Features B through D, "a pin consisting ofa tip, for which the cross-section in the longitudinal direction is an oval form, and acylinder extending backward from the tip," "a film with a tip into which the cylinder of
the aforementioned pin is completely inserted, ...," and "the oval-formed part of the pin
is connected consecutively to the tip of the film as a weight."(E) According to the meaning of "oval form" as defined in Constituent Features B andD that was found and determined in 3. above and the entire import of oral arguments,
concerning the form of the tip of the Invention and the form of the tip of the Defendant's
Product, they are different in the following points: [i] the tip is an "oval form" in theInvention, while the tip of the pin of the Defendant's Product is in "a form where thefront part of the cross section in the longitudinal direction has a curved line form wit ha low curvature and the rear part has the form of a circular arc to form a substantiallycircular cone" (as indicated in Attachment Exhibit Otsu 1, the pre-determined curvature
is chosen for a circular arc in the rear part that forms a substantially circ ular cone; see
Exhibit Otsu 3-1 and 3-2 and Exhibit Otsu 15), and [ii] the Defendant's Product has a
stepped part at the base.
Concerning [i] from among the above, based on what is pointed out in 3. (2), B.
above, the Invention is understood to have adopted the structure of "a tip, for which thecross-section in the longitudinal direction is an oval form" at least as a method ofsolving the problem of the remaining pin. In addition, as pointed out in 3. (2) B. (B)above, if the form of a tip "for which the cross-section in the longitudinal direction isan oval form" is changed to a form with different curvatures, solution of the problemof the remaining pin and the problem of the center of gravity may be hindered; however,the data, etc. that serves as the material for judging the range of "oval forms" that canappropriately solve the problem of the remaining pin is not stated in the Description.
Then, the specification of the form of the tip in the Invention, "for which the crosssection in the longitudinal direction is an oval form," as found and determined in 3. (3)above should be included in the essential part of the Invention. Replacing the form withthe form of the tip of the Defendant's Product should be considered to fall under a21change of the essential part of the Invention.
C. Consequently, the structure of the Invention contains a part different from that of the
Defendant's Product. The different part is the essential part of the Invention andtherefore, the first requirement is not fulfilled.
(2) The third requirement
In addition, even based on all the articles of evidence for this case, concerning the
replacement of the form "for which the cross-section in the longitudinal direction is anoval form" of the Invention with the form of the tip of the Defendant's Product, as statedin 3. (2), B. (B) above, a change to a form with different curvatures may hinder thesolution of the problem of the remaining pin and the problem of the center of gravity.
While there is no statement in the Description that serves as material for judging thescope of change in which the aforementioned problems can be solved appropriately, nocommon general technical knowledge, etc. is found to consider that a person skilled in
the art could have easily conceived of the aforementioned replacement at the time of
manufacturing, etc. of the Defendant's Product.
Consequently, the third requirement is not fulfilled.
(3) Conclusion
Consequently, without the need to make determinations on the remaining issues,
infringement under the doctrine of equivalents is not found.
(4) Allegation of the Appellee
A. (A) The Appellee alleged concerning the first requirement that the following points
are the essential part of the Invention: there is no "barb" part, and the dart has a tip witha smooth and curve-shaped cross-section form in the longitudinal direction whichmakes it possible to pull out the dart easily from the target and from the first dart, anda pin with a form where the cylinder passes through the substantial center of the tip.
However, as determined and explained in (1) A. and B. above, the Appellee's
aforementioned allegation cannot be adopted. Therefore, the Appellee's allegation
related to the common features and differences between the Invention and the
Defendant's Product based on the aforementioned allegation cannot be adopted.
(B) The Appellee alleged concerning the first requirement that the point that theInvention focuses on the form of the rear part of the tip of the pin is new as a technicalidea. However, even if the point of focus has one of the characteristics of the Invention,
the circumstances where the form of the tip, "for which the cross-section in thelongitudinal direction is an oval form," was selected as a method of solving problems
in the Invention cannot be ignored when examining the establishment of infringement
under the doctrine of equivalents. In addition, the structure related to the form of the22rear part of the tip of the pin merely remains as one of the solutions for multiple
problems to be solved by the Invention. Therefore, the Appellee's aforementioned
allegation does not have an impact on the determination mentioned in (1) B. and C.
above.
B. The Appellee alleged concerning the third requirement that the Invention provides
the tip of the pin which makes it possible to pull out a dart from the target and from thefirst dart, and that a person skilled in the art could have easily conceived of the fact thatthe form of the tip of the pin is not limited to the spherical form or oval form, but it
only requires to have no "barb" and to be formed with a smooth curve so that resistancebecomes less when pulling out the dart. As mentioned in A. (A) above, the Appellee's
allegation concerning the essential part of the Invention cannot be adopted, and theAppellee's aforementioned allegation that a person skilled in the art could have easily
conceived of that fact lacks the premise, and the third requirement is not fulfilled, as
mentioned in (2) above. The remaining allegations of the Appellee are also based on
the Appellee's allegation concerning the essential part of the Invention or ignoring thecircumstances where the form of the tip, "for which the cross-section in the longitudinal
direction is an oval form," was selected as a method of solving the problems in theInvention. Therefore, they are not reasonable and cannot be adopted.
No. 4 Conclusion
Consequently, without the need to make determinations on the remaining issues,
there are no grounds for the Appellee's claims against the Appellant. However, incontrast to this determination, the judgment in prior instance partially upheld the claimsof the Appellee and it is not reasonable. The Appellant's appeal in this case has grounds.
Therefore, the judgment in prior instance shall be rescinded and the Appellee's claims
in question shall be dismissed. Since there are no grounds for the incidental appeal inquestion, it shall be dismissed and the judgment is rendered as indicated in the main
text.
Intellectual Property High Court, Second Division
Presiding judge: HONDA Tomonari
Judge: NAKAJIMA Tomohiro
Judge: KATSUMATA Kumiko

23

(Attachment) Exhibit Otsu 1

24

(Attachment)
Figures[FIG. 1]

[FIG. 2]

[FIG. 3]

[FIG. 21]

[FIG. 22]25