Judgment rendered on May 26, 2023
2022 (Ne) 10046, Appeal Case of Seeking Injunction and the like against Patent
Infringement(Court of prior instance: Tokyo District Court 2019 (Wa) 25152)
Date of Conclusion of Oral Argument: March 29, 2023
Judgment
Appellant

DWANGO Co., Ltd.

Attorneys

Seiji Ohno
Hirofumi Tada

Patent Attorney

Tomohiro Matsuno

AppelleeFC2, Inc.

(Hereinafter, referred to as the "Appellee FC2".)
Attorneys

Jun Takahashi
Toshimitsu Dan
Toshiaki Miyagawa

AppelleeHomepage System, Inc.

(Hereinafter, referred to as the "Appellee HPS".)
Attorney

Yoshiyuki Hamada

Main Text
1 In the judgment in prior instance, the part related to the Appellee FC2 shall bechanged as follows.
(1) In "FC2 Video" (https://video.fc2.com/), the Appellee FC2 shall not delivera video file and a comment file from a server of the Appellee FC2 to user terminals
existing in Japan in such a manner that comments overlaid and displayed on a video ina display device of a user terminal move in a horizontal direction and are displayed so
as not to overlap each other.
(2) The Appellee FC2 shall pay, to the Appellant, 11,015,517 yen and the money
according to each of rates described in the "delay damages rate (per annum)" column
to each of the moneys described in the "approved amount" column in Attachment 4 -1,
the list of approved amounts from each of the days described in the "date to start
counting delay damages" column until completion of the payment.
1(3) All the remaining claims by the Appellant against the Appellee FC2 shall bedismissed.
2 The appeal by the Appellant against the Appellee HPS shall be dismissed.
3 The expanded claim by the Appellant against the Appellee HPS in this court
shall be dismissed.
4 Between the Appellant and the Appellee FC2, the court costs shall be divided
into ten parts through the first and second courts, in which the Appellant shall bear
seven parts thereof and the Appellee FC2 shall bear the remainder, and between theAppellant and the Appellee HPS, the Appellant shall bear all the court costs in thiscourt.
5 No. 1 (1) and (2) of this judgment can be provisionally executed.
6 For the Appellee FC2, an additional period for filing a final appeal and apetition for acceptance of final appeal shall be 30 days.
Facts and ReasonsNo. 1

Object of the Appeal
1 The judgment in prior instance shall be rescinded.
2 The Appellees shall not deliver each of the files described in the list of the

Defendant's files in Attachment 1 to user terminals existing in Japan.
3 The Appellees shall erase each of the programs described in the list of the
programs for the Defendant's Server in Attachment 2.
4 The Appellees shall remove each of the servers described in the list of
Defendant's Servers in Attachment 3.
5 (1) Principal claim
The Appellees shall pay, to the Appellant, jointly and severally 1,000,000,000
yen and the money at the rate of 5% per annum thereto from June 1, 2019 until
completion of the payment.
(2) Alternative claim
The Appellees shall pay jointly and severally 1,000,000,000 yen and themoney according to each of rates described in the "delay damages rate (per annum)"
column to each of the moneys described in the "claimed amount" column in the list ofalternative claimed amounts from each of the days described in the "date to start
counting delay damages" column in the Attachment 5 until completion of the payment.
No. 2

Outline of the Case (abbreviations as in the judgment in prior instance unlessotherwise prescribed)
2

1 Summary of the caseThis case is one in which the Appellant, who has the patent right for the patentregistered as Patent No. 6526304 with the title of the invention "Comment Delivery
System" (hereinafter, referred to as the "Patent", and the patent right related to the
Patent as the "Patent Right"), asserted that each of the systems (hereinafter, collectively
referred to as "each of the Defendant's Systems", and each of them as "Defendant'sSystem 1" or the like according to the number of each of the Defendant 's Services)
according to "FC2 Video", which is a video delivery service with comments on theInternet (https://video.fc2.com/, hereinafter, referred to as the "Defendant's Service 1"),
"FC2 SayMove!" (http://say-move.org/, hereinafter, referred to as the Defendant'sService 2"), and "FC2 HIMAWARI Video" (http://himado.in/, hereinafter, referred toas the Defendant's Service 3", and the Defendant's Services 1 to 3 are collectively called"Each of the Defendant's Services") operated by the Appellee FC2, a US corporation,
belong to the technical scope of the invention according to the Patent, and that the act
by the Appellee FC2 of distributing each of the files described in the list of the
Defendant's files (hereinafter, referred to as "each of the Defendant's Files") in
Attachment 1 from each of the servers described in the list of the Defendant 's Servers
existing in the U.S. in Attachment 3 (hereinafter, referred to as "each of the Defendant'sServers) to user terminals existing in Japan falls under "production" (Article 2,paragraph (3), item (i) of the Patent Act) of each of the Defendant's Systems andinfringes the Patent Right, and also asserted that the Appellee HPS substantively
engages in the above act jointly with the Appellee FC2, thereby demanding against theAppellees, pursuant to Article 100, paragraphs (1) and (2) of the Patent Act, for an
injunction against the distribution of each of the Defendant's Files to the user terminals
existing in Japan, for erasing of each of the programs described in the list of the
programs for the Defendant's Servers in Attachment 2 (hereinafter, referred to as the"program for the Defendant's Servers"), and for removal of each of the Defendant'sServers as well as for joint payment of 10,000,000 yen as a part of the damages on the
ground of the joint tort of the patent infringement and the delay damages at the rate of
5% per annum prescribed in the Civil Code before amendment by the 2017 Law No. 44(hereinafter, referred to as the "Civil Code before amendment") on the ground of joint
tort of patent right infringement from the day following the date of delivery of thecomplaint thereto until completion of the payment.
The court of prior instance determined that [i] each of the Defendant's Systems
satisfies all the constituent features of the invention according to the Patent and belongs
to the technical scope thereof, [ii] however, in the light of the principle of territoriali ty,
3which means that the effects of the patent right are approved only in a territory of thecountry concerned, in order for the "production" according to Article 2, paragraph (3),item (i) of the Patent Act to be applicable, it should be interpreted that a product which
satisfies all the constituent features of the patent invention needs to be newly created inJapan; however, each of the Defendant's Servers, which is a constituent element of eachof the Defendant's Systems, exists in the United States, and it is impossible for only theuser terminals existing in Japan to satisfy all the constituent features of the invention
according to the Patent and thus, it cannot be found that the Appellees "produced" eachof the Defendant's Systems in Japan and moreover, it cannot be found that the Appellee
HPS was engaging in the work related to each of the Defendant's Services during theperiod in which the Appellant asserted the infringement.

Thus, the court of priorinstance determined that the facts of the infringement of the Patent Right by theAppellees cannot be approved, and dismissed all the claims by the Appellant.
Thus, the Appellant instituted this lawsuit against the judgment in prior instance.
Moreover, the Appellant principally claimed for 1,000,000,000 yen, which is apart of the amount of damages pertaining to Article 102, paragraph (2) of the Patent
Act and the delay damages for the part of May in 2019 (part from the 17th to the 31stof the same month) in this court for the part related to the claim for damages andalternatively changed the litigation to the claim for the damages pertaining to the same
paragraph for the part from the 17th of the same month to August 31 of 2022 or theclaim for 1,000,000,000 yen, which is a part of the amount of damages pertaining toparagraph (3) of the same Article and the delay damages, and expanded the claim.
2 Basic Facts (facts without indication of evidence are indisputable facts or facts
approved by entire import of argument.)(1) Parties
A. The Appellant is a stock company with businesses of planning, development,
manufacture, sales, rental, and the like of network systems using a computer.
B. The Appellee FC2 is a US corporation with businesses of operation and thelike of blogs and video delivery sites on the Internet.
C. The Appellee HPS is a stock company with businesses of various information
providing services and the like using the Internet.
(2) The Patent
A. History of the application
Since it is as described in No. 2, 2(2) in "Facts and Reasons" in the judgment inprior instance, the description shall be cited.
B. Scope of claims
4The scope of claims of the Patent is configured by claims 1 to 13, and thedescription in claims 1 and 2 is as follows (hereinafter, the invention according to claim
1 shall be referred to as "Invention 1", the invention according to claim 2 as "Invention
2", and they shall be collectively referred to as "each of the Inventions").
[Claim 1]
A comment delivery system including a server and a plurality of terminal devices
connected to the server via a network, in which
the server:receives a first comment and a second comment to a video given by a user
who is viewing the video transmitted from the server; andtransmits the video and comment information to the terminal device;
the comment information includes:
the first comment and the second comment; anda comment given time, which is a video play time indicating an elapsed timeof the video with a beginning of the video as a reference, corresponding to a point oftime when each of the first comment and the second comment is given, comprising:means for displaying the video and the first comment and the second comment
at least partially overlapping the video and moving in a horizontal direction on a display
device of the terminal device in a video play time corresponding to the comment given
time on the basis of the video and the comment information;a determining portion which determines whether or not a display position of thesecond comment when displayed on the video overlaps a display position of the firstcomment; anda display-position control portion for adjustment such that the first comment andthe second comment are displayed at positions not overlapping each other, when they
are determined to overlap, whereinby means of transmission of the video and the comment information by the serverto the terminal device, the display device of the terminal device displays:
the video; andat the video play time corresponding to the comment given time, the fi rst
comment and the second comment at least partially overlapping the video and moving
in the horizontal direction in a manner that the first comment and the second comment
do not overlap each other.
[Claim 2]
A comment delivery system including a video delivery server and a comment
delivery server, and a plurality of terminal devices connected to them via a network, in
5whichthe comment delivery server:receives a first comment and a second comment to the video given by a user
who is viewing the video transmitted from the video delivery server;transmits comment information to the terminal device;
the video delivery server transmits the video to the terminal device;
the comment information includes:
the first comment and the second comment; anda comment given time, which is a video play time indicating an elapsed timeof the video with a beginning of the video as a reference, corresponding to a point oftime when the first comment and the second comment are given, respectively,
comprising:means for displaying the video and the first comment and the second comment
at least partially overlapping the video and moving in a horizontal direction on a display
device of the terminal device in a video play time corresponding to the comment given
time on the basis of the video and the comment information;a determining portion which determines whether or not a display position of thesecond comment when displayed on the video overlaps a display position of the firstcomment; anda display-position control portion for adjustment such that the first comment andthe second comment are displayed at positions not overlapping each other, when they
are determined to overlap, whereinby means of transmission of the comment information by the comment deliver yserver and of the video by the video delivery server to the terminal device, respectively,
the display device of the terminal device displays:
the video; andat the video play time corresponding to the comment given time, the firstcomment and the second comment at least partially overlapping the video and moving
in the horizontal direction in a manner that the first comment and the second comment
do not overlap each other.
C Separate description of constituent features
Each of the Inventions is separately described as constituent features as follows.
(A) Invention 1
1I. A comment delivery system,
1A. which is a comment delivery system including a server and a plurality ofterminal devices connected to the server via a network, in which
61B. the server
receives a first comment and a second comment to a video given by a user
who is viewing the video transmitted from the server; and1C. transmits the video and comment information to the terminal device;
1D. the comment information includes:
the first comment and the second comment; anda comment given time, which is a video play time indicating an elapsed timeof the video with a beginning of the video as a reference, corresponding to a point oftime when each of the first comment and the second comment is given, comprising:
1E. means for displaying the video and the first comment and the second
comment at least partially overlapping the video and moving in a horizontal direction
on a display device of the terminal device in a video play time corresponding to thecomment given time on the basis of the video and the comment information;
1F. a determining portion which determines whether or not a display position of
the second comment when displayed on the video overlaps a display position of th e firstcomment; and1G. a display-position control portion for adjustment such that the first commentand the second comment are displayed at positions not overlapping each other, when
they are determined to overlap, wherein
1H. by means of transmission of the video and the comment information by theserver to the terminal device, the display device of the terminal device displays:
the video; andat the video play time corresponding to the comment given time, the firstcomment and the second comment at least partially overlapping the video and moving
in the horizontal direction in a manner that the first comment and the second comment
do not overlap each other.
(B) Invention 2
2I. A comment delivery system
2A. which is a comment delivery system including a video delivery server and acomment delivery server, and a plurality of terminal devices connected to them via a
network, in which
2B. the comment delivery server:receives a first comment and a second comment to the video given by a user
who is viewing the video transmitted from the video delivery server;
2C1. transmits comment information to the terminal device;
2C2. the video delivery server transmits the video to the terminal device;7

2D. the comment information includes:
the first comment and the second comment;
a comment given time, which is a video play time indicating an elapsed timeof the video with a beginning of the video as a reference, corresponding to a point oftime when the first comment and the second comment are given, respectively,
comprising:
2E. means for displaying the video and the first comment and the second
comment at least partially overlapping the video and moving in a horizontal direction
on a display device of the terminal device in a video play time corresponding to thecomment given time on the basis of the video and the comment information;
2F. a determining portion which determines whether or not a display position
when the second comment is displayed on the video overlaps a display position of thefirst comment; and2G. a display-position control portion for adjustment such that the first commentand the second comment are displayed at positions not overlapping each other, when
they are determined to overlap, wherein
2H. by means of transmission of the comment information by the comment
delivery server and of the video by the video delivery server to the terminal device,respectively, the display device of the terminal device displays:
the video; andat the video play time corresponding to the comment given time, the firstcomment and the second comment at least partially overlapping the video and moving
in the horizontal direction in a manner that the first comment and the second comment
do not overlap each other.
(3) Operation of each of the Defendant's Services
Besides deletion of the phrase from "it is to be noted that" on page 17, line 11
to the end of line 13 in the judgment in prior instance, it is as described in No. 2, 2 (5)in "Facts and Reasons" in the judgment in prior instance, which shall be cited.
(4) Configuration of each of the Defendant's Systems
A. Defendant's System 1
Defendant's System 1 is a comment delivery system including a "video
delivery server" and a "comment delivery server" and a plurality of terminal devices
connected to them via a network and satisfies the constituent features 1A, 1G, and 1Iof Invention 1 and the constituent features 2A, 2G, and 2I of Invention 2.
B Defendant's Systems 2 and 3
Defendant's Systems 2 and 3 are the comment delivery system including the8

"comment delivery server" and a plurality of terminal devices connected to this via a
network, respectively, and satisfy the constituent features 1G and 1I of Invention 1 andthe constituent features 2G and 2I of Invention 2.
3 Jurisdiction of international court
Besides alteration of the term an "office" on page 18, line 10 in the judgment inprior instance to a "sales office" and "Article 3-2 of the Code of Civil Procedure" fromthe same line to line 11 to "Article 3-2, paragraph (3) of the Code of Civil Procedure",
it is as described in No. 2, 2(7) in "Facts and Reasons" in the judgment in prior instanceand thus, it shall be cited.
4 Issues(1) Governing law (Issue 1)(2) Whether or not each of the Defendant's Systems belongs to the technicalscope of Invention 1 (Issue 2)(3) Whether or not each of the Defendant's Systems belongs to the technicalscope of Invention 2 (Issue 3)(4) Presence/absence of "production" of each of the Defendant's Systems by theAppellees (Issue 4)(5) Establishment of the defense of invalidity (Issue 5)
A Lack of inventive step (Invalidation Reason 1) with Unexamined Patent
Application Publication No. 2004-193979 (Exhibit Otsu 17, hereinafter referred to as"Exhibit Otsu 17 publication" in some cases) as a primary cited reference (Issue 5-1)
B Lack of inventive step (Invalidation Reason 2) with Unexamined Patent
Application Publication No. 2004-297245 (Exhibit Otsu 18, hereinafter referred to as"Exhibit Otsu 18 publication" in some cases) as a primary cited reference (Issue 5-2)
C Lack of inventive step (Invalidation Reason 3) with Unexamined Patent
Application Publication No. 2004-15750 (Exhibit Otsu 19, hereinafter referred to as"Exhibit Otsu 19 publication" in some cases) as a primary cited reference ( Issue 5-3)
D Lack of inventive step (Invalidation Reason 4) with "Annotation to Online
Video Contents and Application by Viewers", Daisuke Yamamoto, Takashi Nagao,
Transactions of the Japanese Society for Artificial Intelligence, Vol. 20 (issued in
November 2005) (Exhibit Otsu 20, hereinafter referred to as "Exhibit Otsu 20
document" in some cases) as a primary cited reference (Issue 5-4)
E Lack of inventive step (Invalidation Reason 5) with Unexamined Patent
Application Publication No. 2003-111054 (Exhibit Otsu 21, hereinafter referred to as"Exhibit Otsu 21 publication" in some cases) as a primary cited reference (Issue 5 -5)
F Lack of inventive step (Invalidation Reason 6) with International Publication
9

No. WO00/64150 (Exhibit Otsu 24, hereinafter referred to as "Exhibit Otsu 24
publication" in some cases) as a primary cited reference (Issue 5-6)
G Lack of inventive step (Invalidation Reason 7) with U.S. Patent Publication
No. 2004/0098754 (Exhibit Otsu 25, hereinafter referred to as "Exhibit Otsu 25
document" in some cases) as a primary cited reference (Issue 5-7)
H Violation of clarity requirement (Invalidation Reason 8) (Issue 5-8)
I Violation of support requirement (Invalidation Reason 9) (Issue 5-9)
J Violation of enablement requirement (Invalidation Reason 10) (Issue 5-10)
K Violation of prior application requirement (Invalidation Reason 11) (Issue 5 11)
L Lack of novelty and lack of inventive step due to violation of division
requirement (Invalidation Reason 12) (Issue 5-12)
M Lack of inventive step and the like due to violation of requirement of priority(Invalidation Reason 13) (Issue 5-13)
N Violation of public order and morality (Invalidation Reason 14) (Issue 5 -14)
(6) Establishment of abuse of right (Issue 6)(7) Necessity of injunction and removal or the like (Issue 7)(8) Amount of damage of the Appellant (Issue 8)
No. 3

Assertion by Parties related to Issues
1 Issue 1 (governing law)
It is as described in No. 3, 1 of "Facts and Reasons" in the judgment in priorinstance, which shall be cited.
2 Issue 2 (Whether or not each of the Defendant's Systems belongs to thetechnical scope of Invention 1)
Besides the alteration of the term "Defendant's system" to "each of the
Defendant's Systems", the term "Defendant's service" to "Defendant's Services", andthe "Invention" to "each of the Inventions", it is as described in No. 3, 2 in "Facts andReasons" in the judgment in prior instance, which shall be cited.
3 Issue 3 (Whether or not each of the Defendant's Systems belongs to thetechnical scope of Invention 2)
Besides the alteration of the term "Defendant's System" to "each of the
Defendant's Systems", and the term "Defendant's service" to "Defendant's Services", itis as described in No. 3, 3 in "Facts and Reasons" in the judgment in prior instance,
which shall be cited.
4 Issue 4 (Presence/absence of "production" of each of the Defendant 's Systems
10

by the Appellees)
The term "Defendant's System" shall be altered to "each of the Defendant'sSystems", the "Invention" to "each of the Inventions", the "Defendant' System" to "eachof the Defendant's Systems", and the supplemental assertions by the parties in this court
shall be added as follows, and it is as described in No. 3, 4 in "Facts and Reasons" inthe judgment in prior instance, which shall be cited.
(1) Supplemental assertion by Appellant in this court
A. Relationship between "production" and the principle of territoriality(A) "Production" (Article 2, paragraph (3), item (i) of the Patent Act) is an actof newly creating a product belonging to the technical scope of an invention.
The principle of territoriality only means that "the effect of the patent right isapproved only in the territory of a country", and it is a leap of logic immediately fromthere to such interpretation that, in order to launch the "production", a product which
satisfies all the constituent features of the patent invention needs to be newly created inJapan as in the judgment in prior instance.
If it is interpreted that even all the constituent features are required to besatisfied in the country for the principle of territoriality to exert effects of the patentright, infringement of the patent related to the network can be evaded extremely easily
only by disposing the "server" outside the country, which causes the unreasonablesituation that the effect of the patent right related to the network in our country isremarkably weakened.

Particularly, since it is now extremely easy to provide a service

in the country by using a server outside the country, if such interpretation was adopted,
it would be difficult to question responsibility for infringement of the patent right inimportant technical fields, which would incur unreasonable results.
Moreover, even in the Criminal Code subject to the legality principle (Article
31 of the Constitution), establishment of domestic crimes is affirmed by realization ofsome of the constituent features in Japan, and it is interpreted that the principle ofterritoriality is satisfied (see Supreme Court Judgment 2013(A)510 rendered by Third
Petty Bench Decision / Keishu Vol. 68, No. 9, p. 1053 on November 25, 2014), andregarding the principle of territoriality in the Patent Act, too, it should be interpreted
that, even if a part of a product which satisfies the constituent features is created outside
the country, if the other parts are created in the country, it falls under "production".
Furthermore, the principle of territoriality is clearly stipulated in laws in the
U.S., Germany, the U.K., and the like, but even if some of the constituent features are
satisfied outside the country, courts rendered determinations to approve the patent right
infringement as interpretation theory (Exhibits Ko 308, 312, 315, 317, and the like) and11

have made substantial determination on the principle of territoriality on the basis of thecurrent situation that the Internet spreads across borders.
(B) As described above, in the relationship with the principle of territoriality, ifeven a part of a product satisfying the constituent features of the patent invention iscreated in Japan, it should be interpreted to fall under "production".

The

determination in the judgment in prior instance different from the above is erroneous.
B Applicability to "production" (Article 2, paragraph (3), item (i) of the Patent
Act)(A) Each of the Defendant's Systems is configured by a server existing in the
U.S. and a large number of user terminals existing in Japan.

Representing each of the

Defendant's Systems, an HTML 5 version of the Defendant's System 1 will be explainedby using the drawings in Attachment 8-1 (in the drawing, only one user terminal isdescribed by representing all user terminals), and operations thereof are as follows.
[i] A user specifies a desired video page to a user terminal.

As a result, without

any further operation by the user, [ii] to [ix] described below are operated.
[ii] The user terminal transmits to a server requests for webpage data and a JS
file corresponding to the specified video page.
[iii] The server receives the requests for webpage data and the JS file in responseto (ii).
[iv] The server transmits the requested webpage data and JS file to the user
terminal in response to [iii].
[v] The user terminal receives the webpage data and JS file in response to [iv].
[vi] The user terminal transmits requests for a video file and a comment file tothe server in accordance with the received JS file in response to [v].
[vii] The server receives the requests for the video file and the comment file inresponse to (vi).
[viii] The server transmits the requested video file and comment file to the user
terminal in response to [vii].
[ix] The user terminal receives the video file and the comment file transmitted
from the server in response to [viii].
[x] The user clicks a play button.
[xi] The user terminal plays and displays the comment moving on the video in
response to [x].
(B) Regarding the relationship between the operation of the Defendant's System
1 in the aforementioned (A) and the "production", as described below, [iv] i s start ofthe production and [ix] is completion of the production.
12

The aforementioned (A) [i] to [iii] are an act of ordering the production of
Defendant's System 1 and the server accepting it on the basis of the operation by theuser, which is not included in "production" but is performed before the start thereof.
By the aforementioned (A) [iv] to [ix], the comment moving on the video on
the user terminal is brought into a state capable of playing and displaying, andDefendant's System 1 belonging to the technical scope of each of the Inventions is
newly created.
Thus, the aforementioned (A) [iv] (transmission of the webpage data and the
JS file by the server) is start of the "production" and the aforementioned (A) [ix](reception of the video file and the comment file by the user terminal) is completion ofthe "production".
(C) As described above, the "production" of the Defendant's System 1 isconfigured by:[a] Transmission of the webpage data, the JS file, the video file, and thecomment file by the server existing in the U.S. (the aforementioned (A) [iv] and [viii]),
and[b] Reception of the webpage data, the JS file, the video file, and the comment
file described above by the user terminal existing in Japan (the aforementioned (A) [v]and [ix]).
The transmission in [a], which is a part of the "production", is performed in
the United States, while the reception in [b], which is another part, is performed inJapan.
(D) In this regard, even if the server transmits the webpage data, the JS file, thevideo file, and the comment file, unless they are received by the user terminal, thecomment moving on the video cannot be played and displayed on the user terminal andthus, Defendant's System 1 is not considered to be completed until the user termin alreceives each of the aforementioned files.

Only after the reception by the user

terminal, the comment moving on the video on the user terminal can be played anddisplayed, which is a state where the Defendant's System 1 included in the technicalscope of each of the Inventions is newly created and thus, the reception of the video fileand the like by the user terminal performed in Japan (the aforementioned (C) [b]) is
also a part of the "production".
Moreover, regarding the "production" act, it cannot be determined in whatplace the "production" act was performed while ignoring where the newly created"product" is generated.
Most of the Defendant's System 1 (parts configured in the large number of13

user terminals existing Japan) is newly created in Japan, and at least most of the"production" act can be conceived to be conducted in Japan and thus, the Defendant 's
System 1 can be considered to be "produced" in Japan (Article 2, paragraph (3), item(i) of the Patent Act).
C Subject of "Production"(A) The act of working asserted by the Appellant in this case is the file delivery
act and the like by the Appellees from each of the Defendant's Servers toward the user
terminals existing in Japan, and the act toward the user terminals existing outside thecountry is not asserted as the act of working.
(B) Since the aforementioned B (C) [a] is the transmission by the server, it isobvious that the subject is the Appellees.

Moreover, since [b] is performed by thetransmission of the webpage data, the JS file, the video file, and the comment file fromthe server without intervention of the user's operation in accordance with [a], the subjectof [b] is also the Appellees.
The "production" of the Defendant's System 1 is creation by the transmissionof the webpage data, the JS file, the video file, and the comment file from the server
existing in the United States by using a large number of user terminals existing in Japanas a so-called material and thus, it is performed only by the Appellees, and the users 'acts are not included.
The aforementioned B (A) [x] and [xi] are an act by the user to use the
Defendant's System 1 and is not included in the "production" but is performed after thecompletion thereof.
According to the above, the subject of the production of the Defendant'sSystem 1 is the Appellees.
(2) Supplemental assertion by the Appellees in this court
A. With respect to the assertion on the relationship between the "production" andthe principle of territoriality(A) There is no dispute on that the "production" in Article 2, paragraph (3),item(i) of the Patent Act is an act of newly creating a product belonging to the technicalscope of the Patent invention.
According to the principle of territoriality, "the effect of the patent is approved
only in the territory of the country concerned" and thus, from the viewpoint that it isnatural consequence that the act of creation outside the country does not fall under"production" in Article 2, paragraph (3), item (i) of the Patent Act and that, according
to the all-elements Rule, the working of the patent invention is to work all the elements
configuring the patent invention, if even a part of a product is produced outside the14country, it should not fall under "production" in Article 2, paragraph (3), item (i) of the
Patent Act.
Therefore, the determination in the judgment in prior instance that, in order tofall under "production" in Article 2, paragraph (3), item (i) of the Patent Act, a productsatisfying all the constituent features of the patent invention needs to be newly createdin Japan is justifiable.
(B) The Appellant cites the following points as grounds for the applicability to"production" in Article 2, paragraph (3), item (i) of the Patent Act, that if even a partof a product satisfying the constituent features of the patent invention is created in Japan,
which is groundless.
a. A point that, in the Criminal Code, even if some of the constituent features are
in Japan, crimes committed inside the country is establishedAccording to judicial precedents, regarding embezzlement of a product ofperformance for illegal reasons, establishment of the embezzlement is approved(Supreme Court Judgement on October 10, 1961), and establishment of theft is also
approved for thefts of prohibited items (Supreme Court Judgment on February 15, 1949).
Eachrequirementin

criminal

punishment

isinterpreted

independentlyofpresence/absence of the civil right to claim.
The assertion by the Appellant is equal to the argument that, since even if the
product of performance for illegal reasons or prohibited items are targets of criminal
protection, civil claim for return should be approved.
Moreover, unlike criminal law whose enforcement against a defendant outside
Japan is practically impossible, a lawsuit under the civil law can be instituted against adefendant outside Japan, and enforcement is also possible in a case of a country under
mutual recognition.

Thus, an adverse effect by forcing the interpretation of the Patent

Act unique to our country to citizens/corporations in other countries is more significant
in civil law.
Therefore, applicability to "production" in Article 2, paragraph (3), item (i) of
the Patent Act should be understood from a viewpoint of integrity with treaties andinternational harmonization as interpretation of the civil right to claim and thus, a does
not constitute a ground for the Appellant's assertion.
b. A point that infringement of network-related patents can be avoided only by
installing the "server" outside the country
Just because the possibility of patent workaround is a problem, it is a leap oflogic to consider that if only a part of a product satisfying the constituent features iscreated in Japan, it falls under "production".
15

Rather, the interpretation that, i f a partof a product satisfying the constituent features is created in Japan, the effects of the
Patent Act in our country immediately take effect has more problems.

If a claim for

injunction or a claim for damages can be made for all the "production" acts by thecreation of a part of the product satisfying the constituent features of the patentinvention, it could lead to such a consequence that a lawsuit can be instituted on the
ground of patent right infringement in Japan if even only one of the Intern et users ispresent in Japan.

In this case, the idea of the patent right in Japan is forced on

operators in other countries by ignoring patent systems of the other countries having
different systems, which goes against the fundamental idea of the principl e ofterritoriality that the patent system in each country should be respected and violates theParis Treaty and seriously affects international harmonization.
Furthermore, if patent right infringement in a foreign country is approved for
operators in Japan with a similar interpretation (patent right infringement in the foreigncountry is approved if a service with a server existing in Japan can be viewed by abrowser from the foreign country, for example.), any services made open to the public
on the Internet constitute patent right infringement in any country in the world andenable institution of lawsuits as a result, which would remarkably confuse the order of
the Patent Act.
Therefore, if there is an irrational point in the interpretation that the p roductsatisfying all the constituent features of the patent invention needs to be created in Japanin order to fall under "production", it should be dealt with by revisions of the patent
systems and treaties of the countries, and it is not appropriate to unnecessarily expand
the effects of the patent rights in Japan to the other countries by the interpretation of
the Patent Act in Japan and thus, b does not constitute a ground for the assertion by theAppellant.
c. A point in which, in the United States, Germany, the United Kingdom, and thelike, it is determined that the patent right infringement is approved, even if some of theconstituent features are satisfied outside the country
The examples of the foreign countries cited by the Appellant are only s everal
examples in the three countries, and to conclude that exceptions to the principle ofterritoriality should be made by the determination in individual courts with such a few
examples has not examined its legitimateness at all, and it should be regard ed as a leapof logic.

In the court examples in our country, the principle of territoriality has beenstrictly conformed to by the Supreme Court Judgment of the Card Reader Case(Supreme Court Judgment 2000 (Ju) No. 580 rendered by First Petty Bench on
September 26, 2002 / Minshu Vol. 56, No. 7, page 1551) and the like, and an adverse
16effect caused by making an exception thereto is clearly anticipated as described above
and thus, even if an exception to the principle of territoriality is to be made, it sho uld
be dealt with by a legislative process.
Therefore, c does not constitute a ground for the assertion by the Appellant.
B With respect to the assertion on the applicability of "production" (Article 2,paragraph (3), item (i) of the Patent Act)(A) In light of the Patent Act that clearly defines "working" and places a highvalue on predictability for a third party / legal stability, it is reasonable that thedetermination on whether the "act" by the Appellees falls under "production" should bemade by a "filtering test" by using such a method that firstly confirms the "act" by theAppellees not by comparison with the patent invention but by a natural act and examines
whether the "product" which is "newly created" by the act is "included in the technicalscope of the invention".
Since the "act" which is the "production" should not be discussed with the"constituent features", it is not allowable to consider an act performed by a third party
or only a result of a causal relation as the "act" by the Appellees.
By examining this in relation to this case, the act by the Appellee FC2 related
to the "production" of each of the Defendant's Systems is only manufacture of a program
corresponding to each of the Defendant's Systems and upload of the program to theserver, both of which are completed in the U.S.
After that, an act of use including the upload of the comments and the videos
by the users exists until the comment and the video are displayed on the user terminal,
but the display device on the user terminal is a general-purpose browser, and the act ofuse has no relation with the featured part of each of the Inventions.

Moreover, since

the Internet is open to the world, the act of use is not an act performed only in Japan,
and to interpret this as the act of working under the Patent Act in Japan should beconsidered to be violation of the principle of territoriality.
Furthermore, in Defendant's System 1, the user terminal only passively
displays the video and the comment in accordance with the description in the program
uploaded by the Appellee FC2 to the server and the contents of the comments uploaded
by a third party to the server of the Appellee FC2 and the video uploaded to the serverof the Appellee FC2 (in Defendant's Systems 2 and 3, the video uploaded to a third
party's server), and it does not have a featured structure or perform a featured operation.
The video and the comment displayed on the user terminal are only a result of use ofan already produced device (each of the Defendant's Systems) by a user using thegeneral-purpose browser of the user terminal, and the "act" to "newly" "create" the17"product" does not exist there.
The written opinion in Exhibit Otsu 311 points out that "in general, a system
related to communication is accompanied by transmission/reception of data and thus,
the interpretation including even repetition of production, disposal of the system related
to the communication for the first unit, the second unit, the third unit, the n -th unit in
the "production" at timing of the data transmission/reception means that the system isre-produced at each timing of the data transmission/reception in the system, whichcannot be employed." (the written opinion Exhibit Otsu 327 also points out a similar
indication), and according to this indication, it should be considered that the act of theAppellee FC2 does not fall under the "production" of Invention 1.
As described above, the production of each of the Defendant's Systems iscompleted by installing a server in the U.S., by storing the program, and by bringing
them into a providable state via the Internet.
Therefore, the assertion by the Appellant that the start of the production ofeach of the Defendant's Systems is transmission in the aforementioned (1) B (A) [iv]and the completion thereof is the reception of [ix] is groundless.
(B) a. Even if the reception act in the user terminal is interpreted as an act ofworking in Japan, as described in the aforementioned A, in order to fall under"production" in Article 2, paragraph (3), item (i) of the Patent Act, the productsatisfying all the constituent features of the patent invention needs to be newly createdin Japan, but each of the Defendant's Servers, which is a constituent feature of each of
the Defendant's Systems, exists in the U.S., and not all the constituent features of theinvention according to the Patent are satisfied only by the user terminal existing inJapan and thus, the "production" of each of the Defendant's Systems in Japan is not
approved.
b. In this regard, the Appellant asserts that most of Defendant's System 1 (a partconfigured by a large number of user terminals existing in Japan) is newly created inJapan, and at least most of the "production" act can be conceived in Japan and thus,
Defendant's System 1 is "produced" (Article 2, paragraph (3), item (i) of the Patent Act)in Japan.
However, the assertion by the Appellant is to cause foreseeability to be lostfor a third party in a point that applicability of the production act is determined on thebasis of an unclear reference such as the "most", which is unreasonable.
Moreover, the assertion by the Appellant argues the "act", which is"production", by the "constituent features", and it is unreasonable also in a point thatan "act to newly create" a "product" (each of the Defendant's Systems) belonging to the18technical scope of the invention is confused with a state brought about by use of eachof the Defendant's Systems, which is the "product" (the comment moving on the video
becomes displayable on the user terminal).
Furthermore, even if this reference is adopted, in each of the Defendant 's
Systems, creation of a program and incorporation thereof in a server are performed
outside the country, and it is obvious that "most" of the system is not created in Japan.
Therefore, the aforementioned assertion by the Appellant is groundless.
C With respect to the assertion of the subject of "production"
The Appellant asserts that the "production" of Defendant's System 1 isconstituted by [a] transmission of webpage data, a JS file, a video file, and the comment
file by a server existing in the U.S. and [b] reception of the webpage data, the JS file,the video file, and the comment file by a user terminal existing in Japan, and since [a]is the transmission by the server, the subject is the Appellees, and since [b] is performedby transmission of the webpage data, the JS file, the video file, and the comment filefrom the server in response to [a] without intervention of the user's operation, thesubject of [b] is also the Appellees.
However, the transmission act in [a] is not performed by the Appellee FC2
but is automatically performed in response to a request, since a program wasincorporated in the server connected to the Internet, and it is only a consequence of thecausal effect.
Subsequently, [b] is performed by specification of a webpage by a user or aclick by a user on the play button displayed on the webpage, and since an operation by
the user is intervened, its premise itself is erroneous.

Moreover, even if the Appellee

FC2 performs the transmission act in [a], since the Patent Act clearly distinguishes andprescribes "transfer" and "acceptance", "import" and "export", and "provision" and"reception", it should not be interpreted that the Appellee FC2 performs the act ofreception in [b].
Therefore, the aforementioned assertion by the Appellant is groundless.
5 Issue 5 (establishment of defense of invalidity)
Corrections shall be made as follows, and it is as described in the Attachment
to the judgment in prior instance "Assertion by the parties on establishment of defense
of invalidity", which shall be cited.
(1) Subsequent to "Exhibit Otsu 17 publication" on page 127, line 8 in the
judgment in prior instance, "([0005], [0007], [0008], [0017], [0041], [0045], [0047],[0066], [0122], [0125] to [0127], [0129], [0130], [0135] to [0138], [0192], FIGS. 14,
15, and 18)" shall be added, and the phrase "shall be called." shall be added subsequent19

to "'note storage memory'" on the same page, line 16.
(2) The phrase "[0137]" on page 128, line 18 in the judgment in prior instanceshall be altered to "[0136], [0137]", "overlap the determination portion" on page 129,line 23 to "overlap, the determination portion", "inhere, and thus" on page 130, lines 4
to 5 to "inhere.", "publicly-known art to be changed" on the same page, line 7 to "tochange is publicly-known and thus", and "is applied" on the same page, line 8 to ", anda publicly-known art as such is applied", and subsequent to "Exhibits Otsu 26 to 28" on
the same page, lines 19 to 20, "([0059] and [0095] in Exhibit Otsu 26, on the upper left
column on page 4, lines 2 to 8, 14 to 19 in Exhibit Otsu 27, [0007] and [0011] in Exhibit
Otsu 28)" shall be added.
(3) Subsequent to "Exhibits Otsu 48, 61, 62" on page 131, line 1 in the judgmentin prior instance, the phrase "(Exhibit Otsu 48 on page 80, Exhibit Otsu 61 on pages
190, 191, 196, and 199, Exhibit Otsu 62 on pages 182 and 188)" shall be added, and thephrase "is the invention and has a technical field in common" on the same page, line 4
shall be altered to "since the technical field is in common in a point that".
(4) Subsequent to "Exhibit Otsu 18 publication" on page 137, line 16 in the
judgment in prior instance, "([0001], [0005], [0007], [0009], [0012], [0013], [0019] to[0021], [0028], [0029])" shall be added, and the phrase "overlap the determination
portion" on page 139, line 17 shall be altered to "overlap, the determination po rtion"(5) Subsequent to "Exhibit Otsu 19 publication" on page 146, line 11 in the
judgment in prior instance, "([0004], [0005], [0007], [0014], [0020], [0023], [0032],[0036], [0049], [0050], [0060], [0068], [0069], FIG. 9)" shall be added, and the phras e"shall be called." shall be added subsequent to "'difference time memory'" on the same
page, line 21.
(6) Subsequent to "'utterance information'" on page 147, line 3 in the judgmentin prior instance, the phrase "shall be called." shall be added, the ph rase "or less" on
the same page, line 15 shall be deleted, and the phrase "overlap the determination
portion" on page 148, line 1 shall be altered to "overlap, the determination portion",and "NTT invention" on page 151, line 18 to "Exhibit Otsu 19 Inventi on".
(7) Subsequent to "Exhibit Otsu 20 document" on page 152, line 10 in the
judgment in prior instance, "('3.1 System configuration', '4.1 Annotation editing page','4.2 Text annotation', '5. Annotation reliability')" shall be added, and the phrase "overlap
the determination portion" on page 154, line 4 shall be altered to "overlap, thedetermination portion".
(8) Subsequent to "Exhibit Otsu 21 publication" on page 160, the last line in the
judgment in prior instance, "([0003], [0030], [0035], [0037], [0038], [0041], [0043] to20

[0045], [0050], [0051], [0057], [0060], FIG. 5)" shall be added, the phrase "TBSinvention" on page 162, lines 2 to 3 shall be altered to "Exhibit Otsu 21 invention", thephrase "overlap the determination portion" on the same page, line 20 to "overlap, thedetermination portion".
(9) Subsequent to "Exhibit Otsu 24 publication" on page 170, line 3 in the
judgment in prior instance, "(Abstract)" shall be added, the phrase "overlap thedetermination portion" on page 171, lines 2 to 3 shall be altered to "overlap, thedetermination portion", and "of Exhibit Otsu 24 publication" on page 178, line 5 shallbe deleted.
(10) Subsequent to "Exhibit Otsu 25 publication" on page 179, line 6 in the
judgment in prior instance, "([0032], [0034], [0035], [0042], [0045], [0059], FIGS. 1A
and 1B)" shall be added, the phrase "overlap the determination portion" on page 181,lines 1 to 2 shall be altered to "overlap, the determination portion", and "of Exhibit Otsu
25 " on page 184, line 11 shall be deleted.
(11) The part from page 187, line 15 to page 196, line 1 in the judgment in priorinstance shall be altered as follows.
"8 Issue 5-8 (Violation of clarity requirement (Invalidation Reason 8))(Assertion by Appellees)
The description that 'to the terminal device, the video and the comment
information are transmitted' in constituent feature 1C of Invention 1 is not clear as to atwhat timing the comment received by the server is transmitted to the terminal.
Therefore, the description in the scope of claims (claim 1) of Invention 1 isunclear and does not conform to the clarity requirement (Article 36, paragraph (6), item(ii) of the Patent Act) and thus, the Patent has an invalidation reason of violation of theclarity requirement (Article 123, paragraph (1), item (iv) of the Patent Act).
(Assertion by the Appellant)
The scope of claims (claim 1) of the Invention 1 does not prescribe the timingof the comment transmission but prescribes the point that the comment information
related to the comment given by the user is transmitted to the terminal and thus,
extension of the invention is clear, which conforms to the clarity requirement.
Therefore, Invalidation Reason 8 asserted by the Appellees is groundless.
9 Issue 5-9 (Violation of support requirement (Invalidation Reason 9))(Assertion by the Appellees)
The description in [0008] in the Description, together with the description in[0004] that 'the prior art ... comments cannot be exchanged on a real-time basis, which
is not sufficiently interesting as communication.', should be interpreted to describe that,21when the comment delivery server receives a comment, the comment is transmitted tothe terminal device 'each time'.
On the other hand, the scope of claims (claims 1 and 2) of Inventions 1 and 2
has no description on at what timing the terminal device receives the comment
information, and without the description that, when the comment delivery server
receives a comment, it transmits the comment to the terminal device 'each time', it is
impossible to perform exchange of the comments on a real-time basis and thus, claims
1 and 2 lacking description on that point exceed the range described in the detailed
description of the invention.

Thus, it does not conform to the support requirement(Article 36, paragraph (6), item (i) of the Patent Act).
Subsequently, [0011] in the Description has the description that 'according to
the present invention, ... and in the comment information input with respect to the video,
when a comment erasing request indicating the comment to be erased is input, thecomment is caused not to be displayed and thus, whether the comment is not appropriate
for the video or not can be displayed considering an intention of the user, which can
improve entertainment in communicating using the comment.'
On the other hand, the scope of claims (claims 1 and 2) of Inventions 1 and 2
has description that the terminal device displays the comment but does not havedescription on not to display and thus, means for solving the probl em of the invention
described in the detailed description of the invention is not reflected and exceeds therange described in the detailed description of the invention and thus, it does not conformto the support requirement.
Therefore, the Patent has an invalidation reason of violation of the support
requirement (Article 123, paragraph (1), item (iv) of the Patent Act).
(Assertion by Appellant)[0008] in the Description only describes claims of the original application ofthis case and has no relation with the scope of claims (claims 1 and 2) of Inventions 1
and 2.
Moreover, [0011] in the Description only describes the problem of theinvention corresponding to the claim of the initial application, and the problem isdifferent from the problems in Inventions 1 and 2.
Therefore, Invalidation Reason 9 asserted by the Appellees lacks the premise
thereof, which is unreasonable.
10 Issue 5-10 (Violation of enablement requirement (Invalidation Reason 10))
(Assertion by Appellees)
As in the aforementioned 9 (assertion by the Appellees), since the scope of22

claims (claims 1 and 2) of Inventions 1 and 2 does not have the description on at whattiming the terminal device receives the comment information, the exchange of thecomments on the real-time basis is not possible, and [0011] in the Description has thedescription that 'when a comment erasing request indicating the comment information
to be erased is input, the comment is caused not to be displayed', but even though thescope of claims (claims 1 and 2) of Inventions 1 and 2 has the description that theterminal device displays the comment, it does not have description on not to display thecomment and thus, it falls under the case in which the invention cannot be grasped fromone claim.
Then, the description in the detailed description of the invention in the
Description is not considered to have clearly and sufficiently described to such a degree
that a person ordinarily skilled in the art can work Inventions 1 and 2 and thus, it does
not conform to the enablement requirement (Article 36, paragraph (4), item (i) of the
Patent Act).
Therefore, the Patent has an invalidation reason of violation of the enablement
requirement (Article 123 paragraph (1), item (iv) of the Patent Act).
(Assertion by Appellant)
Due to the reason similar to that described in the aforementioned 9 (Assertion
by Appellant), Invalidation Reason 10 asserted by the Appellees lacks the premise
thereof, which is unreasonable.
11 Issue 5-11 (Violation of prior application requirement (invalidation reason
11))(Assertion by Appellees)
Patent No. 4695583 (hereinafter, referred to as 'Another Litigation Patent 2',
Exhibit Otsu 44) on which the request was based in the Tokyo District Court 2016 (Wa)38565 case of seeking injunction and the like of the patent right infringement(hereinafter, referred to 'Another Litigation Case', Exhibit Otsu 15) in which theAppellant instituted against the Appellees as the 'defendants' was filed (Patent
Application No. 2006-333851, Date of application: December 11, 2006, Exhibit Otsu
11) before the application of this case.
However, Inventions 1 and 2 are identical to or substantially identical to theinventions according to claims 1 to 3 of Another Litigation Patent 2 and thus, they
violate the prior application requirement (Article 39 of the Patent Act) and cannot be
granted a patent.
Therefore, the Patent has an invalidation reason of violation of the priorapplication requirement (Article 123, paragraph (1), item (ii) of the Patent Act).
23

(Assertion by Appellant)
Inventions 1 and 2 and the invention according to claims 1 to 3 of Another
Litigation Patent 2 are different at least in points that [i] the inventions according toclaims 1 to 3 of Another Litigation Patent 2 include a requirement that 'each time thecomment information is received', while Inventions 1 and 2 do not have such arequirement; [ii] Inventions 1 and 2 include a requirement that the first and the second
comments move in a horizontal direction, while the inventions according to claims 1 to
3 of Another Litigation Patent 2 do not have such a requirement.
Therefore, Invalidation Reason 11 asserted by the Appellees is groundless.
12 Issue 5-12 (Lack of novelty and of inventive step due to violation of division
requirement (Invalidation Reason 12))(Assertion by Appellees)This application is a division of application in which a part of the original
application (date of application: March 2, 2007, priority date: December 11, 2006.
Exhibit Otsu 9) was sequentially divided (No. 2, 2(2)[i] to [viii] in the cited judgmentin prior instance.
like.

Hereinafter, each of them shall be called "application of [i]" or the

The application of [viii] is this application.).
Claim 1 at the filing of the applications of [iv] to [viii] is identical to claim 1of the application of [iii], and claim 1 after amendment in the applications of [v] to [vii]
has identical contents with that of claim 1 of the application of [iv].

Particularly, theapplications of [vi] and [vii] are filed with the claim identical to that of the applicationof [iii] and after that, amendment equal to that of the application of [iv] was made andthen, decision of refusal was rendered on the ground that it is identical to the applicationof [iv].
According to the above, the applications of [iv] to [vii] (particularly, theapplications of [vi] and [vii]) should be considered to be abusive division of application
used to evade restrictions on the time for amendment (Article 17-2, paragraph (1), item(iii) of the Patent Act), and the effect of division of application that the division of
application is regarded to be filed at the time of the original application (Article 44,
paragraph (2) of the Patent Act) is not considered to be produced.
Then, the date of application of this application is October 29, 2018, which isthe actual date of application, and thus, Inventions 1 and 2 do not satisfy therequirements of novelty and inventive step (Article 29 of the Patent Act) in relation
with the inventions described in the Description and the like of the applications [iv] to[vii].
Therefore, the Patent has invalidation reasons of lack of novelty and lack of24

inventive step (Article 123, paragraph (1), item (ii) of the Patent Act).
(Assertion by Appellant)
Since this application is a legal division of application prescribed in Article
44, paragraph (1) of the Patent Act, the date of application of this application isretroactive to the time of the original application (date of application: March 2, 2007,priority date: December 11, 2006) under the same Article, paragraph (2).
Therefore, Invalidation Reason 12 asserted by the Appellees lacks the premise
thereof, which is unreasonable.
13 Issue 5-13 (Lack of inventive step and the like due to violation of requirementof priority claim (Invalidation Reason 13))
(Assertion by Appellees)
Since the application (Patent Application No. 2006-333850) on the basis ofwhich the priority is claimed of the original application does not satisfy the requirement
for amendment, a priority claim based on Article 41, paragraph (1), item (i) of the Patent
Act is not allowed for the original application.

In view of necessity of reliability andconsistent determination on registration information related to patents, the novelty andthe inventive step of Inventions 1 and 2 should be determined with the actual date ofapplication of the Application (October 29, 2018) as the standard time.
However, since the Appellant made public the service using the art related toInventions 1 and 2 with the name 'Niconico Video' on December 12, 2006, NIWANGO,
which was an operation company at that time, actively began issuing press releases
from January, 2007 after the service was made public, and the art became publiclyknown, Another Litigation Patent 2 was published (Exhibit Otsu 11) at the time of thefiling at the latest, and Inventions 1 and 2 had been publicly-known and thus, Inventions
1 and 2 do not have novelty.
Therefore, the Patent has an invalidation reason of lack of inventive step
(Article 123, paragraph (1), item (ii), Article 29 of the Patent Act).
(Assertion by Appellant)
Whether or not the filing of the Patent Application No. 2006-333850 on thebasis of which the domestic priority claim of the original application was made violates
the requirement for amendment as asserted by the Appellees does not influence thepriority claim of the original application (Article 41, paragraph (1) of the Patent Act).
Moreover, illegal amendment was not made in this original application, and thisapplication is a legal division application.
Therefore, Invalidation Reason 13 asserted by the Appellees lacks thepremises thereof, which is unreasonable.
25

14 Issue 5-14 (Violation of public order and morality (Invalidation Reason 14))
(Assertion by Appellees)
The judgment of the first court of another lawsuit rendered on September 19,
2018 (Exhibit Otsu 15) determined that the invention according to Another Litigation
Patent 2 does not belong to the technical scopes of Inventions 1 and 2, by stating thatthe comment information is transmitted to the terminal 'each time' when the comment
information is received from the terminal, while the program of the Appellee FC2 does
not satisfy this requirement and the like.
Then, the Appellant filed the Application for Inventions 1 and 2 by removing
the requirement of the aforementioned 'each time' for the purpose of overcoming theresult of another lawsuit and thus, Inventions 1 and 2 fall under the invention, whichmight disrupt 'public order' as described in Article 32 of the Patent Act.
Therefore, the Patent has an invalidation reason of violation of public orderand morality (Article 123, paragraph (1), item (ii) of the Patent Act).
(Assertion by Appellant)
The assertion by Appellees will be contested."
6 Issue 6 (Establishment of abuse of right)
Since it is as described in No. 3, 6 in "Facts and Reasons" in the judgment inprior instance, it shall be cited.
7 Issue 7 (Necessity of injunction and removal or the like)
Besides the alteration of the "Defendant's Server" to "each of the Defendant'sServers", the "Defendant's Service" to "each of the Defendant's Services", the"Defendant's file" to "each of the Defendant's files", and the "Defendant's System" to"each of the Defendant's Systems", it is as described in No. 3, 8 in "Facts and Reasons"in the judgment in prior instance, which shall be cited.
8 Issue 8 (Amount of damage of the Appellant)(Assertion by Appellant)(1) Principal claims
A. Amount of damages under Article 102, paragraph (2) of the Patent Act
The Appellees produced each of the Defendant's Systems and provided eachof the Defendant's Services from May 17, 2019, when the establishment of the Patent
Right was registered, to August 31, 2022, and produced sales of XXXXXXXXXX yen,whereby the Appellees obtained an amount of profits (marginal profits) not less than
XXXXXXXXX 0, 000 yen (Exhibit Ko 24).

Among them, the sales amount from May

17 to 31, 2019 (amount for May) was XXXXXXXX yen, and the amount of marginal
profits was not less than XXXXXXXX yen.
26

The production of each of the Defendant's Systems by the Appellees falls
under an infringement act of the Patent Right related to Inventions 1 and 2 and thus,
under Article 102, paragraph (2) of the Patent Act, the aforementioned marginal profit
amount obtained by the Appellees is presumed to be an amount of damages theAppellant suffered due to the aforementioned infringement act (hereinafter, thispresumption shall be called "presumption (1)" in some cases.).
B Absence of reasons for presumption ruination and the like(A) The Appellees assert that [i] in the aforementioned marginal profit amountof each of the Defendant's Services, the part related to the service for delivering thevideo to which comment indication is not attached does not fall under the profit
obtained by working of Inventions 1 and 2; [ii] the comment display function of
Inventions 1 and 2 is a part of the function in each of the Defendant's Systems providing
each of the Defendant's Services, which is the video delivery service with comment anddoes not have attraction for customers, which falls under the reasons for ruination ofpresumption (1) and the like.
However, regarding [i], in each of the Defendant's Services, the user can givea comment to the video, and creation of such a state itself is an infringement act of the
Patent Right and thus, even if the user did not actually use the comment giving function,
and a ratio of the video to which no comment was given was high, it does not
immediately lead to the conclusion that the aforementioned amount of marginal profitof each of the Defendant's Services does not fall under the profit received from theworking of Inventions 1 and 2.
Regarding [ii], it is obvious that the comment display function of Inventions
1 and 2 has a strong attraction for customers from the active imitation thereof by theAppellees and "bilibili video".
Therefore, the aforementioned assertion by the Appellees is unreasonable.
(B) As described above, the Appellees' assertion on reasons for presumption
ruination and the like is unreasonable and thus, the amount of damages of the Appellant(only for May, 2019) based on Article 102, paragraph (2) of the Patent Act is
XXXXXXXX yen from the presumption (1).
C Attorney costs
The amount of damages of the Appellant corresponding to the attorney fee
having a considerable causal relation with the infringement act of the Patent Right by
the Appellees is not less than 10% of the amount of damages in the aforementioned
B(B).
(2) Alternative claims
27

A. Amount of damages under Article 102, paragraph (2) of the Patent Act(A) The sales amount from May 17, 2019 to August 31, 2022 by production ofeach of Defendant's Systems and by provision of each of Defendant's Services by theAppellees is, as described in the "subtotal" column in the list of sales amounts and thelike in the Attachment 6, XXXXXXXXXXXX yen, the marginal profit amount is, as
described in the "subtotal" column in the list of marginal profit amounts and the like in
the Attachment 7-1, not less than XXXXXXXXXXXX yen.
(B) Since the production of each of Defendant's Systems by the Appellees falls
under the infringement act of the Patent Right according to Inventions 1 and 2, under
Article 102, paragraph (2) of the Patent Act, the total amount of XXXXXXXXXXXX
yen of the marginal profit amount of XXXXXXXXXXXX yen in the aforementioned(A) obtained by the Appellees and the amount corresponding to 10% consumption tax
of XXXXXXXXXXXX yen described in the "amount corresponding to theconsumption tax" in the Attachment 7-1 is presumed to be the amount of damages theAppellant suffered due to the aforementioned infringement act (hereinafter, thispresumption shall be called "presumption (2)" in some cases).
However, since the assertions by the Appellees on the reasons for presumption
ruination and the like are all unreasonable as described in the aforementioned (1) B, theamount of damages of the Appellant under the same paragraph (for the period from May
17, 2019 to August 31, 2022) becomes the aforementioned total amount by presumption(2).
B Amount of damages under Article 102, paragraph (3) of the Patent Act(A) In "Research and Study Report on How to Utilize Patents and the like on thebasis of Value Evaluation of Intellectual Property ~ Actual State of Intellectual Property(Resources) Values and Royalty Rate ~" (hereinafter, referred to as the "Report"
Exhibit Ko 23) prepared by Teikoku Databank, LTD., as "1. Trends of Royalty Rate"in "III. Royalty Rates in Each Country", it is described that the royalty rate of thedomestic questionnaire result in the "software" industrial field is "6.3%".
(B) The video delivery service with a comment function is attractive in a pointthat viewers give comments to the video and view the video while sharing them.
However, if Inventions 1 and 2 are not worked, the comments overlap each other andcannot be read, which drastically deteriorates the attraction of this service and thus,
contribution by Inventions 1 and 2 to sales and profits of each of Defendant's Services
is extremely large.
Moreover, the overlapping of the comments on the video can be prevented
especially by the technique of Inventions 1 and 2, and an attractive video delivery
28

service with a comment function can be provided, which cannot be replaced by otherconfigurations.
(C) The Patent is for preventing imitation of "NICONICO VIDEO", which is amajor business of the Appellant, and the Appellant does not license this Patent to othercompanies and employs a policy to exclude infringement acts by other companies eventhrough lawsuits.
Therefore, if the Patent is to be licensed to other companies, the licensing
would not be granted at a royalty rate of an industrial standard, but an extremely highlicensing fee should be set.
With this regard, the Appellees assert that the Appellant licensed the Patentto the operation company of "bilibili video", but the video service with comments of
the "bilibili video" is not based on the license of the Patent, and the Appellant is now
preparing for a patent infringement lawsuit against the aforementioned operationcompany and thus, the aforementioned assertion by the Appellees is unreasonable.
(D) The royalty rate set ex-post for those who infringed a patent right should
naturally be an amount higher than a usual royalty rate.
(E) By comprehensively considering the circumstances in the aforementioned(A) to (D) and other circumstances appearing in this case, the royalty rate to be a basisof calculation of the amount of damages corresponding to the royalty under Article 102,
paragraph (3) of the Patent Act in this case is not less than 20%.
Then, the amount of damages corresponding to the royalty under Article 102,
paragraph (3) of the Patent Act of the Appellant is not less than the total amount of
XXXXXXXXXXX yen acquired by multiplying the sales of XXXXXXXXXXXX yen
described in the "subtotal" column in the list of sales amounts and the like in the
Attachment 6 (part from May 17, 2019 to August 31, 2022) by the royalty rate of 20%
and the amount of XXXXXXXXX yen corresponding to consumption tax of 10%
described in the "amount corresponding to consumption tax" column in the same list.
C Attorney costs
The amount of damages of the Appellant corresponding to the attorney costs
having a considerable causal relation with the infringement act of the Patent Right by
the Appellees is not less than 10% of each of the amount of damages in Article 102,
paragraph (2) of the Patent Act in the aforementioned A (B) (excluding the amountcorresponding to the consumption tax) or the amount of damages in the same Article,
paragraph (3) in the aforementioned B (E) (excluding the amount corresponding to theconsumption tax.).
(3) Summary29

Thus, the Appellant claims against the Appellees for joint payment principallyof the amount of damages XXXXXXXX yen under Article 102, paragraph (2) of the
Patent Act, 1,000,000,000 yen, which is a part of the total amount of the amountcorresponding to the attorney costs, and the delay damages thereof at the rate of 5% perannum thereto prescribed in the Civil Code before revision from June 1, 2019 until
completion of the payment and joint payment alternatively for XXXXXXXXXXXX
yen described in the "amount of damages under Article 102, paragraph (2) of the Patent
Act" column in the list of amounts of marginal profits and the like in Attachment 7-1
or 1,000,000,000 yen (selective assertion), which is a part of XXXXXXXXXXXX yen
described in the "amount of damages under Article 102, paragraph (3) of the Patent
Act" column in the list of sales amounts and the like in Attachment 6 and the delay
damages at the rate described in the "delay damages rate (per annum)" column fromeach date described in the "date to start counting delay damages" column until
completion of the payment with respect to each money described in the "claimed
amount" column in the list of alternative claimed amounts in Attachment 5.
(Assertion by Appellees)(1) Principal claims
A. With respect to the assertion of the amount of damages under Article 102,
paragraph (2) of the Patent Act
In the assertion by the Appellant, the part in which the sales of each of the
Defendant's Services for the part (for May) from May 17 to 31, 2019 is XXXXXXXX
yen and the marginal profit amount is not less than XXXXXXXX yen is denied, andthe remaining part will be contested.
Exhibit Ko 24 cited by the Appellant is for the sales of the Appellee HPS from
November 1, 2013 until September 30, 2014 and is not for the sales of each of the
Defendant's Services for the part for May of 2019.

The sales and the marginal profit

amount of each of the Defendant's Services for the period from the same month until
August in 2022 is as described in Exhibit Otsu 84.
B Reasons for presumption ruination and the like(A) Inventions 1 and 2 are inventions related to the comment display function,
but in each of the Defendant's Services, the video using the comment display function
is extremely rare to begin with.

For example, in XXXXXXXX pieces of the video

published in "FC2 Video" in Defendant's Service 1 at a point of the time of January 11,
2021, the number of those to which one or more comments are given remains XXXXXX,
and the rate is XXXX percent (Exhibit Otsu 85).

This is because the profits of "FC2

Video" rely mainly on adult video contents, and while viewing the adult videos, users
30

rarely communicate with each other through comments and the like, and if a large
number of comments are displayed, the video becomes hard to view or the like.
In the aforementioned marginal profits of each of Defendant's Services, thepart related to the service that delivers the video with no comment indication does not
fall under the profit obtained by the working of Inventions 1 and 2 and thus, Article
102, paragraph (2) of the Patent Act is not applicable to this part.
(B) The comment display function of Inventions 1 and 2 is a part of the functionin each of Defendant's Systems providing each of Defendant's Services, which is thevideo delivery service with comments and does not have attraction for customers.

Ineach of Defendant's Services, what attracts customers is a charm of the video itself
including originality of the adult videos posted by users and other elements, and thecustomers are not attracted by the comment display functions or particularly by th eelements of Inventions 1 and 2.
Moreover, in each of Defendant's Services, importance of the comment
display function is extremely low or rather, for the users who want to view the videos,
if many comments are displayed on the video, such an adverse effect that the video is
hard to view occurs and thus, many video delivery services do not use the comment
display function according to Inventions 1 and 2.

The Appellee FC2 also puts

importance on that point, and abolished the function of displaying commen ts on thevideo on August 2, 2022.
In each of Defendant's Services as above, the comment display function of
Inventions 1 and 2 is worked only in a part of the functions of the entire system anddoes not have attraction for customers, which falls under the reasons for ruination ofpresumption (1).
(C) As described in the aforementioned (A), in the aforementioned marginal
profits of each of the Defendant's Services, Article 102, paragraph (2) of the Patent Act
is not applied to the part related to the service of delivering the video with no comment
indication added.

Moreover, due to the reasons for ruination in the aforementioned(B), presumption (1) asserted by the Appellant should be entirely ruined, and even if
the ruination of the presumption (1) remains in part, the ruination rate thereof is notless than 99.99%.
Therefore, the assertion on the amount of damages by the Appellant on thebasis of the same paragraph is unreasonable.
C With respect to the assertion on the attorney costs
The assertion by the Appellant will be contested.
(2) Alternative claims
31

A With respect to assertion on the amount of damages under Article 102,
paragraph (2) of the Patent Act
It is accepted that the sales amount of each of the Defendant's Services fromMay 17, 2019 to August 31, 2022 is XXXXXXXXXXXX yen, and the marginal profit
amount is XXXXXXXXXXXX yen.
However, as described in the aforementioned (1) B (C), due to the reasons forpresumption ruination that, in the aforementioned marginal profits of each of
Defendant's Services, Article 102, paragraph (2) of the Patent Act is not applied to thepart related to the service of delivering the video with no comment indication added,
the comment display function of Inventions 1 and 2 is worked only in a part of thefunctions of the entire system and does not have attraction for customers, thepresumption (2) of Appellant's assertion is entirely ruined, and even if the ruination of
the presumption (2) remains to a part, the ruination rate thereof is not less than 99.99%.
Moreover, even if payment of damages to the Appellees FC2 is ordered in thiscase, it is subjected to export exemption on the consumption tax.
B With respect to the assertion on the amount of damages under Article 102,
paragraph (3) of the Patent Act(A) On the basis of the "Average value of royalty rate of patent right" in the"Questionnaire results" of this Report having the item of "Computer technology" at"3.1%" (page 7), the rate of "6.3%" asserted by the Appellant as the standard of theroyalty rate of the patent right related to the computer technology is too high.
(B) As in the aforementioned (1) B (B), in each of the Defendant's Services, what
attracts customers is the charm of the video itself including originality of the adultvideos posted by users and other elements, and the customers are not attracted by thecomment display functions of Inventions 1 and 2 or rather, for users who want to view
the video, such an adverse effect occurs that, when many comments are displayed on
the video, the video becomes difficult to view and thus, many video delivery services
do not use the comment display function according to Inventions 1 and 2.

This means

that, in the video delivery business, Inventions 1 and 2 are not in demand and have noeconomical values.
(C) As described in the aforementioned (1) B (A), in each of Defendant'sServices, there are few videos using the comment display function, and in each of
Defendant's Services, those delivering a video with no comment indication do not fallunder the working of Inventions 1 and 2.
(D) Since the Appellant licenses the Patent to the operation company of "bilibili
video" operated in China, it cannot be considered that the Appellant does not license
32the Patent to the other companies and employs a policy of excluding infringement actsby the other companies even through litigation.
(E) According to the above, the royalty rate of the Patent is zero, and even if
some can be approved, it should be extremely lower than the royalty rate level of theother patent right related to the computer technology and thus, the assertion on theamount of damages by the Appellant under Article 102, paragraph (3) of the Patent Act
is groundless.
C. With respect to the assertion on the attorney costs
The assertion by the Appellant will be contested.
(3) Summary
According to the above, both the Appellant's principal claims and alternative
claims related to the claim for damages are groundless.
No. 4

Judgment of this court
1 Described matters of the Description(1) The Description (Exhibit Ko 2) has the following description (for FIGS. 1 to

10 cited in the description below, see Attachment 9).
A [Technical Field][0001]The present invention relates to a comment delivery system, a terminal device, acomment delivery method, and a program which can perform communication between
users by using contents being played, while playing video contents.
[Background Art]
[0002]
Conventionally, there is a system which displays comments given by a user on avideo such as a broadcasted TV program together with the video, for example.
For example, there is such a system that, in a bulletin board related to TV
programs and the like with different broadcast times depending on a region, posting for
one scene of the TV program is stored correspondingly to net time from start of thebroadcast, and even if the time to view the bulletin board is different, the posting madebefore is displayed correspondingly to the scene of the TV program (see Patent
Document 1, for example).

According to this system, a user can view and enjoy thecomment while watching the TV program without feeling a time lag of the broadcast
time.
[Technical Problem][0004]
33

However, in the aforementioned system in the prior art, the comment is simply
registered in association with the video time (video play time) and is played with thevideo and thus, users cannot exchange comments on a real-time basis, which is not
sufficiently interesting as communication.
[0005]The present invention was made in view of such circumstances and has an object
to provide a comment delivery system, a terminal device, a comment delivery method,
and a program which enable sharing of the same video and promotion of communication
among users by using a comment.
B [Solution to Problem][0006]In order to solve the aforementioned problem, the present invention is a comment
delivery system in which a video delivery server which delivers video data, a comment
delivery server which delivers a comment for the video, and a plurality of t erminal
devices connected via a network, characterized in that the comment delivery server has
a first comment-information storage portion which receives and stores comment
information including comment given time, which is video play time indicating elaps ed
time of the video with a beginning of the video as a reference, at a point of time when
the comment was given by the terminal device and the comment each time when it istransmitted from any one terminal device in the plurality of terminal devices and acomment-information delivery portion which reads out the comment information stored
in the first comment-information storage portion and delivers it to the terminal device,and the terminal device has a video play portion which receives and plays video da ta
delivered from the video delivery server, a comment-information reception portion
which receives the comment information input for the video to be played from thecomment delivery server, a second comment-information storage portion which storesthe comment information received by the comment-information reception portion, anda display portion which displays the video played by the video play portion, reads out
the comment in the comment given time corresponding to the video play time of thevideo to be played from the second comment-information storage portion, and displays
the read-out comment with the video.
[0007]
Moreover, the present invention is, in the aforementioned comment delivery
system, characterized by having a determination portion which determines whether or
not the display position of the comment displayed by the comment display portion
overlaps a display position of another comment, and a display-position control portion34

which displays comments at positions where they do not overlap each other, when thedetermination portion determines that the comment display positions overlap.
C [Advantageous Effects of Invention][0011]
According to the present invention, it was configured such that, in the input
comment information, the comment to which the comment given time corresponding to
the video play time of the video to be played corresponds is read out of the comment
information, and the read-out comment contents are displayed with the video.

In thecomment information input for the video, when a request for erasing the comment
indicating the comment information to be erased is input, it is configured such that thecomment is not displayed and thus, such display can be made that a user's intention istaken into consideration on whether or not the comment is improper for the video,
whereby entertainment in the communication using the comment can be improved.
D [Description of Embodiments][0013]
The comment delivery system according to an embodiment of the present
invention will be explained below with reference to the drawings.

FIG. 1 is aconceptual diagram illustrating a configuration of the comment delivery system
according to the embodiment of this invention.

In this drawing, a video delivery

server 1 delivers video data in response to a delivery request from a terminal device 3.
This delivery is performed by streaming delivery, for example.

A comment delivery

server 2 receives the comment for the video delivered by the video delivery server 1
from the terminal device 3 and delivers the video to each of the terminal devices 3 tobe viewed.

The terminal device 3 is connected to the video delivery server 1 and thecomment delivery server 3 via a network 4, receives and displays the video deliveredfrom the video delivery server 1, and receives and displays on the video the comment
delivered from the comment delivery server 3.
[0014]
Subsequently, the comment delivery server 2 and the terminal device 3 in FIG.
1 will be further explained by reference to the drawings.

FIG. 2 is a schematic block

diagram illustrating a configuration of the comment delivery server 2.

In this drawing,

a comment-information storage portion 21 stores contents of the comment and the video
play time with the point of time to start play of the video as a reference at a point oftime when the comment contents are given as the comment given time in association
with the comment contents as the comment information.
An example of data stored in this comment-information storage portion 21 is35

illustrated in FIG. 3.

In the comment-information storage portion 21, a plurality ofpieces of the comment information which collects the comments for the video deliveredby the video delivery server 1 by a thread are stored.

Each of the pieces of comment

information includes information on a video ID which identifies the video and a thread
ID which identifies a thread so that which thread of what video can be identified.

The

comment information includes, other than the comment given time and the comment
contents, actual time for posting comment information (corresponding to theaforementioned actual time information) indicating actual time when the comment wasgiven (uttered), a user name, which is information for identifying the user who gave thecomment, and comment data associated with a comment display method, which isinformation for specifying how the comment is displayed on the video in plural.

When

the video of the video ID is being played, and the comment data are received from theterminal device 3 which is viewing the comment of the thread with the thread ID, thereceived comment data are configured to be additionally stored.

Here, since the thread

ID is stored in association with the video ID, even the same video or a plurality ofdifferent threads can be identified.

This comment-information storage portion 21

corresponds to the aforementioned first comment-information storage portion.
[0015]
Subsequently, a comment-information delivery portion 22 reads out the comment
information stored in the comment-information storage portion 21 and delivers it to theterminal device 3.

A comment-information update management portion 23 adds the

additional comment information received from the terminal device 3 via acommunication portion 24 to the comment-information storage portion 21 and stores itin accordance with the video ID and the thread ID.
The communication portion 24 performs various types of communication withthe terminal device 3, outputs the information transmitted from the terminal device 3 tothe comment-information update management portion 23, and outputs an instruction to
add the comment information and to cause it to be stored or outputs a delivery
instruction of the comment information to the comment-information delivery portion
22.
[0016]
Subsequently, the terminal device 3 will be explained by reference to thedrawings.

FIG. 4 is a schematic block diagram for explaining a configuration of theterminal device 3.
In this drawing, a video play portion 31 transmits a delivery request for the video
specified by the user of the terminal device 3 to the video delivery server 1 and receives
36and plays the video delivered from the video delivery server 1.

A comment -information reception portion 32 receives the comment information input for the video
to be played from the comment delivery server 2.

A comment-information storage

portion 33 stores the comment information received by the comment-information
reception portion 32.

This comment-information storage portion 33 corresponds tothe aforementioned second comment-information storage portion.
[0017]A display device 34 is a liquid-crystal display device, a CRT (Cathode Ray
Tube), or the like and displays various types of information.

A first display portion

35 displays a video played by the video play portion 31, reads out a comment to which
the comment given time corresponding to the video play time of the video to be playedcorresponds in the comment information stored in the comment-information storage
portion 33 from the comment information, and displays the read-out comment with thevideo by the display device 34.

Moreover, the first display portion 35 has a functionof overlay-displaying the comment contents on the video.

The second display portion

36 displays a list of comments as a comment list on the display device 34 on the basisof the comment data stored in the comment-information storage portion 33.

Here, they

are displayed in an order of information of actual time for posting the comment includedin the comment data.
[0018]The information displayed on this display device 34 will be further explained.
FIG. 5 is a diagram illustrating an example of the information displayed on the display
device 34.

In a display column 101, a URL (uniform resource locator) when thiscomment delivery server is accessed is displayed.
ID of the video to be played is displayed.

In a display column 102, a video

In a display column 103, the cumulative

number of view requests of the currently displayed video is displayed as the number ofviews.

Regarding this number of views, when another user causes the video to beplayed (view requested), the count number of users viewing the same video is increased
at that point of time, and the count number is updated and displayed.

In a display

column 104, a video displayed by the first display portion is displayed.

A displaycolumn 105 is a region where a comment displayed by the second display portion isdisplayed, and here, the comment is displayed on the video displayed by the display
column 104.

Moreover, here, the display column 105 is set to a size larger than thatof the display column 104, and overlay-displayed comments and the like are trimmed
on an outer side of a screen of the video so that it can be grasped that the comment itself
is not included in the video but is written by the user for the video.
37

[0019]On an operation panel 106, a play button, a stop button, a rewind button, a fast forward button, a volume adjusting button, a column displaying a play state indicating
at what part in the entire video is now played, and the like are displayed, and by placing
a cursor on any one of the buttons by a mouse and by clicking it, an input of theoperation corresponding to the button is accepted.

On a display column 107, a lengthof play time of the entire video and video play time of the video currently displayed in
the display column 105 are displayed.

In an input column 108, a name of a user whoutters a comment on the video is input through an input portion 37.

Here, it may be

so configured that a check box is provided in the vicinity of the input column 108,
whether or not a mail address is to be input is selected in response to whether or not
this check box was checked, and when the check box is checked, the input column 108
is divided into two parts so that inputs of the name of the user and the mail address of
the user are accepted.

In an input column 109, information specifying how to display

the comment is input.

Regarding how to display the comments, a position where thecomment is displayed on the video, a font, a letter size, a start position and an end
position for the moving display, a direction for the moving display, and the like can be
set as information for specifying the overlay-display, for example.

It is to be noted

that, here, how to display the comment may be determined in advance so that the user
does not have to make an input.
[0020]In a comment column 110, a comment is input by the user through the input
portion 37.

A button 111 transmits to the comment delivery server 2 a comment input

in the comment column 110, the name of the user input in the input column 108, andthe information on how to display the comment input in the input column 109.

A

display column 112 is a region in which a comment list, which is a list of the comments,
is displayed.

In this comment list, a number (sign 112a) indicating an utterance order

given to the comment, the name of the user who input the comment (sign 112b), thecomment given time when the comment was written (sign 112c), and a part of an utteredcomment (sign 112d) are displayed in accordance with the information on the order of
the actual posted time.

It may be so configured that, in this display column 112, an

input column such as a check box for specifying whether or not the display column 112
is to be displayed on the screen is provided so that the display is to be made or to be
hidden in accordance with an instruction on whether or not the input in this input
column may be displayed.

Moreover, it may be so configured that the number of apart of the comments displayed in this display column 112 is changed in accordance
38

with an instruction by the user.

A display column 113 displays details of the comment

to which the cursor is placed by the user in the comment list displa yed in the display
column 112.

Regarding the details of the comment, the entire comment, the name of

the user who uttered the comment, the mail address, and the like are displayed.
[0022]
Subsequently, returning to FIG. 4, the input portion 37 is an input device suchas a mouse and a keyboard and accepts an input of various types of information from auser.

A selection portion 38 accepts an input of selection of a comment input throughthe input portion 37 in the list of comments displayed by the second display portion 36.
A play control portion 39 reads out the comment data of the comment selected by theselection portion 38 from the comment-information storage portion 33 and, from thevideo play time corresponding to the comment given time of the read-out comment data,causes the video to be played by the first display portion and to be displayed on thedisplay device 34, and causes the comment contents of the read-out comment data to be
displayed by the first display portion 35 on the display device 34.
[0023]A transmission portion 40 accepts a data input of the comment contents for thevideo displayed by the first display portion 35 and transmits to the comment delivery
server the video play time as the comment given time at the point of time when thecomment contents were input together with the comment contents.

Moreover, thetransmission portion 40 has a function of transmitting various types of information to
the comment delivery server 2 or the video delivery server 1 in accordance with an
instruction input from the input portion 37.
[0024]
Subsequently, an operation of the aforementioned comment delivery system will
be explained.

Here, first, an outline of the operation of the comment delivery system

will be explained.
First, the terminal device 3 accesses the comment delivery server 2, receives dataof a list of the videos whose comments were written at a recent time, and displays it on
the display device 34.

At this time, on the display device 34, a video name, a thread

name, and the like are displayed as the recent video list as shown in FIG. 6, for example.
Here, when a thread to be viewed is selected by the user, and the name of the thread isclicked by a mouse, the terminal device 3 transmits to the video delivery server 1 thevideo ID set for the video corresponding to the clicked thread, makes a request fordelivery of the video, transmits to the comment delivery server 2 the thread ID and thevideo ID set for the clicked thread, and makes a request for transmission of comment
39

information.

Upon receipt of this, the video delivery server 1 performs streaming

delivery of the video specified by the video ID to the terminal device 3 which made thedelivery request.

Meanwhile, the comment delivery server 2 reads out the comment

information corresponding to the thread ID and the video ID from the commentinformation storage portion 21 and delivers it to the terminal device 3 which made thedelivery request.
[0025]The terminal device 3 receives the video delivered from the video deliver y server
1 and displays it on the display device 34 and displays the comment contents on thevideo on the basis of the comment information delivered from the comment delivery
server 2.

Here, in accordance with the video play time from start of playing of thevideo, the comment contents for which the comment given time matching the video
play time is set are sequentially displayed on the video.
E [0026]
Subsequently, the operations of the comment delivery server 2 and the terminal
device 3 will be sequentially explained.
First, the operation of the comment delivery server 2 will be explained by using a
flowchart in FIG. 7.

A communication portion 24 of the comment delivery server 2

detects whether or not the delivery request for the comment information ha s been
received from the terminal device 3 (Step S101).

When the delivery request for thecomment information has been received, the communication portion 24 gives a delivery
instruction of the comment information to the comment-information delivery portion
22.

Here, the video ID and the thread ID of the comment information included in thedelivery request are output to the comment-information delivery portion 22.

Thecomment-information delivery portion 22 reads out the comment information
corresponding to the video ID and the thread ID output from the communication portion
24 from the comment-information storage portion 21 (Step S102) and delivers the readout comment information to the terminal device 3 which made the delivery request(Step S103).

Here, all pieces of the comment information associated with the video

ID and the thread ID are transmitted altogether.
[0027]On the other hand, when the comment data transmitted from the terminal device
3, not the delivery request for the comment information, are received (Step S104), thecommunication portion 24 outputs the comment data to the comment-information
update management portion 23.

The comment-information update management

portion 23 refers to the comment-information storage portion 21, identifies the40

comment information on the basis of the video ID and the thread ID included in thecomment data output from the communication portion 24, and additionally stores thereceived comment data with respect to the identified comment information (Step S10 5).
When it is additionally stored, the comment-information delivery portion 22 identifies
the terminal device 3, which is a terminal device 3 playing the video with the video ID
concerned and viewing the comment of the thread ID concerned together with the video
with the video ID concerned, and delivers the additionally stored comment data to eachof the identified terminal devices 3 (Step S106).

On the other hand, when it is not thedelivery request for the comment information or comment data transmitted from theterminal device 3 has not been received, the processing proceeds to Step S101.

Here,

as a method of identifying the terminal device 3 which is playing the video with thesame video ID and viewing the comment of the thread with the thread ID con cerned,
there can be such a method that a session is established in advance with the terminal
device 3 which accessed the comment delivery server 2, and the terminal device 3
whose session is valid can be identified as that viewing the video, for example.
[0028]
Subsequently, an operation of the terminal device 3 will be explained byreference to the drawings.

FIG. 8 is a flowchart for explaining the operation of theterminal device 3.
When an instruction to play the video is input from the user (Step S201), theinput portion 37 of the terminal device 3 transmits to the video delivery server 1 thevideo ID of the instructed video by the transmission portion 40, makes a delivery
request for the video, and transmits to the comment delivery server 2 the delivery
request for the comment information.

Then, when the comment-information reception

portion 32 receives the comment information delivered from the comment delivery
server 2 (Step S202), it causes the comment information to be stored in the comment information storage portion 33.
[0029]
When the comment information is received and stored in the comment information storage portion 33, the video play portion 31 receives the video deliveredfrom the video delivery server 1, plays the received video, and displays it by the firstdisplay portion 35 on the display device 34 (Step S203).

When the video play isstarted, the first display portion 35 determines whether or not there is comment data towhich the comment given time matching the video play time is set on the basis of thecurrent video play time by referring to the comment-information storage portion 33(Step S204).

When there is the comment data to which the comment given time41

matching the video play time is set (Step S205 - YES), the first display portion 35
calculates a display position of the comment data (Step S206).

In accordance with thecalculated display position, the display control of the comment on the video is executed(Step S206).
On the other hand, the video play portion 31 determines whether or not the play
has ended and if the play has ended, the processing is finished, while if the play has not
ended, the processing proceeds to Step S204.
[0030]On the other hand, in Step S205, if there is no comment to be displayed, thetransmission portion 40 detects whether or not a comment has been input from the input
portion 37 (Step S209).

If there is an input of a comment, play time (video play time)

indicated by a player of software which plays the video at a point of time when thecomment was input (point of time when a "write" button (sign 111) was clicked) is readout, the video play time is made the comment given time, and the video ID of the video
being played, the thread ID of the comment being viewed, the current actual time
information (information of the current time), the user name of the user of the terminal
device 3, the input comment contents, and the comment display method are associatedand additionally stored in the comment list as the comment information in the commentinformation storage portion 33 (Step S210).

The transmission portion 40 transmits the

additionally stored comment information to the comment delivery server 2 (Step S211),and the processing proceeds to Step S208.
[0031]In Step S209, when it is not a comment input, the terminal device 3 detects
whether or not the comment data have been received by the comment-information
reception portion 32 (Step S212).

When the comment data is received, the comment-

information reception portion 32 additionally stores the received comment data in thecomment-information storage portion 33 and the processing proceeds to Step S208.
[0032]On the other hand, in Step S212, when it is not the reception of the comment
data, the selection portion 38 of the terminal device 3 detects whether or not an input
of a comment selection operation was performed from the input portion 37 (Step S214).
When there is an input of the comment selection operation, the selection portion 38
outputs comment contents of the selected comment data to the play control portion 39.
Upon receipt of this output, the play control portion 39 reads out the comment given
time stored in association with the selected comment data by referring to the commentinformation storage portion 33 and rewinds or fast-forwards the video play position in42accordance with the video play time according to the read-out comment given time sothat the play is performed from the video play time matching the comment given time
stored in association with the comment data (Step S215), and causes the comment
contents of the comment given time to be displayed, and the processing proceeds to
Step S208.
F [0033]
Subsequently, a case where a comment is displayed on the screen will be
explained by reference to drawings.

Here, in the "List of recent comments" in FIG. 5,

a case in which a thread of "Share how you like the food" associated with the video of"Rice omelet by famous chef" was selected will be explained.

When this thread isselected, the video of "Rice omelet by famous chef" is played in a region of the displa ycolumn 104 in FIG. 5, for example.

The comment is sequentially displayed on thevideo in accordance with the video play time.

In FIG. 5, the screen in a case wherethe video play time is 9 seconds is shown, and here, a comment by a user F of "Looks
delicious!" with the comment given time of 9 seconds is movingly displayed from aright side to a left side of the screen (sign 115).

When the video play proceeds, andthe video play time reaches 13 seconds, a screen as shown in FIG. 9 is displayed.

Here,the comment with the comment given time of 9 seconds of "Looks delicious!" hasmoved to the left side on the screen, and only a part "..cious!" is displayed in a trimmed
state outside the display column 104 and inside the display column 109 (sign 200).
Moreover, a comment by a user Z of "Work by a famous chef is good." with thecomment given time of 10 seconds is displayed at a position below the comment by theuser B (sign 201), and a comment by a user E of "Where does this egg come from?"with the comment given time of 12 seconds is displayed at a position on a lower sideof the screen (sign 202).

As described above, the comments are sequentially displayed.

[0034]As described above, the explanation was made with attention given to an
operation of only one terminal device 3, but actually, comments can be exchanged
among users who are viewing the same video and in the same thread as follows.

Here,

explanation will be made by reference to FIG. 10.
For example, when a video is played, and a comment that "Where does this egg
come from?" is additionally input as an utterance by a user E (sign a) at a point of time
when the video play time is 12 seconds, the comment information of the additionallyinput comment is delivered to the terminal device 3 which views the same video in thesame thread through the comment delivery server 2.
[0035]
43

After the delivery, when the same video is played by another user C (sign b), thecomment information including the added comments is delivered to the terminal device
3 of the user C.

And at a point of time when the video play time is 12 seconds, acomment by the user E that "Where does this egg come from?" is displayed.

Whenthe user C who viewed this comment inputs, as a reply thereto, a comment that "It seems
from XX prefecture." and transmits it to the comment delivery server 2 (sign c) at apoint of time when the video play time of the user C is 15 seconds (at a point of timeof 100 seconds in the video play time of the user E, for example), the transmittedcomment is delivered to the terminal device 3 of the user E.

At this time, at a point oftime of 100 seconds of the video play time, for example, a part of the user C 's comment
is displayed in accordance with an order of actual time in a list of comments of the user
E (sign d).

For example, it is displayed at the bottom (or at the top) of the comment

list as the latest comment.

Then, when a part of the comment is clicked by the user E

who viewed this comment list, the video being played returns to the point of time of
150 seconds of the video play time and is played, and a comment of "It seems from XX
prefecture." is displayed on the screen of the user E's terminal device 3 (sign e).
result, the user E can enjoy it as if a reply was made to his/her comment.

As a

By repeatingsuch exchange of comments, even users viewing the video at different timings canpromote communication through comments.

As described above, the comments aremanaged in an order of comment input in actual time and are displayed as a comment
list so that even users with video play timings not matching one another can exchangecomments on a real-time basis, whereby the communication can be promoted.
[0036]
Moreover, when the comment as above and the video play from a point of time
when the comment was written are repeated, a difference in video play timings getsclose to 0 among the users, and comments can be exchanged while the same video isviewed substantially at the same timing.
[0037]
Here, the case in which a plurality of the users are viewing the same video was
explained, but in such a situation that no user is viewing a certain video, if a user plays
the video, the comment information having been stored until then is delivered to theterminal device 3 from the comment delivery server 2 and is sequentially played inaccordance with a timing of the video play.

As a result, even in a situation where noother users are viewing, the comments made in the past can be viewed sequentially inaccordance with the video play time of the video.
[0038]
44

Here, comments can also be written.

It is to be noted that, in the aforementioned embodiment, the case in which, whena comment is added to the comment list, and the added comment is clicked by a user, itis played from the video play time matching the comment given time set for thecomment, and the comment is displayed has been explained, but if the added comment
is not clicked, the comment is displayed on the video at a point of time when the video
play time has reached the comment given time set for the added comment.
Moreover, even if a comment was written by another user in the video play timeof the video being viewed by himself/herself, it is displayed in the comment list in theorder of actual time and thus, by clicking the added comment, the comment can beviewed by rewinding or fast-forwarding to a point of time when the comment was
written.

Moreover, here, when the video play time is rewound, the comments having

been written until then, including the newly written additional comments, aresequentially displayed correspondingly to the comment given time in accordance withthe video play time.
[0039]
Moreover, here, rewinding and fast-forwarding of the play time can be performedby moving a slide bar of the play-state display column of the operation panel 106, butwith this operation, the video is rewound or fast-forwarded, which results in such a statethat the comment desired to be viewed disappears soon from the screen and becomes
hard to find, but by selecting it from the comment list, viewing is made possible froma scene desired to be viewed.
Moreover, in the aforementioned embodiment, the case in which the comment
data delivered from the comment delivery server 2 are received by the terminal device
3 and are reflected on the screen to be displayed was explained, but it may be so
configured that a comment input by the user on his/her own terminal device 3 isimmediately (before it is transmitted to the comment delivery server 2 and is received
on the comment delivery server 2 side) displayed on a screen at a point of time when
the comment is input.

Specifically, when a comment is input in Step S209 in FIG. 8,

the input comment is displayed on his/her own terminal device 3, the processing
proceeds to Step S210 at which the input comment is additionally stored in the comment
list and then, it is transmitted to the comment delivery server 2.
G [0040]Subsequently, display of a comment will be explained.
For the input comment, its position for display such as an upper stage, a middle
stage, a lower stage, and the like on the screen and display time for moving display ofthe comment can be set by inputting display time for the moving display of the comment45

in the input column 109.

Moreover, if the display time is to be set, it can be so

configured that the comment is displayed on the upper stage of the screen for a certain
period of time (4 seconds, for example) and then erased, for example.

Moreover, themoving speed can be adjusted by specifying time from when it appears in the display
region on the screen until when it moves to an outside of the region and then, disappears(4 seconds, for example).

Furthermore, in a case where a large number of comments

are intensively input at a certain video play time or the like, if they overlap on a line at
the same height, when they are displayed, they can be displayed at a changed height on
the screen or moving-displayed.

Furthermore, if the moving speed is different

depending on a length of a character string of the comment due to the setting of thedisplay time, the subsequent comment might catch up before the comment finishes
moving and thus, in such a case, too, it may be so configured that the subsequentcomment is displayed on the line at the different height or moving-displayed.
[0043]
It is to be noted in the aforementioned embodiment, the case where the video
delivery server 1 and the comment delivery server 2 are different servers was explained,
but it may be so configured that the functions of the video delivery server 1 and thecomment delivery server 2 are realized by the same server.
Moreover, in the aforementioned embodiment, when the comment and the video
are viewed in this service, the case where the comment delivery server 2 is accessed,
the data of the recent comment list are received, and the video and the thread are
selected from the recent comment list displayed on the display device 34 was explained,
but it may be so configured that the thread for this video is specified, and a URL withwhich the comment and the video can be viewed is created and made public on theInternet.

Specifically, a URL including the video ID and the thread ID and from which

the video can be played and the comment information of the thread can be received bybeing clicked may be written on a bulletin board on a blog or a site of the Internet sothat other users can click.

Moreover, such URL may be set to a thumbnail image or

the like so as to be clicked.
H [0063]
As described above, the embodiment of the present invention has been describedin detail with reference to the drawings, but specific configuration is not limited to thisembodiment but includes designs and the like within a range not departing from the gistof the present invention.
(2) According to the described matters in the aforementioned (1) and thedescription in the scope of claims according to each of the Inventions, the Description46

is found to have a disclosure as follows regarding each of the Inventions.
A. Conventionally, there is such a system that displays comments made by a user
on a video such as a broadcasted TV program together with the video, but in this system,
the comment is simply registered correspondingly to the video time (video play time)and is played together with the video and thus, users cannot exchange comments on areal-time basis, which is not sufficiently interesting as communication ([0002], [0004]).
B. The "present invention" has an object to provide a comment delivery system
which enables sharing of the same video and promoting of communication among users
by using a comment ([0005]).
The comment delivery system of the "present invention" employs, in order tosolve the aforementioned problem, such a configuration including a server and aplurality of terminal devices connected thereto via a network and characterized in that[i] the server receives a comment given for the video by a user who is viewing the video
transmitted from the server and transmits, to the terminal device, comment information
including a comment given time, which is a video play time indicating an elapsed timeof the video with a beginning of the video as a reference and corresponding to a pointof time when the comment was given; [ii] the terminal device receives th e video andthe comment information related to the video from the server and overlay-displays thecomment on the video in the comment given time corresponding to the video play timeof the video, and moreover, [iii] the system has a determination portion w hichdetermines whether or not a display position of the comment displayed on the terminal
device overlaps a display position of another comment and a display-position control
portion which displays the comments at positions where each of the comments does notoverlap each other, when the determination portion determines that the comment
display positions overlap ([0006], [0007], [0018]).
According to the "present invention", such an effect is exerted that, in the
input comment information, the comment to which the comment given timecorresponding to the video play time of the video to be played corresponds is read out
from the comment information, and the read-out comment contents can be displayedwith the video, whereby entertainment in the communication using the comments canbe improved ([0011]).
2 Issue 1 (governing law)
Other than the correction as follows, it is as described in No. 4, 2 in "Fact s andReasons" in the judgment in prior instance, which will be cited.
(1) The phrase "580" on page 74, line 17 in the judgment in prior instance shallbe altered to "No. 580", and a part from "of this case" on the same page, line 18 to the47

end of line 20 shall be altered to "regarding the claims for injunction of delivery of eachof the Defendant's files under Article 100, paragraphs (1) and (2) of the Patent Act by
the Appellant against the Appellees and for erasing of the program for the Defendant'sServer and removal of each of the Defendant's Servers, the laws and orders of ourcountry, which is a country where the Patent Right was registered, shall be thegoverning law."(2) Subsequent to the word "judgment" on page 74, line 25 in the judgment inprior instance, "reference" shall be added, and "Japanese Patent" on page 75, line 2 shallbe altered to "Patent Right in our country", "Japan" on the same page, line 4 to "ourcountry", and "the pertaining governing law is the Japanese law." on the same page,line 5 to "for that, the laws in our country shall be the governing law.".
3 Issue 2 (Whether or not each of Defendant's Systems belongs to the technicalscope of Invention 1) and Issue 3 (Whether or not each of Defendant's Systems belongs
to the technical scope of Invention 2)
Other than the alternation of the "Invention" to "each of the Inventions", "Basicfacts (6)" to "Basic facts (4)", and "Defendant's System" to "each of Defendant'sSystems", it is as described in No. 4, 3 and 4 in "Facts and Reasons" in the judgment inprior instance, which shall be cited.
4 Issue 4 (Presence/absence of "production" of each of Defendant's Systems by
the Appellees)(1) Found facts
Other than the correction as follows, it is as described in No. 4, 5(1) in "Facts
and Reasons" in the judgment in prior instance, which shall be cited.
A. The part on page 104, lines 19 to 22 in the judgment in prior instance shall be
altered as follows.
"According to the Basic Facts in No. 2, 2 as well as each of the pieces of evidence
and the entire import of the oral argument which will be described l ater, the following
facts are found with regard to the management of each of Defendant's Services and theoperation of each of Defendant's Systems and the like.
A. Management situation of each of Defendant's Services by the Appellee
FC2"
B. The phrase "Defendant's Service 1 is" on page 105, line 4 in the judgment inprior instance shall be altered to "in Defendant's Service 1", "Defendant's Service 3 is"on the same page, line 25 to "in Defendant's Service 3, and "which is" on the same page,the last line to "is prepared".
C. The phrase "Defendant's Service" on page 106, line 3 in the judgment in prior48

instance shall be altered to "each of Defendant's Services", "3(3)B(A)a" on the same
page, line 14 to "3(2)A(B)a", and the part from the same page, line 22 to page 111, line
24 shall be altered as follows.
"C Process in which a video with a comment is displayed on the user terminal
existing in Japan (hereinafter, referred to as the "user terminal in the country") in
Defendant's Service 1
In Defendant's Service 1, the process in which the video with acomment is displayed on the user terminal in the country is classified according to the
FLASH version and the HTML 5 version as follows (Exhibits Ko 5 and 6, the entire
import of the oral argument).
(A) FLASH version of Defendant's Service 1 (see Attachment 8-2)[i] The user installs Adobe Flash Player as a plugin (expanded function) of abrowser in the user terminal (user terminal in the country, hereinafter, the same applies
to this clause) in advance.
[ii] The user specifies a webpage of Defendant's Service 1 for causing thedesired video to be displayed on the browser of the user terminal.
[iii] In response to [ii], the web server of Appellee FC2 transmits the HTMLfile and the SWF file of the aforementioned webpage to the user terminal.
[iv] The user terminal receives the aforementioned HTML file and SWF fileand stores them in a cache of the browser.
FLASH loads the SWF file in the cache of the browser.
[v] The user presses the play button of the video in the webpage displayed on
the browser of the user terminal.
[vi] In the SWF file loaded by FLASH in [iv], an order to demand the browser
to make a request for acquisition of information related to the video and the commentis stored, FLASH instructs the browser to acquire the video file and the comment filein accordance with the order, the browser makes a request for the video file to the video
delivery server of the Appellee FC2 in accordance with the instruction, and makes arequest for the comment file to the comment delivery server of Appellee FC2.
[vii] In response to the request in [vi], the video delivery server of Appellee
FC2 transmits the video file, and the comment delivery server of Appellee FC2transmits the comment file to the user terminal, respectively.
[viii] The user terminal receives the video file and the comment file in [vii].
As a result, the user terminal causes the comment to be overlaydisplayed on the video in the browser on the basis of the received video file andcomment file.
49

At the display, calculation for determining whether the twocomments overlap or not and, when it is determined that they overlap, specification of
display positions which do not overlap are executed on the basis of a condition specified
by the SWF file.
(B) HTML 5 version of Defendant's Service 1 (see Attachment 8-3)[i] The user specifies the webpage of Defendant's Service 1 in order to cause
the desired video to be displayed on the browser of the user terminal (the user termi nal
in the country, hereinafter, the same applies to this clause).
[ii] In response to [i], the web server of Appellee FC2 transmits the HTMLfile and the JS file of the aforementioned webpage to the user terminal.
[iii] The user terminal receives the aforementioned HTML file and JS file andstores them in the cache of the browser.
[iv] In the JS file stored in [iii], an order to demand the browser to make arequest for acquisition of information related to the video and the comment is stored,
the browser makes a request for the video file to the video delivery server of Appellee
FC2 and makes a request for the comment file to the comment delivery server ofAppellee FC2 in accordance with the order.
[v] In response to the request in [iv], the video delivery server of Appellee
FC2 transmits the video file, and the comment delivery server of Appellee FC2transmits the comment file to the user terminal, respectively.
[vi] The user terminal receives the video file and the comment file in [v].
[vii] The user presses the play button of the video in the webpage displayedon the browser of the user terminal.
As a result, the user terminal causes the comment to be overlaydisplayed on the video in the browser on the basis of the received video file andcomment file.
At the display, calculation for determining whether the twocomments overlap or not and, when it is determined that they overlap, specification of
display positions which do not overlap are executed on the basis of a condition specified
by the JS file.
D. Process in which the video with a comment is displayed on the user terminalin the country in Defendant's Services 2 and 3
In Defendant's Services 2 and 3, the process in which the video with acomment is displayed on the user terminal in the country is classified according to the
FLASH version and the HTML 5 version as follows (Exhibits Ko 5 and 6, the entire
import of the oral argument).
50

It is to be noted that Defendant's Service 1 differs from Defendant's Services
2 and 3 in a point that, in Defendant's Service 1, the video file is transmitted from thevideo delivery server of Appellee FC2 to the user terminal, whereas in Defendant'sServices 2 and 3, the video file is transmitted from the video delivery server of anothervideo delivery service to the user terminal.
(A) FLASH version of Defendant's Services 2 and 3[i] The user installs Adobe Flash Player as a plugin (expanded function) of abrowser in the user terminal (user terminal in the country, hereinafter, the same applies
to this clause) in advance.
[ii] The user specifies a webpage of Defendant's Service 2 or 3, causing thedesired video (the video of another video delivery service registered in Defendant'sService 2 or 3) to be displayed on the browser of the user terminal.
[iii] In response to [ii], the web server of Appellee FC2 transmits the HTMLfile and the SWF file of the aforementioned webpage to the user terminal.
[iv] The user terminal receives the aforementioned HTML file and SWF fileand stores them in a cache of the browser.
FLASH loads the SWF file in the cache of the browser.
[v] In the SWF file loaded by FLASH in [iv], an order to demand the browser
to make a request for acquisition of information related to the video and the commentis stored, FLASH instructs the browser to acquire the video file and the comment filein accordance with the order, and the browser makes a request for the comment file tothe comment delivery server of Appellee FC2 and makes a request for the video file tothe video delivery server of another video delivery service in accordance with the
instruction.
[vi] In response to the request in [v], the comment delivery server of Appellee
FC2 transmits the comment file, and the video delivery server of another video delivery
service transmits the video file to the user terminal, respectively.
[vii] The user terminal receives the video file and the comment file in [vi].
[viii] The user presses the play button of the video in the webpage displayedon the browser of the user terminal.
As a result, the user terminal causes the comment to be overlaydisplayed on the video in the browser on the basis of the received video file andcomment file.
At the display, calculation for determining whether the twocomments overlap or not, and when it is determined that they overlap, specification of
display positions which do not overlap are executed on the basis of a condition specified51

by the SWF file.
(B) HTML 5 version of Defendant's Services 2 and 3[i] The user specifies the webpage of Defendant's Service 2 or 3 in order tocause the desired video (the video of another video delivery service registered in
Defendant's Service 2 or 3) to be displayed on the browser of the user terminal (the user
terminal in the country, hereinafter, the same applies to this clause).
[ii] In response to [i], the web server of the Appellee FC2 transmits the HTMLfile and the JS file of the aforementioned webpage to the user terminal.
[iii] The user terminal receives the aforementioned HTML file and JS file andstores them in the cache of the browser.
[iv] In the JS file stored in [iii], an order to demand the browser to make arequest for acquisition of information related to the video and the comment is stored,
and the browser makes a request for the comment file to the comment delivery serverof Appellee FC2 and makes a request for the video file to the video delivery server ofanother video delivery service in accordance with the order.
[v] In response to the request in [iv], the comment delivery server of Appellee
FC2 transmits the comment file, and the video delivery server of another video delivery
service transmits the video file to the user terminal, respectively.
[vi] The user terminal receives the video file and the comment file in [ v].
[vii] The user presses the play button of the video in the webpage displayedon the browser of the user terminal.
As a result, the user terminal causes the comment to be overlaydisplayed on the video in the browser on the basis of the received video file andcomment file.
At the display, calculation for determining whether the twocomments overlap or not and, when it is determined that they overlap, specification of
display positions which do not overlap are executed on the basis of a condition specified
by the JS file.
D. All instances of "Defendant's Service" on page 111, line 25, from the same
page, the last line to page 112, line 1 in the judgment in prior instance shall be alteredto "each of Defendant's Services".
(2) Presence/absence of "production" of each of Defendant's Systems byAppellee FC2
A. Whether or not the act of Appellee FC2 in the FLASH version of Defendant'sService 1 is applicable to the "production" (Article 2, paragraph (3), item (i) of the
Patent Act) as the act or working of Invention 1
52

(A) Introduction
Invention 1 is an invention of a comment delivery system including a pluralityof terminal devices connected to a server via a network, and the type of the invention
is an invention of a product, and the "production" (Article 2, paragraph (3), item (i) of
the Patent Act) of the product as an act of working is interpreted to refer to an act of
newly creating a product belonging to the technical scope of the invention.
As in Invention 1, the "production" in the invention of the system in which
the server and the terminal are connected via a network such as the Internet and which
exerts an integrated function as a whole (hereinafter, referred to as a "network -typesystem") is interpreted to refer to such an act of newly creating the system in which aplurality of elements, each of which does not singularly satisfy all the constituent
features of the invention, are connected via the network so as to have an organic
relationship with one another and to have a function of satisfying all the constituent
features of the Invention as a whole.
Thus, in determining whether or not the act of Appellee FC2 in the FLASH
version of Defendant's Service 1 falls under the "production" (Article 2, paragraph (3),item (i) of the Patent Act) as the act of working of the Invention 1, first, in the FLASH
version of Defendant's Service 1, what is the act of newly creating Defendant's System
1 shall be examined, and on the basis of this, whether or not the act falls under the"production" in Article 2, paragraph (3), item (i) of the Patent Act and what the subjectof the act is shall be sequentially examined.
(B) Act of newly creating Defendant's System 1 in the FLASH version of
Defendant's Service 1
a. In the FLASH version of Defendant's Service 1, as in No. 4, 5(1)C(A) in the
judgment in prior instance cited after correction, in response to the user specifying the
webpage of Defendant's Service 1 for causing the desired video to be displayed on thebrowser of the user terminal in the country ([ii]), the web server of the Appellee FC2transmits the HTML file and the SWF file of the aforementioned webpage to the user
terminal ([iii]), these files received by the user terminal are stored in a cache of th ebrowser, and FLASH of the user terminal loads the SWF file in the cache of the browser([iv]); subsequently, when the user presses the play button of the video in the webpage
displayed on the browser in the user terminal ([v]), in accordance with the ord er stored
in the aforementioned SWF file, FLASH instructs the browser to acquire the video fileand the comment file, and the browser makes a request for the video file to the video
delivery server of Appellee FC2 and a request for the comment file to the comment
delivery server of Appellee FC2 in accordance with the order ([vi]), and in response to53

the aforementioned request, the video delivery server of the Appellee FC2 transmits thevideo file, and the comment delivery server of the Appellee FC2 transmits the comment
file to the user terminal, respectively ([vii]), and the user terminal receives the video
file and the comment file ([viii]).

As a result, the user terminal can cause the comment

to be overlay-displayed on the video in the browser on the basis of the received video
file and comment file.

As described above, at a point of time when the user terminal

received the video file and the comment file ([viii]), the video delivery server and thecomment delivery server of Appellee FC2 and the user terminal are connected via the
network using the Internet, and the overlay-display of the comment on the video is madepossible in the browser of the user terminal and thus, it can be considered that
Defendant's System 1 including the function satisfying all the constituent features ofInvention 1 is newly created at the point of time when the user terminal received eachof the aforementioned files (hereinafter, the aforementioned act of newly creating
Defendant's System 1 shall be referred to as "Production 1-1").
b. On the other hand, the Appellees assert that: [i] the act of Appellee FC2 related
to the "production" of each of Defendant's Systems is only manufacture of a program
corresponding to each of Defendant's Systems and upload of the program to the se rver,
both of which are completed in the U.S., and after that, an act of use including the
upload of the comments and the videos by the users exists until the comment and thevideo are displayed on the user terminal, but the display device on the user term inal isa general-purpose browser, and the act of use has no relation with the featured part ofeach of the Inventions; [ii] in Defendant's System 1, the user terminal only passively
displays the video and the comment in accordance with the description in the program
uploaded by Appellee FC2 to the server, and the contents of the comments uploaded bya third party to the server of Appellee FC2 and the video uploaded to the server ofAppellee FC2 (the video uploaded to a third party's server in Defendant's S ystems 2
and 3).

The video and the comment displayed on the user terminal is only a result ofuse of an already produced device (each of Defendant's Systems) by a user using thegeneral-purpose browser of the user terminal, and the "act" to "newly" "creat e" the"product" does not exist there; [iii] according to the point described in Exhibit Otsu 311
that "in general, a system related to communication is accompanied bytransmission/reception of data and thus, the interpretation that even repetition of
production, disposal of the system related to the communication for the first unit, thesecond unit, the third unit, and the n-th unit is included in the 'production' every time attiming of transmission/reception of the data means that the system is re-produced ateach timing of the data transmission/reception in the system, which cannot be accepted",54

it should be considered that the act of Appellee FC2 does not fall under the "production"of Invention 1.
However, regarding [i], it should be considered that Defendant's System 1
including the function which satisfies all the constituent features of Invention 1 is notcompleted only by the manufacture of the program corresponding to Defendant'sSystem 1 and the upload of the program to the server by the Appellee FC2 as describedin the aforementioned a.
Regarding [ii], as described in the aforementioned a, the video delivery server
and the comment delivery server of the Appellee FC2 are connected to the user terminal
via the network using the Internet, and Defendant's System 1 including the function
satisfying all the constituent features of Invention 1 is newly created by the reception
by the user terminal of a required file, and if the user terminal does not receive theaforementioned file, Defendant's System 1 cannot play the role.
Regarding [iii], as described above, Defendant's System 1 is newly created whenthe video delivery server and the comment delivery server of Appellee FC2 areconnected to the user terminal via the network using the Internet, and the user terminal
receives a required file, and it exists until the file stored in the cache of the browser ofthe user terminal is disposed of.

Moreover, even if the creation of Defendant's System

is repeated each time the aforementioned file is received, it cannot be considered not tofall under the "production" for that reason.
Therefore, the aforementioned assertion by the Appellees is groundless.
(C) Whether or not Production 1-1 falls under the "production" in Article 2,paragraph (3), item (i) of the Patent Act
a. The principle of territoriality for the patent right means that the patent right ineach country is prescribed by laws in the country concerned for the establishment,
transfer, effects, and the like thereof, and the effects of the patent ri ght are approved
only in the territory of the country concerned (see Supreme Court Judgment 1995 (O)No. 1988 rendered by Third Petty Bench on July 1, 1997 / Minshu Vol. 51, No. 6, page
2299, Supreme Court Judgment 2000 (Ju) No. 580 rendered by First Petty Bench on
September 26, 2002 / Minshu Vol. 56, No. 7, page 1551), and it is interpreted that the
aforementioned principle is also applicable in the Patent Act of our country.
As described in the aforementioned (B)a, Production 1-1 is performed suchthat the web server of the Appellee FC2 transmits the HTML file and the SWF file of
the webpage of Defendant's Service 1 for causing the desired video to be displayed tothe user terminal in the country, the user terminal receives them, the video delivery
server of the Appellee FC2 transmits the video file, and the comment delivery server of55

Appellee FC2 transmits the comment file to the user terminal, respectively, and the user
terminal receives them, and the aforementioned web server, the video delivery server ,and the comment delivery server are all present in the U.S., while the user terminal
exists in Japan.

That is, in Production 1-1, the transmission of each of theaforementioned files from the server existing in the U.S. to the user terminal in the
country and the reception of them by the user terminal are performed across the U.S.
and our country.
our country.

The newly created Defendant's System 1 exists across the U.S. andThus, from the principle of territoriality, whether or not Production 1 -1

falls under the "production" in Article 2, paragraph (3), item (i) of the Patent Act in ourcountry is relevant.
b. In the network-type system, installation of a server outside Japan (hereinafter,
referred to simply as "outside the country") is generally performed at present, and since
the country in which the server exists does not constitute an obstacle in use of the
network-type system, even if the server constituting the network-type system, which isan alleged infringement article, exists outside the country, if the terminal constituting
the system exists in Japan (hereinafter, referred to as "in the country"), the system canbe used in the country by using it, and the use can influence economic profits that thepatentee can obtain by working the invention in the country.
Then, regarding the invention of the network-type system, by strictlyinterpreting, without any exception, the principle of territoriality and by interpretingthat the invention does not fall under the "working" in Article 2, paragraph ( 3) of the
Patent Act in our country on the ground that the server, which is a part of the elements
constituting the system, exists outside the country means that the patent can be easily
avoided only by installing the server outside the country, and the patent right according
to the invention of the system cannot be sufficiently protected, which is not reasonable.
On the other hand, the interpretation without any exception that the invention
falls under the "working" in Article 2, paragraph (3) of the Patent Act on the groundthat the terminal, which is a part of the elements constituting the system, exists in the
country becomes excessive protection for the patent right and could incur a trouble ineconomic activities, which also is not reasonable.
On the basis of the above, from the viewpoint of appropriate protection of thepatent right pertaining to the invention of the network-type system, regarding whether
or not the act of newly creating the network-type system falls under the "production"
in Article 2, paragraph (3), item (i) of the Patent Act, even if the server, which is a partof the elements constituting the system exists outside the country, by comprehensively
considering a specific mode of the act, a function/role performed in the invention b y56

those elements existing in the country among the elements constituting the system, aplace where the effect of the invention can be obtained by use of the system, an
influence that the use thereof exerts on the economic profits of the patentee of theinvention and the like, it is reasonable to interpret that, when the act is found to be
performed in the territory of our country, it falls under the "production" in Article 2,paragraph (3), item (i) of the Patent Act.
By examining this for Production 1-1, the specific mode of Production 1-1 isperformed by transmission of each of the files from the server existing in the U.S. tothe user terminal in the country and by reception of them by the user terminal in the
country, in which the transmission and the reception (transmission/reception) are
performed as a unit, and Defendant's System 1 is completed by the reception of each of
the files by the user terminal in the country and thus, it can be conceived that the
aforementioned transmission/reception is performed in the country.
Subsequently, Defendant's System 1 is constituted by the server of Appellee
FC2 existing in the U.S. and the user terminal existing in the country, and theaforementioned user terminal existing in the country performs a function of thedetermining portion of constituent feature 1F and the function of the display-position
control portion of constituent feature 1G required as major functions of Invention 1 todisplay comments to be displayed on the video so as not to overlap each other.
Moreover, Defendant's System 1 can be used from inside the country via theaforementioned user terminal, and the effect of Invention 1, which is improvement ofentertainment in communication using the comment, is exerted in the country, and theuse thereof in the country can influence the economic profits obtained by Appellant byusing the system according to Invention 1 in the country.
Bycomprehensively

consideringtheaforementioned

circumstances,

Production 1-1 can be considered to be performed in the territory of our country andthus, it is found to fall under the "production" under Article 2, paragraph (3), item (i)of the Patent Act in the relationship with Invention 1.
c. On the other hand, the Appellees assert that: [i] according to the principle ofterritoriality, "the effect of the patent is approved only in a territory of the country
concerned" and thus, from the viewpoint that it is natural consequence that the act of
creation overseas (outside the country) does not fall under the "production" in Article
2, paragraph (3), item (i) of the Patent Act and that, according to the all-elements Rule,
the working of the patent invention is to work all the elements configuring the patentinvention concerned, so that if even a part of a product is created overseas, it should beconsidered not to fall under the "production" in Article 2, paragraph (3), item (i) of the57Patent Act; [ii] just because the possibility of patent workaround is a problem, it is aleap of logic to consider that if only a part of a product satisfying the constituent
features is created in the country, it falls under the "production" or rather, theinterpretation that, if a part of a product satisfying the constituent features is created in
the country, the effects of the Patent Act in our country immediately take effect has
more problems; and [iii] in the court examples in our country, the principle ofterritoriality has been strictly conformed to by the Supreme Court Judgment of the Card
Reader Case (judgment rendered by First Petty Bench on September 26, 2002 as
described above) and the like, and an adverse effect caused by making an exception
thereto is clearly anticipated and thus, even if an exception to the principle ofterritoriality is to be made, it should be dealt with by a legislative process.
However, regarding [i], with respect to the invention of the network-typesystem, on whether or not the act of newly creating a system to be an alleged
infringement article falls under the "production" in Article 2, paragraph (3), item (i) of
the Patent Act, even if the server, which is a part of the elements configuring the system
concerned, exists outside the country, when the act concerned can be regarded as having
been performed in the territory of our country, it should be interpreted to fall under the"production" in Article 2, paragraph (3), item (i) of the Patent Act by comprehensively
considering the circumstances taught in the aforementioned b and thus, the assertion in[i] cannot be accepted.
Regarding [ii], with respect to the aforementioned determination on whether
or not it falls under the "production" in Article 2, paragraph (3), item (i) of the Patent
Act, it should not be considered such that, even if a part of a product satisfying theconstituent features is created in the country, the effects of the Patent Act in our country
immediately take effect and thus, the assertion in [ii] lacks the premise thereof.
Regarding [iii], in the light that the principle of territoriality for the patentright means that the patent right in each country is prescribed by laws in the country
concerned for the establishment, transfer, effects, and the like thereof, and the effectsof the patent right are approved only in the territory of the country concerned, it should
be considered that the interpretation, when the act concerned can be found to be
performed in the territory of our country as described above, it falls under the"production" in Article 2, paragraph (3), item (i) of the Patent Act does not violate theprinciple of territoriality.

In addition, the Supreme Court Judgment of the Card

Reader Case cited by the Appellees is not considered to even teach that, in order to fallunder the "production" as a natural consequence from the principle of territoriality, theact of newly creating a product satisfying all the constituent features of the Patent
58

Invention is required to be completed in the territory of our country.

Moreover, in thetreaties concluded by our country and the Patent Act and other laws and orders, as well,there is no such prescription as the contents of the principle of territoriality that, inorder to fall under the "production", the act of newly creating the product satisfying all
the constituent features of the patent invention is required to be completed i n the
territory of our country and thus, the assertion in [iii] cannot be accepted.
Therefore, the aforementioned assertion by the Appellees is groundless.
(D) Subject that "produced" Defendant's System 1 (according to FLASH versionof Defendant's Service 1)
a. Defendant's System 1 (according to the FLASH version of Defendant's Service
1) is newly created as the result of, as in the aforementioned (B) a, the web server ofthe Appellee FC2 transmitting the HTML file and the SWF file of the webpage of the
Defendant's System 1 for causing the desired video to be displayed to the user terminal,
the user terminal receiving them, in response to the request from the browser inaccordance with the order by the aforementioned SWF file stored in the cache of thebrowser of the user terminal, the video delivery server of Appellee FC2 transmitting
the video file, and the comment delivery server of Appellee FC2 transmitting thecomment file to the user terminal, respectively, and the user terminal receiving them.
In light of Appellee FC2 installing and managing the aforementioned web server, thevideo delivery server, and the comment delivery server, and these servers transmitting
the HTML file and the SWF file, the video file, as well as the comment file to the user
terminal, and the reception of each of the files by the user terminal being performed
automatically without intervention of a separate operation by the user but in accordancewith the description in the program uploaded by Appellee FC2 to the server, the subject
that "produced" Defendant's System 1 should be considered to be Appellee FC2.
With this regard, in the "production" of Defendant's System 1, as in the
aforementioned (B) a, it is required that the user specifies the webpage of Defendant'sService 1 for causing the desired video to be displayed in the browser of the user
terminal ([ii]) and presses the play button for the video in the webpage displayed on thebrowser ([v]), but in the webpage displayed on the basis of the HTML file stored in the
web server installed and managed by Appellee FC2, each of the aforementioned acts by
the user is limited to an act performed with viewing the page and watching the videoby the user.

That is, when the page is displayed on the browser, as described above,

the web server of Appellee FC2 transmits the HTML file and the SWF file of the pageto the user terminal, and these files received by the user terminal are stored in the cacheof the browser ([iv]), and regarding the request for the video file and the comment file,59

it is made in accordance with the order by the aforementioned SWF file ([vi]), and aparticular act by the user is not required in obtaining the aforementioned video file andcomment file and thus, each of the aforementioned acts by the user is limi ted to those
performed through viewing the webpage managed by Appellee FC2, and the act of"production" of Defendant's System 1 by the user himself/herself cannot be evaluatedas subjective performance.
b. In response to the above, the Appellees assert that [i] the transmission by theserver existing in the U.S. of the webpage data, the JS file (SWF file in the FLASH
version), the video file, and the comment file is not performed by Appellee FC2, but it
is automatically performed in response to a request due to the incorporation of the
program in the server connected to the Internet, which is only a flow of a causal effect;[ii] the reception by the user terminal existing in Japan (in the country) of theaforementioned webpage data, the JS file (SWF file), the video file, and the comment
file is performed by user's specifying of the webpage or clicking on the play button
displayed on the webpage, which means that the user's operation intervenes.

Even if

Appellee FC2 performs the transmission act in [i], since the Patent Act clearly
distinguishes and prescribes "transfer" and "acceptance", "import" and "export", and"provision" and "reception", it should not be interpreted that Appellee FC2 performs
the aforementioned act of reception.
However, regarding [i], as described in the aforementioned a, Appellee FC2
installs and manages the web server, the video delivery server, and the comment
delivery server, and these servers transmit the HTML file and the SWF file, the video
file, as well as the comment file to the user terminal, and the reception of each of thefiles by the user terminal is performed automatically without intervention of a separate
operation by the user but in accordance with the description in the program uploaded
by Appellee FC2 to the server and thus, the subject that "produced" Defendant's System
1 should be considered to be Appellee FC2.
Moreover, regarding [ii], as described in the aforementioned a, each of theuser's acts of specifying of the webpage or clicking on the play button displ ayed on the
webpage is limited to the performance through viewing of the webpage managed byAppellee FC2, and the reception of each of the aforementioned files by the user terminal
is automatically performed without intervention of a separate operation by the user as
described above and thus, the subject that causes the user terminal to receive each of
the aforementioned files should be considered to be Appellee FC2.
Therefore, the aforementioned assertion by the Appellees is groundless.
(E) Summary60

According to the above, it is found that Appellee FC2 "produced" (Article 2,paragraph (3), item (i) of the Patent Act) Defendant's System 1 by Production 1-1.
B. Whether or not the act of Appellee FC2 in the HTML 5 version of Defendant'sService 1 falls under the "production" (Article 2, paragraph (3), item (i) of the Patent
Act) as the act of working of Invention 1(A) Act of newly creating Defendant's System 1 in the HTML 5 version of the
Defendant's Service 1
As described in the aforementioned A(A), the "production" in the inventionof the network-type system is interpreted to refer to an act of newly creating the system
in which a plurality of elements, each of which does not singularly satisfy all theconstituent features of the invention concerned, are connected via the network so as tohave an organic relationship with one another and to have a function of satisfying all
the constituent features of the Invention as a whole.
In the HTML 5 version of the Defendant' Service 1, as in No. 4, 5(1) C (B) in
the judgment in prior instance cited after correction, in response to the user specifying
the webpage of Defendant's Service 1 for causing the desired video to be displayed on
the browser of the user terminal in the country ([i]), the web server of Appellee FC2transmits the HTML file and the JS file of the aforementioned webpage to the user
terminal ([ii]), these files received by the user terminal are stored in the cache of thebrowser ([iii]), after that, in accordance with the order stored in the aforementioned JS
file, the browser makes a request for the video file to the video delivery server ofAppellee FC2 and makes a request for the comment file to the comment delivery serverof Appellee FC2 ([iv]), in response to the aforementioned request, the video delivery
server of Appellee FC2 transmits the video file, and the comment delivery server ofAppellee FC2 transmits the comment file to the user terminal, respectively ([v]), andthe user terminal receives the aforementioned video file and comment file ([vi]),
whereby the user terminal can overlay-display the comment on the video in the browser
on the basis of the received video file and comment file.

As described above, at apoint of time when the user terminal receives the aforementioned video f ile andcomment file ([vi]), the video delivery server and the comment delivery server ofAppellee FC2 and the user terminal are connected via the network using the Internet,
and the comment can be overlay-displayed on the video in the browser of the user
terminal.

Thus, it can be considered that, at the point of time when the user terminal

receives each of the aforementioned files, Defendant's System 1 including the function
satisfying all the constituent features of Invention 1 is newly created (hereinaf ter, theaforementioned act of newly creating Defendant's System 1 shall be called "Production61

1-2" and shall be called together with Production 1-1 "Production 1").
(B) Whether or not Production 1-2 falls under the "production" under Article 2,paragraph (3), item (i) of the Patent Act
a. As described in the aforementioned (A), Production 1-2 is performed by thetransmission by the web server of Appellee FC2 to the user terminal of the HTML fileand the JS file of the webpage of Defendant's Service 1 for causing the desired video tobe displayed, the reception thereof by the user terminal, the transmission of the video
file by the video delivery server of Appellee FC2 and of the comment file by thecomment delivery server of Appellee FC2 to the user terminal, respectively, and thereception thereof by the user terminal.

However, the aforementioned web server, thevideo delivery server, and the comment delivery server all exist in the U.S., while theuser terminal exists in the country.

That is, in Production 1-2, the transmission of eachof the aforementioned files from the server existing in the U.S. to the user terminal in
the country and the reception thereof by the user terminal are performed across the U.S.
and our country, and the newly created Defendant's System 1 exists across the U.S. andour country.

Thus, in view of the principle of territoriality, whether or not Production

1-2 falls under the "production" under Article 2, paragraph (3), item (i) of the Patent
Act of our country is relevant.
b. From the viewpoint taught in the aforementioned A (C) b, by examining
Production 1-2, the specific mode of Production 1-2 is performed by the transmissionof each of the files from the server existing in the U.S. to the user terminal in the country,
and the reception thereof by the user terminal in the country, in which the transmission
and the reception (transmission/reception) are performed as a unit, and Defendant'sSystem 1 is completed by the reception of each of the files by the user terminal in the
country and thus, it can be conceived that the aforementioned transmission/reception is
performed in the country.
Subsequently, Defendant's System 1 is configured by the server of Appellee
FC2 existing in the U.S. and the user terminal existing in the country, and theaforementioned user terminal existing in the country performs a function of thedetermining portion of the constituent feature 1F and the function of the displayposition control portion of the constituent feature 1G required as major funct ions ofInvention 1 to display comments to be displayed on the video so as not to overlap eachother.
Moreover, Defendant's System 1 can be used from inside the country via theaforementioned user terminal, and the effect of Invention 1, which is improvement ofentertainment in communication using the comment, is exerted in the country, and the62use thereof in the country can influence the economic profits obtained by Appellant byusing the system according to Invention 1 in the country.
Bycomprehensively

consideringtheaforementioned

circumstances,

Production 1-2 can be considered to be performed in the territory of our country andthus, it is found to fall under the "production" under Article 2, paragraph (3), item (i)of the Patent Act in the relationship with Invention 1.
(C) Subject that "produced" Defendant's System 1 (according to HTML 5 versionof Defendant's Service 1)
Defendant's System 1 (according to HTML 5 version of Defendant's Service
1) is newly created as the result that, as in the aforementioned (A), the web server ofAppellee FC2 transmits the HTML file and the JS file of the webpage of Defendant'sService 1 for causing the desired video to be displayed to the user terminal, the user
terminal receives them and, in response to the request from the browser in accordancewith the order by the aforementioned JS file stored in the cache of the browser of theuser terminal, the video delivery server of Appellee FC2 transmits the video file, andthe comment delivery server of Appellee FC2 transmits the comment file to the user
terminal, respectively, and the user terminal receives them.

Appellee FC2 installs andmanages the aforementioned web server, the video delivery server, and the comment
delivery server, and these servers transmit the HTML file and the JS file, the video file,and the comment file to the user terminal, and the reception of each of the files by theuser terminal is performed automatically without intervention of a separate operationby the user but in accordance with the description in the program uploaded by Appellee
FC2 to the server and thus, the subject that "produced" Defendant's System 1 should beconsidered to be Appellee FC2.
With this regard, in the "production" of Defendant's System 1, as in the
aforementioned (A), it is required that the user specifies the webpage of Defendant'sService 1 for causing the desired video to be displayed in the browser of the user
terminal ([i]), but in the webpage displayed on the basis of the HTML file stored in the
web server installed and managed by Appellee FC2, the aforementioned act by the user
is limited to an act performed with viewing the page and watching the video by the user,
and as described above, since the reception of each of the aforementioned files afterthat is automatically performed in accordance with the description in the program
uploaded by Appellee FC2 without intervention of a separate operation by the user, theact of "production" of Defendant's System 1 by the user himself/herself cannot be
evaluated as subjective performance.
(D) Summary63

According to the above, it is found that Appellee FC2 "produced" Defendant'sSystem 1 by Production 1-2.
C. Whether or not the act of Appellee FC2 in Defendant's Services 2 and 3 falls
under the "production" (Article 2, paragraph (3), item (i) of the Patent Act) as the actof working of Invention 1(A) Act of newly creating Defendant's System 2 or 3 in Defendant's Services 2
and 3
As described in the aforementioned A(A), the "production" in the inventionof the network-type system is interpreted to refer to an act of newly creating a system
in which a plurality of elements, each of which does not singularly satisfy all theconstituent features of the invention, are connected via the network so as to have anorganic relationship with one another and to have a function of satisfying all theconstituent features of the Invention as a whole.
In the FLASH version of Defendant' Services 2 and 3, as in No. 4, 5 (1) D (A)in the judgment in prior instance cited after correction, when the user specifies the
webpage of Defendant's Service 2 or 3 for causing the desired video to be displayed on
the browser of the user terminal in the country ([ii]), in response to that, the web serverof Appellee FC2 transmits the HTML file and the SWF file of the aforementioned
webpage to the user terminal ([iii]), these files received by the user terminal are stored
in the cache of the browser, FLASH of the user terminal loads the SWF file in the cacheof the browser ([iv]), and subsequently, in accordance with the order stored in the
aforementioned SWF file, FLASH instructs the browser to acquire the video file andthe comment file, and the browser makes a request for the comment file to the comment
delivery server of Appellee FC2 and makes a request for the video file to the video
delivery server of another video delivery service in accordance with the instruction ([v]),and in response to the aforementioned request, the comment delivery server of Appellee
FC2 transmits the comment file and the aforementioned video delivery server transmits
the video file to the user terminal, respectively ([vi]), and the user terminal receives theaforementioned video file and comment file ([vii]), whereby the user terminal can cause
the comment to be overlay-displayed on the video in the browser on the basis of thereceived video file and comment file.
Moreover, in the HTML 5 version of Defendant's Services 2 and 3, as in No.
4, 5 (1) D (B) in the judgment in prior instance cited after correction, in response to theuser specifying the webpage of Defendant's Service 2 or 3 for causing the desired video
to be displayed on the browser of the user terminal in the country ([i]), the web serve rof Appellee FC2 transmits the HTML file and the JS file of the aforementioned webpage64

to the user terminal ([ii]), these files received by the user terminal are stored in thecache of the browser ([iii]), and subsequently, in accordance with the order st ored in
the aforementioned JS file, the browser makes a request for the comment file to thecomment delivery server of Appellee FC2 and makes a request for the video file to thevideo delivery server of another video delivery service ([iv]), and in respons e to theaforementioned request, the comment delivery server of Appellee FC2 transmits thecomment file and the video delivery server transmits the video file to the user terminal,
respectively ([v]), and the user terminal receives the aforementioned video file and thecomment file ([vi]), whereby the user terminal can cause the comment to be overlaydisplayed on the video in the browser on the basis of the aforementioned video file andcomment file thus received.
As described above, at a point of time when the user terminal receives theaforementioned video file and comment file ([vii] in the FLASH version, [vi] in theHTML 5 version), the video delivery server of another video delivery service as wellas the comment delivery server of Appellee FC2 and the user terminal are connected
via the network using the Internet, and the comment can be overlay-displayed on thevideo in the browser of the user terminal.

Thus, it can be considered that, at the pointof time when the user terminal receives each of the aforementioned files, Defendant'sSystem 2 or 3 including the function satisfying all the constituent features of Invention
1 is newly created (hereinafter, the act of newly creating Defendant's System 2 shall becalled "Production 2" and the act of newly creating Defendant's System 3 shall be called"Production 3".).
(B) Whether or not Productions 2 and 3 fall under the "production" under Article
2, paragraph (3), item (i) of the Patent Act
a. As described in the aforementioned (A), Productions 2 and 3 are performed by
the transmission by the web server of Appellee FC2 of the HTML file and the SWF fileor the JS file of the webpage of Defendant's Service 2 or 3 for causing the desired video
to be displayed to the user terminal, the reception thereof by the user terminal, thetransmission of the comment file by the comment delivery server of Appellee FC2 andthe video file by the video delivery server of another video delivery service to the user
terminal, respectively, and the reception thereof by the user terminal.

However, atleast both the aforementioned web server and the comment delivery server exist in the
U.S., and the aforementioned video delivery server also exists outside the country insome cases (No. 4, 5(1) B (B) in the judgment in prior instance cited after correction),while the user terminal exists in the country.

That is, in Productions 2 and 3, thetransmission of each of the aforementioned files from the server existing outside the65country to the user terminal in the country and the reception thereof by the user terminal
are performed across outside the country and inside the country, and the newly createdDefendant's Systems 2 and 3 exist across outside the country and inside the country.
Thus, in view of the principle of territoriality, whether or not Productions 2 and 3 fallunder the "production" under Article 2, paragraph (3), item (i) of the Patent Act in ourcountry is relevant.
b. From the viewpoint taught in the aforementioned A (C) b, by examining
Productions 2 and 3, the specific modes of Productions 2 and 3 are performed by thetransmission of each of the files from the server existing outside the country (note that,as described in the aforementioned a, the video delivery server might exist in the
country in some cases) to the user terminal in the country and the reception thereof by
the user terminal in the country, in which the transmission and reception(transmission/reception) are performed as a unit, and Defendant's System 2 or 3 iscompleted by the reception of each of the files by the user terminal in the country andthus, it can be conceived that the aforementioned transmission/reception are performedin the country.
Subsequently, Defendant's Systems 2 and 3 are configured by the comment
delivery server of Appellee FC2 existing in the U.S., the video delivery server existingoutside or inside the country, and the user terminal existing in the country, and theaforementioned user terminal existing in the country performs a function of thedetermining portion of the constituent feature 1F and the function of the displayposition control portion of the constituent feature 1G required as major functions ofInvention 1 to cause comments to be displayed on the video so as not to overlap eachother.
Moreover, Defendant's Systems 2 and 3 can be used from inside the country
via the aforementioned user terminal, and the effect of Invention 1, which is
improvement of entertainment in communication using the comment, is exerted in the
country, and the use thereof in the country can influence the economic profits obtainedby Appellant by using the system according to Invention 1 in the country.
Bycomprehensively

consideringtheaforementioned

circumstances,

Productions 2 and 3 can be considered to be performed in the territory of our country
and thus, it is found to fall under the "production" under Article 2, paragraph (3), item(i) of the Patent Act in the relationship with Invention 1.
(C) Subject that "produced" Defendant's Systems 2 and 3
Defendant's Systems 2 and 3 are newly created as the result of, as in the
aforementioned (A), the web server of the Appellee FC2 transmitting the HTML file66

and the SWF file or the JS file of the webpage of Defendant's Service 2 or 3 for causing
the desired video to be displayed to the user terminal, the user terminal receiving themand, in response to the request from the browser in accordance with the order by the
aforementioned SWF file or JS file stored in the cache of the browser of the user
terminal, the comment delivery server of the Appellee FC2 transmitting the comment
file and the video delivery server of another video delivery service transmitting thevideo file to the user terminal, respectively, and the user terminal receiving them.

The

Appellee FC2 installs and manages the aforementioned web server and comment
delivery server, and these servers transmit the HTML file and the SWF file or the JS
file as well as the comment file to the user terminal, and the reception of each of thefiles by the user terminal is performed automatically without intervention of a separate
operation by the user but in accordance with the description in the program uploaded
by Appellee FC2 to the server and thus, the subject that "produced" Defendant'sSystems 2 and 3 should be considered to be Appellee FC2.
With this regard, in the "production" of Defendant's Systems 2 and 3, as in the
aforementioned (A), it is required that the user specifies the webpage of Defendant'sService 2 or 3 for causing the desired video to be displayed in the browser of the user
terminal ([ii] in the FLASH version, [i] in the HTML 5 version), but in the webpage
displayed on the basis of the HTML file stored in the web server installed and managed
by Appellee FC2, the aforementioned act by the user is limited to an act performed withviewing the page and watching the video by the user, and as described above, since thereception of each of the aforementioned files after that is automatically performed inaccordance with the description in the program uploaded by Appellee FC2 to the server
without intervention of a separate operation by the user, the act of "production" of
Defendant's System 2 or 3 by the user himself/herself cannot be evaluated as subjective
performance.
(D) Summary
According to the above, it is found that Appellee FC2 "produced" Defendant'sSystem 2 by Production 2 and "produced" Defendant's System 3 by Production 3.
D. Whether or not the act of Appellee FC2 in Defendant's Service 1 falls underthe "production" (Article 2, paragraph (3), item (i) of the Patent Act) as the act ofworking of Invention 2
Defendant's System 1 newly created by Production 1 of Appellee FC2 satisfies
all the constituent features of Invention 2 and belongs to the technical scope thereof andthus, on the grounds similar to those taught in the aforementioned A and B, Production
1 is found to fall under the "production" under Article 2, paragraph (3), item (i) of the67Patent Act also in the relationship with Invention 2.
E. Whether or not the act of Appellee FC2 in Defendant's Services 2 and 3 falls
under the "production" (Article 2, paragraph (3), item (i) of the Patent Act) as the actof working of Invention 2
Defendant's Systems 2 and 3 newly created by Productions 2 and 3 ofAppellee FC2 satisfy all the constituent features of Invention 2 and belong to thetechnical scope thereof and thus, on the grounds similar to those taught in the
aforementioned C, Productions 2 and 3 are found to fall under the "production" under
Article 2, paragraph (3), item (i) of the Patent Act also in the relationship with Invention
2.
F. Conclusion
According to the above, it is found that Appellee FC2 "produced" Defendant'sSystem 1 by Production 1, Defendant's System 2 by Production 2, and Defendant'sSystem 3 by Production 3, and infringed the Patent Right.
The assertion by Appellees against that is groundless.
(3) Presence/absence of "production" of each of Defendant's Systems byAppellee HPS
The situation of involvement of Appellee HPS with each of Defendant'sSystems is as No. 4, 5 (1) E in the judgment in prior instance cited after correction, andat least on May 17, 2019 when the establishment of the Patent Right was registered andafter, it is not found that Appellee HPS engaged in the business related to each of
Defendant's Services and there is no other evidence sufficient to approve it.
Therefore, it is not found that Appellee HPS "produced" each of Defendant'sSystems and infringed the Patent Right.
The assertion by Appellant against that is groundless.
5 Issue 5 (Establishment of the defense of invalidity)
As described in Attachment 10 (Determination on Issue 5 (Establishment of
the defense of invalidity))
6 Issue 6 (Establishment of abuse of right)
Appellees assert that the Application was filed for the purpose of dragging up
another litigation again (see the assertion by Appellees in "(14) Issue 5-14 (Violationof public order and morality (Invalidation Reason 14))" described in Attachment 10),and in view of the history of application as above, it is obvious that the division of the
Application was filed for the purpose of substantially deviating from the prescription
in Article 17-2, paragraph (3), item (iii) and item (iv) of the Patent Act and thus,
exercise of the Patent Right against Appellees is abuse of right and is not allowed.
68However, in light of the teaching in (12) and (14) described in Attachment 10,
the assertion by the Appellees lacks the premises thereof, which cannot be accepted.
7 Issue 7 (Necessity of injunction and removal or the like)(1) Injunction
A. As described in the aforementioned 4, it is found that Appellee FC2"produced" Defendant's System 1 by Production 1, Defendant's System 2 by Production
2, and Defendant's System 3 by Production 3, and infringed the Patent Right.
Moreover, as described in the aforementioned 4(2)A(B)a and the same B(A),in Production 1, the video file and the comment file are transmitted from the server ofAppellee FC2 to the user terminal in the country, and these files are received by theuser terminal in the country, whereby Defendant's System 1 was "produced".
With regard to this point, Appellee FC2 asserts that, regarding Defendant'sService 1, the function of overlay-displaying the comment on the video in the display
device of the user terminal was abolished on August 2, 2022, and the specification waschanged to provision of a comment display region separately from the video display
region.
Thus, by examining that, it is found that, according to the evidence (Exhibits
Otsu 97 to 99), in Defendant's Service 1, at a point of time of March 14, 2023, thespecification is configured such that the comment is displayed on a region different
from the region on which the video is displayed.

Note that there is no evidence

sufficient to find that the specification change was made before that date.
Then, it cannot be found that the infringement of the Patent Right by
Production 1 has been committed by Appellee FC2 on the same day and after.
However, in Defendant's Service 1, the service in which the comment isdisplayed together with the video has been still provided, and by considering that it iseasy to overlay-display the comment on the video again by changing the specification
so as to provide the service related to the Patent Right infringement, in order to preventthe infringement of the Patent Right by Production 1, it is found to be necessary to
injunct the delivery of the video file and the comment file from the server of Appellee
FC2 to the user terminal existing in Japan (transmission of both files to the user terminalin the country and having them received by the user terminal in the country) in such amode that the comments overlay-displayed on the video on the display device of theuser terminal move in the horizontal direction and are displayed so as not to overlap
each other.
B. Moreover, regarding Productions 2 and 3, in view that Appellee FC2transferred the business related to Defendant's Services 2 and 3 to Shwe Nandar Co.,69

Ltd. on September 25, 2020 (No. 4, 5 (1) A (B) a in the judgment in prior instance cited
after correction), it is not found that Appellee FC2 infringed the Patent Right by
Productions 2 and 3 on the same day and after, and it is not found, either, that there isa concern of future infringement and thus, regarding Productions 2 and 3, it should beconsidered that there is no necessity for the injunction of the delivery of the video fileand the comment file.
C. According to the above, Appellant's claim for injunction is found to be
grounded to the limit of making a claim against Appellee FC2 for the injunction of thedelivery of the video file and the comment file from the server of Appellee FC2 to theuser terminal existing in the country in such a mode that the comments overlaydisplayed on the video on the display device of the user terminal move in the horizontal
direction and are displayed so as not to overlap each other in Defendant's Service 1.
(2) Removal and the like
A. As described in the aforementioned (1), on March 14, 2023 and after, it is notfound that infringement of the Patent Right by Production 1 has been committed byAppellee FC2.
In addition, in Defendant's Service 1, at a point of time of January 11, 2021
when the delivery service of the video with comments pertaining to the Patent Right
infringement was provided, too, among XXXXXXXX pieces of video made public in
Defendant's Service 1, the number of pieces of the video with comments was
XXXXXXX (Exhibit Otsu 85), and the rate remains at XXXX %, and as described in
the aforementioned (1) A, in Defendant' Service 1, it is possible to provide the video
delivery service without infringing the Patent Right and thus, the erasing of the program
and the removal of the server related to Defendant's Service 1 are not found to benecessary.
B. Subsequently, Appellee FC2 transferred the business related to Defendant'sServices 2 and 3 to Shwe Nandar Co., Ltd. on September 25, 2020 as described in the
aforementioned (1) B.
There is no evidence sufficient to find that Appellee FC2 holds the programs
and servers pertaining to Defendant's Services 2 and 3.
Then, the erasing of the program and the removal of the server pertaining toDefendant's Services 2 and 3 are not found to be necessary.
C. According to the above, both the claim for erasing of the program for
Defendant's Server and the claim for removal of each of Defendant's Servers byAppellant are groundless.
8 Issue 8 (Amount of damage of Appellant)70(1) Amount of damage pursuant to Article 102, paragraph (2) of the Patent Act
A. Principal claims
Appellant asserts that Appellees produced each of Defendant's Systems andprovided each of Defendant's Services from May 17, 2019, when the establishment of
the Patent Right was registered, to August 31, 2022, and produced a sale of
XXXXXXXXXX yen, whereby Appellees obtained the amount of profits (marginal
profits) not less than XXXXXXXXXX yen.

Among them, the sales amount from May

17 to 31, 2019 (amount for May) was XXXXXXXX yen, and the amount of marginal
profits was not less than XXXXXXXX yen.
However, the aforementioned sales amount and the marginal profit amountsubmitted by Appellant as the grounds for the aforementioned assertion by Exhibit Ko
24 cannot be approved, and there is no other evidence sufficient to approve them.
Therefore, the aforementioned assertion by Appellant is groundless.
B Alternative claims(A) Rate of each o Defendant's Services provided by Defendant's Systems 1 to 3
"produced" by Productions 1 to 3
As described in the aforementioned 4, Appellee FC2 "produced" Defendant'sSystem 1 by Production 1, Defendant's System 2 by Production 2, and Defendant'sSystem 3 by Production 3 and infringed the Patent Right, and all of Productions 1 to 3
are performed by the transmission of the video file and the comment file by the serverto the user terminal and the reception thereof by the user terminal.
However, in view of the facts that the number of pieces of the video withcomments delivered by each of Defendant's Services is limited, and at a point of timeof January 11, 2021, among XXXXXXXX pieces of the video made public in
Defendant's Service 1, the number of pieces of the video with comments was
XXXXXXX (Exhibit Otsu 85), and the rate remains at XXXX%, and although each of
Defendant's Services was provided also in languages other than Japanese, most of theusers thereof exist in Japan (Exhibit Ko 9, the entire import of the oral argument), it isreasonable to acknowledge that the rate of those provided by Defendant's Systems 1 to
3 "produced" by Productions 1 to 3 in each of Defendant's Services is XXX% over thewhole period during which the Patent Right was infringed.
(B) Amount of Profits of Appellee FC2 (amount of marginal profit)a. Defendant's Service 1
According to Exhibit Otsu 84, it is found that the sales amount of Defendant'sService 1 during the period from May 17, 2019 to August 31, 2022 is, as described in"Defendant's Service 1" column in the "Sales amounts" column of the list of sales
71amount and the like in the Attachment 6, XXXXXXXXXXXX yen in total, and theamount of marginal profits thereof is, as described in "Defendant's Service 1" column
in the "Marginal profit amount" column of the list of marginal profit amounts and thelike in Attachment 7-1, XXXXXXXXXXXX yen in total.
Among them, the rate of those provided by Defendant's S ystem 1 "produced"
by Production 1, which is the infringement act of the Patent Right is, as described in
the aforementioned (A), XXX% and thus, the sales amount by Production 1 is found to
be XXXXXXXXXXX yen (XXXXXXXXXXXX yen × XXXXX), and the amount ofmarginal profits of Appellee FC2 obtained by Production 1 is found to be, as describedin the "Production 1" column in the "Marginal profit breakdown" column of thecalculation of marginal profit amount in the Attachment 7-2, XXXXXXXXX yen in
total.
b Defendant's Service 2
According to Exhibit Otsu 84, it is found that the sales amount of Defendant'sService 2 during the period from May 17, 2019 to October 31, 2020 is, as described inthe "Defendant's Service 2" column in the "Sales amounts" column of the list of sales
amount and the like in Attachment 6, XXXXXXXX yen in total, and the amount ofmarginal profits thereof is, as described in the "Defendant's Service 2" column in the"Marginal profit amount" column of the list of marginal profit amounts and the like in
Attachment 7-1, XXXXXXXX yen in total.
Among them, the rate of those provided by Defendant's System 2 "produced"
by Production 2, which is the infringement act of the Patent Right is, as described in
the aforementioned (A), XXX% and thus, the sales amount by Production 2 is found to
be XXXXXX yen (XXXXXXXX yen × XXXXX), and the amount of marginal profits
of the Appellee FC2 obtained by Production 2 is found to be, as described in the"Production 2" column in the "Marginal profit breakdown" column of the calculationof marginal profit amount in Attachment 7-2, XXXXXX yen in total.
c Defendant's Service 3
According to Exhibit Otsu 84, it is found that the sales amount of Defendant'sService 3 during the period from May 17, 2019 to October 31, 2020 is, as described inthe "Defendant's Service 3" column in the "Sales amounts" column of the list of sales
amount and the like in Attachment 6, XXXXX yen in total, and the amount of marginal
profits thereof is, as described in the "Defendant's Service 3" column in the "Marginal
profit amount" column of the list of marginal profit amounts and the like" in Attachment
7-1, XXXXXX yen in total.
Among them, the rate of those provided by Defendant's System 3 "produced"72

by Production 3, which is the infringement act of the Patent Act is, as described in the
aforementioned (A), XXX% and thus, the sales amount by Production 3 is found to be
XXXX yen (XXXXXX yen × XXXXX), and the amount of marginal profits ofAppellee FC2 obtained by Production 3 is found to be, as described in the "Production
3" column in the "Marginal profit breakdown" column of the calculation of marginal
profit amount in Attachment 7-2, XXXX yen in total.
d Conclusion(a) According to the aforementioned a to c, the amount of marginal profits ofAppellee FC2 obtained by Productions 1 to 3 is found to be, as described in the"Marginal profit amount (including part corresponding to consumption tax (10%) )"column of the calculation of marginal profit amounts in Attachment 7-2,
XXXXXXXXXXX yen in total.
It is to be noted that, Appellee FC2 asserts that even if the payment of thedamages is ordered to Appellee FC2 in this case, it is subject to export exemption on
the consumption tax.

However, since there is no evidence sufficient to approve thatthe provision of each of the Defendant's Services by Appellee FC2 falls under the exporttransaction, the aforementioned assertion by Appellee FC2 is groundless.
(b) As described above, the amount of marginal profits of Appellee FC2 obtainedby Productions 1 to 3 is XXXXXXXXXXX yen in total, and this amount of marginal
profits is presumed to be the amount of damage suffered by the Appellant under Article
102, paragraph (2) of the Patent Act (hereinafter, this presumption shall be referred toas the "Presumption").
(C) Ruination of presumption
The Appellees assert that, in each of the Defendant's Services, the fact that thecomment display function of each of the Inventions is a part of the functions of thewhole system and does not have attraction for customers falls under the reason for
ruination of the Presumption.
Thus, by examining this, in consideration that, in the video delivered by each of
the Defendant's Services, most of those contributing to the sales amount are adult videos(Exhibits Ko 4-1, 2, 9, 11, entire import of the oral argument), and it cannot be denied
that the display of the comments on the video interferes with the viewing, at the pointof time of January 11, 2021, among XXXXXXXX pieces of video made public in the
Defendant's Service 1, the number of pieces of the video with comments was
XXXXXXX (Exhibit Otsu 85), and the rate remains at XXXX%, the role played by thecomment display function is limited, and it is found that most of the users of each of
the Defendant's Services use it for the purpose of viewing the videos themselves rather
73

than the comment display function.

The technically featured part of each of theInventions is to prevent display, in an overlapping manner, a plurality of comments
overlay-displayed on the video in the video with comment delivery system(aforementioned 1 (2) B), and the technical meaning itself is found to be limited in the
aforementioned system.
By comprehensively considering the aforementioned circumstances, it isreasonable to find that the contribution rate of each of the Inventions to the use of eachof the Defendant's Services is XX, and for the part exceeding the aforementioned
contribution rate, there is no considerable causal effect found between the marginal
profit amount in the aforementioned (B) d (b) and the amount of damages suffered by
the Appellant.
Therefore, the Presumption is found to be ruined to the aforementioned limit andthus, the amount of damages of the Appellant based on the Article 102, paragraph (2)of the Patent Act corresponds to the rate of the aforementioned marginal profit amountand it is found to be, as described in the "Amount of damages under Article 102,
paragraph (2) of the Patent Act" column in the Breakdown list of approved amounts in
the Attachment 4-2, XXXXXXXXX yen in total.
(2) Amount of damages based on Article 102, paragraph (3) of the Patent Act(Alternative claims)
A Regarding the amount of damages of the Appellant based on Article 102,
paragraph (3) of the Patent Act, [i] in "Research and Study Report on How to Utilize
Patents and the like on the basis of Value Evaluation of Intellectual Property ~ Actual
State of Intellectual Property (Resources) Values and Royalty Rate ~" (the "Report")
prepared by Teikoku Databank, LTD., "(2) Questionnaire Result" in "1. Royalty Rateby Technical Category (domestic questionnaire)" in "II. Royalty Rates in Our Country"
describes that the "average value of the royalty rate of the patent right" is "3.7%" forthe "Whole", "2.9%" for "Electric", and "3.1%" for "Computer Technology", "1. Trendsof Royalty Rate" in "III. Royalty Rates in Each Country" describes "6.3%" for"Software" in the industrial field as the questionnaire result on the royalty rates ofdomestic businesses, and "Royalty Rates of Judicial Decision by Industry (2004 to2008)" in "(i) Japan" in "2. Questionnaire Result of Royalty Rates by Judicial Decision"
has the description that, in the royalty rates by judicial decision for the "electric"
industry, the average value is "3.0%", the maximum value is "7.0%", and the minimum
value is "1.0%" (number of cases: "6"); [ii] as described in the aforementioned (1) B(C), the technically featured part of each of the Inventions is to prevent display, in an
overlapping manner, a plurality of comments overlay-displayed on the video in the74video with comment delivery system, and by comprehensively considering that thetechnical meaning thereof is not high, the contribution of each of the Inventions to theformation of purchaser motivation in each of the Defendant's Services is limited, andvarious circumstances emerge in this case, it is reasonable to approve the amountobtained by multiplying the sales according to Productions 1 to 3 by the royalty rate of2%.
Since it is found that the total amount of the sales amounts by Productions 1
to 3 (including the part corresponding to the consumption tax (10%)) is
XXXXXXXXXXX yen (XXXXXXXXXXX yen + XXXXXX yen + XXXX yen (total
amount of each of the sales amounts of the Productions 1 to 3 described in the
aforementioned (1) B (B) a to c added with the part corresponding to the consumptiontax (10%))), it is XXXXXXXX yen (XXXXXXXXXXX yen X 0.02).
None of the assertions against the above by the Appellant and Appellees canbe accepted.
B The assertion of the amount of damages based on Article 102, paragraph (2)of the Patent Act and the assertion of the amount of damage based on the same Article,
paragraph (3) by the Appellant are found to be selective and thus, it is acknowledgedthat the higher total amount of damages XXXXXXXXX yen based on the same Article,
paragraph (2) in the aforementioned (1) B (C) is the amount of damages of the Appellantof this case.
(3) Attorney costs
The amount of damage according to Productions 1 to 3 of the Appellant is, as
described in the "Amount of damages under Article 102, paragraph (2) of the Patent
Act" column in the Breakdown list of approved amounts in Attachment 4 -2,
XXXXXXXXX yen in total.
By considering various circumstances such as the nature/contents of this case,the approved amount of this case, the history of procedures in the court of prior instanceand this court, and the like, it is reasonable to acknowledge that the amountcorresponding to the attorney costs having a considerable causal rel ation with the tort
by the Patent Right infringement of Appellee FC2 is, as described in the "Amountcorresponding to attorney's fee" column in the Breakdown list of approved amounts in
the Attachment 4-2, XXXX yen in total.
(4) Summary
According to the above, the amount of damages of the Appellant in this caseis, as described in the "Total for all the periods" column in the "Subtotal of amount ofdamages" column in the Breakdown list of approved amounts in the Attachment 4 -2,
75

11,015,517 yen in total.
Thus, the Appellant may make a claim against Appellee FC2 for payment of
11,015,517 yen as compensation of damages based on the tort of the Patent Right
infringement, and the delay damages at each of the rates described in the "Delaydamages rate (per annum)" column from each date described in the "Date to start
counting delay damages" column until completion of the payment with respect to eachof the moneys described in the "Approved amount" column in the list of approved
amounts in Attachment 4-1.
No. 5

Conclusion
According to the above, the claims of the Appellant have reasons to the limit of

the claim against Appellee FC2 for injunction of, in Defendant's Service 1, the deliveryof the video file and the comment file from the server of Appellee FC2 to the user
terminal existing in the country so as to realize such a mode that the comments overlaydisplayed on the video on the display device of the user terminal move in the horizontal
direction and are displayed so as not to overlap each other and a claim for payment of
11,015,517 yen and the money at each of the rates described in the "Delay damages rate
(per annum)" column from each date described in the "Date to start counting delay
damages" column until completion of the payment with respect to each of the moneys
described in the "Approved amount" column in the list of approved amounts in
Attachment 4-1, while the remaining is groundless and shall be dismissed.
Therefore, the judgment in prior instance which dismissed all the claims of theAppellant (excluding the expanded claim in this court) is partially unreasonable, andthis appeal is partially grounded, and the expanded claim by the Appellant in this court
is partially grounded and thus, the judgment shall be rendered as in the main text bychanging the part relating to Appellee FC2 in the judgment in prior instance as in themain text, clause 1 of this judgment, by dismissing the appeal by the Appellant against
Appellee HPS, and by dismissing the expanded claim by the Appellant against Appellee
HPS in this court.
Intellectual Property High Court, Special Division
Presiding Judge:

OHTAKA Ichiro

Judge:KANNO Masayuki

Judge:

HONDA Tomonari

Judge:SHOJI Tamotsu

Judge:

OGAWA Takatoshi

76

77

Attachment 1
1

List of Defendant's files

In "FC2 Video" (https://video.fc2.com/), the video file and the comment filedelivered by the Appellees from the server to the user terminal (including thosedelivered separately and those in which the video file and the comment file are in aunit)
2

In "FC2 SayMove!" (http://say-move.org/), the video file and the comment filedelivered by the Appellees from the server to the terminal of the video viewer (including
those delivered separately and those in which the video file and the comment file ar e ina unit)3

In "FC2 HIMAWARI Video" (http://himado.in/), the video file and the comment

file delivered by the Appellees from the server to the terminal of the video viewer(including those delivered separately and those in which the video file and the comment
file are in a unit)

78

Attachment 2
1

List of programs for Defendant's Servers

In "FC2 Video" (https://video.fc2.com/), the program for server by which theAppellees deliver the video file and the comment file to the user terminal (including the
program for server for delivering either one of the video file and the comment file andthe program for server for delivering the video file and the comment file as a unit)
2

In "FC2 SayMove!" (http://say-move.org/), the program for server (including the

program for server for delivering either one of the video file and the comment file andthe program for server for delivering the video file and the comment file as a unit) bywhich the Appellees deliver to the user terminal the video file and the comment file(including those in which the video file and the comment file are a unit)
3

In "FC2 HIMAWARI Video" (http://himado.in/), the program for server(including the program for server for delivering either one of the video file and thecomment file and the program for server for delivering the video file and the comment
file as a unit) by which the Appellees deliver to the user terminal the video file and thecomment file (including those in which the video file and the comment file are a unit)

79

Attachment 3
1

List of Defendant's Servers

In "FC2 Video" (https://video.fc2.com/), the server provided for use by theAppellees to deliver the video file and the comment file to the user terminal (including
the server provided to be used for delivering either one of the video file and thecomment file, and the server provided to be used for delivering the video file and thecomment file as a unit)
2

In "FC2 SayMove!" (http://say-move.org/), the server provided for use by theAppellees to deliver the video file and the comment file to the user terminal (including
the server provided to be used for delivering either one of the video file and thecomment file, and the server provided to be used for delivering the video file and thecomment file as a unit)
3

In "FC2 HIMAWARI Video" (http://himado.in/), the server provided for use by

the Appellees to deliver the video file and the comment file to the user terminal(including the server provided to be used for delivering either one of the video file andthe comment file, and the server provided to be used for delivering the video file andthe comment file as a unit)

80

ATTACHMENT 4-1

LIST OF APPROVED AMOUNTSDATE TO STARTAPPROVED
COUNTINGPERIODAMOUNTDELAY
DAMAGESMay 17 - 31, 2019
Jun. 1, 2019
Jun. 1 - 30, 2019
Jul. 1, 2019
Jul. 1 - 31, 2019
Aug. 1, 2019
Aug. 1 - 31, 2019
Sep. 1, 2019
Sep. 1 - 30, 2019
Oct. 1, 2019
Oct. 1 - 31, 2019Nov. 1, 2019Nov. 1 - 30, 2019
Dec. 1, 2019
Dec. 1 - 31, 2019
Jan. 1, 2020
Jan. 1 - 31, 2020Feb. 1, 2020Feb. 1 - 29, 2020
Mar. 1, 2020
Mar. 1 - 31, 2020
Apr. 1, 2020
Apr. 1 - 30, 2020
May 1, 2020
May 1 - 31, 2020
Jun. 1, 2020
Jun. 1 - 30, 2020
Jul. 1, 2020
Jul. 1 - 31, 2020
Aug. 1, 2020
Aug. 1 - 31, 2020
Sep. 1, 2020
Sep. 1 - 30, 2020
Oct. 1, 2020
Oct. 1 - 31, 2020
Nov. 1, 2020
Nov. 1 - 30, 2020
Dec. 1, 2020
Dec. 1 - 31, 2020
Jan. 1, 2021
Jan. 1 - 31, 2021
Feb. 1, 2021
Feb. 1 - 28, 2021
Mar. 1, 2021
Mar. 1 - 31, 2021
Apr. 1, 2021
Apr. 1 - 30, 2021
May 1, 2021
May 1 - 31, 2021
Jun. 1, 2021
Jun. 1 - 30, 2021
Jul. 1, 2021
Jul. 1 - 31, 2021
Aug. 1, 2021
Aug. 1 - 31, 2021
Sep. 1, 2021
Sep. 1 - 30, 2021
Oct. 1, 2021
Oct. 1 - 31, 2021
Nov. 1, 2021
Nov. 1 - 30, 2021
Dec. 1, 2021
Dec. 1 - 31, 2021
Jan. 1, 2022
Jan. 1 - 31, 2022
Feb. 1, 2022
Feb. 1 - 28, 2022
Mar. 1, 2022
Mar. 1 - 31, 2022
Apr. 1, 2022
Apr. 1 - 30, 2022
May 1, 2022
May 1 - 31, 2022
Jun. 1, 2022
Jun. 1 - 30, 2022
Jul. 1, 2022
Jul. 1 - 31, 2022
Aug. 1, 2022
Aug. 1 - 31, 2022
Sep. 1, 2022

81

DELAY
DAMAGESRATE (PER
ANNUM)
5%
5%
5%
5%
5%
5%
5%
5%
5%
5%
5%
3%
3%
3%
3%
3%
3%
3%
3%
3%
3%
3%
3%
3%
3%
3%
3%
3%
3%
3%
3%
3%
3%
3%
3%
3%
3%
3%
3%
3%

TOTAL OF ALL
PERIODS

82

ATTACHMENT 4-2

BREAKDOWN LIST OF APPROVED AMOUNTSAMOUNT OF
DAMAGESSUBTOTALAMOUNT
UNDER
OF
CORRESPONDINGPERIODARTICLE 102,AMOUNTTO ATTORNEY'S
PARAGRAPHOF
FEE(2) OF THE
DAMAGESPATENT ACT
May 17 - 31, 2019
Jun. 1 - 30, 2019
Jul. 1 - 31, 2019
Aug. 1 - 31, 2019
Sep. 1 - 30, 2019
Oct. 1 - 31, 2019Nov. 1 - 30, 2019
Dec. 1 - 31, 2019
Jan. 1 - 31, 2020Feb. 1 - 29, 2020
Mar. 1 - 31, 2020
Apr. 1 - 30, 2020
May 1 - 31, 2020
Jun. 1 - 30, 2020
Jul. 1 - 31, 2020
Aug. 1 - 31, 2020
Sep. 1 - 30, 2020
Oct. 1 - 31, 2020
Nov. 1 - 30, 2020
Dec. 1 - 31, 2020
Jan. 1 - 31, 2021
Feb. 1 - 28, 2021
Mar. 1 - 31, 2021
Apr. 1 - 30, 2021
May 1 - 31, 2021
Jun. 1 - 30, 2021
Jul. 1 - 31, 2021
Aug. 1 - 31, 2021
Sep. 1 - 30, 2021
Oct. 1 - 31, 2021
Nov. 1 - 30, 2021
Dec. 1 - 31, 2021
Jan. 1 - 31, 2022
Feb. 1 - 28, 2022
Mar. 1 - 31, 2022
Apr. 1 - 30, 2022
May 1 - 31, 2022

83

Jun. 1 - 30, 2022
Jul. 1 - 31, 2022
Aug. 1 - 31, 2022
TOTAL FOR ALL
THE PERIODS

84

ATTACHMENT 5

LIST OF ALTERNATIVE CLAIMED AMOUNTSDATE TO START
DELAY
CLAIMED
COUNTING
DAMAGESPERIODAMOUNT
DELAY
RATE (PER
DAMAGESANNUM)
May 17 - 31, 2019
Jun. 1, 20195%
Jun. 1 - 30, 2019
Jul. 1, 20195%
Jul. 1 - 31, 2019
Aug. 1, 20195%
Aug. 1 - 31, 2019
Sep. 1, 20195%
Sep. 1 - 30, 2019
Oct. 1, 20195%
Oct. 1 - 31, 2019Nov. 1, 20195%Nov. 1 - 30, 2019
Dec. 1, 20195%
Dec. 1 - 31, 2019
Jan. 1, 2020
5%
Jan. 1 - 31, 2020Feb. 1, 2020
5%Feb. 1 - 29, 2020
Mar. 1, 2020
5%Mar. 1 - 31, 2020
Apr. 1, 2020
5%
Apr. 1 - 30, 2020
May 1, 20203%
May 1 - 31, 2020
Jun. 1, 20203%
Jun. 1 - 30, 2020
Jul. 1, 20203%
Jul. 1 - 31, 2020
Aug. 1, 20203%
Aug. 1 - 31, 2020
Sep. 1, 20203%
Sep. 1 - 30, 2020
Oct. 1, 20203%
Oct. 1 - 31, 2020
Nov. 1, 20203%
Nov. 1 - 30, 2020
Dec. 1, 20203%
Dec. 1 - 31, 2020
Jan. 1, 2021
3%
Jan. 1 - 31, 2021
Feb. 1, 2021
3%
Feb. 1 - 28, 2021
Mar. 1, 2021
3%
Mar. 1 - 31, 2021
Apr. 1, 2021
3%
Apr. 1 - 30, 2021
May 1, 2021
3%
May 1 - 31, 2021
Jun. 1, 2021
3%
Jun. 1 - 30, 2021
Jul. 1, 2021
3%
Jul. 1 - 31, 2021
Aug. 1, 2021
3%
Aug. 1 - 31, 2021
Sep. 1, 2021
3%
Sep. 1 - 30, 2021
Oct. 1, 2021
3%
Oct. 1 - 31, 2021
Nov. 1, 2021
3%
Nov. 1 - 30, 2021
Dec. 1, 2021
3%
Dec. 1 - 31, 2021
Jan. 1, 2022
3%
Jan. 1 - 31, 2022
Feb. 1, 2022
3%
Feb. 1 - 28, 2022
Mar. 1, 2022
3%
Mar. 1 - 31, 2022
Apr. 1, 2022
3%
Apr. 1 - 30, 2022
May 1, 2022
3%
May 1 - 31, 2022
Jun. 1, 2022
3%
Jun. 1 - 30, 2022
Jul. 1, 2022
3%
Jul. 1 - 31, 2022
Aug. 1, 2022
3%
Aug. 1 - 31, 2022
Sep. 1, 2022
3%

85

TOTAL FOR ALL
THE PERIODS

86

ATTACHMENT6
LIST OF SALES AMOUNTS AND THE LIKESALES AMOUNTSPERIODAMOUNTOFDAMAGESAMOUNTAMOUNT AMOUNTUNDERCORRESPO
DEFE DEFE DEFE
CORRESPO CORRESPO ARTICLENDAN NDAN NDAN SUBTOT NDING TO
NDING TO NDING TO
102,
AL
ROYALTY
T'S
T'S
T'S
CONSUMPT ATTORNEY PARAGRAP(ROYALTYSERVI SERVI SERVIION TAX'S FEE
H (3) OFRATE 20%)
CE 1 CE 2 CE 3
THE
PATENT
ACT

May 17 - 31,
2019Jun. 1 - 30,
2019
Jul. 1 - 31,
2019Aug. 1 - 31,
2019
Sep. 1 - 30,
2019Oct. 1 - 31,
2019
Nov. 1 - 30,
2019
Dec. 1 - 31,
2019
Jan. 1 - 31,
2020
Feb. 1 - 29,
2020
Mar. 1 - 31,
2020
Apr. 1 - 30,
2020
May 1 - 31,
2020
Jun. 1 - 30,
2020
Jul. 1 - 31,
2020
Aug. 1 - 31,
2020
Sep. 1 - 30,
2020

87

Oct. 1 - 31,
2020
Nov. 1 - 30,
2020
Dec. 1 - 31,
2020
Jan. 1 - 31,
2021
Feb. 1 - 28,
2021
Mar. 1 - 31,
2021
Apr. 1 - 30,
2021
May 1 - 31,
2021
Jun. 1 - 30,
2021
Jul. 1 - 31,
2021
Aug. 1 - 31,
2021
Sep. 1 - 30,
2021
Oct. 1 - 31,
2021
Nov. 1 - 30,
2021
Dec. 1 - 31,
2021
Jan. 1 - 31,
2022
Feb. 1 - 28,
2022
Mar. 1 - 31,
2022
Apr. 1 - 30,
2022
May 1 - 31,
2022
Jun. 1 - 30,
2022
Jul. 1 - 31,
2022
Aug. 1 - 31,
2022

88

TOTAL FOR
ALL THEPERIODSTRUNCATE AFTER DECIMAL POINT89

ATTACHMENT 7-1 LIST OF MARGINAL PROFIT AMOUNTS AND THE LIKEMARGINAL PROFITAMOUNTAMOUNTAMOU AMOUNOFNTTDAMAGE
CORRE CORRES S UNDERAMOUNSPOND PONDIN ARTICLE
DEFE DEFE DEFET OF
PERIODING TOG TO
102,
NDAN NDAN NDANPARTIA
SUBTCONSU ATTORN PARAGR
T'S
T'S
T'S
L CLAIM
OTAL
MPTIO
EY'S
APH (2)SERVI SERVI SERVI
N TAX
FEE
OF THECE 1 CE 2 CE 3
PATENT
ACT
May 17 - 31,
2019Jun. 1 - 30,
2019
Jul. 1 - 31,
2019Aug. 1 - 31,
2019
Sep. 1 - 30,
2019Oct. 1 - 31,
2019
Nov. 1 - 30,
2019
Dec. 1 - 31,
2019
Jan. 1 - 31,
2020
Feb. 1 - 29,
2020
Mar. 1 - 31,
2020
Apr. 1 - 30,
2020
May 1 - 31,
2020
Jun. 1 - 30,
2020
Jul. 1 - 31,
2020
Aug. 1 - 31,
2020
Sep. 1 - 30,
2020

90

Oct. 1 - 31,
2020
Nov. 1 - 30,
2020
Dec. 1 - 31,
2020
Jan. 1 - 31,
2021
Feb. 1 - 28,
2021
Mar. 1 - 31,
2021
Apr. 1 - 30,
2021
May 1 - 31,
2021
Jun. 1 - 30,
2021
Jul. 1 - 31,
2021
Aug. 1 - 31,
2021
Sep. 1 - 30,
2021
Oct. 1 - 31,
2021
Nov. 1 - 30,
2021
Dec. 1 - 31,
2021
Jan. 1 - 31,
2022
Feb. 1 - 28,
2022
Mar. 1 - 31,
2022
Apr. 1 - 30,
2022
May 1 - 31,
2022
Jun. 1 - 30,
2022
Jul. 1 - 31,
2022
Aug. 1 - 31,
2022

91

TOTAL FOR
ALL THEPERIODSTRUNCATE AFTER DECIMAL POINT

92

ATTACHMENT 7-2

PERIODCALCULATION OF MARGINAL PROFIT AMOUNTSMARGINAL PROFIT BREAKDOWNMARGINALPROFITAMOUNT(INCLUDINGPRODU PRODU PRODU SUB
PART
CTION
CTION
CTION
TOT
CORRESPONDI
1
2
3
AL
NG TO
CONSUMPTION TAX (10%))

May 17 - 31, 2019
Jun. 1 - 30, 2019
Jul. 1 - 31, 2019
Aug. 1 - 31, 2019
Sep. 1 - 30, 2019
Oct. 1 - 31, 2019Nov. 1 - 30, 2019
Dec. 1 - 31, 2019
Jan. 1 - 31, 2020Feb. 1 - 29, 2020
Mar. 1 - 31, 2020
Apr. 1 - 30, 2020
May 1 - 31, 2020
Jun. 1 - 30, 2020
Jul. 1 - 31, 2020
Aug. 1 - 31, 2020
Sep. 1 - 30, 2020
Oct. 1 - 31, 2020
Nov. 1 - 30, 2020
Dec. 1 - 31, 2020
Jan. 1 - 31, 2021
Feb. 1 - 28, 2021
Mar. 1 - 31, 2021
Apr. 1 - 30, 2021
May 1 - 31, 2021
Jun. 1 - 30, 2021
Jul. 1 - 31, 2021
Aug. 1 - 31, 2021
Sep. 1 - 30, 2021
Oct. 1 - 31, 2021
Nov. 1 - 30, 2021
Dec. 1 - 31, 2021
Jan. 1 - 31, 2022
Feb. 1 - 28, 2022
Mar. 1 - 31, 2022

93

Apr. 1 - 30, 2022
May 1 - 31, 2022
Jun. 1 - 30, 2022
Jul. 1 - 31, 2022
Aug. 1 - 31, 2022
TOTAL FOR ALL
THE PERIODS

94

ATTACHMENT 8-1

OPERATION OF EACH OF DEFENDANT'S SYSTEMS(HTML 5 VERSION OF DEFENDANT'S SYSTEM 1)[FIG]

SERVER

UNITED STATESJAPANREQUEST FOR
WEB PAGE DATAAND JS FILE

WEBPAGE DATAAND JS FILEREQUEST FOR
VIDEO ANDCOMMENT FILE

VIDEO ANDCOMMENT FILESPECIFY DESIREDVIDEO PAGE
CLICK PLAY
BUTTONATTACHMENT 8-2

USER TERMINALBROWSER

PLAY DISPLAY

FLASH VERSION OF DEFENDANT'S SERVICE 1

VIDEO
DELIVERYSERVERWEB SERVER

UNITED STATESTRANSMIT WEBPAGE
HTML FILE AND SWF
FILE TO USERTERMINAL

COMMENTDELIVERYSERVER

TRANSMITVIDEO FILE L

TRANSMITCOMMENTFILE

RECEIVE
VIDEO FILE

RECEIVECOMMENT
FILE

JAPAN

RECEIVE HTML FILE
AND SWF FILE
USER INSTALLS ADOBE FLASH PLAYER IN
USER TERMINAL IN ADVANCE AS PLUG -IN(EXPANDED FUNCTION) FOR BROWSERUSER

REQUEST
FOR VIDEO
FILE

REQUEST FOR
COMMENTFILECACHE OFBROWSERUSER SPECIFIES WEBPAGE OF DEFENDANT'SSERVICE 1 FOR CAUSING DESIRED VIDEO TO BEDISPLAYED ON BROWSER OF USER TERMINAL(PLUG-IN)

USER PRESSES VIDEO PLAY BUTTON ON
WEBPAGE DISPLAYED ON BROWSER IN
USER TERMINALUSER TERMINAL95

BROWSERATTACHMENT 8-3

HTML 5 VERSION OF DEFENDANT'S SYSTEM 1

VIDEO
DELIVERYSERVERWEB SERVER

UNITED STATESTRANSMITWEBPAGE HTML
FILE AND JS FILE
TO USER TERMINALCOMMENTDELIVERYSERVER

TRANSMITVIDEO FILE L

TRANSMITCOMMENTFILE

RECEIVE
VIDEO FILE

RECEIVECOMMENT
FILE

JAPAN

RECEIVE HTML
FILE AND JS FILE
USER SPECIFIES WEBPAGE OF DEFENDANT'SSERVICE 1 FOR CAUSING DESIRED VIDEO TO BEDISPLAYED ON BROWSER OF USER TERMINALUSER

REQUEST
FOR VIDEO
FILE

CACHE OFBROWSERBROWSERUSER PRESSES VIDEO PLAY BUTTON ON WEB
PAGE DISPLAYED ON BROWSER ON USERTERMINAL

USER TERMINAL

96

REQUEST FOR
COMMENTFILEATTACHMENT 9DESCRIPTION DRAWINGS[FIG. 1]TERMINAL
DEVICETERMINAL
DEVICETERMINAL
DEVICENETWORKVIDEO DELIVERYSERVERCOMMENTDELIVERY SERVER[FIG. 2]
COMMENT-INFORMATIONUPDATE MANAGEMENT PORTION

COMMUNICATIONPORTIONCOMMENT-INFORMATIONSTORAGE PORTION

COMMENT-INFORMATIONSTORAGE PORTION[FIG. 3]
COMMENT INFORMATIONCOMMENT INFORMATIONVIDEO IDTHREAD ID
COMMENT GIVEN TIME COMMENT-DATA POSTING ACTUAL TIME USER NAME COMMENT CONTENTS

97

COMMENT DISPLAY METHOD

[FIG. 4]
INPUT
PORTION
SELECTIONPORTION

TRANSMISSIONPORTION

PLAY CONTROLPORTION

VIDEO PLAY
PORTIONCOMMENTINFORMATIONSTORAGE PORTION
COMMENTINFORMATIONRECEPTION PORTIONSECOND DISPLAYPORTION
FIRST DISPLAYPORTIONDISPLAY
DEVICE[FIG. 5]ADDRESSVIEW

LOOKS
DELICIOUS!

OF CHICKEN RICEWITH KETCHUP
RICE OMELET WITH
HASHED BEEF, TOO

LOOKS DELICIOUS
BY FAMOUS CHEF
EGG FROM WHERE
WHERE IS RESTAURANT

HOW TO BREAK EGG
WHAT'S OMELETRICE WITH CURRYI THOUGHT SO
HAVING EATEN
WHAT'S RECIPE

PLAY STOPREWIND/FAST FORWARD

ONE
LINE

WRITE

98

[FIG. 6]
LIST OF RECENT VIDEOSTHREAD NAME

VIDEO

TIME OF FINAL COMMENT USER NAME OF FINAL COMMENTSHARE HOW YOU LIKE FOOD
CLOSE IN, BASEBALL FANS!
THEME IS DOLPHINTODAY'S ECONOMY IS ...

RICE OMELET BY FAMOUS CHEF
BASEBALL CLASSANIMAL QUIZ
23 O'CLOCK NEWS
RICE OMELET BY FAMOUS CHEF
HIT SONG THIS WEEKX HOUR XX MINUTESX HOUR XY MINUTESX HOUR XZ MINUTESX HOUR ZY MINUTESX HOUR YY MINUTESX HOUR YY MINUTESTELL ME RESTAURANT FOR RICE OMELETTHAT ARTIST IS COMING

NEXT[FIG. 7]
<PROCESSING ON COMMENT DELIVERY SERVER SIDE>START

DELIVERYREQUEST FOR COMMENT INFORMATIONRECEIVED?

READ OUT COMMENTINFORMATIONCORRESPONDING TO
SPECIFIED VIDEO ID AND
THREAD ID

TRANSMIT READ-OUT
COMMENT INFORMATIONTO TERMINAL DEVICE
WHICH MADE DELIVERYREQUESTCOMMENT DATARECEIVED?

IDENTIFY APPLICABLE
COMMENT INFORMATIONBASED ON VIDEO ID AND
THREAD ID AND
ADDITIONALLY STORE
RECEIVED COMMENTDATAWHEN THERE IS USERPLAYING VIDEO OF
VIDEO ID AND
VIEWING COMMENT OF
THREAD ID, DELIVERRECEIVED COMMENTDATA TO TERMINALDEVICE OF USER

99

[FIG. 8]<PROCESSING
ON TERMINAL
SIDE>

START

IS THERE INSTRUCTION TO PLAY VIDEO?

TRANSMIT DELIVERY REQUESTFOR COMMENT INFORMATIONTOGETHER WITH SPECIFIED VIDEOID TO COMMENT DELIVERYSERVER AND RECEIVE COMMENTINFORMATION FROM COMMENTDELIVERY SERVERCOMMENT INPUT?

START PLAYING VIDEO
DELIVERED FROM VIDEO
DELIVERY SERVER
DETERMINE PRESENCE/ABSENCE
OF COMMENT DATA MATCHING
VIDEO PLAY TIME BASED ON
CURRENT VIDEO PLAY TIME

IS THERECOMMENT MATCHING VIDEO
PLAY TIME?

CALCULATE DISPLAYPOSITION OF COMMENTSTART DISPLAY CONTROLOF COMMENTCOMMENT DATARECEIVED?
SET VIDEO PLAY TIME AT POINT
OF TIME WHEN COMMENT WASINPUT TO COMMENT GIVEN TIME
AND ADDITIONALLY STOREVIDEO ID, THREAD ID, AND
ACTUAL TIME INFORMATION AS
WELL AS USER NAME, COMMENTCONTENTS, AND COMMENTDISPLAY METHOD AS COMMENTDATA IN COMMENTINFORMATION

ADDITIONALLYSTORE RECEIVEDCOMMENT DATATRANSMIT ADDITIONALLYSTORED COMMENTINFORMATION TO COMMENTDELIVERY SERVER

PLAY END?
END[FIG. 9]ADDRESS
VIEW
THAT'SRIGHT!

WORK BY FAMOUS
CHEF IS GOOD.

OF CHICKEN RICEWITH KETCHUP
RICE OMELET WITH
HASHED BEEF, TOO

LOOKS DELICIOUS
BY FAMOUS CHEF
EGG FROM WHERE
WHERE IS RESTAURANT

HOW TO BREAK EGG
WHAT'S OMELETRICE WITH CURRY

WHERE DOES
THIS EGG COME FROM?

PLAY STOPREWIND/FAST FORWARD

ONE
LINE

WRITE

100

I THOUGHT SO
HAVING EATEN
WHAT'S RECIPEFOR THATCOMMENT SELECTION
OPERATION?

REWIND/FAST FORWARD
VIDEO PLAY POSITION IN
ACCORDANCE WITH
VIDEO PLAY TIMEACCORDING TOCOMMENT GIVEN TIME
OF SELECTED COMMENTDATA[FIG. 10]
FROM WHERE
EGG
DOES EGG
YOU'RE USING FROM
WHERE
COME?

WHAT'SRICEOMELET
WITH
CURRY

FRO M
XX PRE FECT UR E

CLICK
(PLAY START)USER EIT SEEMSFROM XX
PREFECTURE

IT SEEMSFROM XX
PREFECTURE

USER C(PLAY START)

101

FRO M
XX
PREFE CTUR E

FRO M
XX
PREFE CTUR E

Attachment 10

Determination on Issue 5 (Establishment of the defense ofinvalidity)
5

Issue 5 (Establishment of the defense of invalidity)(1) Issue 5-1 (Lack of inventive step (Invalidation Reason 1) with Exhibit Otsu

17 publication as a primarily cited reference)
A. Introduction
The Appellees assert that: [i] Exhibit Otsu 17 describes Exhibit Otsu 17
Invention (the judgment in prior instance, from page 127, lines 8 to 24) as follows; [ii]the Invention 1 and Exhibit Otsu 17 Invention are different only in a point that Invention
1 includes a determining portion which determines whether or not a display position of
the second comment when displayed on the video overlaps a display position of the firstcomment (constituent feature 1F) and a display-position control portion for adjustment
such that, when they are determined to overlap, the first comment and the second
comment are displayed at positions not overlapping each other (constituent feature 1G),
while Exhibit Otsu 17 Invention does not include such configuration (Difference 1);[iii] according to Exhibits Otsu 26 to 28, in order to solve the problem of lowering ofvisibility caused by overlapping display of character strings, when the text information
is to be displayed in the "video", determination on whether or not the character strings
overlap, and in the case of overlap, changing of the positions so that they do not overlap
was publicly known (the position-change publicly-known art) at the time of priority
date of the Application (priority date of the original application, the same applies to thefollowing), and the determination on whether or not the character strings overlap andin the case of overlap, changing of the position so as not to overlap was customarily
used in the art for displaying the text information in the "video" (the position -change
customarily-used art); [iv] according to Exhibits Otsu 48, 61, and 62, at the time of thepriority date of the Application, in the "screen display of a computer", a determining
function of determining whether or not display positions of two different displayed
objects overlap and when they are determined to overlap, a display-control function ofadjustment such that they are displayed at positions that do not overlap were well known(the position-change well-known art 2); and [v] a person ordinarily skilled in the art
could have easily conceived of the configuration of Invention 1 related to Difference 1(configurations of constituent features 1F and 1G) by applying the position-change
publicly-known art, the position-change customarily-used art, or the position-change
well-known art 2 in Exhibit Otsu 17 Invention and thus, Invention 1 lacks inventive
step and thus, it shall be determined as follows.
[Exhibit Otsu 17 Invention]
102

"(A) (G) A viewer machine which plays a video and displays a single or a plurality ofcomments given to the video on the video, characterized by having(B) a memory which stores the comment and a synchronized description
described in SMIL (Synchronized Multimedia Integration Language) which specifies
timing to start display of the comment (hereinafter, referred to as a "comment storing
memory");(C) a video play portion which plays and displays the video; and(D) a comment playing portion which reads out the comment for which thedisplay should be started at timing corresponding to a video play time of the video inthe synchronized description stored in the memory on the basis of the video play timeof the video to be played and displays the read-out comment on a viewer screen, inwhich(E) the comment overlaps at least a part of the video; and(F) the comment moves horizontally."
B. The position-change publicly-known art and the position-change customarilyused art
The Appellees assert that paragraphs [0059] and [0095] in Exhibit Otsu 26,
Exhibit Otsu 27 on the upper left column on page 4, lines 2 to 8, 14 to 19, and paragraphs[0007] and [0011] in Exhibit Otsu 28 illustrate the position-change publicly-known art,and from these descriptions, the position-change customarily-used art can be
acknowledged.
(A) Described matters in Exhibit Otsu 26
Exhibit Otsu 26 (Unexamined Patent Application Publication No. 1996 107552 publication) has descriptions as follows:"[Industrial Field of Application]
The present invention relates to a text-broadcast special playing device and a teletextbroadcast special playing device and in more detail to a text-broadcast special playing
device and a teletext-broadcast special playing device having special program
presenting/processing functions such as reception/demodulation of text broadcast datatransmitted by superimposing data consisting of characters and figures on a verticalblanking interval of a TV (television) video signal and singular displ ay, superimposed
display, or scroll-display of this data on a TV screen." ([0001]), "[Prior Art] In a text
broadcasting system currently in operation, the text broadcast data are sent out in a data
packet format with the data superimposed in a predetermined horizontal scanning
period in a vertical blanking interval of a television signal as a unit length.

These text

broadcast data include not only text information but also information data of figures103and the like.

Therefore, in the following explanation, these pieces of data shall becollectively referred to simply as program data." ([0002]), "As a publicly-known
document describing the text broadcasting system, "Guide to ~ Hybrid Position System~ Text Broadcasting Reception" (edited by Japan Broadcasting Corporation, publishedby Japan Broadcasting Corporation, Sho 61-1-15) has a detailed description, forexample.

On the basis of this document, the text broadcasting system as a premise of

the Invention will be explained below mainly in relation to matters related to the present
invention in particular.

The text broadcasting is broadcasting by encoding image

information configured by texts and figures and superimposing it on a TV broadcast
wave in a form of a digital signal, by converting it to a video signal on a reception side,and by displaying it on a TV receiver.

A text signal having the image information issuperimposed in a VBL (vertical blanking interval) not appearing on the TV screen in
the TV video signal and transmitted."([0003]), "There are two types of display of text
broadcasting; that is, single display in which the whole screen is a text program, and asuper display in which the text program is superimposed on a part of the TV screen for
display.

Moreover, there are display modes such as [i] a full-screen fixed display(stationary text and a figure are displayed in a display region); [ii] a super fixed display(stationary text and a figure are superimposed and displayed on a video of the TV
broadcasting); [iii] subtitle display (super fixed display in which a text and a figure
directly related to the contents of a TV broadcast program broadcast at the same time
are displayed); [iv] one-line horizontal-scroll display (a text and a figure in one
horizontal line moving from right to left are displayed by being superimposed on thevideo of the TV broadcasting); [v] full-screen vertical scroll (a text and a figure movingfrom down to up are displayed in a main-text display region); and [vi] multi-screen
display (a main-text display region is divided into four quadrants, and a screen isdisplayed on each quadrant at the same time by the full-screen fixed display)." ([0009]),"The text broadcasting is a kind of data transmission, and texts and figures, which are
information to be transmitted, are encoded, divided into appropriate lengths,
superimposed on H (horizontal scanning period) in the VBL (vertical blanking interval)of the video signal, and transmitted.

A process from the transmission to presentation

is hierarchized in accordance with a layered model established by ISO (International
Organization for Standardization) so as to be consistent with data transmission having
other, different rules (protocols)." ([0010]), "The present invention was made in viewof such points and has an object to provide a text-broadcast special playing device anda teletext-broadcast special playing device configured to obtain information of text
broadcasting and teletext broadcasting while viewing the TV video by converting the104

full-screen fixed display screen to a scroll screen so as to realize scroll-display withouta break in the text in the middle." ([0058]), "[Means for Solving the Problem] In orderto solve the aforementioned problems, (1) in a text-broadcast receiving device which
receives/demodulates text data transmitted by superimposing data consisting ofcharacters, figures, and added sound on a vertical blanking interval of a television video
signal, having a presented-screen conversion table for storing text information for eachblock of a minimum character unit and a special-play control portion for scroll-display
based on the presented-screen conversion table in order to convert a full-screen fixed
display screen to a scroll screen; and moreover, (2) the special-play control portion has
a coordinate-address conversion portion for converting a presented coordinate of thetransmitted text data to an address of the presented-screen conversion table and a table
generating portion for generating the presented-screen conversion table on the basis of
the address converted by the coordinate-address conversion portion; and moreover, (3)the scroll-display by the special-play control portion is superimposed display; andmoreover, (4) the presented-screen conversion table includes a character code
indicating a size of a character, a color code indicating a display color, and an attributecode for character decoration processing or the like; and moreover, (5) when the text broadcast program is viewed on a wide-aspect monitor, a display-mode discriminating
portion for discriminating a screen mode and a special-play display control portion forautomatically converting a presentation position to an optimal position in accordancewith the screen mode discriminated by the display-mode discriminating portion areprovided; and moreover, (6) when the text-broadcast program is to be displayed on avideo different from the TV broadcast in which the text broadcast is superimposed on
the wide-aspect monitor, when the video has a CinemaScope size or the like andsubtitles, and when the subtitles move by a subtitle moving function and overlap thescroll-display position, a subtitle-position detection portion for detecting a subtitle
position and the special-play display control portion for retreating to an optimal positionby avoiding the subtitle position detected by the subtitle-position detection portion areprovided; and moreover, (7) a signal detection portion for detecting average brightness
and a peak brightness of a specified region on the TV video and the special-play display
control portion which compares a value of the presented position and moves thepresented position to a region with lower brightness, easy to be seen, and not obstructing
information of the TV video are provided." ([0059]), "Moreover, when a subtitle isprovided by a subtitle moving function or the like, the subtitle position is detected by
the subtitle-position detection portion 30, and scroll-display is performed by the
special-play (scroll) display-position control portion 31 to an optimal position by105

avoiding the subtitle position (claim 6).

Furthermore, average brightness and peakbrightness of a specified region on the TV video are detected by the signal detection
portion 5, and the presented position is moved by the special-play (scroll) displayposition control portion 31 to a region with lower brightness, easy to reproduce, andnot obstructing the information of the TV video, and scroll-displayed (claim 7)."([0095]).
From the aforementioned description, it is found that Exhibit Otsu 26
discloses such an art that, in text broadcasting in which image information configured
by characters and figures is encoded and superimposed in a form of a digital signal on
the TV broadcast wave, converted to a video signal on a reception side, and displayedon a TV receiver, when the TV video has a subtitle, the scroll-display is made at an
optimal position by avoiding the subtitle position so that the subtitle does not overlap
the scroll-display position of the text data.

On the other hand, the aforementioned art

described in Exhibit Otsu 26 is an art related to a TV receiver on the premise of the text
broadcasting and is not related to the video in general.
(B) Described matters in Exhibit Otsu 27
Exhibit Otsu 27 (Unexamined Patent Application Publication No. 1984 105788 publication) has the following description: "Field of the Invention The present
invention relates to a teletext receiver.", "Background Art and Problem In television
broadcasting, television multiplex text-broadcast for broadcasting various types of
information such as news, weather forecasts, announcements, and the like by using a
vertical blanking interval of main programs is considered.

As an example, there is asystem proposed by NHK, and this system has display modes as follows: (i) full-screen
fixed mode: As shown in FIG. 1, an image of text broadcast is fixed and displayed ona full screen of a picture tube; (ii) vertical scroll mode: As shown in FIG. 2, an imageof text broadcasting is displayed over the full screen of the picture tube, but this is
scrolled in an upper direction at an appropriate speed except the uppermost line; and(iii) horizontal scroll mode: As shown in FIG. 3, one line in a sentence of the text
broadcast is displayed with respect to a main broadcast image, but this is scrolled in ahorizontal direction." (so far, on page 1), "Incidentally, in the horizontal scroll mode,as shown in FIG. 3, as well, the one line by the text broadcast is superimposed anddisplayed with respect to the main broadcast image and thus, if characters by the main
broadcast such as a name of a batter in a baseball game, for example, is displayed at
this display position, the two displays overlap and both become hard to see." (on page4, upper left column, lines 2 to 8), "Object of the Invention An object of the present
invention is to solve the problems as described above and particularly to prevent a cost106

increase at that time as much as possible." (on page 4, upper left column, lines 9 to 12),
"Summary of Invention Thus, in the present invention, a position in the horizontal scroll
is made changeable to a vertical direction by using a function for vertical scroll.
Therefore, overlap of characters in the horizontal scroll and charact ers in the main
broadcasting can be avoided, and both can be viewed." (on page 4, upper left column,
lines 13 to 19), "Effects of Invention Since a display position in the horizontal scroll
can be set in an arbitrary line, the displayed character in the horizontal scroll does notoverlap the character in the main broadcast image, but both can be viewed.

Moreover,a cost increase is rarely caused by this." (on page 6, lower right column, lines 12 to 17).
From the aforementioned description, it is found that Exhibit Otsu 27
discloses such an art that, in the receiver of television multiplex text broadcasting, theoverlap of the character in the main broadcast image and the displayed character of thetext broadcasting is avoided, and both can be viewed.

On the other hand, theaforementioned art described in Exhibit Otsu 27 is the art related to the receiver on thepremise of the television multiplex text broadcasting and is not related to the video in
general.
(C) Described matters in Exhibit Otsu 28
Exhibit Otsu 28 (Unexamined Patent Application Publication No. 1994165139 publication) has the following description:"[Industrial Field of Application] The present invention relates to a closed caption
decoder for extracting a text signal transmitted by being superimposed on a video signal
and for displaying text information at a predetermined position on a screen, and a
television receiver including this closed caption decoder and displaying the text
information together with the video on the screen." ([0001]), "[Prior Art] In the UnitedStates, a closed caption (character multiplex) system in which the same contents as
those in sound are made into text information, which is superimposed on a scanningline signal in the vertical blanking interval of a video signal and transmitted is employed
for many television programs, video software, and the like, so that a deaf person and ahearing-impaired person can enjoy television broadcasting in the same manner as ahealthy person, and a character encoding method, a transmission method, and the likeare defined in detail on the basis of the FCC (Federal Communications Commission)
standards.

In Japan, utilization of the closed caption system for language teachingmaterials is being considered." ([0002]), "[Problem to be Solved by the Invention] Since
the conventional closed caption decoder is as described above, when the closed caption
decoder is used as a language teaching material, with such a display style that a display
position of text information is not fixed but is changed for each screen, the text
107

information should be followed with the eyes each time the screen is changed and thus,
it is not possible to concentrate on the subtitles, and the teaching effect is lowered."([0006]), "In addition, when the Japanese subtitle is to be compared with the English
subtitle of the closed caption, there is a problem that the display position cannot bechanged on the receiver side even if the subtitle of the closed caption overlaps theJapanese subtitle and becomes difficult to read." ([0007]), "The present invention wasmade in order to solve the problem as described above and has an object to provide aclosed caption decoder capable of changing a display position of a closed caption on areceiver side by providing a function of converting address data, and a television
receiver including the closed caption decoder." ([0008]), "[Means for Solving the
Problem] A closed caption decoder according to the present invention is, in a closed
caption decoder which extracts and decodes an encoded text signal superimposed on avideo signal in a vertical blanking interval and displays text information at apredetermined position on a screen, characterized by including means for specifying adisplay position of the text information on a screen, a circuit for converting a display
address of the text information included in a text signal into a display address
corresponding to the specified display position, and means for displaying the text
information at the converted display address." ([0009]), "A television receiveraccording to the present invention includes the closed caption decoder and displays the
text information together with the video on a screen." ([0010]), "[Action] A closed
caption decoder and a television receiver including the same according to the present
invention extract and decode a text signal superimposed on a video signal in a verticalblanking interval, convert a display address of text information included in the text
signal into a display address specified on a reception side by a conversion program, acursor, or the like, and display the text information at the converted display address."([0011]), and "[Effect of the Invention] As described above, in the closed caption
decoder and the television receiver including the same according to the present
invention, the display address of the text information by the closed caption determinedon the transmission side of the video signal can be changed on the reception side andthus, such an excellent effect is exerted that it becomes easier to concentrate on the text
information by fixing it to a certain display position and to compare the two by moving
it to a position not overlapping the text information by an open caption, for example."([0023]).
From the aforementioned descriptions, it is found that Exhibit Otsu 28
discloses such an art that exerts the effect that, in the television receiver including theclosed caption decoder which displays on the screen the text information transmitted108

by being superimposed on the video signal together with the video, overlap between theJapanese subtitle and the English subtitle in the closed caption can be avoided, and thetwo can be compared more easily, for example.

On the other hand, the aforementioned

art described in Exhibit Otsu 28 is an art related to the television receiver including theclosed caption decoder which displays the text information on a screen together withthe video and is not related to the video in general.
(D) Conclusion
As described above, each of the arts described in Exhibits Otsu 26 to 28 is an
art related to the television receiver and the like on the premise of the text broadcast
and is not related to the video in general, or is not identical to the configuration of
Invention 1 according to Difference 1.
From the descriptions in Exhibits Otsu 26 to 28 on which the Appellees basetheir arguments, it cannot be found that, at the time of the priority date of the
Application, the position-change publicly-known art asserted by the Appellees was
publicly known, or that the position-change customarily-used art asserted by theAppellees was customarily used.
C. Position-change well-known art 2
The Appellees assert that, from the descriptions in Exhibit Otsu 48, on page80, Exhibit Otsu 61, on pages 190, 191, 196, and 199, and Exhibit Otsu 62, on pages
182 and 188, the position-change well-known art 2 can be acknowledged.
(A) Described matters in Exhibit Otsu 48
Exhibit Otsu 48 ("ActionScript Pocket Reference") has the following
descriptions:"09 Examine whether it

overlaps another instance (collision

determination)", "This is a method of examining the overlap (collision determination)
between the commentary movie-clip instance and an arbitrary xy coordinate or anothermovie clip, a button, or a text field instance.

If they overlap, true will return, while if

not, false will return.", "The xy coordinate ((blackened triangle), (white triangle))which can be specified in the aforementioned format is a global coordinate." For thedetermination condition of (blackened star), specify true for the determination in aregion with a line/paint (hit region), or false for the determination in a region rectangleof the instance.

This determination condition cannot be set in the format below for

examining the overlap between the instances.

It is determined with the region

rectangle at all times." (so far, on page 80).
From the aforementioned description, it is found that Exhibit Otsu 48
discloses such an art (collision determination) that examines overlap between themovie-clip instance, and other movie clips, a button, and a text field instance.
109

(B) Described matters in Exhibit Otsu 61
Exhibit Otsu 61 (Foundation ActionScript Animation: Making Things Move!)has the following description (abstract translation of original English):"Collision detection method ... (blackened square) a test can be conducted on the basisof an actual pixel of each of the objects (movie clips).

That is, it is a test on whether

the shape of this movie clip overlaps the shape of that movie clip.

As the test, (there

are such methods that) an actual pixel which can be visually recognized for creating agraphic of the movie clip is considered, or a test is conducted on the basis of theboundary of the rectangle of the movie clip.
how it would be applied.

Thus, this method has several options forThis format of collision detection is incorporated in Flash.

(blackened square) ... a test can be conducted also on the basis of a distance.

Adistance between two objects is measured, and "are they close enough to collide?" isasked.

This is close to a collision detection method of a role of a setter himself/herself.

It is necessary to calculate the distance and to determine when the object becomes
sufficiently close.", "hitTest is embedded", "The Flash movie clip has included amethod called hitTest." (so far, on page 190), "The following method is the simplest
method for determining whether a collision has occurred or not.

That is, a first object

is specified, and a periphery thereof is surrounded by a rectangle.

A side on an upper

part of the rectangle passes an uppermost part of a pixel which can be visually
recognized in the graphic of the object, a side of a lower part passes through a lowermost
part of the visually recognizable pixel, and left and right sides pass the farthest part ofthe visually recognizable pixel.
tested with respect to that.

Similar processing is executed for the object to be

On the basis of the above, it is checked whether these tworectangles cross each other in any way.

If they cross each other, a collision has

occurred." (on page 191), "Collision detection based on distance: In this section,
incorporation of the hitText in a method group is discarded, and the collision detection
is performed by oneself.

In order to determine whether the two objects would collide

or not, this includes a method of using a distance between them." (on page 196), "A
problem accompanying a good operation example of hitTest based on a collision
distance based on hitting is supposed to include many problems related to a reaction of
a complete program when two objects collide against each other, and a method of
efficiently manipulating intersection among many objects and the like, which have notbeen discussed.

However, I have managed to create an explanation of hitTest without

using many of those which have not yet been shown.", "The idea is as follows.

Thatis, at the center of the display screen, a movie clip of one large circle called a centerball is installed.

And a movie-clip group of smaller circles is added, and random sizes
110and speeds are set to those circles.
are bounced back by a wall.

They move on the basis of a basic motion code andOn an edge of each of the circles, a collision check basedon the distance between each of the moving balls and the center ball is conducted.

In

the case of a collision, an offset of a target to be hit is calculated on the basis of anangle between the two balls and the shortest distance to avoid the collision.
might be difficult to understand.

What it means is that, if a moving ball collides

against the center ball, the ball is bounced back.
just outside the center ball.

OK, thisThis is performed by setting the target

Then, once the ball reaches the target, a collision would

not occur and thus, the hitting operation ends, and it begins to move simply on the basisof a usual motion code.", "The result is as if a bubble is bounced back by a large bubble,
as shown in FIG. 9-4.

A few of the small bubbles enter the large bubble in accordancewith the moving speed thereof, but they are bounced back." (so far, on page 199).
From the aforementioned description, it is found that Exhibit Otsu 61
discloses such an art that the collision check for determining whether two objects(movie clips) collide or not is performed, and in the case of the collision, one of theobjects is bounded back by the other.
(C) Described matters of Exhibit Otsu 62
Exhibit Otsu 62 ("Web production seminar FlashMX2004") has the following
descriptions: "action to discriminate a hit region", "Use hitTest", "'hittest();' in
ActionScript determines whether an instance having an overlapping region overlaps the
hit region.

In the case of overlap, true is returned, while if not, false is returned.","Use example of hitTest: In this Lesson, hitTest is used, and it is configured such that,when a popup window comes onto 'topicFitBase', which is the movie clip for
determination placed on a stage, the popup window is joined thereto without a gap andreturns to an original position so as to be adsorbed." (so far, on page 182), "It is
configured such that, by moving the popup window which has been moved to a certain
position, the popup window returns to the original position.", "Here, another instanceis disposed at the same coordinate position as the position where the popup window
was first disposed.

When the popup window overlaps the instance, the coordinate of

the popup window is substituted by the coordinate of the instance.

In this way, thepopup window returns to the original coordinate position." (so far, on page 188).
From the aforementioned descriptions, it is found that Exhibit Otsu 62
discloses an art configured such that, when the popup window is overlaid on the movie
clip for determination "topicFitBase", the popup window returns to the original
coordinate position.
(D) Conclusion111

As described above, Exhibit Otsu 48 discloses the art for examining theoverlap between the movie clip instance and another movie-clip instance (collision
determination), Exhibit Otsu 61 discloses the art that the collision check for determining
whether or not the two objects (movie clips) collide is performed, and in the case of acollision, one of the objects is bounced back by the other, and Exhibit Otsu 62 discloses
the art that it is configured such that, when the popup window is overlaid on the movie
clip for determination "topicFitBase", the popup window returns to the original
coordinate position.

But when it is determined that they overlap, one of the objects is

simply bounced back by the other, or the popup window returns to the original
coordinate position, and it cannot be considered to be a function of adjustment so thatthey are displayed at positions not overlapping each other (display control function).
Moreover, none of the arts described in Exhibits Otsu 48, 61, and 62 is identical withthe configuration of Invention 1 according to Difference 1 (the configurations of theconstituent features 1F and 1G), either.
Moreover, it cannot be acknowledged that, from the descriptions in Exhibits
Otsu 48, 61, and 62 on which the Appellees base their arguments, the position -change
well-known art 2 asserted by the Appellees was well known at the time of priority dateof the Application.
D. How easily Difference 1 could have been conceived of
The Appellees assert that a person ordinarily skilled in the art could have
easily conceived of the configuration of Invention 1 according to Difference 1(configurations of the constituent features 1F and 1G) by applying the position -change
publicly-known art, the position-change customarily-used art, or the position-change
well-known art 2 in Exhibit Otsu 17 Invention.
However, as described in the aforementioned B and C, from the descriptions
in Exhibits Otsu 26 to 28, 48, 61, and 62 on which the Appellees base their arguments,
none of the position-change publicly-known art, the position-change customarily-used
art, and the position-change well-known art 2 can be acknowledged and thus, theaforementioned assertion by the Appellees lacks the premise thereof, and cannot be
accepted.
E. Summary
As described above, it cannot be approved that the configuration of Invention
1 according to Difference 1 (configurations of constituent features 1F and 1G) could
have been easily conceived of in Exhibit Otsu 17 Invention as asserted by the Appellees.
Moreover, the constituent features 2F and 2G of Invention 2 correspond toconstituent features 1F and 1G of Invention 1, respectively, and thus, similarly to the112

above, it cannot be approved that the configurations of constituent features 2F and 2Gof Invention 2 could have been easily conceived of in Exhibit Otsu 17 Invention.
Therefore, even without the need to determine the remaining points,
Invalidation Reason 1 asserted by the Appellees is groundless.
(2) Issue 5-2 (Lack of inventive step with Exhibit Otsu 18 publication as theprimarily cited reference (Invalidation Reason 2))
A. Appellees assert that Invention 1 lacks inventive step because [i] Exhibit Otsu
18 describes Exhibit Otsu 18 invention (judgment in prior instance, from page 137, line
16 to page 138, line 2) as follows; [ii] Invention 1 and Exhibit Otsu 18 invention are
different only in a point that Invention 1 includes the determining portion which
determines whether or not, when the second comment is displayed on the video, thedisplay position overlaps the display position of the first comment (constituent feature
1F) and the display-position control portion which makes adjustment such that, when
they are determined to overlap, the first comment and the second comment are displayedat positions not overlapping each other (constituent feature 1G), while Exhibit Otsu 18
invention does not include such configurations (Difference 1); and [iii] a person
ordinarily skilled in the art could have easily conceived of the configurations ofInvention 1 according to Difference 1 (configurations of constituent features 1F and
1G) by applying the position-change publicly-known art, the position-change
customarily-used art, or the position-change well-known art 2 in Exhibit Otsu 18
invention.
[Exhibit Otsu 18 Invention]"(A)(F) A display device which plays a video and displays a text on the video,
comprising:(B) a storage portion which collects a single piece or a plurality of pieces of text
data corresponding to the video and stores them in a log file;(C) a video play portion which plays and displays the video; and(D) a single or a plurality of text-data display portions which read the text data
and display the single piece or the plurality of pieces of text data, wherein(E) the single piece or the plurality of pieces of text data are displayed by at least
partially overlapping the video"
B. However, as taught in the aforementioned (1) D, from the descriptions in
Exhibits Otsu 26 to 28, 48, 61, and 62 on which the Appellees base their arguments,
none of the position-change publicly-known art, the position-change customarily-used
art, and the position-change well-known art 2 can be acknowledged, and it cannot beapproved that a person ordinarily skilled in the art could have easily conceived of the113configuration of Invention 1 according to Difference 1 (configurations of constituent
features 1F and 1G) in Exhibit Otsu 18 invention and thus, the aforementioned assertionby the Appellees lacks the premise thereof, and cannot be accepted.

The same applies

to Invention 2.
Therefore, even without the need to determine the remaining points,
Invalidation Reason 2 asserted by the Appellees is groundless.
(3) Issue 5-3 (Lack of inventive step with Exhibit Otsu 19 publication as theprimarily cited reference (Invalidation Reason 3))
A. The Appellees assert that Invention 1 lacks inventive step because [i] Exhibit
Otsu 19 describes Exhibit Otsu 19 invention (judgment in prior instance, from page 146,
line 11 to page 147, line 6) as follows; [ii] Invention 1 and Exhibit Otsu 19 invention
are different only in a point that Invention 1 includes the determining portion which
determines whether or not, when the second comment is displayed on the video, thedisplay position overlaps the display position of the first comment (constituent feature
1F) and the display-position control portion which makes adjustment such that, when
they are determined to overlap, the first comment and the second comment are displayedat positions not overlapping each other (constituent feature 1G), while Exhibit Otsu 19
invention does not include such configurations (Difference 1); and [iii] a person
ordinarily skilled in the art could have easily conceived of the configurations ofInvention 1 according to Difference 1 (configurations of the constituent features 1F and
1G) by applying the position-change publicly-known art, the position-change
customarily-used art, or the position-change well-known art 2 in Exhibit Otsu 19
invention.
[Exhibit Otsu 19 Invention]"(A)(F) A live viewer terminal 21 in a live delivery system, having a live delivery server
100 which receives a single or a plurality of chat messages transmitted from a pluralityof live viewer terminals 21 and transmits them to each of the live viewer terminals 21,
and the live viewer terminal 21 which is connected to the live delivery server 100,
displays a video, and displays the chat message on the video, characterized by having:(B) a memory (difference time memory) for temporarily storing a single or aplurality of utterances (chat messages) and an utterance time indicating a differencetime from start of live play time at a point of time when the utterance was made;(C) a communicating device 22 which receives chat input informationtransmitted from the live delivery server 100 each time when the live delivery server
100 receives the chat input information from the live viewer terminal 21 and stores itin the memory;
114

(D) a video play portion which is connected to the live delivery server 100 andplays a video in the live viewer terminal 21; and(E) a media dedicated player 23 which reads out the message with which theutterance time corresponding to video play time of the video (utterance information) is
associated in the single or the plurality of messages stored in the memory on the basisof the video play time of the video to be played and scroll-displays the read-out message
on the video."
B. However, as taught in the aforementioned (1) D, from the descriptions in
Exhibits Otsu 26 to 28, 48, 61, and 62 on which the Appellees base their arguments,
none of the position-change publicly-known art, the position-change customarily-used
art, and the position-change well-known art 2 can be acknowledged, and it cannot beapproved that a person ordinarily skilled in the art could have easily conceived of theconfiguration of Invention 1 according to Difference 1 (configurations of constituent
features 1F and 1G) in Exhibit Otsu 19 invention and thus, the aforementioned assertionby the Appellees lacks the premise thereof, and cannot be accepted.

The same applies

to Invention 2.
Therefore, even without the need to determine the remaining points,
Invalidation Reason 3 asserted by the Appellees is groundless.
(4) Issue 5-4 (Lack of inventive step with Exhibit Otsu 20 document as theprimarily cited reference (Invalidation Reason 4))
A. The Appellees assert that Invention 1 lacks inventive step because: [i] Exhibit
Otsu 20 describes Exhibit Otsu 20 invention (judgment in prior instance, from page 152,
lines 10 to 21) as follows; [ii] Invention 1 and Exhibit Otsu 20 invention are different
only in a point that, in Invention 1, the first comment and the second comment "movein a horizontal direction" (constituent feature 1E), while this point is not clear in Exhibit
Otsu 20 invention (Difference 1), and Invention 1 includes the determining portion
which determines whether or not, when the second comment is displayed on the video,
the display position overlaps the display position of the first comment (constituent
feature 1F) and the display-position control portion which makes adjustment such that,when they are determined to overlap, the first comment and the second comment are
displayed at positions not overlapping each other (constituent feature 1G), while it is
not clear if Exhibit Otsu 20 invention includes such configuration or not (Difference 2);[iii] regarding Difference 1, a person ordinarily skilled in the art could have easily
conceived of the configuration of Invention 1 according to Difference 1 (configurationof the constituent feature 1E) by applying the art of scroll-display of a text displayedon a screen of a terminal device in a horizontal or vertical direction (Exhibits Otsu 29
115

to 33 and the like), which is a basic art and a customarily-used art of a video editing
software or programing in Exhibit Otsu 20 invention; and [iv] regarding Difference 2,
a person ordinarily skilled in the art could have easily conceived of the configurationof Invention 1 according to Difference 2 (configurations of the constituent features 1F
and 1G) by applying the position-change publicly-known art, the position-change
customarily-used art, or the position-change well-known art 2 in Exhibit Otsu 20
invention.
[Exhibit Otsu 20 Invention]"(E) A system having (A) a display device which plays a video and displays a single ora plurality of annotations given to the video, in which(B) information related to time to cause the annotation to match a time axis of avideo is stored, comprising:(C) a video play portion which plays and displays the video in a video display
region for playing a video, and(D) a display portion which reads out an annotation and displays the annotationon the video on the basis of the time axis of the video to be played."
B. However, as taught in the aforementioned (1) D, from the descriptions in
Exhibits Otsu 26 to 28, 48, 61, and 62 on which the Appellees base their arguments,
none of the position-change publicly-known art, the position-change customarily-used
art, and the position-change well-known art 2 can be acknowledged, and it cannot beapproved that a person ordinarily skilled in the art could have easily conceived of theconfiguration of Invention 1 according to Difference 2 (configurations of theconstituent features 1F and 1G) in Exhibit Otsu 20 invention and thus, theaforementioned assertion by the Appellees lacks the premise thereof, and cannot be
accepted.

The same applies to Invention 2.
Therefore, even without the need to determine the remaining points,

Invalidation Reason 4 asserted by the Appellees is groundless.
(5) Issue 5-5 (Lack of inventive step with Exhibit Otsu 21 publication as theprimarily cited reference (Invalidation Reason 5))
A. The Appellees assert that the Invention 1 lacks inventive step because: [i]Exhibit Otsu 21 describes Exhibit Otsu 21 invention (judgment in prior instance, frompage 160, the last line to page 161, line 15) as follows; [ii] Invention 1 and Exhibit Otsu
21 invention are different only in a point that Invention 1 includes the determining
portion which determines whether or not, when the second comment is displayed on thevideo, the display position overlaps the display position of the first comment(constituent feature 1F) and the display-position control portion which makes
116

adjustment such that, when they are determined to overlap, the first comment and thesecond comment are displayed at positions not overlapping each other (constituent
feature 1G), while it is not clear if Exhibit Otsu 21 invention includ es suchconfiguration or not (Difference 1); and [iii] a person ordinarily skilled in the art could
have easily conceived of the configuration of Invention 1 according to Difference 1(configurations of the constituent features 1F and 1G) by applying the position-change
publicly-known art, the position-change customarily-used art, or the position-change
well-known art 2 in Exhibit Otsu 21 invention.
[Exhibit Otsu 21 Invention]"(A) A system for simultaneously delivering a video and a text, including a serve r anda plurality of terminal devices connected thereto via a network, including(B) a plurality of information terminal devices 200 which play the video anddisplay a single or a plurality of texts on the video such that the two are seen
simultaneously, in which(C) a display memory 272 for temporarily storing a single or a plurality of texts
and relative time information from a point of time of start of video play (play time
information of the text in play of the video); and(D) a display control portion 270 which plays and displays the video on a video
area displaying a video and reads out from the display memory 272 the single orplurality of texts corresponding to relative time corresponding to the video play time ofthe video in the information stored in the display memory 272 on the basis of the video
play time of the video to be played, scrolls the read-out text on a data area, and displays
it overlapping at least a part of the video are provided."
B. However, as taught in the aforementioned (1) D, from the descriptions in
Exhibits Otsu 26 to 28, 48, 61, and 62 on which the Appellees base their arguments,
none of the position-change publicly-known art, the position-change customarily-used
art, and the position-change well-known art 2 can be acknowledged, and it cannot beapproved that a person ordinarily skilled in the art could have easily conceived of theconfiguration of Invention 1 according to Difference 1 (configurations of constituent
features 1F and 1G) in Exhibit Otsu 21 invention and thus, the aforementioned assertionby the Appellees lacks the premise thereof, and cannot be accepted.

The same applies

to Invention 2.
Therefore, even without the need to determine the remaining points,
Invalidation Reason 5 asserted by the Appellees is groundless.
(6) Issue 5-6 (Lack of inventive step with Exhibit Otsu 24 publication as theprimarily cited reference (Invalidation Reason 6))
117

A. The Appellees assert that Invention 1 lacks inventive step because: [i] Exhibit
Otsu 24 describes Exhibit Otsu 24 invention (judgment in prior instance, from page 170,
lines 3 to 14) as follows; [ii] Invention 1 and Exhibit Otsu 24 invention are different
only in a point that, in Invention 1, the first comment and the second comment "movein a horizontal direction" (constituent feature 1E), while it is not clear in Exhibit Otsu
24 invention (Difference 1), and Invention 1 includes the determining portion which
determines whether or not, when the second comment is displayed on the video, thedisplay position overlaps the display position of the first comment (constituent feature
1F) and the display-position control portion which makes adjustment such that, when
they are determined to overlap, the first comment and the second comment are displayedat positions not overlapping each other (constituent feature 1G), while it is not clear if
Exhibit Otsu 24 invention includes such configuration or not (Difference 2); [iii]regarding Difference 1, a person ordinarily skilled in the art could have easily conceivedof the configuration of Invention 1 according to Difference 1 (configuration of theconstituent feature 1E) by applying the art of scroll-display of a text displayed on ascreen of a terminal device in a horizontal or vertical direction (Exhibits Otsu 29 to 33
and the like), which is a basic art and a customarily-used art of a video editing softwareor programing in Exhibit Otsu 24 invention; and [iv] regarding Difference 2, a person
ordinarily skilled in the art could have easily conceived of the configuration of
Invention 1 according to Difference 2 (configurations of the constituent features 1F and
1G) by applying the position-change publicly-known art, the position-change
customarily-used art, or the position-change well-known art 2 in Exhibit Otsu 24
invention.
[Exhibit Otsu 24 Invention]"(A)(E) A display device which plays a video and displays a single or a plurality of chatmessages on the video, characterized by having:(B) a chat server which records the chat message;(C) a video play portion which plays and displays the video on a first display
column, which is a region where the video is displayed; and(D) a chat-message display portion which reads out the chat message anddisplays the chat message on a second display column, which is a region where the chatmessage is displayed."
B. However, as taught in the aforementioned (1) D, from the descriptions in
Exhibits Otsu 26 to 28, 48, 61, and 62 on which the Appellees are base their arguments,
none of the position-change publicly-known art, the position-change customarily-used
art, and the position-change well-known art 2 can be acknowledged, and it cannot be118

approved that a person ordinarily skilled in the art could have easily conceived of theconfiguration of Invention 1 according to Difference 2 in Exhibit Otsu 24 invention andthus, the aforementioned assertion by the Appellees lacks the premise thereof, andcannot be accepted.

The same applies to Invention 2.

Therefore, even without the need to determine the remaining points,
Invalidation Reason 6 asserted by the Appellees is groundless.
(7) Issue 5-7 (Lack of inventive step with Exhibit Otsu 25 document as theprimarily cited reference (Invalidation Reason 7))
A. The Appellees assert that Invention 1 lacks inventive step because: [i] Exhibit
Otsu 25 describes Exhibit Otsu 25 invention (judgment in prior instance, from page 179,
lines 6 to 25) as follows; [ii] Invention 1 and Exhibit Otsu 25 invention are different
only in a point that, in Invention 1, the first comment and the second comment "movein a horizontal direction" (constituent feature 1E), while this point is not clear in Exhibit
Otsu 25 invention (Difference 1), and Invention 1 includes the determining portion
which determines whether or not, when the second comment is displayed on the video,
the display position overlaps the display position of the first comment (constituent
feature 1F) and the display-position control portion which makes adjustment such that,when they are determined to overlap, the first comment and the second comment are
displayed at positions not overlapping each other (constituent feature 1G), while it is
not clear if Exhibit Otsu 25 invention includes such configuration or not (Difference 2);[iii] regarding Difference 1, a person ordinarily skilled in the art could have easily
conceived of the configuration of Invention 1 according to Difference 1 (configurationof constituent feature 1E) by applying the art of scroll-display of a text displayed on ascreen of a terminal device in a horizontal or vertical direction (Exhibits Otsu 29 to 33
and the like), which is a basic art and a customarily-used art of video editing softwareor programing in Exhibit Otsu 25 invention; and [iv] regarding Difference 2, a person
ordinarily skilled in the art could have easily conceived of the configuration of
Invention 1 according to Difference 2 (configurations of the constituent features 1F and
1G) by applying the position-change publicly-known art, the position-change
customarily-used art, or the position-change well-known art 2 in Exhibit Otsu 25
invention.
[Exhibit Otsu 25 Invention]"(A) A display device which plays a video and displays a single or a plurality ofcomments on the video, in which(B) a message subject located on a lower part of a window 110 has start time
substantially corresponding to a timeline point of an AV product viewed by a viewer,
119and a storage system 1230 accumulates information (CT-related information) related toa relationship with a point on the timeline of the AV product together with a comment
input by the viewer.
(E) A display device, characterized by (C) having a video play portion whichplays and displays the AV product on a window 120 (FIG. 1B), which is a region where
the AV product is displayed, and(D) a comment display portion which reads out a comment corresponding to acomment input time corresponding to the timeline of the AV product from the storage
system 1230 in the CT-related information accumulated in the storage system 1230 on
the basis of the play time of the AV product to be played and displays the read-out
comment on the windows 110 and 150, which are regions for displaying the comment."
B. However, as taught in the aforementioned (1) D, from the descriptions in
Exhibits Otsu 26 to 28, 48, 61, and 62 on which the Appellees base their argum ents,
none of the position-change publicly-known art, the position-change customarily-used
art, and the position-change well-known art 2 can be acknowledged, and it cannot beapproved that a person ordinarily skilled in the art could have easily conceived of theconfiguration of Invention 1 according to Difference 2 (configurations of constituent
features 1F and 1G) in Exhibit Otsu 25 invention and thus, the aforementioned assertionby the Appellees lacks the premise thereof, and cannot be accepted.

The same applies

to Invention 2.
Therefore, even without the need to determine the remaining points,
Invalidation Reason 7 asserted by the Appellees is groundless.
(8) Issue 5-8 (Violation of clarity requirement (Invalidation Reason 8))
The Appellees assert that, the description that "transmits the video andcomment information to the terminal device" in constituent feature 1C of Invention 1
is not clear in terms of at what timing the comment received by the server is transmitted
to the terminal and thus, the description in the scope of claims (claim 1) of the Invention
1 is unclear and fails to fulfill the clarity requirement (Article 36, paragraph (6), item(ii) of the Patent Act).
However, according to the description in the scope of claims (claim 1) of
Invention 1 that "a comment delivery system including a server and a plurality ofterminal devices connected to the server via a network, in which the server receives afirst comment and a second comment to a video given by a user who is viewing thevideo transmitted from the server and transmits the video and comment information to
the terminal device", it can be understood that the timing of transmission that "transmits
the video and comment information to the terminal device" in constituent feature 1C is120

after the server receives the first comment and the second comment to the video givenby the user who is viewing the video and thus, the contents of "transmits the video andcomment information to the terminal device" in constituent feature 1C are clear.
Therefore, Invalidation Reason 8 asserted by the Appellees is groundless.
(9) Issue 5-9 (Violation of support requirement (Invalidation Reason 9))
The Appellees assert that: [i] since the description in paragraph [0008] in the
Description together with the description in paragraph [0004] should be understood todescribe that the comment is transmitted to the terminal device "each time" when thecomment delivery server receives the comment, but in view that the scopes of claims(claims 1 and 2) of Inventions 1 and 2 do not have description on timing at which theterminal device receives the comment information, and it is impossible to exchangecomments on a real-time basis and, claims 1 and 2 exceed the range described in the
Detailed Description of the Invention, and thus fail to fulfill the support requirement(Article 36, paragraph (6), item (i) of the Patent Act); [ii] paragraph [0011] of the
Description has such description that "according to the present invention, ... and in thecomment information input with respect to the video, when a comment erasing request
indicating the comment information to be erased is input, the comment is caused not tobe displayed and thus, whether or not the comment is not appropriate for the video canbe displayed by considering an intention of the user, which can improve entertainment
in communication using the comment.", but the scopes of claims (claims 1 and 2) ofInventions 1 and 2 have the description on the display of the comment by the terminal
device but do not have the description on not to display and thus, the means for solving
the problem of the invention described in the Detailed Description of the Invention is
not reflected, and the scope described in the Detailed Description of the Invention isexceeded, thus failing to fulfill the support requirement.
By examining the above, the support requirement is prescribed such that "theinvention for which the patent is sought should be stated in the detailed explanation of
the invention in the Description" (Article 36, paragraph (6), item (i) of the Patent Act)and is a requirement to prevent monopoly of an art not disclosed (supported) in the
Detailed Description of the Invention in advance and thus, when violation of the support
requirement is asserted, it is reasonable to interpret that, if it is specifically asserted to
be too wide, the assertion should be specific in a relationship between a specificinvention specifying matter and the description in the Description.
However, the aforementioned assertion by the Appellees does not specify theinvention specifying matters in Inventions 1 and 2 and does not specifically point out
that the description is too wide in the relationship with that in the Description, either or121rather, it only points out that the description in the Description is not described in thescope of claims and thus, the assertion itself is groundless.
Therefore, Invalidation Reason 9 asserted by the Appellees is groundless.
(10) Issue 5-10 (Violation of enablement requirement (Invalidation Reason 10))The Appellees assert that the scopes of claims (claims 1 and 2) of Inventions
1 and 2 do not have the description on at what timing the terminal device receives thecomment information, the exchange of the comments on the real-time basis is notpossible, and [0011] in the Description has the description that "when a comment
erasing request indicating the comment information to be erased is input, the commentis caused not to be displayed", but even though the scopes of claims (claims 1 and 2) ofInventions 1 and 2 have the description that the terminal device displays the comment,
they do not have description on not to display the comment and thus, it falls under thecase in which the invention cannot be grasped from one claim, and the descriptio n in
the Detailed Description of the Invention in the Description does not describe clearlyand sufficiently enough to such a degree that a person ordinarily skilled in the art could
have worked Inventions 1 and 2, thus failing to fulfill the enablement requirement(Article 36, paragraph (4), item (i) of the Patent Act).
However, as taught in the aforementioned (8), from the description in thescope of claim (claim 1) of Invention 1, the timing of the transmission referred to in
constituent feature 1C that "the video and the comment information are transmitted tothe terminal device" can be understood to be after the server received the first commentand the second comment to the video given by the user who is viewing the video, andeven though claims 1 and 2 do not have the description that the terminal device does
not display the comment, it does not apply to the case that the invention cannot be
grasped from one claim and thus, Invalidation Reason 10 asserted by the Appellees
lacks the premise thereof, and groundless.
(11) Issue 5-11 (Violation of prior application requirement (Invalidation Reason
11))
The Appellees assert that Patent No. 4695583 (Other Litigation Patent 2) on
which the request was based in another litigation (Exhibit Otsu 15) was filed (Patent
Application No. 2006-333851, date of application: December 11, 2006, Exhibit Otsu
11) before the application of this case, but since Inventions 1 and 2 are identical or
substantially identical to the inventions according to claims 1 to 3 of Other Litigation
Patent 2, they violate the prior application requirement (Article 39 of the Patent Act)and cannot be granted a patent.
However, Inventions 1 and 2 and the inventions according to claims 1 to 3 of122

Other Litigation Patent 2 are different at least in [i] all the inventions according toclaims 1 to 3 of Other Litigation Patent 2 include the requirement of "each time thecomment information is received", while Inventions 1 and 2 do not have suchrequirement; and [ii] both Inventions 1 and 2 include the requirement that the first andsecond comments move in the horizontal direction, while the inventions according toclaims 1 to 3 of Other Litigation Patent 2 do not include such requirement and thus, theaforementioned assertion by the Appellees cannot be accepted.
Therefore, Invalidation Reason 11 asserted by the Appellees is groundless.
(12) Issue 5-12 (Lack of novelty and of inventive step due to violation of division
requirement (Invalidation Reason 12))The Appellees assert that: [a] this application is a patent application(application [viii]) obtained by further dividing the patent application (applications [i]to [vii]) in which a part of the original patent application (Exhibit Otsu 9) was
sequentially divided, claim 1 at the filing of the applications [iv] to [viii] is identical toclaim 1 of the application [iii], and claim 1 after amendment according to theapplications [v] to [vii] is identical to claim 1 of the application [iv]; [b] the applications[vi] and [vii] are filed with the claim identical to that of the application [iii] and after
that, amendment identical to that of the application [iv] was made and then, decision ofrefusal was rendered on the ground that it is identical to the application [iv]; [c] theapplications [iv] to [vii] (particularly, the applications [vi] and [vii]) should beconsidered to be abusive division of application used to evade restrictions on the time
for amendment (Article 17-2, paragraph (1), item (iii) of the Patent Act) and thus, theeffect of division of application that the division of application is regarded to be filed
at the time of the original application (Article 44, paragraph (2) of the Patent Act) is
not produced for these applications; and [d] the date of application of this application
is October 29, 2018, which is the actual date of application and thus, Inventions 1 and
2 do not satisfy the requirements of novelty and inventive step in the relation with theinventions described in the Description and the like of the applications [iv] to [vii] andthus, the Patent has the invalidation reasons of lack of novelty and lack of inventive
step.
However, the Application (application [viii]) is found to fall under a "newpatent application" divided from "a patent application containing two or mo reinventions" prescribed in Article 44, paragraph (1) of the Patent Act (Exhibit Ko 2,
Exhibits Otsu 1 to 9 (including branch numbers.)) in a relationship with the original
application and the applications [i] to [vii] and thus, the date of application of the
Application should be considered to be retroactive to the time of the original application
123

(date of application: March 2, 2007) pursuant to the same Article, paragraph (2).
Moreover, pursuant to the revision of the Patent Act by the 2006 Law No. 55(enforced on April 1, 2007), for the purpose of suppressing abuse of the divisional
application system, if the grounds for rejection in the examination of the divisional
application are the same as those already noticed in the original application and the like,a notice to that effect should also be issued (Article 50-2 of the Patent Act), and uponreceipt of the notice, the same restriction on amendment similar to the receipt of thelast notice of reasons for rejection should be imposed (Article 17-2, paragraph (5) of
the Patent Act), but in view that there are no provisions which prescribe that thedivisional application itself by repeating the same invention is illegal on the Patent Act
before and after the revision, the history of application asserted by the Appellees should
not be considered to influence the aforementioned finding.
Therefore, Invalidation Reason 12 asserted by the Appellees is groundless.
(13) Issue 5-13 (Lack of inventive step and the like due to violation ofrequirement of priority claim (Invalidation Reason 13))The Appellees assert that: [i] the application (Patent Application No. 2006 333850) on the basis of which the priority of the original application is claimed does
not satisfy the requirement for amendment, a priority claim based on Article 41,
paragraph (1), item (i) of the Patent Act is not allowed for the original application andthus, in view of necessity of reliability and consistent determination on registration
information related to patents, the novelty and the inventive step of Inventions 1 and 2
should be determined with the actual date of application of the Application (October
29, 2018) as the base time; and [ii] the Appellant made public the service using the art
related to Inventions 1 and 2 with the name "Niconico Video" on December 12, 2006,
NIWANGO, which was an operation company at that time, actively began issuing press
releases from January, 2007 after the service was made public, and the art became
publicly-known, Other Litigation Patent 2 was made public (Exhibit Otsu 11) at thetime of the filing at the latest, and Inventions 1 and 2 had been well-known and thus,
Inventions 1 and 2 lack inventive step.
However, whether or not the filing of the Patent Application No. 2006-333850
on the basis of which the domestic priority claim of the original application was madeviolates the requirement for amendment as asserted by the Appellees does not influence
the priority claim of the original application (Article 41, paragraph (1) of the Patent
Act).

Moreover, illegal amendment was not made in this original application, and theApplication is a legal divisional application.
asserted by the Appellees is groundless.
124

Therefore, Invalidation Reason 13

(14) Issue 5-14 (Violation of public order and morality (Invalidation Reason 14))The Appellees asserted that the judgment of the first court of another litigation(Exhibit Otsu 15) determined that the invention according to Other Litigation Patent 2
does not belong to the technical scopes of Inventions 1 and 2 by stating that thecomment information is transmitted to the terminal "each time" the comment
information is received from the terminal, while the program of Appellee FC2 does notsatisfy this requirement and the like, but the Appellant filed the Application with respect
to Inventions 1 and 2 by removing the requirement of the aforementioned "each time"
for the purpose of overcoming the result of another litigation and thus, Inventions 1 and
2 fall under the invention which might disrupt "public order" in Article 32 of the Patent
Act.
However, in this case, even with the circumstances asserted by the Appellees,
it cannot be approved that Inventions 1 and 2 fall under the invention which might
disrupt "public order" in Article 32 of the Patent Act.
Therefore, Invalidation Reason 14 asserted by the Appellees is groundless.

125