DateCase Number

April 13, 2018
Court Intellectual Property High Court,Special Division2016 (Gyo-Ke) 10182,10184- Under the Patent Act prior to amendment by Act No.36 of 2014, the legal interestfor litigation against JPO decision that dismissed a request for an invalidation trial
would not be lost even after the expiration of patent right unless there is a special
circumstance regarded as the complete extinguishment of possibility that any person
can be subjected to a claim of the compensation for damage and the return for unjust
enrichment or be imposed criminal penalties for conduct by the person within thelifetime of patent right.
- If an invention as allegedly claimed to be a cited invention is an "invention
described in a publication" (Article 29, paragraph (1), item (iii) of the Patent Act) anda compound is described in the form of general formula in the publication and thegeneral formula has an enormous number of alternatives, it is impossible to extract aspecific technical concept according to a specific alternative and find it as a citedinvention unless there is a circumstance where the technical concept according to thespecific alternative should be positively or preferentially selected.
References: Article 9, paragraph (1) of the Administrative Case Litigation Act, Article
123, paragraph (2) and Article 29, paragraph (2) of the Patent Act
Number of related rights, etc.: Invalidation Trial No. 2015-800095, Patent No.
2648897
Summary of the Judgment
1

The case is a suit against JPO decision that dismissed a request for theinvalidation trial of a patent according to an invention titled "pyrimidine derivatives."
The issues are: [i] legal interest for litigation; and [ii] whether or not to involve
inventive step.
2Generally, the judgment, while accepting the interest for litigation, affirmed theconformance of the Patent to the requirement of inventive step, and dismissed thePlaintiffs demand as set forth below.
(1) Legal interest for litigation
AThe request for trial was made on March 31, 2015, and thus the Patent Act asof the date (the Patent Act prior to amendment by Act No.36 of 2014) shall be applied
to the request for trial.
Under the Patent Act prior to amendment by Act No.36 of 2014, the legal interestfor litigation against JPO decision that dismissed a request for an invalidation trial
would not be lost even after the expiration of patent right unless there is a special
circumstance regarded as the complete extinguishment of possibility that any person
can be subjected to a claim of the compensation for damage and the return for unjust
enrichment or be imposed criminal penalties for conduct by the person within the1lifetime of patent right.
In this case, the lifetime of the patent right expired 25 years after the filing date,
May 28, 1992, but there are no special circumstances as described above.

Therefore,

the legal interest for litigation has not yet been lost.
BIn addition, the amendment by Act No.36 of 2014 has limited a person who isentitled to make a request for an invalidation trial to only a person who has a private
proprietary interest with regard to invalidating the patent.
As long as there is the slightest possibility that a patent infringement issue may beraised, a person who might possibly get involved with such a problem obviously has a
private proprietary interest to invalidate the patent as well as an interest to make arequest for an invalidation trial (therefore, a legal interest for litigation against trial
decision by the JPO that dismissed the request for an invalidation trial).

Therefore, inorder to establish the fact that a legal interest for litigation has diminished, it isrequired that the patent right expired and that there is a special circumstance regarded
as the complete extinguishment of possibility that the plaintiff can be subjected to aclaim of the compensation for damage and the return for unjust enrichment or beimposed criminal penalties for conduct by the plaintiff within the lifetime of patentright.
(2) As for inventive step
AThe inventive step requirement is established by finding an invention

according to patent application (the present invention) on the basis of the scope ofclaims, comparing the invention with a certain invention provided in each item of
Article 29, paragraph (1) of the Patent Act, finding a common feature and a difference,and if there is a difference, determining whether a person ordinarily skilled in the art
could easily conceive of the present invention corresponding to the difference, on thebasis of the state of the art as of the filing date (or priority date; the same shall apply
hereinafter.).
In the determination of such inventive step, a certain invention provided in each
item of Article 29, paragraph (1) of the Patent Act to be compared with the presentinvention (the main cited invention) is usually selected from the inventions that are
relevant to the present invention in their technical field and falling within a range
targeted for comparison by a person ordinarily skilled in the art in the technical field.
In particular, "an invention described in a Publication" of Article 29, paragraph (1),item (iii), should be a basis for the determination of whether a person ordinarily skilledin the art could easily conceive of the present invention on the basis of the state of theart as of the filing. Therefore, it must be a specific technical concept to be extracted2

from the description of the Publication.
If an invention as allegedly claimed to be a cited invention is the "invention
described in a publication" and a compound is described in the form of general formulain the publication and the general formula has an enormous number of alternatives, it isimpossible to extract a specific technical concept according to a specific alternativeand find it as a cited invention unless there is a circumstance where the technicalconcept according to the specific alternative should be positively or preferentiallyselected.
BIn this case, the difference between the Invention and the main cited invention

lies in that a part corresponding to alkylsulfonyl group in the compound of theInvention is a methyl group in the compound of the main cited invention.

In apublication that allegedly describes a sub cited invention, there is described acompound where the part is an alkylsulfonyl group; however, it is one of 20,000,000 or
more alternatives. Therefore, it is difficult for a person ordinarily skilled in the art tofind any circumstances where the alternative should be selected.

Thus it cannot beseen from the publication that the technical concept corresponding to the difference
can be extracted.
Therefore, it cannot be said that the publication describes the configurationaccording to the above difference. The combination of the main cited invention withthe sub cited invention does not result in the configuration according to the differenceof the Invention.

Therefore, it cannot be said that the Invention was easily

conceivable on the basis of the cited invention.

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