Patent

Date

February 18, 2021

Right

Case

2019 (Wa) 11721

Court

Tokyo District Court, 47th
Civil Division

number- A case in which the court rejected a defense of patent invalidity alleged by the
Defendant and upheld the claim for an injunction against the manufacture, transfer,etc. of the Defendant's Product and the claim for the disposal of the Defendant's
Product based on a patent right.
Summary of the Judgment
In this case, the Plaintiff, the holder of the patent right of the patent for an inventionof a flame-retardant composition (the "Invention"), alleges that the production, use,transfer, etc. of the Defendant's Product constitute infringement of the afor ementioned
patent right and claims an injunction against the aforementioned acts of infringement
committed by the Defendant and the disposal of the Defendant's Product, etc.
In this case, the parties do not dispute the fact that the Defendant's Product falls
within the technical scope of the Invention. The major issues of this case are [i] whether
the Defendant infringes or is likely to infringe the patent right (Issue 1) and [ii] whether
a defense of patent invalidity is established (Issue 2; incidentally, the Defendant alleges
five grounds for invalidation, including violation of the clarity requirement (Issue 2-1),
violation of the support requirement (Issue 2-2), and lack of novelty and lack of an
inventive step (Issue 2-3)). Regarding Issue 1, the Defendant posted the Defendant's
Product on its website as the "line of goods" and thereby offered to transfer it, and evenafter the present lawsuit was filed the Defendant has continued to post the Defendant's
Product on the same website up to the present date. Therefore, the court held that the
Defendant infringes or is likely to infringe the patent right. Regarding Issue 2, out of
the grounds for invalidation alleged by the Defendant, neither of the violations of a
description requirement (violation of the clarity requirement and violation of the
support requirement) was found in light of the statement of the claims and thestatements in the description. In addition, regarding the ground for invalidation of lackof novelty and lack of an inventive step, the court held that there is a difference between
the Invention and the cited invention and that it is not found that a person skilled in theart could have easily conceived of that difference, and upheld both the claim for an
injunction against the aforementioned acts of infringement and the claim for the
disposal of the Defendant's Product based on the aforementioned patent right.

iJudgment rendered on February 18, 2021
Original received on the same date by the court clerk
2019 (Wa) 11721 Case of seeking injunction against patent infringement
Date of conclusion of oral argument: November 9, 2020
Judgment
Plaintiff: Clariant Produkte (Deutschland) Gesellschaft mit beschränkter HaftungDefendant: Phos-Tec Co., Ltd.

Main text
1. The Defendant must neither manufacture, transfer, import, export, offer to transfer nor
display for the purpose of transferring the product stated in the List of the Defendant's
Product attached to this judgment.
2. The Defendant shall dispose of the product referred to in the preceding paragraph andthe half-finished product thereof.
3. The Defendant shall bear the court costs.
4. This judgment may be provisionally executed only in relation to paragraph 1.
Facts and reasonsNo. 1 ClaimsSame as the main text.
No. 2 Outline of the case
The Plaintiff is the patentee of a patent for an invention titled "Dialkyl phosphinates."
The Plaintiff alleges that the product stated in the List of the Defendant's Product attachedto this judgment (hereinafter referred to as the "Defendant's Product") falls within thetechnical scope of the patented invention pertaining to the aforementioned patent.
In this case, the Plaintiff alleges that the manufacture, transfer, etc. of the Defendant's
Product by the Defendant constitutes infringement of the aforementioned patent right andclaims an injunction against the Defendant's manufacture, transfer, etc. of the Defendant's
Product under Article 100, paragraph (1) of the Patent Act, and also claims the disposalof the Defendant's Product and the half-finished product thereof (object that has the
structure of the Defendant's Product but has yet to be completed as a product; the same
applies hereinafter) under paragraph (2) of the same Article.
11. Basic facts (the parties do not dispute facts other than those for which evidence, etc. iscited; incidentally, evidence for which branch numbers are omitted includes all articles ofevidence with these branch numbers (the same applies hereinafter))(1) The Patent
The Plaintiff is the patentee of a patent for an invention titled "Dialkyl phosphinates"(Patent No. 4870924; the number of claims is 30; hereinafter this patent is referred to as
the "Patent"). The Plaintiff filed a patent application for the Patent on December 17, 2004
(priority claim: December 19, 2003, Federal Republic of Germany; hereinafter the filingdate in the same country that serves as the basis for a priority claim is referred to as the"priority date"), and received the registration of establishment of the patent right on
November 25, 2011.
(2) The Inventions
The statements of Claims 1 to 30 in the claims pertaining to the Patent are as statedin the relevant part of the patent gazette attached to this judgment (hereinafter thestatements of Claims 1 to 4 are referred to as the "Claims" and the inventions pertaining
thereto are referred to as the "Inventions"; incidentally, each of those inventions is referred
to as "Invention 1" to "Invention 4," respectively; in addition, the description (including
drawings) thereof is referred to as the "Description," and statements in the relevant partof the Description are sometimes referred to as [0001], etc.).
(3) Segmentation into constituent features
Inventions 1 to 4 are segmented into the following constituent features (hereinafter
each of the constituent features is referred to as "Constituent Feature A," etc. according
to the reference letter attached thereto).
A. Invention 1[A] Formula (I)[Chemical Formula 1][B] [Wherein R1 and R2 are the same as or different from each other and are linear or
branched C1- to C6- alkyl;[C] M is a Mg, Ca, Al, Sb, Sn, Ge, Ti, Fe, Zr, Zn, Ce, Bi, Sr, Mn, Li, Na, K and/or a
protonated nitrogen base;2

[D] m is 1 to 4.][H] A flame-retardant composition comprising at least one kind of dialkyl phosphinate[E] which is expressed by the above formula wherein[F] the telomer content is 0.01 to 6% by weight[G] and said telomers are ethyl butylphosphinate, butyl butylphosphinate, ethyl
hexylphosphinate, butyl hexylphosphinate and/or hexyl hexylphosphinate.
B. Invention 2[I] A flame-retardant composition stated in Claim 1 wherein the telomer content is 0.1 to
5% by weight.
C. Invention 3[J] A flame-retardant composition stated in Claim 1 or 2 wherein the telomer content is
0.2 to 2.5% by weight.
D. Invention 4[K] A flame-retardant composition stated in any of Claims 1 to 3 wherein M is aluminum,
calcium, titanium, zinc, tin or zirconium.
E. Concerning a change in the segmentation of Invention 1
In the present lawsuit (the "Lawsuit"), the Plaintiff initially segmented Claim 1 asfollows in relation to Constituent Features [G] and [H]. However, the Plaintiff
subsequently changed the segmentation as mentioned in A. above by transferring thephrase "comprising at least one kind of dialkyl phosphinate" in Constituent Feature [G]to Constituent Feature [H] (hereinafter this change is referred to as the "Change of
Segmentation").
(Initial segmentation in relation to Constituent Features [G] and [H])
[H] A flame-retardant composition[G] comprising at least one kind of dialkyl phosphinate wherein said telomers are ethyl
butylphosphinate,
butyl
butylphosphinate,
ethyl
hexylphosphinate,butylhexylphosphinate and/or hexyl hexylphosphinate.
(4) The Defendant's act, etc.
Around May 2018, in the course of trade, the Defendant imported the Defendant's
Product and provided it to the Defendant's customers as a sample for the purpose oftransferring it (Exhibit Ko 3; entire import of oral arguments)
Incidentally, the parties do not dispute the fact that the Defendant's Product falls
within the technical scope of the Inventions (incidentally, based on the Evidence, theDefendant's Product is also found to fall within the technical scope of the Inventions).
2. Issues(1) Whether the Defendant infringes or is likely to infringe the patent right (Issue 1)3

(2) Whether the Patent should be invalidated by a trial for patent invalidation (Issue 2)
A. Whether Ground for Invalidation 1 (violation of the clarity requirement) exists (Issue
2-1)
B. Whether Ground for Invalidation 2 (violation of the support requirement) exists (Issue
2-2)
C. Whether Ground for Invalidation 3 (lack of novelty and lack of an inventive step basedon Exhibit Otsu 3) exists (Issue 2-3)
D. Whether Ground for Invalidation 4 (new violation of a description requirement
associated with the Change of Segmentation) exists (Issue 2-4)
E. Whether Ground for Invalidation 5 (lack of novelty and lack of an inventive step that
newly arose in association with the Change of Segmentation) exists (Issue 2-5)
(omitted)
No. 3 Judgment of this Court
1. Concerning Issue 1 (whether the Defendant infringes or is likely to infringe the patentright)As mentioned in No. 2, 1.(4) above, the parties do not dispute the fact that the
Defendant's Product is included in the technical scope of the Inventions. However, despite
that, the Defendant is found to have been importing the Defendant's Product andproviding it as a sample for the purpose of transferring it in the course of trade since May
2018. According to evidence (Exhibit Ko 3) and the entire import of oral arguments, theDefendant posts the Defendant's Product as the "line of goods" on its website to offer totransfer it. It is found that even after the Lawsuit was filed the Defendant has not deleted
the Defendant's Product from the line of products posted on the same website and has
continued to post the Defendant's Product thereon up to the present date by alleging that
there is no need to delete the Defendant's Product as the Defendant's Product does not
infringe the patent right.
In light of these facts, it must be said that the Defendant, who handles the Defendant's
Product in the course of trade and actually imports and provides it as a sample for the
purpose of transferring it, infringes or is likely to infringe the patent right in relation to
all circumstances involved in the process of procuring and distributing the Defendant's
Product. The Defendant disputes the infringement or likelihood of infringement of thepatent right. However, the Defendant's allegations are not acceptable in light of theaforementioned explanations.
2. Concerning Issue 2-1 (whether Ground for Invalidation 1 (violation of the clarity4

requirement) exists)(1) Regarding Ground for Invalidation 1 (violation of the clarity requirement), theDefendant alleges that [i] the technical meaning of "telomers" is unclear, that [ii] themeaning of the phrase "the telomer content is 0.01 to 6% by weight" is unclear, that [iii]the difference between the "dialkyl phosphinate expressed by Formula (I)" and "telomers"
is unclear, and that [iv] the effect of the Invention is not exerted if residual acetate isincluded.
(2) Therefore, the aforementioned allegations [i] to [iii] are examined first.
A. The Description includes the following statements as the detailed explanation of theinvention. (Exhibit Ko 2)(A) Background of the invention[0002] … the phosphinates of the prior art contain undesired telomer by-products
which result from the use of organic solvents in the first process stage.
(B) Problem to be solved by the invention[0003] … the problem to be solved by the present invention is to provide a dialkyl
phosphinate of a certain metal, which has a particularly low residual solvent content, inparticular, acetic acid content, and telomer product content.
(C) Means for solving the problem[0004] … the inventor found that a dialkyl phosphinate which has particularly low
residual solvent (acetic acid) content and telomer product content causes a particularly
low level of degradation of the surrounding synthetic resin (especially, polymer
degradation) when it is mixed into synthetic resin.
[0005] … The degradation of the surrounding synthetic resin can be evaluated by thechange in the relative viscosity (SV) of the polymer solution before and after processing.
The higher the SV value, i.e., the closer to the value of the untreated polymer, the lower
the level of polymer degradation during mixing of the flame retardant.
[0006] The degradation of the surrounding synthetic resin can also be evaluated by
the melt volume index. Here, the viscosity of the polymer melt containing the additive inquestion is compared with the viscosity of untreated melts. The smaller the decrease inviscosity compared to untreated melts, the better.
[0007] Therefore, the present invention relates to the dialkyl phosphinate expressedby Formula (I)[0008] [Chemical Formula 1]

5

[0009] [Wherein R1 and R2 are the same as or different from each other and are linear
or branched C1- to C6- alkyl;
M is a Mg, Ca, Al, Sb, Sn, Ge, Ti, Fe, Zr, Zn, Ce, Bi, Sr, Mn, Li, Na, K and/or a protonatednitrogen base;m is 1 to 4.]
which is characterized in that the telomer content is 0.01 to 6% by weight and that said
telomers are ethyl butylphosphinate, butyl butylphosphinate, ethyl hexylphosphinate,butyl hexylphosphinate and/or hexyl hexylphosphinate.
[0015] The telomers are of the following group:C2-alkyl-C4-alkylphosphinate,C4-alkyl-C4-alkylphosphinate,C2-alkyl-C6alkylphosphinate, C4-alkyl-C6-alkylphosphinate, and C6-alkyl-C6-alkylphosphinate.
[0020] Furthermore, the present invention also relates to a flame-retardant
composition comprising at least one kind of dialkyl phosphinate of the present invention.
B. In addition, according to evidence (Exhibit Ko 2 and Exhibits Otsu 3 and 8 to 10) andthe entire import of oral arguments, it is found that a person skilled in the art canunderstand the following as common general technical knowledge: the term "telomers"
mean low polymers; "ethyl butylphosphinate, butyl butylphosphinate, ethyl
hexylphosphinate, butyl hexylphosphinate and/or hexyl hexylphosphinate" are all dialkyl
phosphinates wherein the raw material, ethylene or propylene, has a telomerized butyl(two ethylene monomers are polymerized) or hexyl (three ethylene monomers (C 2) arepolymerized or two propylene monomers (C3) are polymerized).
C. Therefore, determinations are made below concerning the aforementioned arguments[i] to [iii] (whether statements about "telomers" are unclear, etc.) on the premise of A. and
B. above.
(A) First, regarding the term "telomers" in the Claims, the issue is whether the phrase"comprising at least one kind of dialkyl phosphinate" is a statement about "telomers."
Although it is hard to say that this point is immediately clear based only on thestatement of the Claims, regarding the phrase "comprising at least one kind of dialkyl
phosphinate," the Description states as follows in [0020]: "… the present invention also
relates to a flame-retardant composition comprising at least one kind of dialkyl
phosphinate of the present invention." On the other hand, regarding "telomers," the6Description clearly states as follows in [0007] to [0009]: "… relates to the dialkyl
phosphinate expressed by Formula (I) … which is characterized in that the telomer
content is 0.01 to 6% by weight and that said telomers are ethyl butylphosphinate, butyl
butylphosphinate, ethyl hexylphosphinate, butyl hexylphosphinate and/or hexyl
hexylphosphinate." Furthermore, the Description also clearly states as follows in [0015]:"The telomers are of the following group: C2-alkyl-C4-alkylphosphinate, C4-alkyl-C4alkylphosphinate, C2-alkyl-C6-alkylphosphinate, C4-alkyl-C6-alkylphosphinate, and C6alkyl-C6-alkylphosphinate." There is no other statement indicating that the term
"telomers" may include substances other than the compounds that belong to theaforementioned five groups (hereinafter those compounds are merely referred to as the"five compounds") in the Description.
In light of these, the phrase "comprising at least one kind of dialkyl phosphinate" in
the Claims is not a statement about the "telomers," but can be considered to be a phrase
stating that the "dialkyl phosphinate expressed by Formula (I)" "comprises at least one
kind of dialkyl phosphinate." That is, the aforementioned phrase cannot be considered to
be a phrase stating that "telomers" are those "comprising at least one kind of dialkyl
phosphinate" which is any of the five compounds listed in the Claims.
In this manner, the Claims do not state "telomers" as those that can include substances
other than the aforementioned five compounds, for example, by using a phrase that
"telomers are those "comprising at least one kind of dialkyl phosphinate." The Description
also defines "telomers" in a limited way as any of or combination of the aforementioned
five compounds. In addition, there is no other statement indicating that "telomers" mayinclude substances other than the aforementioned five compounds in the Description.
Therefore, it should be said that a person skilled in the art understands that the"telomers" stated in the Claims are limited to any of or combination of the listed fivecompounds (ethyl butylphosphinate, butyl butylphosphinate, ethyl hexylphosphinate,butyl hexylphosphinate and/or hexyl hexylphosphinate). It should be said that there is nounclear point in this regard.
(B) Moreover, as mentioned in B. above, it is found that a person skilled in the art
understands the following as common general technical knowledge: the term "telomers"
means low polymers; "ethyl butylphosphinate, butyl butylphosphinate, ethyl
hexylphosphinate, butyl hexylphosphinate and/or hexyl hexylphosphinate" are all dialkyl
phosphinates wherein the raw material, ethylene or propylene, has a telomerized butyl(two ethylene monomers are polymerized) or hexyl (three ethylene monomers (C2) arepolymerized or two propylene monomers (C3) are polymerized). Therefore, it should besaid that it is a technical matter which a person skilled in the art can easily understand7

that all the aforementioned five compounds are called "telomers" for the aforementioned
reason.
(C) For the reasons described above, as long as the "telomers" stated in the Claims arelimited to any of or combination of the listed five compounds and the reason for callingthe five compounds "telomers" should be considered as a technical matter that a person
skilled in the art can easily understand, it cannot be said that the "telomer[s]" stated in the
Claims are unclear.
Consequently, although the Defendant makes the aforementioned allegations [i] to[iii], the technical meaning of "telomers" mentioned in [i] is clear as mentioned above,and the phrase that specifies the content thereof, "the telomer content is 0.01 to 6% byweight," mentioned in [ii] can also be considered clear. Moreover, regarding [iii], the"telomers" in the Inventions are defined as "ethyl butylphosphinate... and/or hexyl
hexylphosphinate," and it is clear that the term "telomers" means specific compounds outof the dialkyl phosphinates defined in Constituent Features [A] to [E] of the Inventions.
Therefore, it cannot be said that the difference between the dialkyl phosphinates ofConstituent Features [A] to [E] and "telomers" is unclear. In this manner, theaforementioned allegations of the Defendant are not acceptable.
(3) In addition, the Defendant makes the aforementioned allegation [iv] (the effect of theInvention is not exerted if residual acetate is included). However, even if a flame-retardant
composition comprising residual acetate does not exert the effect of the Inventions, thatfact does not immediately lead to the conclusion that the text of the Claims that does notinclude any statement about residual acetate is unclear. Therefore, the aforementioned
allegation of the Defendant is not acceptable.
(4) For the reasons described above, none of the Defendant's allegations concerning
Ground for Invalidation 1 (violation of the clarity requirement) is acceptable, and it is notfound that the aforementioned ground for invalidation exists in relation to the Inventions.
3. Concerning Issue 2-2 (whether Ground for Invalidation 2 (violation of the support
requirement) exists)(1) Regarding Ground for Invalidation 2 (violation of the support requirement), theDefendant alleges that [i] regarding the "telomer content," only % by mol is stated, andthe relationship between % by weight and % by mol is not stated, that [ii] the method of
measuring the "telomer content" is not stated, and that [iii] only aluminum salt of
diethylphosphinic acid and aluminum salt of ethyl butylphosphinic acid are disclosed.
(2) Therefore, first considering the aforementioned allegation [i], as mentioned in 2. (2)above, the "telomers" in the Inventions are limited to any of or combination of the specificfive compounds, "ethyl butylphosphinate … hexyl hexylphosphinate," and are not the8low polymers of many monomers with different molecular weights. Therefore, themolecular weights of all the aforementioned five compounds are found to be clear.
According to evidence (Exhibit Ko 24), it should be said that a person skilled in the art
can easily convert % by mol to % by weight.
Therefore, it is not found that the Inventions wherein "the telomer content is 0.01 to
6% by weight" are not stated in the detailed explanation of the invention in the Description.
(3) Next, considering the aforementioned allegation [ii] (the method of measuring the"telomer content" is not stated), the telomers in the Inventions are dialkyl phosphinates,
specifically, "ethyl butylphosphinate … and/or hexyl hexylphosphinate." It is found that
phosphorus 31 nuclear magnetic resonance (31P-NMR) spectroscopy, etc. were wellknown among persons skilled in the art as the methods of measuring the contents of thesedialkyl phospinates as of the priority date of the Patent (Exhibit Otsu 3, Exhibits Ko 18
to 20, and the entire import of oral arguments).
Consequently, it should be said that even if the method of measuring the content of"ethyl butylphosphinate … and/or hexyl hexylphosphinate" is not especially stated in the
Description, a person skilled in the art can easily understand that it is only necessary to
use the aforementioned well-known measurement methods.
Therefore, even if the method of measuring the telomer content is not stated in thedetailed explanation of the invention in the Description, it is not found that the Inventions
wherein "the telomer content is 0.01 to 6% by weight" are not stated in the detailed
explanation of the invention.
(4) Furthermore, the aforementioned allegation [iii] (only aluminum salt of
diethylphosphinic acid and aluminum salt of ethyl butylphosphinic acid are disclosed) is
examined below.
A. The following is stated in [Detailed explanation of the invention] in the Description.
(Exhibit Ko 2)(A) UL94 classification[0128] UL94 (Underwriters Laboratories): For test specimens consisting of each
mixture, flame plasticization is measured by using 1.5 mm thick test specimens.
[0129] V-0: The time of afterburning is shorter than 10 seconds; the sum of the timeof afterburning by application of flame 10 times is not more than 50 seconds; there is noburning droplet; the test specimens are not completely burnt off; the time of afterburning
after the completion of application of flame is not more than 30 seconds, and therefore,
the test specimens are not afterburnt.
[0130] V-1: The time of afterburning after the completion of application of flame is
not more than 30 seconds; the sum of the time of afterburning after the completion of9

application of flame is not more than 250 seconds; the time of afterburning of the test
specimens after the completion of application of flame is not more than 60 seconds; andthe same determination criteria as V-0 are used for other conditions.
[0131] V-2: The cotton indicator catches fire due to burning droplets, but the same
determination criteria as V-1 are used for other conditions.
(B) Working examples[0134] Example 1 (Comparative example): …
[0136] The composition of the product is as follows: / Aluminum diethylphosphinate:87.2 mol% / Aluminum ethyl butylphosphinate: 11.9 mol% / Aluminum
ethylphosphonate: 0.9 mol% / Acetate in the remaining amount: 0.88% by weight
Example 2 (Comparative example): …
[0137] The composition of the product is as follows: / Aluminum diethylphosphinate:90.8 mol% / Aluminum ethyl butylphosphinate: 8.4 mol % / Aluminum
ethylphosphonate: 0.8 mol % / Acetate in the remaining amount: 0.45% by weight
Example 3 (Working example) …
[0138] The composition of the product is as follows: Aluminum diethylphosphinate:98.6 mol% / Aluminum ethyl butylphosphinate: 0.9 mol% / Aluminum ethylphosphonate:
0.5 mol% / Acetate in the remaining amount: 0% by weight
Example 4 (Working example): … The composition of the product is as follows: /Aluminum diethylphosphinate: 96.5 mol% / Aluminum ethyl butylphosphinate: 2.7 mol%
/ Aluminum ethylphosphonate: 0.8 mol% / Acetate in the remaining amount: 0% by
weightExample 5 (Working example): …
[0139] The composition of the product is as follows: / Aluminum diethylphosphinate:93.9 mol% / Aluminum ethyl butylphosphinate: 5.5 mol% / Aluminum ethylphosphonate:
0.6 mol% / Acetate in the remaining amount: 0% by weight[0140] Example 7: … polymer molded body is obtained by blending … 25% byweight of the product of Example 1 … The UL94 classification of the test specimen is V2.
[0141] Example 8: A flame-retardant polymer molded body is obtained by blending… 25% by weight of the product of Example 2 … The UL94 classification of the test
specimen is V-2.
[0142] Example 9 (Working example): A flame-retardant polymer molded body is
obtained by blending … 25% by weight of the product of Example 3 … The UL94
classification of the test specimen is V-0.
[0143] Example 10 (Working example): A flame-retardant polymer molded body is10

obtained by blending … 25% by weight of the product of Example 4 … The UL94
classification of the test specimen is V-0.
[0144] Example 11 (Working example): A flame-retardant polymer molded body is
obtained by blending … 25% by weight of the product of Example 5 … The UL94
classification of the test specimen is V-0.
[0145] Example 12: A flame-retardant polymer molded body is obtained by blending… 12% by weight of the product of Example 1 … The UL94 classification of the test
specimen is V-1.
[0146] Example 13: A flame-retardant polymer molded body is obtained by blending… 12% by weight of the product of Example 3 … The UL94 classification of the test
specimen is V-0.
[0148] Example 15 (Comparative example): A flame-retardant polymer molded body
is obtained by blending … 11.4% by weight of the product of Example 1 … The UL94
classification of the test specimen is V-2.
[0149] Example 16: A flame-retardant polymer molded body is obtained by blending… 11.4% by weight of the product of Example 3 … The UL94 classification of the test
specimen is V-0.
[0150] Example 17: A flame-retardant polymer molded body is obtained by blending… 11.4% by weight of the product of Example 4 … The UL94 classification of the test
specimen is V-0.
[0151] Example 18: A flame-retardant polymer molded body is obtained by blending… 12% by weight of the product of Example 4 … The UL94 classification of the test
specimen is V-0.
[0152] Example 19: A flame-retardant polymer molded body is obtained by blending… 30% by weight of the product of Example 4 … The UL94 classification of the test
specimen is V-0.
B. As mentioned in A. above, the Description states that Examples 9 to 11, 13, and 16 to
19 comprising the product of any of Examples 3 to 5: all of which are working examples,are more flame retardant (V-0 based on the UL94 classification) than Examples 7, 8, 12,
and 15 comprising the product of Example 1 or 2, both of which are comparative
examples ([0133] to [0155]). In light of this, it is reasonable to consider that the problem
to be solved by the Inventions exists in the provision of a flame-retardant composition
that is highly flame retardant.
It should be said that a person skilled in the art can recognize that the replacement ofaluminum salt with a different kind of salt has no significant effect on flame retardance,
taking into account the fact that there are examples (Exhibit Otsu 3), etc. that disclose the11method of manufacturing the dialkyl phosphinate of a specific metal other than aluminumon the premise that the important function that is necessary for dialkyl phosphinate toexert its flame retardance exists not in the salt part but in the dialkyl phosphinate part.
In addition, all of the five compounds defined as "telomer[s]" in the Inventions aredialkyl phosphinates that have a structure similar to the aluminum ethyl butylphosphinatethat was confirmed to inhibit flame retardance as indicated in the working examples
mentioned in A. above. Therefore, it can be said that a person skilled in the art can also
recognize the aforementioned five compounds as substances that inhibit flame retardancein the same manner as aluminum ethyl butylphosphinate.
Therefore, it is not found that the effect confirmed in relation to aluminum
diethylphosphinate and aluminum ethyl butylphosphinate cannot be extended or
generalized to combinations of other kinds of salt and telomers.
(5) As mentioned above, none of the Defendant's allegations concerning Ground forInvalidation 2 (violation of the support requirement) are acceptable, and it is not foundthat the aforementioned ground for invalidation exists in relation to the Inventions.
4. Concerning Issue 2-3 (whether Ground for Invalidation 3 (lack of novelty and lack of
an inventive step based on Exhibit Otsu 3) exists)(1) The parties do not dispute the fact that the Inventions and the cited invention differ inthat the "telomer" content in the Inventions is 0.01 to 6% by weight while that in the citedinvention is not 0.01 to 6% by weight.
Therefore, determinations are made below concerning novelty and involvement of an
inventive step on the premise of existence of such undisputed difference.
(2) Whether the Inventions lack novelty
The Defendant alleges that the Inventions are identical to the cited invention by citing
the following facts: a substance called "telomer" is a by-product that is inevitably
produced; it is not considered that an excellent effect is exerted by adjusting theconcentrations of by-products; regarding the range of 0.01 to 6% by weight, wherein theupper limit is 600 times higher than the lower limit, it is not considered that an excellent
effect is exerted within such a broad range compared to other ranges; the Description does
not state the critical significance of the range of 0.01 to 6% by weight.
However, the parties do not dispute the existence of the aforementioned difference
between the Inventions and the cited invention. Therefore, it is hardly considered that a
structure that stipulates the numerical range of the "telomer" content: which is acombination of clear substances as mentioned above, in a specific manner as mentioned
above is found to not be a substantial difference for the reason alleged by the Defendant.
Consequently, the aforementioned allegation of the Defendant is not acceptable.
12

Therefore, it should be said that the ground for invalidation of lack of novelty allegedby the Defendant does not exist.
(3) Whether the Inventions lack an inventive step (whether a person skilled in the art caneasily conceive of the difference)
A. The Defendant alleges that a person skilled in the art can easily conceive of theaforementioned difference by citing the following: [i] as the Plaintiff admits that asubstance called telomer is a by-product and is a substance that inhibits flame retardance,a person skilled in the art can easily conceive of the idea that flame retardance is improvedby reducing the concentration of a substance that inhibits flame retardance, which is a byproduct; [ii] in Working Example 3 of Exhibit Otsu 3, the mol concentration of substances
called telomers is 7.7 mol% (in terms of % by weight, 9.30% by weight), but the
Description does not state that the Inventions exert an excellent effect compared to thisworking example; [iii] according to experiments conducted by the Defendant and thirdparty organizations, the same effect as the Inventions can be obtained with regard toflame-retardant compositions of which the telomer content is not in the range of 0.01 to
6% by weight, and similar results have been obtained by other third-party organizations;and [iv] Examples 1 and 2 (comparative examples) and Examples 3 to 5 (working
examples) stated in the Description differ not only in the telomer content but also in theresidual acetate content, and the difference in the effect should be considered to be based
not on the difference in the telomer content but on the difference in the residual acetate
content.
B. Concerning motivation to reduce the "telomer content"
Considering the case on this point, first, regarding [i] above, in the Lawsuit, thePlaintiff alleges that the telomers in the Inventions are substances that inhibit flame
retardance based on the statements in the Description, and does not allege that it had
already been publicly known as of the priority date of the Patent that telomers aresubstances that inhibit flame retardance. Therefore, the aforementioned allegation [i]originally lacks its premise.
Even looking at Exhibit Otsu 3, there is no statement to the effect that telomers aresubstances that inhibit flame retardance. In this regard, in Working Example 3 of Exhibit
Otsu 3, a reaction product comprising 91.3 mol% of diethylphosphinate sodium salt, 7.7
mol% of butyl ethylphosphinate sodium salt, 0.7 mol% of ethylphosphonate sodium salt,
and 0.3 mol% of unknown components was obtained by making ethylene react withsodium phosphinate. According to the aforementioned reaction, it is obvious to a person
skilled in the art that diethylphosphinate sodium salt is the main product and butyl
ethylphosphinate sodium is a by-product. It can be said that a person skilled in the art
13generally reduces the content of a by-product as needed. However, according to theoverall statements in Exhibit Otsu 3, dialkyl phosphinate is a substance that shows flame
retardance, and a person skilled in the art ordinarily thinks that butyl ethylphosphinate isalso a substance that shows flame retardance though it is a by-product, taking into accountthe fact that butyl ethylphosphinate also falls under dialkyl phosphinates. Therefore, it
should be said that there is no motivation to reduce the content thereof.
Furthermore, there is no objective evidence that sufficiently proves that it wascommon general technical knowledge for a person skilled in the art to consider a telomer
as a substance that inhibits flame retardance as of the priority date of the Patent.
Incidentally, in this regard, the Defendant submitted evidence, such as a written opinion(Exhibit Otsu 17). However, even carefully considering the content thereof, the evidence
must be considered as merely showing the subjective opinions of persons who prepared
it, and it is thus hardly acceptable.
C. For the reasons described above, it should be said that no motivation for a person
skilled in the art to reduce the "telomer content" can be found in the cited invention. Itshould then be said that in this case as mentioned above, allegations concerning the effectof the Inventions, such as the aforementioned allegations [ii] to [iv] of the Defendant, do
not lead to the conclusion that a person skilled in the art could have easily conceived ofdifference between the Inventions and the cited invention.
D. Therefore, it should be determined that a person skilled in the art could not have easily
conceived of the Inventions based on the cited invention, and it should be said that the
ground for invalidation of lack of an inventive step as alleged by the Defendant does notexist.
(4) Based on the above, it is not found that Ground for Invalidation 3 (lack of novelty andlack of an inventive step based on Exhibit Otsu 3) exists in relation to the Inventions.
5. Concerning Issue 2-4 (whether Ground for Invalidation 4 (new violation of a
description requirement associated with the Change of Segmentation) exists)(1) The Defendant alleges that [i] the Inventions have the grounds for invalidation ofviolation of the clarity requirement or the support requirement on the premise thatcompositions comprising only one kind of substance called telomer and compositions
comprising only one kind of dialkyl phosphinate other than substances called telomers
also come to be included in the Inventions associated with the Change of Segmentation
made by the Plaintiff. The Defendant also alleges that [ii] the Inventions have the groundfor invalidation of violation of a description requirement as the Plaintiff's allegations areinconsistent in that it alleges that substances called telomers are components that inhibit
flame retardance while it also alleges that the dialkyl phosphinate expressed by Formula
14

(I) comprising such telomers is a flame-retardant substance.
In this regard, it should be said that a change in segmentation into constituent featuresin the Claims made in the Lawsuit without making any change in the statement of theClaims would never change the gist of the Inventions. Consequently, the aforementioned
allegation of the Defendant that a new ground for invalidation of violation of a description
requirement arises in association with the Change of Segmentation made by the Plaintiff
should be considered unreasonable in this sense. However, for confirmation, theaforementioned allegations [i] and [ii] are examined below.
(2) First, considering allegation [i], the Claims specify that in the Inventions, the "telomer
content is 0.01 to 6% by weight" in the "dialkyl phosphinate expressed by Formula (I)."
Therefore, it is clear that the Inventions contain the "dialkyl phosphinate expressed by
Formula (I)" and telomers. Consequently, it should be said that the Inventions neverinclude compositions comprising only one kind of substance called telomer andcompositions comprising only dialkyl phosphinates other than substances called telomers.
Therefore, the aforementioned allegation [i] is groundless.
(3) Next, considering allegation [ii], it is generally known that the dialkyl phosphinate
expressed by Formula (I) is a flame-retardant substance (Exhibit Otsu 3), and the Plaintiff
alleges that the Inventions found that even the dialkyl phosphinate expressed by Formula(I) becomes more flame retardant than compositions that have a higher telomer content if
the telomer content thereof is reduced. Therefore, the Plaintiff does not allege that
telomers have no flame retardance. Consequently, it cannot be said that the Plaintiff's
allegations are particularly inconsistent and that they constitute any ground forinvalidation of violation of description requirement.
(4) For the reasons described above, it is not found that Ground for Invalidation 4 (newviolation of a description requirement associated with the Change of Segmentation) exists
in the Inventions.
6. Concerning Issue 2-5 (whether Ground for Invalidation 5 (lack of novelty and lack of
an inventive step that newly arose in association with the Change of Segmentation) exists(1) The Defendant alleges that [i] the Inventions include flame-retardant compositions
comprising only substances called telomers and flame-retardant compositions comprising
only dialkyl phosphinates other than substances called telomers and that suchcompositions have the grounds for invalidation of lack of novelty and lack of an inventive
step. In addition, the Defendant alleges as follows: [ii] the Plaintiff admits that a substancecalled telomer is a substance that inhibits flame retardance and it is obvious that flame
retardance is improved if the concentration of a substance that inhibits flame retardanceis reduced; therefore, the Invention wherein the concentration of substances called15

telomers is reduced has the ground for invalidation of lack of an inventive step.
However, in this regard, the aforementioned allegation of the Defendant that the
ground for invalidation of lack of novelty and lack of an inventive step newly arises inassociation with the Change of Segmentation made by the Plaintiff should be consideredunreasonable for the same reason as explained in 5.(1) above. However, for confirmation,
the aforementioned allegations [i] and [ii] are examined below.
(2) First, the aforementioned allegation [i] is groundless as long as it is clear that theInventions contain the "dialkyl phosphinate expressed by Formula (I)" and telomers andthe Inventions cannot be considered to include "flame-retardant compositions comprising
only substances called telomers and flame-retardant compositions comprising only
dialkyl phosphinates other than substances called telomers," as mentioned in 5.(2) above.
In addition, regarding the aforementioned allegation [ii], it cannot be said that a person
skilled in the art who sees a prior art document can easily conceive of reducing the content
of telomers that are substances that inhibit flame retardance and thereby producing aflame retardance improvement effect because of the following reasons, as mentioned in
4.(3) above: the Plaintiff has not admitted what the Defendant pointed out; the existenceof a prior art document stating that a telomer is a substance that inhibits flame retardanceis not found; and there is no objective evidence that sufficiently proves that it wascommon general technical knowledge for a person skilled in the art to consider a telomer
as a substance that inhibits flame retardance as of the time of filing a patent application
for the Patent.
(3) For the reasons described above, it is not found that Ground for Invalidation 5 (lackof novelty and lack of an inventive step that newly arose in association with the Change
of Segmentation) exists in the Inventions.
7. Conclusion
As mentioned above, the Defendant is found to infringe or be likely to infringe thePlaintiff's patent right pertaining to the Patent by manufacturing, transferring or otherwise
handling the Defendant's Product that falls within the technical scope of the Inventions.
Also, no ground for invalidation is found in relation to the Patent. Therefore, it should besaid that the Plaintiff may claim an injunction against the Defendant's manufacture,transfer, etc. of the Defendant's Product and may also claim the disposal of the
Defendant's Product and the half-finished product thereof (object that has the structure of
the Defendant's Product but has yet to be completed as a product).
Accordingly, all the Plaintiff's claims are well-grounded and are thus upheld, and the
Court decides as set forth in the main text of the judgment. Incidentally, it is notreasonable to add a declaration of provisional execution in relation to paragraph 2 of the16main text. Therefore, a declaration of provisional execution is not added thereto.
Tokyo District Court, 47th Civil Division
Presiding Judge: TANAKA Koichi
Judge: YOKOYAMA Masamichi
Judge OKU Toshihiko(Attachment Patent Gazette omitted)

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Attachment
List of Defendant's ProductProduct name: "LFR-8001"

18