Patent Date
October 5, 2023
Court
Intellectual Property High
Right
Court, Second Division
Case number
2022 (Ne) 10094- A case in which an appeal was dismissed on the grounds that the prior instancedismissing the Plaintiff's claims is reasonable in its conclusion because the present
patent has a reason for invalidation based on violation of the support requirement.
Case type: Injunction, etc.
Result: Appeal dismissed
References: Article 104-3, paragraph (1), Article 123, paragraph (1), item (iv), andArticle 36, paragraph (6), item (i) of the Patent Act
Related rights, etc.: Patent No. 6752438
Judgment of the prior instance: Tokyo District Court 2021 (Wa) 29388, Judgment
rendered on August 2, 2022
Summary of the Judgment
1.

The present case is one in which with regard to a patent for an invention titled"COMPOSITIONS COMPRISING 2,3-DICHLORO-1,1,1-TRIFLUOROPROPANE,
2-CHLORO-1,1,1-TRIFLUOROPROPENE,

2-CHLORO-1,1,1,2-

TETRAFLUOROPROPANE, OR 2,3,3,3-TETRAFLUOROPROPENE" (Number ofclaims: 2), the Plaintiff, who is a patentee, sought an injunction against transfer , etc.
and disposal of the Defendant's product on the grounds that the Defendant's productfalls within the technical scope of the invention according to Claim 1 (present
invention) and thus the production, sale, etc. of the Defendant's product infringe thepresent patent right.
The judgment in prior instance dismissed all of the Plaintiff's claims on the
grounds that the present patent has a reason for invalidation based on lack of novelty
on the premise of a violation of the division requirement and thus the Plaintiff may
not exercise the present patent right against the Defendant under Article 104-3,
paragraph (1) of the Patent Act.

In response, the Plaintiff filed an appeal.

Incidentally, Claim 1 according to the present invention recites "A composition
comprising HFO-1234yf, HFC-143a, and HFC-254eb, wherein the composition
comprises 0.2 percent by weight or less of HFC-143a and 1.9 percent by weight orless of HFC-254eb."
2.

As mentioned below, the present judgment determined that the statement of theclaims violates Article 36, paragraph (6), item (i) of the Patent Act and that thePlaintiff may not exercise the patent right against the Defendant irrespective ofwhether the divisional application is valid and whether the correction is compliant.
In conclusion, this judgment held that the prior instance, which reached the sameiconclusion, is reasonable, and dismissed the appeal.
(1)Whether or not the statement of the claims complies with the support

requirement should be determined by comparing between the statement of the claims
and the statement of the Detailed Description of the Invention, and then examining:whether or not the invention stated in the claims is the invention stated in the Detailed
Description of the Invention, and falls within the scope where a person ordinarily
skilled in the art can recognize that the problem of the invention can be solved by thestatement of the Detailed Description of the Invention; or whether or not, even if it isneither stated nor suggested in the Detailed Description of the Invention, the invention
stated in the claims falls within the scope where a person ordinarily skilled in the art
can recognize that the problem of the invention can be solved in light of the common
general technical knowledge at the time of filing the application.
(2)

The present description can be deemed to state the following: HFO-1234yf is

known to have low global warming potential (GWP) and is a good candidate forreplacing saturated HFC refrigerants with high GWP; in preparing HFO-1234yf,
certain additional compounds are present in small amounts; as one of the additio nal
compounds contained in a composition of the present invention, there is less thanabout 1 percent by weight of HFC-143a; and by-products generated in the process of
preparing HFO-1234yf and impurities contained in HFO-1234yf or its raw materials(HCFC-243db, HCFO-1233xf, HCFC-244bb) fall under the additional compounds.
In this regard, it is evident from the statement itself of the present description that
HFO-1234yf was already known to be useful as a compound with low global warming
potential (GWP) prior to the date of filing the original application.

Thus, if thepresent description does not state what technical significance the presence of theadditional compounds in small amounts in preparing HFO-1234yf contributes to, what
function and effect the presence thereof provides, and what problem is solved by thepresence, the present description does not state the problem to be solved by thepresent invention.

However, the present description does not state anything about

these points, and even examining other statements, the present description is notfound to include any portions that suggest the problem to be solved by the present
invention.
The "problem to be solved by the invention" formally stated in the present
description merely describes the technical field to which the present invention belongs,
and is insufficient for a statement of the problem of the present invention, and there isno other choice but to deem that the present description does not state the problem of
the present invention.

Thus, it cannot also be deemed that a person ordinarily skilledii

in the art can recognize that the problem of the invention can be solved by thestatement of the present description.
(3)

Even if a portion formally stated as "problem to be solved by the invention" inthe present description is interpreted to describe the problem of the present invention
and it is understood that the problem of the present invention is to "provide acomposition useful for a heat transfer composition," the present description cannot be
deemed to state the composition of the present invention (the present description
includes a statement in terms of mole percent, but the statement cannot be converted
into weight percent because the statement includes unknown materials).

In addition

to this, the present description neither states nor suggests anything about in whatmeaning a composition having such a structure will be a "useful" composition beyond
the usefulness of HFO-1234yf.
Thus, a person ordinarily skilled in the art also cannot understand from thestatement of the present description that the composition of the present invention is a"useful" composition as a heat transfer composition.
(4)

It is the same irrespective of whether the filing date is the date of filing theoriginal application or the date of filing the divisional application that a person
ordinarily skilled in the art cannot recognize that the problem of the present invention
can be solved by the statement of the present description.
(5)

Further, even if the present correction adds a lower limit of "77.0 mole percent

or more" to the definition of HFO-1234yf in Claim 1 according to the present
invention, a reason for invalidation based on a violation of the support requirement
will be present.

Thus, the re-defense of the correction cannot resolve the reason forinvalidation based on the violation of the support requirement.

iii

Judgment rendered on October 5, 2023
2022 (Ne) 10094 Appeal case of seeking injunction against patent infringement, etc.
(Prior instance: Tokyo District Court 2021 (Wa) 29388)
Date of conclusion of oral argument: August 1, 2023
Judgment
Appellant:

The Chemours Company FC, Limited Liability Company

Appellee:

AGC Inc.
Main text

1. The appeal shall be dismissed.
2. The Appellant shall bear the costs of the appeal.
3. The additional period for the Appellant to file a final appeal and a petition
for acceptance of final appeal against this judgment shall be 30 days.
Facts and reasonsAbbreviations of terms and their meanings shall follow the judgment in priorinstance, except for those given in this judgment.

In addition, all of the terms"Attachment" in the quoted portions in the judgment in prior instance are amended to"Attachment of the judgment in prior instance."
No. 1

Object of the appeal
1. The judgment in prior instance shall be reversed.
2. The Appellee may not produce, use, transfer, or offer to transfer a product as

stated in the List of the Defendant's Product in the Attachment of the judgment inprior instance.
3. The Appellee must dispose of the product as stated in the List of the
Defendant's Product in the Attachment of the judgment in prior instance.
4. The Appellee shall bear the court costs in both the first and second instance.
5. Declaration of provisional execution
No. 2

Outline of the case
1. Summary of the case
The present case is one in which the Appellant (Plaintiff in prior instance;

hereinafter referred to as "the Plaintiff"), who is a patentee of a patent for an
invention

titled"COMPOSITIONSCOMPRISING

2,3-DICHLORO-1,1,1-

TRIFLUOROPROPANE, 2-CHLORO-1,1,1-TRIFLUOROPROPENE, 2-CHLORO1,1,1,2-TETRAFLUOROPROPANE,

OR
1

2,3,3,3-TETRAFLUOROPROPENE"

(Patent No. 6752438, the present patent), asserts that a product as stated in the List of
the Defendant's Products in the Attachment of the judgment in prior instance(Defendant's product) falls within the technical scope of the invention pertaining to
the Present Patent and that acts of the production, use, transfer, or offer to transfer ofthe Defendant's product by the Appellee (Defendant in prior instance; hereinafterreferred to as "the Defendant") constitute infringement of the Present Patent Right,
and the Plaintiff seeks injunctive relief of the transfer, etc. of the Defendant's Productand disposal thereof pursuant to Article 100, paragraphs (1) and (2) of the Patent Act.
The judgment in prior instance dismissed all of the Plaintiff's claims, on the
grounds that the Present Patent has a reason for invalidation based on lack of novelty
and that thus the Plaintiff may not exercise the Present Patent Right against the
Defendant pursuant to Article 104-3, paragraph (1) of the Patent Act.

Therefore, thePlaintiff filed this appeal.
2. Basic facts, issues, and assertions on the issues by the parties
Except for the following amendments and the addition of supplementary
assertions by the parties in this instance in 3 below, basic facts, issues, and assertions
on the issues by the parties are as stated in 1 to 3 of "No. 2 Outline of the case" in"Facts and reasons" in the judgment in prior instance, and thus, such statements shallbe quoted.
(1) The phrase "The invention according to Claim 1 (hereinafter referred to as'the present invention')" on page 3, line 6 is amended to "The statement of Claim 1(hereinafter, the invention according to Claim 1 will be referred to as 'th e present
invention')", the phrase "the description" on the same page, line 7 is amended to "thedescription and drawings", and the phrase "Exhibit Ko 18" on the same page, line 23
is amended to "Exhibits Ko 18-1 and 18-2".
(2) The phrase "it is clearly stated that" on page 5, line 11 is amended to "in thepresent description, it is clearly stated that."(3) The phrase "the description of the present original application as originally
filed (hereinafter referred to as "the description of the original application as
originally filed"), etc." on page 8, line 2 is amended to "the description (Exhibit Otsu4), claims, and drawings originally attached to a written application of the present
original application (hereinafter referred to as 'the description of th e original
application as originally filed')", and each instance of the phrase "the description, etc.
of the original application as originally filed" on the same page, lines 4, 5, and 10 isamended to "the description of the original application as originally filed".
(4) The phrase "Exhibit Otsu 6" on page 8, line 16 is amended to "Unexamined2Patent Application Publication No. 2018-154841, Exhibit Otsu 6."(5) The phrase "the description, etc. of the original application as originally
filed" on page 10, line 8 is amended to "the description of the original application as
originally filed," and at the end of line 13 of the same page, a line break is inserted,and the phrase "Incidentally, in order to be used as a cited document for novelty, it isrequired that a 'specific technical idea' should be disclosed in the cited document.
Thus, in the case where the present invention is recognized as lacking novelty on thebasis of the Exhibit Otsu 6 document, as the specific technical idea, the Exhibit Otsu 6
document is deemed to disclose an aspect in which HFC-143a is 0.2 percent by weightor less and HFC-254eb is 1.9 percent by weight or less in addition to HFO-1234yf.
In this case, the application does not violate the division requirement." is added.
(6) The phrase "a new technical effect that is caused by" ... "and that is notfound in raw material components" on page 12, line 3 is amended to "a new technicaleffect that is produced by" ... "and that is not found in raw material components," andeach instance of the phrase "the present invention" on the same page, line 23 and page13, line 11 is amended to "the statement of the claims for the present invention".
(7) The phrase "the present correction invention" on page 14, line 20 isamended to "the statement of the claims for the present correction invention."In

addition, after "is as" on the same page, line 23, the phrase ", because the Defendantalso does not dispute that the Defendant's product comprises 77.0 mole percent ormore of HFO-1234yf" is added, and at the end of line 24 of the same page, the phrase"If it is produced as a 'product,' regardless of whether it is in the process of reaction or
distillation, the 'product' is a subject of working acts under the Patent Act.

The

Defendant's assertion is erroneous that the statement pertaining to 'Intermediate
Product' in the List of Defendant's Product in the Attachment of the judgment in priorinstance cannot be deemed to specify a structure of the subject product.

The

remainder of the counterarguments to the Defendant's assertions are as mentioned in(1) [Plaintiff's Assertions] B above." is added.
(8) After "the Defendant's product" on page 15, line 19, the phrase ", asmentioned in (1) [Defendant's Assertions] above," is added.
(omitted)
No. 3

Judgment of this court
This court determines that the Present Patent should be finally invalidated due

to a violation of Article 36, paragraph (6), item (i) of the Patent Act and that the3

Plaintiff may not exercise the Present Patent Right against the Defendant pursuant to
Article 104-3, paragraph (1) of the same Act, on the grounds that it can be recognizedthat the statement of the claims for the present invention violates the support
requirement regardless of whether or not the divisional application is legal and thateven if the present correction is valid, the statement of the claims for the present
invention violates the support requirement.

The reasons are as follows.

1. Present invention(1) The present description states as shown in Attachment "Patent Gazette"(Exhibit Ko 2).
(2) Outline of the present invention
According to the statement in (1) above, the present invention relates to a fieldof compositions useful for heat transfer compositions, etc., and new environmental
regulations have led to the need for new compositions for use in refrigeration, airconditioning, and heat pump apparatus, and against this background, compounds withlow global warming potential are of particular interest, and under these circumstances,in the present invention, it has been found that in preparing new compounds with low
global warming potential, such as 1234yf, certain additional compounds are present insmall amounts ([0001] to [0003] of the present description; hereinafter, a four -digit
number enclosed in [ ] merely refers to a paragraph of the present description unlessotherwise specified).
2. Issue 2-2 (Whether or not the defense of invalidity based on a violation of
the support requirement as a reason for invalidation is established)(1) Whether or not the statement of the claims complies with the support
requirement should be determined by comparing between the statement of the claims
and the statement of the Detailed Description of the Invention, and then examining:whether or not the invention stated in the claims is the invention stated in the Detailed
Description of the Invention, and falls within the scope where a person ordinarily
skilled in the art can recognize that the problem of the invention can be solved by thestatement of the Detailed Description of the Invention; or whether or not, even if it isneither stated nor suggested in the Detailed Description of the Invention, the invention
stated in the claims falls within the scope where a person ordinarily skilled in the art
can recognize that the problem of the invention can be solved in light of the common
general technical knowledge at the time of filing the application.
(2) With regard to the present case, as the "problem to be solved by theinvention," the present description (hereinafter, the same applies to the description of
the original application as originally filed) states that "The applicants have found that4

in preparing new compounds with low global warming potential, such as 1234yf,
certain additional compounds are present in small amounts." ([0003]).

In addition,

the present description states that: "According to the present invention, there isprovided a composition comprising HFO-1234yf and at least one additional
compound selected from the group consisting of HFO-1234ze, HFO-1243zf, HCFC243db, HCFC-244db, HFC-245cb, HFC-245fa, HCFO-1233xf, HCFO-1233zd, HCFC253fb, HCFC-234ab, HCFC-243fa, ethylene, HFC-23, CFC-13, HFC-143a, HFC-152a,
HFO-1243zf, HFC-236fa, HCO-1130, HCO-1130a, HFO-1336, HCFC-133a, HCFC254fb, HCFC-1131, HFC-1141, HCFO-1242zf, HCFO-1223xd, HCFC-233ab, HCFC226ba, and HFC-227ca.

The composition comprises less than about 1 percent by

weight of the at least one additional compound." ([0004]); and "Among several uses
for HFO-1234yf, uses as refrigerants, heat transfer fluids, aerosol propellants, andfoam expansion agents have been particularly suggested.

In addition, it has also

been found that HFO-1234yf has low global warming potential (GWP) as recorded by
V. C. Papadimitriou, et al. in Physical Chemistry Chemical Physics, 2007, volume 9,
pages 1-13.

Thus, HFO-1234yf is advantageous.

As seen above, HFO-1234yf is agood candidate for replacing saturated HFC refrigerants with high GWP." ([0010]).
Taking into overall consideration the statements of [0013], [0016], [0019], [0022],[0030], and [Figure 1] in addition to the above statements, the present description canbe deemed to state the following: HFO-1234yf is known to have low global warming
potential (GWP) and is a good candidate for replacing saturated HFC refrigerants withhigh GWP; in preparing HFO-1234yf, certain additional compounds are present insmall amounts; as one of the additional compounds contained in the composition of
the present invention, there is less than about 1 percent by weight of HFC -143a; andby-products generated in the process of preparing HFO-1234yf and impurities
contained in HFO-1234yf or its raw materials (HCFC-243db, HCFO-1233xf, HCFC244bb) fall under the additional compounds.
In this regard, it is evident from the statement itself of [0010] that HFO-1234yf
was already known to be useful as a compound with low global warming potential(GWP) prior to the date of filing the original application.

Thus, if the present

description does not state what technical significance the presence of the additional
compounds in small amounts in preparing HFO-1234yf contributes to, what functionand effect the presence thereof provides, and what problem is solved by the presence
thereof, the present description does not state the problem to be solv ed by the present
invention.

However, the present description does not state anything about thesepoints, and even examining the remainder of the statements, the present description is5not found to include any portions that suggest the problem to be solved by the present
invention.

The present description states in "technical field" that "The present

disclosure relates to a field of compositions useful as heat transfer compositions,aerosol propellants, foaming agents, blowing agents, solvents, cleaning a gents, carrier
fluids, displacement drying agents, buffing abrasion agents, polymerization media,
expansion agents for polyolefins and polyurethanes, gaseous dielectrics, fire
extinguishers, and fire extinguishers in the form of liquid or gas.

In particul ar, thepresent disclosure relates to a composition that is useful for heat transfer compositions,such as compositions comprising 2,3,3,3-tetrafluoropropene (HFO-1234yf or 1234yf)
or 2,3-dichloro-1,1,1-trifluoropropane (HCFC-243db or 243db), 2-chloro-1,1,1trifluoropropene (HCFO-1233xf or 1233xf), or 2-chloro-1,1,1,2-tetrafluoropropane(HCFC-244bb)." ([0001]).

However, from this statement, the problem to be solvedby the present invention cannot be understood, because this statement merely
describes the technical field to which the present invention belongs.
Thus, the "problem to be solved by the invention" formally stated in the present
description is insufficient for a statement of the problem of the present invention, andthere is no other choice but to deem that the present description does not state theproblem of the present invention.

Therefore, it also cannot be deemed that a person

ordinarily skilled in the art can recognize that the problem of the present invention
can be solved by the statement of the present description.
(3) Even if the statement in [0001] above is understood to describe the problemof the present invention, it cannot be recognized that a person ordinarily skilled in theart can recognize that the problem can be solved by the statement of the present
description, as mentioned below.
That is, in this case, it should be understood that the problem of the present
invention is "to provide a composition that is useful for heat transfer compositions,such as compositions comprising 2,3,3,3-tetrafluoropropene (HFO-1234yf or 1234yf)
or 2,3-dichloro-1,1,1-trifluoropropane (HCFC-243db or 243db), 2-chloro-1,1,1trifluoropropene (HCFO-1233xf or 1233xf), or 2-chloro-1,1,1,2-tetrafluoropropane(HCFC-244bb)."
In the present invention, the problem should be solved by a composition
comprising [i] HFO-1234yf, [ii] 0.2 percent by weight or less of HFC-143a, and [iii]1.9 percent by weight or less of HFC-254eb.
However, the present description cannot be deemed to state the composition
comprising [i] to [iii] above.

That is, [0121] to [0123] (Table 5 ([Table 6])) state, as

Working Example 15, four examples of compositions comprising HFO-1234yf, HFC6

143a, and HFC-254eb, in which the compositions were generated upon conversion
from HCFC-244bb into HFO-1234yf without a catalyst (heated temperatures (°C) are
550, 574, 603, and 626, respectively), and state that the amounts of HFC -143a
contained in the compositions were 0.1, 0.1, 0.2, and 0.2 mole percent, respectively,
and the amounts of HFC-254eb contained in the compositions were 1.7, 1.9, 1.4, and
0.7 mole percent, respectively.

However, the compositions stated in Table 5 ([Table6]) contain "unknown" components, and it is impossible to know molecular weights of
the "unknown" components.

Thus, in the same Table, the contained amounts of

HFC-143a and HFC-254eb expressed as mole percent cannot be converted into thoseexpressed as percent by weight.

Therefore, there is no other choice but to deem thatthe present description does not state the composition having a structure of [i] to [iii]above.

In addition to this, the present description neither states nor suggests

anything about in what meaning a composition having such a structure will be a"useful" composition beyond the above usefulness of HFO-1234yf.

Thus, a person

ordinarily skilled in the art also cannot understand from the statement of the present
description that the composition having the structure of [i] to [iii] above is a "useful"composition as heat transfer compositions.
Therefore, a person ordinarily skilled in the art cannot recognize that the
problem of the present invention can be solved by the statement of the present
description.
(4) As mentioned above, even if it is considered that the divisional application
is valid, and the filing date is the filing date of the original application (May 7, 2009),
it cannot be deemed that the statement of the claims for the present invention
complies with the support requirement, and therefore, the patent for the present
invention should be invalidated by a request for an invalidation trial (Article 123,
paragraph (1), item (iv) and Article 36, paragraph (6), item (i) of the Patent Act).
This is also true even if the divisional application is invalid and the filing date is thefiling date of the divisional application (September 4, 2019).
3. Issue 3 (Whether or not the re-defense of the correction is established)
In the present correction invention as well, only the lower limit "77.0 molepercent or more" is set with regard to HFO-1234yf in Claim 1 for the present
invention.

Even taking into overall consideration the statements of the claims after

the present correction and the present description, it has not revealed what technicalsignificance the lower limit has and what problem can be solved by this.

In addition,

as with 2(2) and (3) above, it remains the same that the present description does notstate a problem to be solved by the structure of the composition according to the7present correction invention and a method for solving the problem.

Thus, even if thecorrection is valid, for the same reasons as mentioned in 2(2) and (3), the statement of
the claims for the present correction invention has the reason for invalidation based on
the violation of the support requirement.

Therefore, the re-defense of the correction

cannot resolve the reason for invalidation based on the violation of the support
requirement.
Consequently, without going so far as to determine the legality of the present
correction and the remainder of the issues, the Plaintiff may not exercise the present
patent right against the Defendant pursuant to Article 104-3, paragraph (1) of the
Patent Act.
4. Conclusion
For the foregoing reasons, all of the Plaintiff's claims are unfounded.

Thus,

the judgment in prior instance that dismissed all of the Plaintiff's claims is reasonable
in its conclusion.

Therefore, the appeal shall be dismissed, and the judgment isrendered as mentioned in the main text.
Intellectual Property High Court, Second Division
Presiding Judge: SHIMIZU Hibiku
Judge: ASAI Ken
Judge: KATSUMATA Kumiko

8

Attachment "Patent Gazette" (omitted)

9