SCENE 1: 2nd Oral Argument

SCENE1 ～2nd Date for Oral Argument～
Procedures to be conducted on this date
Confirmation of the clarified issues in dispute

Explanatory Session

Final presentation for summarizing
and orally explaining allegations ofboth parties.

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SCENE 1: 2nd Oral Argument

SCENE1 ～ 2nd Date for Oral Argument ～Confirmation of the clarified issues in dispute Court and both parties:
No dispute regarding the structure of the Defendant’s Product.
Issues in dispute are:1. Fulfillment/Non-fulfillment of Element C of the Invention⇒Whether an FRP thread member which only passes through a single
through-hole constitutes the “FRP thread member” of Element C
2. Outcome of infringement under the Doctrine of Equivalents⇒ Whether infringement under the Doctrine of Equivalents is established regarding
the FRP strips in the Defendant’s product, each of which only passes through asingle through-hole.

 Defendant： No allegation of the defense of patent invalidity.

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SCENE 1: 2ｎｄ Oral Argument -Explanatory Session-

1. Technical significance of the Invention(Plaintiff’s argument)
Conventional art ([0002][FIG. 3]) Problem to be solved by the Invention([0003][0004])
Bonded with adhesive material[FIG. 3] (Conventional Art)

With metallic materials, it is difficult to ensure asufficient bonding strength, or durability as a golfclub head.

Embodiment of the Invention[FIG. 1]
Head body

FRP outershellmember

Metallicouter shellmember[FIG. 2]

FRP-thread
memberOuter
surfaceInnersurface

FIG. 2(a)FIG. 2 (b)Bonding
portion3

SCENE 1: 2ｎｄ Oral Argument -Explanatory Session-

2. Literal infringement of the Patent(Plaintiff’s argument)
Elements of the Invention (B-D)

Defendant's Product

FIG. 1

FIG. 2

B. a plurality of through-holes areprovided in the bonding portionof the metallic outer shellmemberC. by interposing an FRP thread
member along with adhesivematerial between the metallic
outer shell member and the FRP
outer shell member, the FRP
thread member maintaining ashape of passing through theplurality of the through-holes andrunning alternately on inner andouter surfaces of the metallic
outer shell member
D. the bonding portion of themetallic outer shell member isbonded to the bonding portion of
the FRP outer shell member

5 through-holes

FIG. 3 (III-III Sectional View)
FRP outershell

FRP strip
Metallicouter shell

A group comprising 5 FRP strips

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SCENE 1: 2ｎｄ Oral Argument -Explanatory Session-

3. Infringement under the Doctrine of Equivalents(First requirement: No essential part)(Plaintiff’s argument)
An essential part of a patented invention
A part which is described in claims and constitutes a unique technicalidea that is not seen in prior art.

Conventional art([0002][FIG. 3])
No ingenuity!
Bonded with adhesivematerial[FIG. 3] (Conventional Art)

The essential part of the Invention lies in the feature toenhance the bonding strength between the metallic outershell member and the FRP outer shell member byinterposing an FRP threadlike member between them,having the threadlike member pass through the throughholes provided in the metallic outer shell member, andthen curing the threadlike member for hooking; and NOTin the feature where a single thread member passes
through multiple through-holes.
Embodiment

Defendant’s
Product

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SCENE 1: 2ｎｄ Oral Argument -Explanatory Session-

3. Infringement under the Doctrine of Equivalents(Second requirement: Possibility to replace)(Plaintiff’s argument)
Effect of theInvention
Having the same
purpose and effect(or principles forsolving the
problem)Enhance the bonding strength between the metallic
outer shell member and the FRP outer shell member
by having a thread member to be thermosetted andpass through a through-hole, hooking the metallic
outer shell member, and then bonding one end of thethread member to the FRP outer shell member.

Effect of the
Defendant’s
Product

Thermally
cured tomaintain theshape

Hook tightly
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SCENE 1: 2ｎｄ Oral Argument -Explanatory Session-

3. Infringement under the Doctrine of Equivalents(Second requirement: Possibility to replace)(Plaintiff’s argument)
Fig. 1The Invention

ReverseSame

ReverseSame

Fig. 2
Defendant’s
Product

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SCENE 1: 2ｎｄ Oral Argument -Explanatory Session-

3. Infringement under the Doctrine of Equivalents(Third requirement: Easiness to replace)(Plaintiff’s argument)
Structure of the Invention

Easily conceivable atthe time of
manufacture of the
Defendant’s Product

Each member passing through multiple throughholes

Structure of
the Defendant’s Product
Each member passing through a single through-hole only
once

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SCENE 1: 2ｎｄ Oral Argument -Explanatory Session-

3. Infringement under the Doctrine of Equivalents(Fifth requirement: No intentional exclusion)(Plaintiff’s argument)
Defendant’s 1st ground: “Running
alternately on inner and outersurfaces of the metallic outer shellmember” was added in theamendment during prosecution.

Defendant’s2nd Ground: Even though theSpecification states “a plurality of thread
members 22 may be arranged” at [0015], it is
excluded from claims.

Plaintiff’s counterargument: The
Plaintiff made the amendment toclarify unclear descriptions of claims
and overcome the reason for refusal(violation of clarity requirement)
raised by the examiner. With such
amendment, the Plaintiff is not
objectively and externally regarded
as having excluded any originallyclaimed embodiment from thetechnical scope of the Invention.

Plaintiff’s counterargument: The statement “aplurality of thread members 22 may be arranged”
means:In the Specification, what is excluded from thescope of the invention is only “without throughholes and thread member.” (Table 1)
Comparative Example 1
Working Example 1

Bonding method
Without through-holes and thread
member, and with adhesive material

Bonding strengthWith through-holes, thread member,and adhesive material

121

100

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SCENE 1: 2ｎｄ Oral Argument -Explanatory Session-

The Invention
Problem to be Solved by the Invention (【0004】)
The present invention has the objective of “providing a hollow golf head capable of enhancing
the bonding strength of a metallic outer shell member and an FRP outer shell member,regardless of the kind of the metallic material to be used in the metallic outer shell member.”Means for Solving the Problem (【0005】)“a plurality of through-holes are provided in the bonding portion of the metallic outer shellmember; the bonding portion of the metallic outer shell member is bounded to bonding
portion of the FRP outer shell member by interposing an FRP thread member along withadhesive material between the metallic outer shell member and the FRP outer shell member,
the FRP thread member maintaining a shape of passing through the plurality of the throughholes and running alternately on inner and outer surfaces of the metallic outer shell member”

Effect of the Invention (【0007】)

Force to Detach“when a force to detach the FRP outershell member is applied, the thread
member works to tie the FRP outer shellmember to the metallic outer shellmember because the thread member
maintains the shape of hooking themetallic outer shell member on thesurface opposite to the bonding
surface.”

Outer
Surface
Inner
Surface

Opposite Surface is hooked byThread Member

10SCENE 1: 2ｎｄ Oral Argument -Explanatory Session-

Structure of the Defendant’s Product
FRP Outer Shell
Metallic
Outer Shell

FRP Strip“five short and small FRP strips each passes through one of five through-holes
only once from the upper surface side to the lower surface side of the flange portion of themetallic outer shell member;the five short and small FRP strips are interposed, along with adhesive material, between theupper surface side of the flange portion of the metallic outer shell member and the bonding
portion of the FPR upper outer shell member, and between the lower surface side of theflange portion of the metallic outer shell member and the bonding portion of the FRP lower
outer shell member in the shape as shown in FIG.”
Element C of the Invention“interposing an FRP thread member along with adhesive material between the metallic outershell member and the FRP outer shell member,
the FRP thread member maintaining a shape of
passing through the plurality of the through holes andrunning alternately on inner and outer surface of the metallic outer shell member”

FRP Strip ≠ ‟FRP thread member” passes through only one throughhole ⇒ the Defendant’s Product does not satisfy Element C

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SCENE 1: 2ｎｄ Oral Argument -Explanatory Session-

Noninfringement under the Doctrine of Equivalents
No satisfaction of the 1st Requirement (Essential Part)
Problem to be Solved by the Invention (【0004】)
The present invention has the objective of “providing a hollow golf head capable of enhancing
the bonding strength of a metallic outer shell member and an FRP outer shell member, regardlessof the kind of metallic material used in the metallic outer shell member.”Effect of the Invention (【0007】)“when a force to detach the FRP outer shell member is applied, the thread member works to tie
the FRP outer shell member to the metallic outer shell member because the thread member
maintains the shape of hooking the metallic outer shell member on the surface opposite to thebonding surface.”

Enhancing the bonding strength= when a force to detach is applied, the FRP thread member maintains theshape of hooking the metallic outer shell member on the surface opposite to
the bonding surface.
Essential Part of the Invention= An FRP thread member passes alternately through multiple through-holes
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SCENE 1: 2ｎｄ Oral Argument -Explanatory Session-

Noninfringement under the Doctrine of Equivalents
No Satisfaction of the 2nd Requirement (Possibility to Replace)／the 3rd Requirement (Easiness to Replace)

Force to Detach

Each of the five short and small FRP strips passes through one hole only
⇒ which does not offer a sufficient bonding strength because it is unable to tightly
hook the metallic outer shell member on the surface opposite to the bonding surface
when a force to detach the outer shell member is applied.

= an effect equivalent to that of the Invention cannot be provided

No Possibility to Replace

No Easiness to Replace

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SCENE 1: 2ｎｄ Oral Argument -Explanatory Session-

Noninfringement under the Doctrine of Equivalents
The 5th Requirement (Intentional Exclusion)
The technical scope of the Invention at the time of filling (Element C)“A plurality of through-holes are provided in the bonding portion of the metallic outer shell member; thebonding portion of the metallic outer shell member is bounded to the bonding portion of the FRP outershell member by interposing an FRP thread member along with adhesive material between the metallic
outer shell member and the FPR outer shell member; the FRP thread member maintaining a shape of
passing through the plurality of the through-holes”

Notification of Reasons for Refusal“The structure of how the FRP thread member passes through the plurality of through-holes is unclear.”

The technical scope of the Invention after the amendment (Element C)“A plurality of through-holes are provided in the bonding portion of the metallic outer shell member; thebonding portion of the metallic outer shell member is bounded to the bonding portion of the FRP outershell member by interposing an FRP thread member along with adhesive material between the metallic
outer shell member and the FPR outer shell member; the FRP thread member maintaining a shape of
passing through the plurality of the through-holes and running alternately on inner and outer surfaces ofthe metallic outer shell member.”

The Written Argument“The examiner has found that ‘the structure of how the FRP thread member passes through the pluralityof through-holes is unclear’; however, we believe that the amendment has made this point clear.”

The structure of “having a thread member pass through the plurality of the through-holes” islimited to the structure of “running alternately on inner and outer surfaces of the metallic outershell member” = Intentional Exclusion

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SCENE 1: 2ｎｄ Oral Argument -Explanatory Session-

Noninfringement under the Doctrine of Equivalents
The 5th Requirement (Intentional Exclusion)
The Supreme Court Decision on March 24, 2017“…intentional exclusion of Competing Products or Process from the scope of patent claims in the courseof filing an application for a patented invention or the existence of other particular circumstances should
be ascertained if the applicant is objectively and visibly determined to have indicated his/her intention ofomitting statements concerning Competing Products or Process in the scope of the patent claims in asituation described below, while recognizing that the structure for the Competing Products or Processes
could substitute for the structure stated in the scope of the patent claims: the applicant knew theexistence of such Competing Products that contain certain parts that are different from the parts in the
structure stated in the scope of the patent claims; and the applicant was able to easily conceive thestructure for such Competing Products or Processes at the time of filing the application in connection
with said differences.”

The Descriptions of the Specification at the time of filling the application【0015】 “Depending on the size, shape or other factors of the bonding portion 21a of the FRP outer shellmember 21, a plurality of thread members 22 may be arranged on the metallic outer shell member 11
for bonding so as to further enhance the bonding strength of the metallic outer member 11 and the FRP
outer shell member 21.”

The applicant limits the structure to the structure of “having a thread member pass through theplurality of the through-holes and run alternately on inner and outer surfaces of the metallic
outer shell member”, while recognizing the structure that “a plurality of thread members may bearranged for bonding” = Intentional Exclusion

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SCENE 1: 2ｎｄ Oral Argument -Explanatory Session-

Q & A Session
 Characteristics of FRP (fiber-reinforced plastic) and epoxy
resin Comparison of bonding strength between the Invention andthe Defendant’s Product as well as the modified version of
the Defendant’s Product Reason for Amendments
 Reason for adopting the structure of the Defendant’s Product16

SCENE 1: 2ｎｄ Oral Argument -Explanatory Session-

Q & A Session(Questions from Judge Sano)
Fig.１
Alternative example ofInvention proposed by
Plaintiff

Fig.２
Defendant’s Productwithout FRP lower
outer shell member

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SCENE2: 3rd ∼ 5th Oral Argument

SCENE2 ～Procedures thereafter～
Court’s disclosure of its preliminary view on infringement
and Court’s attempt to arrange a settlement.

Termination of attempt of settlement

Examination on damage(3rd ～5th Oral Argument Date)
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SCENE3: 6th Oral Argument - Rendering of Judgement -SCENE 3 ～ 6th Date for Oral Argument
Rendering of Judgement
Main Text
1.
2.
3.
4.
5.

The Defendant shall not manufacture or sell the productin the List appended to this judgment.
The Defendant shall dispose of the product in the List
appended to this judgment.
The Defendant shall pay the Plaintiff 500 million yen anddelinquency charges at the annual rate of 5% from
December 13th, 2019 to the date of full payment.
The Defendant shall bear the court costs.
This judgement may be provisionally enforced as far asparagraphs 1 and 3 are concerned.
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SCENE3: 6th Oral Argument - Rendering of Judgement Judgement Reason 1

Non-fulfillment of Element C

Meaning of Element C in the Invention
The “FRP thread member” in Element C means an FRP thread member passing
through the plurality of through-holes provided in the bonding portion of themetallic outer shell member; an FRP thread member that passes through only asingle through-hole is not included in the above meaning.
Defendant’s Product

The strips of the Defendant’s Product, each of which passes through onlya single through-hole, do not fulfil “FRP thread member” in Element C.

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SCENE3: 6th Oral Argument - Rendering of Judgement Judgement Reason 2

Infringement under the Doctrine of Equivalents(General Statement)

5 Requirements for Infringement under the Doctrine of Equivalents(Supreme Court "Ball Spline Bearing" Case)① The different part from the accused product is not an essential part of the patented invention(Requirement 1)② Possibility to replace (Requirement 2)③ Easiness to replace (Requirement 3)④ Difficulty in conceiving the product from publicly known art (Requirement 4)⑤ No intentional exclusion (Requirement 5)

Method of Judgement for Requirement 1
The essential part of a patented invention – i.e. a characteristic part which constitutes a unique technicalidea that is not seen in prior art – should be found based on the scope of claims and the statements in thedescription as to prior art etc.

Method of Judgement for Requirement 5
Considering prosecution history
Equivalent material as of the filing date (Supreme Court, The ”Maxacalcitol” Grand Panel Case)

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SCENE3: 6th Oral Argument - Rendering of Judgement Judgment Reason 3

Infringement under the Doctrine of Equivalents(Requirement 1)

Essential parts of the Invention
There are 2 features for achieving the objective of the Invention, namely enhancing
the bonding strength between the metallic outer shell member and the FRP outershell member which are made from different materials:① An FRP thread member is “interposed” between the FRP outer shell member andthe metallic outer shell member;② After having a thermoset FRP thread member pass through the through-holes andtake the form of “hooking,” the FRP thread member is thermally cured to maintainthe shape and “hook” the metallic outer shell member.
Even with the structure wherein an FRP thread member is divided into pieces andeach piece of the divided FRP thread member passes through a single through-hole,
the above 2 features, “interposing” and “hooking” do not change and bonding
strength is enhanced. Therefore, the structure of having an FRP thread member
passing through alternately the multiple through-holes cannot be regarded as theessential part of the Invention.

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SCENE3: 6th Oral Argument - Rendering of Judgement Judgement Reason 4

Infringement under the Doctrine of Equivalents(Requirement 1)

The structure of the Defendant’s ProductIn the Defendant’s Product, each of multiple FRP strips corresponding to the FRP thread

member of the Invention passes through a single through-hole provided in the metallic outershell member, and each FRP strip is thermally cured to “hook” the metallic outer shell member.
Moreover, the metallic outer shell member is bonded with the FRP outer shell member by theinterposed FRP strips. In this manner, the Defendant’s Product can be regarded as fulfilling“interposing” and “hooking”, which are essential parts of the Invention.

Accordingly, the Defendant‘s Product fulfills Requirement 1 of theDoctrine of Equivalents.
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SCENE3: 6th Oral Argument - Rendering of Judgement Judgement Reason 5

Infringement under the Doctrine of Equivalents(Requirements 2, 3)
Requirement 2
Even if the Invention changes its structure such that an FRP thread is divided into pieces and eachpiece of the divided FRP thread member passes through a single through-hole provided in the metallic
outer shell member, it can still produce the same effect of enhancing the bonding strength between the
FRP outer shell member and the metallic outer shell member as the Invention.

Requirement 3
The structure of having each of multiple FRP thread members pass through a single through-hole canbe deemed as being a commonplace structure producing the same effect as the Invention. A person
ordinarily skilled in the art could have easily conceived of replacing the structure in the Invention withthe structure in the Defendant’s Product.

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SCENE3: 6th Oral Argument - Rendering of Judgement Judgement Reason 6

Infringement under the Doctrine of Equivalents(Requirement 5)

Requirement 5
The amendment made by the Plaintiff was merely intended to clarify themeaning of “FRP thread member maintaining a shape of passing through themultiple through-holes”. The plaintiff had no intention to narrow the scope of theclaim.
Paragraph [0015] of the description does not describe a structure similar to thatof the Defendant’s Product, and as such it cannot be said that the structure of the
Defendant’s Product was intentionally excluded from the claim.

Accordingly, the Defendant’s Product fulfills Requirement 5 of theDoctrine of Equivalents.
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