(A.Katase, S.Sekine IPHC 2017.6.28)
Decision paper (interim translation)2017 (Mo)XX Case of petition for an order to produce a document (Theaction on the merits : 2017(Wa)XXXX Case of seeking injunction etc.
against patent infringement)
Decision
Petitioner:Counsel attorney:
Respondent:

Pony Technology Ltd.
Shigetoshi Hirano
Donkey Com Ltd.

Counsel attorney:

Shinichi Murata

Main text
1. Respondent shall produce documents stated in the attached Listof Documents.
2. All other petitions shall be dismissed.
Reasons
No.1
Gist and reasons of the petitions
Gist and reasons of the petitions are as stated in “Offer of Evidence”(copy). Gist and reasons of the rebuttal are as stated in “Counterargument
against Offer of Evidence” (copy).
No2

Outline of the caseIn the action on the merits relevant to this case, the petitioner
alleges that the DDX-2250 devices (hereinafter referred to as the"Products"), which the Respondent has manufactured and distributed, andwhich Yellow Telecommunications Ltd. (hereinafter referred to as "Yellow")
has installed to its mobile phone network and operated, are used exclusively
for the use of the process of the petitioner’s patented invention (hereinafterreferred to as the "Patented Invention") , therefore, constitutes aninfringement referred to in the Article 101, section (4) of the Patent Act.
In this case, the petitioner filed a petition for an order to produce
1documents based upon the Article 105, section (1) of the Patent Act, withregard to the documents possessed by the Respondent, which are a manual
for manufacturing and setting of the Products (hereinafter referred to as the"Donkey Manual") , a copy of the manual for Yellow to install, operate andmaintain the Products (hereinafter referred to as the "Yellow Manual"), ,and the source code of the control program after setting for the Products(hereinafter referred to as the "Source Code", and these Donkey Manual,
Yellow Manual and the Source Code shall be hereinafter referred to as the"Documents"), alleging these documents are necessary in order to prove theinfringement acts.
The Respondent argues that the trade secret of the Respondent is
described in the Documents, so the Respondent has “reasonable grounds”
to refuse the submission of the Documents as provided in the provisory
clause of Article 105, section (1) of the Patent Act, and also argues that
according to the observation conducted by the Respondent, it is clear that
Yellow has not worked the Patented Invention, so the Documents are notnecessary to be examined as evidence. Therefore, the Respondent requests
a dismissal order.
No.3
Court Opinion
1
The court finds the reasons to grant this request to the extent ofpages xx to yy of the Yellow Manual (hereinafter referred to as the "Yellow
Manual Portion") and finds no reason to grant all other requests. Thereasons for this decision are as follows.
2
Facts
According to the evidence already presented to the court and theresult of the in-camera process, the court has found the following facts.
(1) Contents of the Patented Invention, sales contract and others.
A.
Patented Invention is the invention of process which enables
stable communications to relieve air interface congestion by means of using
the function to transmit signals from a base station to a mobile phone inorder to indicate a suitable channel to be selected by a mobile phone when
air interface is congested (this function shall be hereinafter referred to as
the "Function"; and the signals as the "Signals").
B.
DDX-2250 device is equivalent to the abovementioned basestation. An assignee of DDX-2250 device can choose upon its installation2

whether to set a mode to use the Function or not depending on air interface
traffic situations in each country. If Yellow sets a mode to use the Function
at installation of the Products, the Products fall under “product to be used
exclusively for the use of the said process” as provided in Article 101, item(4) of the Patent Act. The court found that at least the DDX-2250 devices
installed in the country B are set to a mode to use the Function.
C.
The information described in the Documents are kept as secret by
the Respondent, therefore, the information in the Documents falls under“Trade Secret” according to Article 2, section (6) of the Unfair Competition
Prevention Act.
D.
The Respondent concluded a sales contract with Yellow to assign
the Products on X/X/2016, delivered the Products and handed over theYellow Manual to Yellow on the same day. Yellow agreed with theRespondent to manage the Yellow Manual and the Source Codeconfidentially and not to disclose its contents to others.
(2) The result of the in-camera processA.
The court adopted in-camera process for determining whether or
not there are “reasonable grounds” regarding the Documents possessed by
the Respondent which are determined to be necessary to be examined asevidence, as provided in the provisory clause of Article 105, section (1) of thePatent Act, and ordered the Respondent to present the Secret Documents tothe court.
B.
Upon consideration of the Documents, the court found it
necessary to disclose these documents to the Petitioner and hear its opinion
for deciding whether the abovementioned reasonable grounds exist or not.
The court informed the Respondent of its determination to disclose theDocuments to the attorney for the Petitioner, and confirmed the Respondent
whether to file a motion for a protective order regarding the Documents, ofwhich addressee is the attorney for the Petitioner.
C.
At the discussing session in the court with regard to theabovementioned protective order, the Petitioner and the Respondent agreed
that even if the Documents are submitted as evidence, parties excluding theattorney for the Petitioner would not file a request to inspect a case recordetc. concerning the Documents. Assuming the agreement, the Respondent
filed a motion for a protective order for the information described in theDocuments, of which addressee is the attorney for the Petitioner.
3D.
The court issued a protective order based upon Article 105-4 of thePatent Act, ruling that the attorney for the Petitioner shall neither use nor
disclose the information contained in the Documents, and disclosed theDocuments to the attorney for the Petitioner in order to hear its opinion.
E.
The court recognizes that the Yellow Manual Portion contains theinformation whether the Products are set to a mode to use the Function or
not as stated in the opinions of the attorney for the Petitioner (thisinformation shall be hereinafter referred to as the "Information"). For theSource Code, the court finds that it is technically difficult to identify thepart which describes the Information in it, although it is inferred to containthe Information. For the Donkey Manual, the court recognizes it as amanual common to all DDX-2250 devices, containing just usage instructions
etc. while being set to a mode to use the Function, and the Information is
not directly described in it.
3Determination of whether to issue an order to produce a document
or notTo issue an order to produce a document based upon Article 105,
section (1) of the Patent Act, it is needed to fulfill the requirements that
there is necessity to examine a document as evidence and the possessor has
no reasonable grounds to refuse the submission. The court will examine
these requirements as follows.
(1)
Necessity to examine a document as evidenceA.
The court shall determine the necessity for an order to produce adocument based upon Article 181, section (1) of the Code of Civil Procedure.
With regard to thus order to produce a document to prove the infringement
act in the patent litigation, there are not a few scenes where the necessity
for examination is high, such as when there is no other means to acquire theobject of proof as it is under the control of the opponent, or when there is no
trace of the invention of process left in the objects. On the contrary, this typeof litigation is often disputed between parties with competitive business
relations, and the subjects to be proven are directly related with trade
secrets. Therefore, a motion for an order to produce a document could beabused for the purpose of accessing information itself, or could be filed
without substantial evidence just to inquire information, both of which
would be a heavy burden for the opponent to respond to. To prevent these
abusive or inquiring motions, a petitioner who requests an order to produce4

a document is supposed to make prima facie showing to prove a reasonable
doubt for infringement act. However, considering that an order to produce adocument is a means itself for the party to gather evidence of infringement
act, who is burdened to prove it, it is not necessary to make prima facie
showing to prove infringement act itself, but is assumed to make prima facie
showing to prove a reasonable doubt for infringement act to the extent todispel a suspicion of abuse or inquiry purpose. The extent of prima facie
proof will be determined case-by-case considering various circumstancessuch as a necessity to examine a document and a degree of the necessity, adegree of the difficulty to prove the fact, a presence of alternative evidence
and other situations while proving and so on.
B.
Considering the case from the view point above, according to thefacts found in abovementioned 2(1)A and B, the Function enables stablecommunications in mobile phone network, DDX-2250 device is able to be set
to a mode to use the Function at its installation, and DDX-2250 devices are
set to a mode to use the Function at least in the country B currently.
These facts show there remains a doubt that the Products may be
set to a mode to use the Function similarly to the country B.
The court shall consider that there is a necessity to examine theDocuments as evidence to prove the infringement act (Article 181, Section(1)of the Code of Civil Procedure)because a reasonable doubt for theinfringement act is proved and there is no alternative evidence for it.
(2)
Reasonable ground to refuse the submission
A.
Whether or not there is a reasonable ground to refuse submission ofa document shall be determined in light of the balancing between
disadvantage of a document possessor by disclosing the document (thenecessity to protect trade secret) and disadvantage of a petitioner for thedocument not being submitted as evidence (the value as evidence) .
In this balancing, when the document clarifies that a respondent uses
structures different from patented invention, the necessity to protect trade
secret becomes relatively high, but when the document clarifies that arespondent uses structures within the technical scope of patented invention,
the necessity to protect trade secret becomes relatively low, therefore, thevalue as evidence which may prove infringement act shall be appraised inconsideration of necessity to protect trade secret. While determining the5necessity to protect trade secret, issuance of protective order (Article 105-4
and the following of the Patent Act), scope of subjects of the protective order,
a conclusion of non-disclosure agreement, scope of assenters of it, and its
effectiveness shall be taken into consideration in addition to content andnature of the trade secret and presumed disadvantage by disclosing thetrade secret.
B.
Considering the case from the view point above, the Yellow
Manual Portion is highly valuable as evidence as it contains the Informationaccording to the fact found in abovementioned 2(2)E. Therefore, thenecessity to protect trade secret shall be considered relatively low.
In addition, the presumed disadvantage of the Petitioner for
submitting the Yellow Manual Portion as evidence is extremely low because
a protective order of which addressee is the attorney for the Petitioner has
been issued, and there is no risk for such information to be disclosed toperson other than the attorney for the Petitioner according to theabovementioned 2(2)D.
.
Under these circumstances, the necessity to protect the trade secretcontained in the Yellow Manual Portion does not exceed its value asevidence.
On the contrary, according to the fact in abovementioned 2(2)E,concerning the Source Code, it is recognized to be technically difficult toidentify the part which describes the Information, although it is inferred tocontain the Information. Regarding the Donkey Manual, it is recognized tocontain just usage instructions etc. while being set to a mode to use theFunction, and the Information is not directly described in it. Therefore, thevalues of the Source Code and the Donkey Manual as evidence to prove
infringement act are considered to be low, and the necessity to protect thetrade secret contained in these documents becomes relatively high.
Thus, the court finds no reasonable ground for the Respondent torefuse the submission of the Yellow Manual Portion, so the court shall issue
an order limited for producing the Yellow Manual Portion as evidence toprove the infringement act (Article 223, Section(1) of the Code of Civil
Procedure), but dismiss all other requests.
C.
The Respondent argues that there is no necessity to examine theDocuments as it was observed that the Product did not transmit Signals to amobile phone from 2PM to 3PM on Y/Y/2017. However, such result only6verifies the Product did not transmit Signals for one hour at certain dateand time. Even if the Signals were not transmitted in the above hour, such
result does not prove the Signals are not to be transmitted in other time
when air interface is congested. Therefore, the result of the observation does
not affect the consideration of the court regarding the necessity to examine
the Yellow Manual Portion as direct evidence of the infringement act.
The Respondent also argues for having “reasonable grounds” torefuse the submission of the Documents as provided in the provisory clauseof Article 105, Section (1) of the Patent Act, because the trade secret of theRespondent is described in them. However, as abovementioned in B, thepresumed disadvantage for the Respondent is recognized to be extremely
low even when the Yellow Manual Portion is submitted as evidence because
the court has already issued a protective order for the information containedin the Documents of which addressee is the attorney for the Petitioner,
according to the fact found in abovementioned 2(2)D. The arguments of theRespondent are stated to lack its premises.
Therefore, the court shall deny the above arguments of theRespondent.
4. Conclusion
The court shall grant the request of the Petitioner to the extent toorder the Respondent to produce the Yellow Manual Portion of theDocuments, and dismiss all other request.
Tokyo District Court, Special Division for Mock Trial
Presiding Judge: Misao Shimizu
Judge: Motoyuki Nakashima
Judge: Sumiko Sekine

7Attachment
List of Documents
Pages xx to yy of a copy of the manual for Yellow
Telecommunications Ltd. to install, operate and maintain DDX-2250 devices

8