PatentDate

April 25, 2024

Court

RightCase

2022 (Gyo-Ke) 10057

number(Case 1)

Intellectual Property High
Court, First Division

2022 (Gyo-Ke) 10054(Case 2)
- A case in which the court rescinded a part of the decision rendered by the Japan
Patent Office (JPO) in a trial for patent invalidation relating to an invention titled"Lamp and lighting device," holding that a part of the differences between the present
invention and the primary prior art found by the JPO cannot be regarded as adifference, and it can be said that the JPO's decision, which denied the ease inconceiving of the present invention by relying on such difference, contained an errorthat affects the conclusion in its determination of an inventive step
Case type: Rescission of Trial Decision to Maintain
Result: Partially granted for Case 1 (partial rescission of the JPO's decision)
References: Article 29, paragraph (2) of the Patent Act
Related rights, etc.: Invalidation Trial No. 2018-800036, Patent No. 5658831
Summary of the Judgment
1. On December 5, 2014, Y (the Defendant in Case 1; the Plaintiff in Case 2) obtained
registration of establishment of a patent right (Patent No. 5658831; the number ofclaims: 17; the Patent) for an invention titled "Lamp and lighting device" for which theinternational filing date is March 5, 2013 (the priority date is April 25, 2012; the Priority
Date).
X (the Plaintiff in Case 1; the Defendant in Case 2) filed a request for a trial forpatent invalidation (Invalidation Trial No. 2018- 800036) with regard to the Patent onApril 6, 2018. On December 16, 2019, Y filed a request for correction to correct theclaims of the Patent, and on July 30, 2021, Y amended the written request for correction(the amended request for correction is referred to as the "Correction"). The contents ofthe Correction were to delete Claims 9 through 13 and to add Claims 18 through 23.
Based on the Correction, X amended the grounds for invalidation and added someevidence and applicable legal provisions. On May 10, 2022, the JPO accepted theCorrection, and rendered the following trial decision (the JPO Decision): "The patent
for the inventions relating to Claims 3, 5, 7, 17, 20, 22, and 23 of the Patent shall beinvalidated. The request for a trial regarding the inventions relating to Claims 1, 2, 4,6, 8, 14, 16, 18, 19, and 21 of the Patent is groundless."
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On June 10, 2022, Y filed a lawsuit of the present case (Case 2) seeking rescissionof the part of the JPO Decision which determined the patent for the inventions relating
to Claims 3, 5, 7, 17, 20, 22, and 23 to be invalid, and on June 16, 2022, X filed alawsuit of the present case (Case 1) seeking rescission of the part of the JPO Decision
which determined the request for a trial regarding the inventions relating to Claims 1,2, 4 , 14, 16, 18, 19, and 21 of the Patent to be groundless.
2. In the present case, the following grounds for rescission were asserted in Case 1:
Ground for Rescission 1 (the non-permission of amendment of grounds for invalidation
being given beyond the bounds of the JPO's discretionary power or through an abuse ofthat power);Ground for Rescission 2 (violation of the support requirement and violationof the enablement requirement); Ground for Rescission 3 (an error in the determinationof an inventive step regarding the invention of Claim 4 relying on Object of Observation
Ko 2 as the primary prior art); and Ground for Rescission 4 (an error in thedetermination of an inventive step regarding the inventions of Claims 1, 2, and 16
relying on Object of Observation Ko 4 as the primary prior art). In addition, thefollowing grounds for rescission were asserted in Case 2: Ground for Rescission 1 (anerror in the finding of the invention being publicly known to be worked); Ground forRescission 2 (an error in the determination of an inventive step regarding the inventionsof Claims 3, 5, 7, 22, and 23 relying on Object of Observation Ko 4 as the primary priorart); Ground for Rescission 3 (an error in the determination of an inventive step
regarding the invention of Claim 17 relying on Object of Observation Ko 4 as theprimary prior art); and Ground for Rescission 4 (an error in the determination of novelty
and an inventive step regarding the invention of Claim 20 relying on Object ofObservation Ko 7 as the primary prior art). In this judgment, the court partiallyrescinded the JPO's Decision regarding Ground for Rescission 3 in Case 1 bydetermining as summarized below, and determined that the other grounds for rescission
asserted by X and the grounds for rescission asserted by Y are all groundless.
(1) Regarding Ground for Rescission 3 in Case 1
In the JPO Decision, the JPO found that Constituent Feature 1-4H of Invention 4 is"construed to mean that the first wall and the second wall themselves regulate themovement of the substrate in the shorter side direction." However, given that, inInvention 4, Constituent Feature 1-4H is construed to specify an aspect in which themovement of the substrate in the shorter side direction is regulated by a pair of walls,
and that it is sufficient for the pair of walls to be involved in regulating the movementof the substrate in the shorter side direction, the abovementioned finding of the JPO iserroneous.
2In Object of Observation Ko 2 Invention, it is found that "said base has a pair of thefirst protrusion and the second protrusion, with a clip fitted between said first protrusionand said second protrusion, and said clip does not move in the shorter side direction,"as has been found by the JPO Decision, and the first protrusion and the secondprotrusion are configured to have grooves through which a transparent resin clip, which
bridges the LEDs and regulates the movement of the LED substrate in the vertical andhorizontal directions, is inserted. In light of these, in Object of Observation Ko 2, themovement of the LED substrate in the horizontal direction cannot be regulated without(the grooves of) the first protrusion and the second protrusion, and therefore themovement of the LED substrate of Object of Observation Ko 2 in the shorter sidedirection (the horizontal direction) is found to be regulated by the first protrusion andthe second protrusion through the clip. Thus, it can be said that the configuration
relating to a pair of the first protrusion and the second protrusion of Object ofObservation Ko 2 fulfills Constituent Feature 1-4H of Invention 4; hence, the JPO
Decision which found this to be Difference 4 is erroneous.
Y argues that the JPO Decision is justified in its understanding of the mattersspecifying the invention in Invention 4, which was interpreted by specifically taking
into consideration the statements in paragraph [0055], etc. of the present description.
However, in making determinations for finding the gist of the invention, it is not
permissible to limit the interpretation of the matters specifying the invention to anembodiment, and also in the embodiment, it can be said that a pair of wall parts areregulating the movement of the substrate in the shorter side direction through thereflective member 70. Therefore, the abovementioned argument of Y cannot be accepted.
(2) Thus, it can be said that the JPO Decision, which found Difference 4 and denied theease in conceiving of Invention 4 by relying on Difference 4, contained an error that
affects the conclusion in its determination of an inventive step.

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