PatentDate

April 25, 2024

Court

RightCase

2023 (Gyo-Ke) 10002

Intellectual Property High
Court, First Division

number- A case in which the court rescinded the JPO's decision which was rendered in a trialfor patent invalidation relating to an invention titled "Light source unit and lighting
equipment" and which concluded that the request for the trial for patent invalidation
is groundless, holding that the JPO's decision contains an error that affects theconclusion in its determination of an inventive step, on the grounds that a part of thedifferences between the invention in question and the primary prior art found by theJPO cannot be regarded as differences, and that the configurations relating to theother differences found by the JPO could have been easily adopted by a person
ordinarily skilled in the art based on the primary prior art and well-known prior art
Case type: Rescission of Trial Decision to Maintain
Result: Granted
References: Article 29, paragraph (2) of the Patent Act
Related rights, etc.: Invalidation Trial No. 2021-800099, Patent No. 5492344
Summary of the Judgment
1. The Defendant divided a part of a patent application (Patent Application No. 2012225953) which it had filed on October 11, 2012, and filed it as a new patent application(Patent Application No. 2013-237182) for an invention titled "Light source unit andlighting equipment" on November 15, 2013, for which establishment of a patent right
was registered (Patent No. 5492344; the number of claims: seven; the Patent) on March7, 2014.
On December 3, 2021, the Plaintiff filed a request for a trial for patent invalidation(Invalidation Trial No. 2021-800099) with regard to the Patent, but on December 6,
2022, the Japan Patent Office (JPO) accepted a request for correction filed by theDefendant on March 22, 2022 to correct the claims and the statements in the descriptionof the Patent (the Correction), and rendered a decision to the effect that "the request for
the trial is groundless" (the JPO Decision).
2. In this case, the Plaintiff asserted the following grounds for rescission: Ground for
Rescission 1 (an error in the determination of novelty of Invention 5, which relied on
the invention in the sixth embodiment described in Exhibit Ko 1 as the primary priorart); Grounds for Rescission 2 and 3 (an error in the determination of an inventive stepof Invention 1, which relied on the invention in the sixth embodiment described in1

Exhibit Ko 1 as the primary prior art and applied matters relating to the first
embodiment or the fourth embodiment described in Exhibit Ko 1); Ground forRescission 4 (an error in the determination of an inventive step of Invention 1, which
relied on the invention in the sixth embodiment described in Exhibit Ko 2 as the primaryprior art and applied matters relating to the third embodiment described in Exhibit Ko2); Ground for Rescission 5 (an error in the determination of an inventive step ofInvention 5, which relied on the invention in the sixth embodiment described in Exhibit
Ko 2 as the primary prior art and applied matters relating to the third embodimentdescribed in Exhibit Ko 2); Ground for Rescission 6 (an error in the determination of
an inventive step of Invention 1, which relied on the invention in the third embodimentdescribed in Exhibit Ko 2 as the primary prior art and applied matters relating to thesixth embodiment described in Exhibit Ko 2); Ground for Rescission 7 (an error in thedetermination of an inventive step of Invention 5, which relied on the invention in thethird embodiment described in Exhibit Ko 2 as the primary prior art and applied mattersrelating to the sixth embodiment described in Exhibit Ko 2 or well-known prior art);
Ground for Rescission 8 (an error in the determination of an inventive step of Invention
1, which relied on the invention in the first embodiment described in Exhibit Ko 3 as
the primary prior art and applied well-known prior art); and Ground for Rescission 9(an error in the determination of an inventive step of Invention 5, which relied on theinvention in the first embodiment described in Exhibit Ko 3 as the primary prior art andapplied well-known prior art). However, the court determined as summarized below
with regard to Grounds for Rescission 8 and 9, and rescinded the JPO Decision.
(1) Regarding Ground for Rescission 8A. In the JPO Decision, the JPO compared Invention 1 and Exhibit Ko 3-1 Invention,and found that "the 'insulating plate 13' of the latter and the 'mounting member' of theformer are the same in that they are both 'members,'" but in its determination on
Difference 1-1-3 (1), the JPO found and determined as follows: "in Exhibit Ko 3-1
Invention, the 'insulating plate 13' is for mounting the substrate 10 on the lid 3, and themember for mounting the substrate 10 on the equipment body (the member having suchmounting function) is the 'lid 3.'" Therefore, the JPO assumed that Invention 1 excludes
a configuration in which a structure that contributes to mounting is interposed between
the "equipment body" and the "mounting member."
However, as mentioned in the finding of the gist of Invention 1, Invention 1 includes
a configuration in which a structure that contributes to mounting is interposed between
the "equipment body" and the "mounting member," and it cannot be construed toexclude such configuration.
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Based on the assumption above, Invention 1 does not exclude a mounting structurein which the "lid 3" is interposed between the "insulating plate 13" and the "mounting
base 1" as in Exhibit Ko 3-1 Invention, and also, as the substrate 10 on which LEDs 2
are arranged is placed at the "insulating plate 13" of Exhibit Ko 3-1 Invention, the LEDs
2 cannot be arranged on the "mounting base 1" without the presence of the "insulatingplate 13." In light of these factors, the "insulating plate 13" is found to correspond to a"member for mounting the LED substrate on the equipment body."
It follows that Difference 1-1-3 (1) cannot be regarded as a difference between
Invention 1 and Exhibit Ko 3-1 Invention.
B. Next, with regard to Difference 2-1-3 (1) for the cover member, in Invention 1, thecover member "has diffusivity," whereas in Exhibit Ko 3-1 Invention, the cover member
is "made of a transparent insulating material, such as acrylic resin or glass," but it isunclear whether it has diffusivity. When Difference 2-1-3 (1) is examined, it was wellknown art that the cover member of an LED lighting equipment has diffusivity, and aperson ordinarily skilled in the art could have easily adopted the configuration ofInvention 1 relating to Difference 2-1-3 (1) in Exhibit Ko 3-1 Invention by employing
such art as appropriate.
C. Summary
It follows that a person ordinarily skilled in the art is found to have been able toeasily make Invention 1 based on Exhibit Ko 3-1 Invention, and therefore it can be said
that the JPO Decision contains an error that affects the conclusion in its determinationof an inventive step.
(2) Regarding Ground for Rescission 9A. In the JPO Decision, the JPO found the following aspects as the respective
differences: as Difference 1-5-3 (5), "the aspect that, with regard to the device which
supplies lighting power to the abovementioned light source unit, such device is a 'powersource device' in Invention 5, whereas in Exhibit Ko 3-5 Invention, it is unclear whether
such device is a power source device"; as Difference 2-5-3 (5), "the aspect that, withregard to the member for mounting the LED substrate on the equipment body, suchmember is the 'mounting member' in Invention 5, whereas in Exhibit Ko 3-5 Invention,such member is the 'lid 3,' and the insulating plate 13 is a member for mounting thesubstrate 10 on this lid 3"; as Difference 3-5-3 (5), "the aspect that the cover member'has diffusivity' in Invention 5, whereas in Exhibit Ko 3-5 Invention, the cover member
is 'made of a transparent insulating material, such as acrylic resin or glass,' but it isunclear whether it has diffusivity"; and as Difference 4-5-3 (5), "the aspect that, withregard to the opening part of the housing recess, such part is formed 'by bending sheet3

metal' in Invention 5, whereas in Exhibit Ko 3-5 Invention, 'the mounting base 1 isformed of metal and is U-shaped in cross section'."B. First, Difference 2-5-3 (5) relating to the member for mounting the LED substrateon the equipment body in the JPO Decision cannot be regarded as a difference, as in (1)A. above.
In addition, with regard to Difference 1-5-3 (5) relating to the device which supplies
lighting power to the light source unit, Invention 5 merely specifies it as a "power
supply device," so Invention 5 only needs to have a device from which lighting poweris supplied to the light source unit, whereas the "electric component 11" in Exhibit Ko3-5 Invention is for lighting the LEDs 2, and therefore it is found to correspond to the"power source device" of Invention 5. Accordingly, Difference 1-5-3 (5) cannot be
regarded as a difference.
Moreover, with regard to Difference 4-5-3 (5) relating to the opening part of the
housing recess, as long as the "housing recess" is "formed to have an opening part," theproducts of the inventions do not vary regardless of how the housing recess wasprocessed. In addition, even if Difference 4-5-3 (5) is regarded as a prima faciedifference, as long as this difference does not cause any variation in the operations andeffects, etc. of Invention 5 and Exhibit Ko 3-5 Invention and the "products" of theseinventions do not vary, such difference is regarded not to be substantial.
Based on the above, the only difference between Invention 5 and Exhibit Ko 3-5
Invention would be Difference 3-5-3 (5) relating to the cover member, but due to thesame reason as in (1) B. above, a person ordinarily skilled in the art could have easily
adopted the configuration of Invention 5 relating to Difference 3-5-3 (5) in Exhibit Ko
3-5 Invention.
C. It follows that a person ordinarily skilled in the art is found to have been able toeasily make Invention 5 based on Exhibit Ko 3-5 Invention, and therefore it can be said
that the JPO Decision contains an error that affects the conclusion in its determinationof an inventive step.
(3) Conclusion on Grounds for Rescission 8 and 9Consequently, the JPO Decision contains errors in its determination of an inventivestep regarding Ground for Invalidation 3-1 and Ground for Invalidation 3-5, andtherefore Ground for Rescission 8 and Ground for Rescission 9 asserted by the Plaintiff
are well-grounded.

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