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AIPPI Journal, March 2019

Report on the “Judicial Symposium on Intellectual Property/
TOKYO 2018” (Fisrt Day)
- Comparison on “Patent Validity in Patent Infringement
Lawsuit” based on Mock Trials conducted by Five Countries Akira KATASE*
Ken FURUSHO**Part 1 Introduction
When a patentee files a patent infringement lawsuit to demand compensation for the damage and to seek an injunction against the act of producing, thealleged infringer is to challenge whether
the alleged products fall within the technical scope of the patented invention andthe validity of the patent.
In Japan, there are no procedures
available for the court to invalidate apatent, but the judgement of the Supreme
Court rendered on the “Kilby” case (1998(O) 364, Judgement of the Third Petty
Bench of the Supreme Court of April 11,
2000, Minshu Vol. 54, No. 4, at 1368)
and the amendment of the Patent Act by
Act No. 120 of 2004 in response to thisjudgement (introduction of Article 104-3
of the Patent Act) have made it possible
for the court in charge of the patent infringement litigation (infringement court)
to limit a patentee’s exercise of patentright when the court finds that the said
patent should be invalidated. This judge* Judge, Intellectual Property High Court of Japan** Judge, Intellectual Property High Court of Japan

ment of the Supreme Court on the“Kilby” case instructed that the infringement court may make a judgement on
patent validity from the perspective ofprioritizing the principle of equity, ensuring one-time dispute resolution, and accelerating patent infringement procedure.
According to recent statistics, approximately 73% of patent rights claimed inpatent infringement litigations concluded
by final judgements, were challenged interms of their validity. 1
On the other hand, in Germany,
France, the U.K. and the U.S., major
measures available for alleged infringers
to challenge patent validity after the lapseof the period for raising an objection to
grant are as follows. 2
In consideration of these differencesin systems of respective countries, 3 on
the first day of the Judicial Symposiumon Intellectual Property / TOKYO 2018(2018 JSIP), the mock trial and panel discussion were held regarding how the
infringement courts of the five countries
make judgements on the validity of a

AIPPI Journal, March 2019patent in patent infringement litigation.
This report shows the results andtheir interpretations obtained from themock trials at the 2018 JSIP. 4 Please benoted that opinions in this report are personal views of the authors.

Part 2 Case of the Mock Trial
1.

Summary
Pony Corp. (“P”) holds a patent rightfor an invention relating to a piston compressor (“Patent Right” and “Patent”).
Donkey Corp. (“D”) started to produce and sell piston compressor Y(“Product Y”) and piston compressor X(“Product X”) successively after theregistration establishing the Patent Right.
Since then, Product X has become themain product of D 5.
P asserts that Products X and Y bothfall within the technical scope of the
Patented Invention.
However, D refuted [i] that ProductY does not fall within the technical scopeof the Patented Invention although Product X does fall within it, and also refuted[ii] that Patent should be invalidated because the Patented Invention lacks aninventive step (obviousness) based on theinvention pertaining to Patent Gazette34085 (Gazette 085, Main Cited Invention) and the invention pertaining toPatent Gazette 63165 (Gazette 165, Sub
Cited Invention).
P filed the infringement lawsuit
against D, in which P seeks an injunction
against the act of producing and selling
Products X and Y and a payment of damages.

75

2. Patented Invention(1) Claim No.1
A: A piston compressor,
B: which has rotary valves (6), hasrotary shafts (2) that are integrated
with said rotary valves (6) and has ashaft hole (5) that accommodates
said rotary valves (6) in a rotatablemanner,
C: which causes pistons (4) to makereciprocal motions through swash
plates (1) in accordance with therotation of said rotary shafts (2),
D: said shaft hole (5) has, on the innerperipheral surface, the inlets of suction passages (13) to intake refrigerant into compression chambers (3),
E: said rotary valves (6) have, on theouter peripheral surfaces, the outlets
of introduction passages (12) that intermittently communicate with theinlets of said suction passages (13) inaccordance with the rotation of said
rotary shafts (2),
F: the inner peripheral surface of said
shaft hole (5) directly supports theouter peripheral surfaces of said
rotary valves (6) and the clearance
between them is set as less than
20μm.
(2) Corrected Claim or Dependent
Claim
The claim can be corrected during
the litigation procedure. In the country inwhich claim correction is unrealistic inthis procedure, a dependent claim (Claim
No.2) can be set beforehand. While correcting the claim or setting the dependentclaim, each country is only allowed to
add the following underlined elements tothe abovementioned Element E.

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AIPPI Journal, March 2019

[Drawing of the Patented Invention]

dures became complex by using them;Inventors found that the clearance being
set as less than 20μm mitigates the expansion of the clearance drastically without
using rolling bearings.
Additionally, the “Drawing of the
Patented Invention” is shown as description of one of the embodiments. In all
drawings to describe embodiments, theouter peripheral surfaces of rotary valves(6) are being cylindrically-shaped except
for the outlets of introduction passages(12).

E’: said rotary valves (6) have, on theouter peripheral surfaces, the outlets
of introduction passages (12) that intermittently communicate with theinlets of said suction passages (13) inaccordance with the rotation of said
rotary shafts (2), the outer peripheral
surfaces of said rotary valves (6) arecylindrically-shaped, except for theoutlets of said introduction passages(12),(4) Prosecution History
Initial claim did not mention “theclearance between them is set as less than
20μm,” therefore, there was no limitationon the width of the clearance between the
inner peripheral surface of the shaft hole(5) and the outer peripheral surfaces of
the rotary valves (6).
In the application process, P received
a notice of reasons for refusal from the
Patent Office examiner, pointing that theinvention for which a patent is sought is
not explained in the description since thedescription only shows an invention inwhich clearance is being set as less than
20μm.
Therefore, P amended the scope ofthe claim, wherein P added “the clearance
between them is set as less than 20μm.” P
also submitted a written opinion (Written
Opinion). Written Opinion stated“Reason for refusal indicated by theexaminer should have been resolved
because of the amendment in which theelement ‘the clearance between them isset as less than 20μm’ was added. The tiltof a rotary shaft (2) could be prevented if
all clearance was being set as less than
20μm, between the inner peripheral surface of the shaft hole (5) and the outer(3) Description and Drawings
Paragraphs [0003] to [0005] of thedescription state as follows: In a rotary
valve compressor, the compression reaction force generates moment (M) which
may cause the tilt of the rotary shaft (2),and the tilt of the rotary shaft (2) makethe clearance broader between the innerperipheral surface of the shaft hole (5)and the outer peripheral surfaces of therotary valves (6), which causes problemof leakage of refrigerant; In the conventional rotary valve compressor, rolling
bearings were used to hold the rotary
shaft (2) firmly to mitigate the expansion,
but rolling bearings were obstacles forcost reduction of compressors because
they were expensive and assembly proce-

AIPPI Journal, March 2019

peripheral surfaces of the rotary valves
(6).”
3.

Products X and Y
In Product X, the outer peripheral
surface of the rotary valve is cylindrically-shaped.
[Overall Structure of D's Product][Shadowed part above in Product X][Shadowed part above in Product Y]

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In Product Y, the outer peripheral
surface of the rotary valve has concave
portions, which high-pressure gas is
introduced into, although most of it iscylindrically-shaped.
All other components fall within thetechnical scope of the Patented Invention.
4.

Main Cited Invention Described in
Gazette 085
Apart from the Patented Invention (arotary valve compressor), the Main Cited
Invention corresponds to a reed valve
compressor. Therefore, the Patented
Invention and the Main Cited Invention
have a difference derived from the factthat the Patented Invention is a rotary
valve compressor and the Main Cited
Invention is a reed valve compressor.
However, the Main Cited Invention has
the rest of the structures of the Patented
Invention. In one embodiment, the outer
peripheral surface of the rotary shaft (2)has a concave portion (8).
The description of Gazette 085 contains the following statements for the purpose of resolving the same problem asthat of the Patented Invention: The invention described in Gazette 085 adopts asystem, in which a concave portion (8) isformed on the outer peripheral surface ofthe rotary shaft (2) and high-pressure gas
is introduced into the concave portion (8)(paragraph [0007]); In the invention, themoment (M), which is generated on therotary shaft (2), is offset by the opposite
force (F) applied to the rotary shaft (2) by
the high-pressure gas, and therefore, therotary shaft (2) is not firmly pressedagainst the shaft hole (5) without using
rolling bearings (paragraph [0008]),
which results in mitigation of the expansion of the clearance; It is preferable thatthe width of the clearance is adjusted, for78

example, being less than 20μm, between
the inner peripheral surface of the shaft
hole (5) and the outer peripheral surfacesof the rotary shaft (2) (paragraph [0058]);
For example, as disclosed in Patent
Gazette 63165 (Gazette 165), in acompressor in which rotary valves areprovided on the parts corresponding to
the rotary shaft, this invention can beapplied to these rotary valves (paragraph[0049]).
5.

Sub Cited Invention Described in
Gazette 165
Although the Sub Cited Invention
uses rolling bearings (9), it corresponds
to a rotary valve compressor as with the
Patented Invention. Therefore, the Sub
Cited Invention has all structures pertaining to the difference between the Patented
Invention and the Main Cited Invention.
In one embodiment, the outer peripheral
surfaces of rotary valves (6) are cylindrically-shaped, and the inner peripheral
surface of a shaft hole (5) supports theouter peripheral surface of rotary shaft (2)through rolling bearings (9).

AIPPI Journal, March 2019

Part 3 Results of the Mock Trial
The results of the mock trial are as
follows. The conclusions are almost thesame, but it is interesting that the processes leading to the conclusions differ.
The mock trial by the five countries isoutlined and explained below, while taking into consideration opinions presented
in panel discussions etc.. 6
It should be noted that the mock trial
and the following explanations are basedon the case and only show part of thepractices in respective countries.

1. Japan(1) Mock Trial 7(A) The Second Date for Oral Arguments 8 - Suspension of Court Proceedings In the Japanese mock trial, the defendant first requested the suspension of
the court proceedings (JA 168(2)), alleging that the defendant has filed a patent
invalidation trial with the same content as
the defense of invalidity. However, theplaintiff offered opposition on the

AIPPI Journal, March 2019

grounds that the suspension is against arequirement for speedy trials and that the
specialized division of courts has jurisdiction over patent case, and accordingly
has expertise comparable to that of theJapan Patent Office (JPO). The court
itself presented its opinion that court proceedings have seldom been suspended inpractice, and that the court has sufficientexpert knowledge from full-time judicial
research officials and part-time technicaladvisers and is fully capable of making a
judgement on patent validity. The court
also stated that consistent judgements on
the invalidation trial and the defense ofinvalidity is expected to be resolved by
the IP High Court. In the end, the defendant agreed on the continuation of thecourt proceedings. Therefore, the court
decided to continue the court proceedings
without suspension.
(B) The Fifth Date for Oral Arguments Explanatory Session On the fifth date for oral arguments,
an explanatory session was held without
the involvement of technical advisers.
Both parties made presentations by dividing the themes, namely, [i] whether Product Y satisfies Element F, [ii] whether the
defense of invalidity on the grounds ofthe lack of an inventive step based on
Gazette 085 and Gazette 165 stands, and[iii] whether the re-defense of claim
correction pertaining to Product X 9
stands. After the presentations, judges
and a judicial research official actively
exchanged questions and answers.
(C) The Sixth Date for Oral Arguments Interlocutory Judgement Generally, patent infringement litigation adopts the two-phase proceedings
system, under which the issue of infringe-

79

ment (the claim satisfaction issue, thepatent validity issue, and other defense)
and the issue of damage are examined
separately. After having the parties present their assertions and evidence sufficiently on the issue of infringement, thecourt presents a conviction thereon. If thecourt is convinced of the infringement, it
goes on to the proceedings on the issue ofdamage and at the same time, confirms
intentions of the parties as to whether
they seek a settlement. However, in themock trial, the defendant demanded an
opportunity to present additional assertions and evidence on the issue of
infringement as necessary even after the
court’s presentation of its conviction,
while the plaintiff sought an interlocutory
judgement. Therefore, the court rendered
the interlocutory judgement and explained the summary of the grounds
therefor. 10
Regarding [i] whether Product Y
satisfies Element F, the court found that“the clearance” of Element F does notnecessarily mean all the clearance because of the statement in the scope ofclaims (the wording of Element F is “theclearance,” not “all the clearance”) andthe statement in the description (the tilt of
the rotary shaft can be prevented even if
there are outlets of introduction passages
on the outer peripheral surfaces of therotary valves). Furthermore, the court
found that the Written Opinion, from its
context, shall not be regarded as intentionally excluding configurations otherthan “those where all the clearance between the inner peripheral surface of the
shaft hole and the outer peripheral surfaces of the rotary valves is less than
20μm.” As a concave portion on the outer
peripheral surfaces of the rotary valves of
Product Y has only one opening of the80same size as the outlets of the introduction passages on the opposite side ofthose outlets, it can easily be understoodby a person skilled in the art that thesame effect as the Patented Invention, i.e.,
to prevent the tilt of the rotary shaft, canbe obtained. In conclusion, the court
determined that Product Y satisfies
Element F.
Next, regarding [ii] whether the defense of invalidity on the grounds of thelack of an inventive step stands, the court
determined that the defense of invalidity
stands by ruling that Gazette 085, which
describes the Main Cited Invention,clearly indicates Gazette 165, which
describes the Sub Cited Invention, andstates that a concave portion can be provided on the outer peripheral surfaces ofrotary valves of a rotary valve compressor, and therefore that motivation can befound for applying the rotary valve compressor of the Sub Cited Invention insteadof a reed valve compressor of the Main
Cited Invention.
Additionally, regarding [iii] whether
the re-defense of claim correction
pertaining to Product X stands, the court
found that the claim correction (“Correction”) created a new difference “the outer
peripheral surfaces of the rotary valves
are cylindrically-shaped except for theoutlets of the introduction passages in the
Corrected Invention, while there is a concave portion on the outer peripheral
surface of the rotary shaft in the Main
Cited Invention”. The abovementioned
statement in Gazette 085 does not suggest
the application of the rotary valves without a concave portion of the Sub Cited
Invention instead of the rotary shaft witha concave portion of the Main Cited
Invention and no motivation can otherwise be found for applying the Sub Cited

AIPPI Journal, March 2019

Invention to the Main Cited Invention.
Accordingly, the court determined that
the Correction can resolve the grounds
for invalidation. Furthermore, the court
found that the Correction was requested
in a legitimate manner and that the Product X falls within the technical scope ofthe corrected claim, and concluded thatthe re-defense of claim correction
pertaining to Product X stands.
As outlined above, the court determined that Product Y satisfies Element F
and falls within the technical scope of the
Patented Invention, but that the Patentshould be invalidated by a patent invalidation trial and re-defense of correction
has not been asserted. In conclusion, thecourt ruled that Product Y does not
infringe the Patent Right. On the other
hand, regarding Product X, the court
found that there is no dispute between theparties that it falls within the technicalscope of the Patented Invention, and that
the Patent should be invalidated by apatent invalidation trial but re-defense ofcorrection stands. The court concluded
that Product X infringes the Patent Rightand decided to go on to the proceedingson the issue of damage.
(2) Explanations(A) Judgement on Patent Invalidity by
the Court
There are two approaches to challenge patent validity in Japan; [i] to filean invalidation trial before the JPO (JA123) and [ii] to assert a defense of patent
invalidity before the infringement court(JA 104-3). Alleged infringer often uses
both when infringement lawsuit is filed.
A system to examine the validity of apatent both before the infringement court
and before the JPO is called a doubletrack system. Invalidation trials may be

AIPPI Journal, March 2019

filed without limit unless on the basis of
the same facts and evidence (JA 167),
which has caused various problems suchas that patentees have to win both in theinvalidation trial and in the infringement
lawsuit, and that judgements may differ
between the infringement court and the
JPO.
The amendment of the Patent Act by
Act No. 63 of 2011 newly established
Article 104-4, which provides that evenwhen a JPO ruling that the patent is to beinvalidated has become final and binding
after an infringement court judgement
becomes final and binding, the patent
invalidity is not permitted to be asserted
in a retrial against the final judgement of
the infringement lawsuit. Furthermore,
the IP High Court has jurisdiction bothover revocation lawsuits against the JPO
trial decisions and appellate cases of infringement litigation (JA 178(1); Code ofCivil Procedure of Japan 6(3)), and it is81

expected that the same panel at the IP
High Court would make consistent judgements as long as it is possible. In addition
to that, practical efforts have been madeby petitioners to assert same grounds ofinvalidation and present same evidence
for an invalidation trial and infringement
lawsuit. It can be said that the disadvantage of the double-track system has
thus been removed considerably.
(B) Suspension of Court Proceedings
Art. 168 para. (2) of the Patent Act
provides that the infringement court may
suspend court proceedings, if it finds
necessary, until the JPO decision on theinvalidation trial becomes final and binding. Therefore, before the rendering of
the judgement of the Supreme Court on
the “Kilby” case, the infringement court
controlled the litigation in some cases bysuspending court proceedings and waiting
for the results of the JPO invalidation tri-

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als. 11 However, it took a certain amountof time until JPO decisions became final
and binding, and suspension of court proceedings resulted in prolonging patent
infringement litigation. The judgement of
the Supreme Court rendered on the“Kilby” case and newly established Article 104-3 of the Patent Act have made it
possible for the infringement court to reject a patentee’s claim when the patent
is found to be invalidated. Therefore,
suspension of court proceedings has been
seldom used in practice since then.12(C) Claim Construction
The technical scope of a patented invention must be determined based upon
the statements in the scope of claims attached to the application (JA 70(1)). The
primary reference material for claim construction is the statement in the scope ofclaims, and terms used therein are to beinterpreted in a general sense understoodby persons skilled in the art unless otherwise defined in the description.
The meanings of terms used in thescope of claims are to be interpreted inconsideration of the statements in the description and drawings attached to theapplication (JA 70(2)). When a term used
therein could be interpreted in several
ways, its exact meaning should be determined in consideration of the detailed
explanation of the invention contained in
the description.
Furthermore, when a patentee clearly
admitted that the relevant configuration
does not fall within the technical scope of
the patented invention, for example apatentee intentionally excluded a specificconfiguration from the scope of claims in
the process of submitting a written opinion against the reason for refusal, anassertion which contradicts to these made

AIPPI Journal, March 2019by the patentee in the infringement lawsuit may be dismissed under the doctrineof estoppel.
(D) Method to Determine an Inventive
Step
According to 2016 (Gyo-Ke) 10182
and 10184, Judgement of the Special
Division of the IP High Court of April 13,
2018 (website of the IP High Court ofJapan), whether an inventive step (JA29(2)) is found should be determined byfirst determining the patented invention
to be sought based on the scope of claims,
then comparing it with a cited invention(JA 29(1)) to find common features anddifferences, and if there is any difference,by making a judgement whether a person
skilled in the art could have easily conceived of the invention in question having
said differences based on the technicalstandards as of the time of filing theapplication or priority date.
Regarding whether the patented
invention could have been easily conceived of by applying a sub cited invention described in a publication (JA29(1)(iii)) to the main cited invention, ajudgement should be made [i] by examining whether there is any motivation to
apply the sub cited invention to the maincited invention, which reaches thepatented invention, and [ii] in consideration of the existence or non-existence ofany factors inhibiting the application or
any unpredictable significant effects.
The existence or non-existence ofany motivation mentioned in [i] above is
to be judged by comprehensively taking
into account suggestions contained in themain cited invention or the sub citedinvention, the relevance of technicalfields of those inventions and commonal-

AIPPI Journal, March 2019ity in problems, actions and functions, etc.
between the two inventions.
(E) Re-defense of Claim Correction
Against a defense of patent invalidity
based on Article 104-3 of the Patent Act,a patentee can assert a re-defense ofclaim correction on the grounds that the
grounds for invalidation asserted in the
defense of patent invalidity are resolvedby the correction. 13
It was a common understanding on apractical level that a re-defense of claim
correction needs to fulfill the requirements that [i] (a trial for) correction has
been filed in a legitimate manner before
the JPO, [ii] the ground for invalidation is
resolved by the correction and [iii] thealleged product falls within the scope ofthe corrected patent claim. 14 The reason
why [i] filing (a trial for) correction
before the JPO is required whereas arequest for invalidation trial before the
JPO is not required for asserting adefense of patent invalidity is that it is not
appropriate to permit the exercise ofpatent right under an unstable and uncertain situation from the perspective of
finalizing the content of the correction. 15
However, after the amendment of the
Patent Act by Act No. 63 of 2011 which
newly provides for the period limitation
for filing (a trial for) correction before the
JPO, it becomes difficult to require a filing (a trial for) correction in all cases
before the JPO. 16 Regarding the Sheet
Cutter Case (Note 13), where it was
legally impossible to file (a trial for)correction before the JPO to resolve thegrounds for invalidation asserted in the
defense of patent invalidity, the Supreme
Court ruled that a filing (a trial for)correction before the JPO is not requiredin order to assert a re-defense of claim

83

correction under the relevant circumstances. However, what circumstances
make it unnecessary to file (a trial for)correction before the JPO and whether
any alternative requirements are to be
imposed in addition to the presentation of
the corrected claim in such cases are left
to be discussed later.
(F) Introduction of Expert Knowledge Judicial Research Officials and Technical Advisers
Judicial research officials consistingof former JPO examiners and patent
attorneys are deployed as full-time court
officials to the IP High Court and the IP
Right Divisions of the Tokyo and Osaka
District Courts that handle patent infringement lawsuits (Code of Civil
Procedure of Japan 92-8).
In some cases of patent infringement
lawsuits, explanatory sessions are held on
the final date for the preparatory proceedings or oral arguments on the infringement issue. At an explanatory session,both parties make presentations within an
assigned time of around 30 to 60 minutes
concerning the points at issue for which
the infringement court requested explanations, by explaining technical matterssuch as the details of the invention, priorarts, and the common technical knowledge at the time of filing the application,
and asserting the correspondence between
the patented invention and alleged
product.
An explanatory session is generally
attended by around three technical advisors (Code of Civil Procedure of Japan92-2), who are selected from among professors, researchers of public organizations and private companies, and patent
attorneys, etc. engaging in research on
cutting-edge science and technology,

84

after hearing opinions of the parties.
Through questions and answers exchanged between attending technicaladvisors and the parties following theparties’ presentations, the court obtains
expert knowledge.
2. Germany(1) Mock Trial 17(A) Preparatory Proceedings
In patent infringement lawsuit inGermany, preparatory proceedings areundertaken in writing ahead of oral arguments. As a premise, in the preparatory
proceedings, which were omitted in themock trial, whether Product Y satisfies
Element F was challenged and the defendant brought an action for declarationof nullity of the Patent before the Federal
Patent Court (DE 81) and requested thesuspension of the court proceedings(Code of Civil Procedure of Germany
148).
(B) Date for Oral Arguments
Oral arguments were held in theGerman mock trial. At the beginning, thejudge presented a provisional conviction
on the patent infringement issue in response to the preparatory procedures inwriting. Specifically, the judge first statedthat the issue is how to interpret themeaning of the term “directly support” inElement F in relation to “the clearance.”
Then, the judge pointed out that it is hard

AIPPI Journal, March 2019

to consider that the Patented Invention
excludes the rotary shaft (2) with a concave portion based on the statement in thedescription and that there is the possibility that the Patented Invention may beinvalidated. The judge encouraged theparties to discuss these points.
Regarding the point of whether Product Y satisfies Element F, the plaintiff
asserted that the rotary shaft (2) can bestabilized only with a small clearance lessthan 20μm and that Product Y also has
the same function, while the defendant
asserted that the Patented Invention literally prescribes that the clearance is lessthan 20μm. In response to the judge’s request for discussing the suspension of thecourt proceedings, the defendant asserted
that the Patented Invention lacks an inventive step based on the invention
described in Gazette 085.
The judge questioned the validity of
the Patent and asked the plaintiff if theplaintiff agreed with the suspension of thecourt proceedings. The plaintiff sought ajudgement by the infringement court. The
plaintiff highlighted the difference infunctions of the Main Cited Invention and
the Sub Cited Invention and asserted thatgrounds for invalidation based on the lackof an inventive step are not applicable to
the Patent. However, the judge presented
a conviction that it is obvious that
Gazette 085 contains the relevant suggestion.

AIPPI Journal, March 2019

Accordingly, the plaintiff stated that
it would be important to halt the sale, etc.
of Product X and expressed the limitationof the scope of claims in order to avoid
the grounds for invalidation. The defendant also asserted the invalidity of thepatent related to the Corrected Invention
and demanded an opportunity to present
further objections by alleging that theplaintiff’s counter-defense of claim correction on the date for oral arguments
was so surprising. On the other hand, theplaintiff asked for a speedy judgement as
the patent is a time-limited monopoly.
(C) Judgement
The judge rendered a judgement to
the effect that Product X infringes the
Patent Right and Product Y does not. The
judge found that Product Y does not fallwithin the scope of claims as a result of acounter-defense of claim correction, anddid not make a judgement on theinfringement of the original claim. In themeantime, the judge found no need tosuspend the court proceedings withregard to Product X. As grounds therefor,the judge pointed out that the court
proceedings may be suspended only
when the Federal Patent Court is
expected to revoke the Patent, and that
the Main Cited Invention adopts theconcave portion (8) in the rotary shaft (2),so making the peripheral surface of therotary shaft (2) cylindrically-shaped
contradicts this and no motivation can befound therefor, due to which sufficient
probability for revocation cannot befound. Concrete calculation of theamount of damage was left for thefollowing procedures.

85(2) Explanations(A) Judgement on Patent Invalidity by
the Court
In Germany, Bifurcation system isadopted. Patent validity is judged not by
the Regional Court (infringement court)
but by the Federal Patent Court. However,in a case where the defendant brings anaction for declaration of nullity before theFederal Patent Court and then demands
the suspension of the court proceedings,
the infringement court examines thevalidity of the patent to the extent ofdetermining whether or not to suspend
the court proceedings before making a
final judgement. The infringement court
conducts such examination when having
been convinced that the alleged productfalls within the technical scope of theclaim. When the infringement court has
not become convinced about that, theplaintiff’s filing is dismissed without
examination on patent invalidity.
What should be proved in suchexamination is the forecast of the nullity
action, not the validity of the patent itself.
The defendant is required to prove a highprobability that the patent nullity action
will be accepted. It is preferable to assert
the invalidity based on new prior art
which leads to the lack of novelty of thepatent. This is [i] because if the suspension of infringement court proceedings
causes a delay in judgement by one to
two years, this may result in denying thepatentee’s time-limited monopoly and [ii]because the validity of the patent has
already been approved by the authorized
agency (the German Patent Office or theEuropean Patent Office).
This examination of the patent validity by the infringement court will also
expeditiously prevent the patentee frominterpreting the patent claim broadly

86

when asserting the infringement and narrowly when countering the defense ofinvalidity.
(B) Preparatory Proceedings in Writing
and Oral Arguments
In patent infringement litigation inGermany, documents are exchanged prior
to the date for oral arguments andpreparations are made thoroughly (Front
loaded proceedings). The court decides
the deadline for submitting those documents and assertions made thereafter may
be rejected. New assertions before thesecond instance are accepted only when it
is reasonably found that they could not bemade in the first instance.
After the preparatory proceedings inwriting, one to three-hour (main) oral
arguments are held. In oral arguments,
the judge first presents a provisional conviction and narrows down points at issue,
and then oral arguments among the parties are held. Oral arguments are held
intensively and are seldom held again by
newly designating a date to give the parties time to prepare.
(C) Claim Construction
In Germany, claim construction isbased on the idea of function-oriented
design, that is a functional approach toseek how each element contributes for theembodying of the invention on the premise of the statement in the description. In
the mock trial as well, Element F wasinterpreted based on the statement in thedescription from the standpoint of how tostabilize the rotary shaft (2).
(D) Counter-defense of Claim Correction
In Germany, demarcation is clear
between the infringement court and theFederal Patent Court. Therefore, counter-

AIPPI Journal, March 2019

defense of claim correction is considered
to be an assertion to limit the scope of thepatent, instead of urging a patentee tocorrect the claim itself. A patentee canassert such counter-defense until theconclusion of oral arguments. In themock trial, counter-defense of claim
correction was asserted on the date fororal arguments, but it is generally done
during the preparatory stage. When it islikely to take a long time to examine therequirements of correction, the satisfaction of the corrected claim and the validity of the patent related to the corrected
invention, a counter-defense of claim correction may be dismissed as it delays thecourt procedures.
(E) Introduction of Expert Knowledge
Judges obtain technical knowledge
required for the case based on documents
submitted by the parties. Therefore, theparties need to prepare documents explaining required technical knowledge inan easy-to-understand manner. When
judges find such explanations insufficient,
they may appoint experts ex officio.
(F) Discrepancy in Judgements on the
Patent Validity between the Infringement Court and the Federal Patent
Court
The Federal Patent Court interprets
patent claims independently from theinfringement court, and there are cases
where a judgement made by the Federal
Patent Court on the patent invalidity differs from a judgement made by the
infringement court concerning the forecast of the nullity action upon deciding
whether or not to suspend the court proceedings.
In a case where the Federal Patent
Court has decided to invalidate a patent

AIPPI Journal, March 2019

while infringement court proceedings isin progress and that ruling becomes final
and binding, the infringement litigation is
dismissed. Even before the ruling becomes final and binding, the litigation
proceedings are suspended in practice.
There may be a case where the infringement court considers that theFederal Patent Court would find thevalidity of the patent in nullity action andhas rendered a judgement to order injunction, etc. without suspending the proceedings, but the Federal Patent Court later
determines that the patent is invalid.
However, such a case is considered to be
rare. To enforce the judgement to orderinjunction, etc. before it becomes final
and binding, the patentee needs to provide a bank security in an amount set by
the court to secure the defendant. If theenforcement of the judgement is found to
be unjustified, the patentee is to bear that
responsibility. Furthermore, the infringement court can also suspend the enforcement in respect to a written indication ofpatent invalidity which is provided before
the oral hearing in the nullity matter by
the Federal Patent Court. Even if a
judgement of patent infringement litigation has become final and biding, thealleged infringer may file a request for
retrial after declaration of nullity by the
Patent Court, but such a case is rare.
3. France(1) Mock Trial 18(A) Preparatory Proceedings
In patent infringement lawsuit inFrance, pleadings are exchanged in aprocedure prior to the oral hearing.
Assertions in the following oral hearing
are limited to the extent asserted in thepleadings. In the mock trial, at the beginning, the plaintiff briefly explained the87

assertions and procedures made by theparties prior to the oral hearing. Prior tothe oral hearing, the plaintiff asserted theinfringement of the Patent Right by Products X and Y and sought injunction andcompensation of damage, while thedefendant argued that Product Y is out of
the scope of claims and asserted that the
Patented Invention lacks an inventive
step and the Patent should be invalidated.
Furthermore, the defendant filed a counterclaim for nullification. In response, theplaintiff took a procedure to limit theclaims before the French Patent Office,and asserted that Product Y still falls
within the scope of limited claims, while
the defendant argued that Product Y is
outside the scope of limited claims andmaintained the assertion of the patent
invalidity.
(B) Oral Hearing
An oral hearing was held in the mocktrial. In the oral hearing, the parties firstpresented assertions and objections concerning the validity of the Corrected
Patent. The defendant gave a demonstration using a model highlighting the commonality between a rotary valve and areed valve and asserted that the invention
described in Gazette 085 prevents the tilt
by diminishing the clearance as well as
using concave portion (8) and that arotary valve whose outer peripheral surface is cylindrically-shaped had beenwell-known. Against this, the plaintiff
argued that the invention described in
Gazette 085 is a reed valve compressor
and is not the closest prior art. The plaintiff also argued as follows: in the invention described in Gazette 165, the outer
peripheral surface is cylindrically-shapedwith no concave portions; in the invention described in Gazette 085, persons

88skilled in the art do not know whether the
concave portion (8) can be removed or
not because it is filled with gas; therefore,
they cannot apply the invention describedin Gazette 085 to the invention describedin Gazette 165.
Following this, with regard to thepoint of whether Product Y falls within
the technical scope of the Corrected
Invention, the plaintiff asserted that concerning Element F, it does not prescribe
as “all clearance” and concerning
Element E’, the concave portion in Product Y is smaller than the concave portion(8) described in Gazette 085 and ProductY has a technical effect to prevent the tiltof the rotary shaft with a very small clearance, and that therefore Product Y falls
within the scope of corrected claims. The
defendant argued that it is not permissible
for the plaintiff to emphasize the significance of the clearance in discussing theclaim satisfaction issue and to discount it
in discussing the invalidation issue(Angora cat phenomenon), and asserted
in consideration of the prosecution history that it is evident that the clearance at
the concave portion in Product Y is wider
than 20μm.
(C) Judgement
The judge first pointed out that persons skilled in the art would not consider
the cited invention described in Gazette
085 as the closest prior art, and thenAIPPI Journal, March 2019

found that it is not evident that persons
skilled in the art who regard the cited invention described in Gazette 165 as thestarting point would apply the technology
described in Gazette 085 to the invention
in Gazette 165 and therefore that theCorrected Invention has an inventive stepand the Patent is valid.
The judge found that there are nodisputes between the parties regarding thefact that Product X falls within the technical scope of corrected claims. As thegrounds to find that Product Y does not
fall within the technical scope of corrected claims, the judge mentioned [i]that the “clearance” in Element F is construed to mean “all clearance” in consideration of the prosecution history, but
Product Y that has the concave portions
does not satisfy this, and [ii] that Element
E’ prescribes that the rotary valves arecylindrically-shaped, but Product Y thathas the concave portions does not satisfy
this.
(2) Explanations(A) Judgement on Patent Invalidity by
the Court
The French Patent Office examines
the novelty requirement and, other thanthat, it examines requirements for formality etc., then registers establishment of apatent right (FR L612-12). When theinvention lacks an inventive step, theAIPPI Journal, March 2019patent is revoked by a judgement of thecourt (FR L613-25).
(B) Order of Judgements on Claim Satisfaction and Patent Invalidity
In patent Infringement lawsuit inFrance, the validity of the patent due tolack of an inventive step is always examined first and then the examination on
claim satisfaction is made as far as thealleged infringer files a counterclaim fornullification, This order is not required bylaw but is based on the idea that the scopeof claims should be evaluated first in consideration of prior arts and then the issue
on claim satisfaction should be examined.
(C) Method to Determine an Inventive
Step
In the French mock trial, it was questioned which of the multiple cited inventions is the prior art closest to the
Patented Invention. This is for evaluating
an inventive step through determining theobjective problem resolved by the
Patented Invention. Judges may select theclosest prior art at their discretion without
being restricted by the parties’ assertions.
(D) Procedures of Claim Correction
When the invalidity of a patent is asserted during patent infringement lawsuit,the patentee can practically avoid thegrounds for invalidation by filing arequest to limit the claims before theFrench Patent Office or the European
Patent Office. In a case where a request
for a claim limitation is filed before theFrench Patent Office, around one to threemonths are required for the procedures,and the infringement court extends thelitigation procedures accordingly. It istheoretically possible to maintain theoriginal claims and to conditionally limit89

the claims. However, French judges prefer deciding on the infringement issue
based on a patent right that is actuallyvalid, and patentees are generally requested by judges to limit the claims
before the Patent Office. After a judgement in the first instance determines theinvalidity of a patent, the patentee may
also file a request for a claim limitation
before the Patent Office even if thesecond instance procedures are initiated.
4. The U.K.
(1) Mock Trial 19(A) Procedures prior to Trial
In patent infringement lawsuit in UK,
pleadings, a case management conference,and disclosure, etc. are conducted prior toa trial. During these procedures, whichwere omitted in the mock trial, the claim
satisfaction by Product Y was disputed,
and the defendant asserted that the Patentis invalid and filed a counterclaim forrevocation of the Patent. In response, theplaintiff put forward a corrected claim asa fall-back. However, the defendant challenged whether Product Y satisfies thecorrected claims and argued the validityof the patent for the Corrected Invention.
Whether Product X falls within the technical scope of the Patented Invention and
the Corrected Invention was not disputed.
(B) Trial
In the mock trial, regarding the lackof an inventive step in the Patented
Invention and the Corrected Invention, an
expert report by Dr. Nag was submitted
and he was examined as an expert witness. In particular, a counter examinationby the plaintiff was conducted, questioning the eligibility of Dr. Nag as an expert
witness, whether a person skilled in theart can understand the significance of the90clearance between the shaft hole (5) andthe rotary shaft (2) from Gazette 085,
whether a person skilled in the art canunderstand its functions separate from theconcave portion (8), and the like.
Then, the final arguments were held.
The defendant asserted that Product Y
does not satisfy Element F nor Element
E’ based on normal interpretation as well
as from the perspective of the threerequirements of the doctrine of equivalents indicated in the judgement of theSupreme Court on the Actavis case
(Actavis UK Limited and others v. Eli
Lilly and Company, [2017] UKSC48),
and also in consideration of the prosecution history. The defendant further
asserted that the Patented Invention and
the Corrected Invention both lack aninventive step as testified by Dr. Nag.
Against this, the plaintiff made the final
arguments on the validity of the patent inparticular, asserting that the testimony of
Dr. Nag was based on hindsight, that the
Patented Invention has an inventive stepas the statement of paragraph [0049] inGazette 085 is only a general statement,
and that the Corrected Invention has aninventive step as the concave portion (8)is significant in the invention described in
Gazette 085 while the clearance stated inparagraph [0058] is merely an addition.

AIPPI Journal, March 2019

(C) Judgement
Regarding the point of whether Product Y satisfies the claims of the Patented
Invention, the judge found as follows: in
Product Y, high-pressure gas is introduced into the concave portion and theinner peripheral surface of the shaft holedoes not contact the outer peripheral surfaces of the rotary valves; and, based on
normal interpretation of the claims, in
Product Y, wherein the inner peripheral
surface of the shaft hole does not contact
the outer peripheral surfaces of the rotary
valves, it cannot be said that the former
directly supports the latter. Accordingly,
the judge concluded that Product Y does
not satisfy Element F. However, thejudge found [i] that Product Y prevents
the tilt of the rotary shaft by making theclearance less than 20μm and therefore
achieves the same result in substantiallythe same way as the Patented Invention;[ii] that it was evident for persons skilledin the art as of the priority date that a
clearance of the rotary shaft (2) being
mostly 20μm as in the case of Product Y
can prevent the tilt of the rotary shaft; and[iii] that the Patented Invention contains
no statement to exclude additional support such as high-pressure gas or the concave portion, and strict compliance withthe literal wording of the claim is not anessential requirement of the Patented
Invention. In conclusion, the judge admit-

AIPPI Journal, March 2019ted the infringement of Product Y under
the doctrine of equivalents.
Next, the judge found that the
Patented Invention lacks an inventive
step as the invention described in Gazette
085 can also be applied to a rotary valve
compressor, but that the Corrected Invention has an inventive step as the concave
portions are indispensable for the invention in Gazette 085.
The judge further determined thatneither literal infringement nor infringement under the doctrine of equivalents isfound for Product Y in relation to theCorrected Invention. On the other hand,
Product X was found to infringe thepatent right for the Corrected Invention.
After rendering the judgement asabove, the judge commenced the procedure in the Form of order hearing. In thisprocedure, the defendant requested thesuspension of the execution of the injunction order for two months as the defendant would like to change the design ofProduct X. The judge suspended theexecution of the injunction order for twomonths on the conditions of the paymentof the cash collateral for that period. Furthermore, it was decided to examine theconcrete amount of damage in another
trial.
(2) Explanations(A) Judgement on Patent Invalidity by
the Court
An alleged infringer may assert adefense of patent invalidity and file acounterclaim to seek revocation of thepatent before the infringement court, andmay also bring proceedings for revocation of the patent before the Patent Office.
However, when the proceedings of theinfringement court have proceeded (whenthe defense of invalidity has already been91

asserted), an alleged infringer needs toobtain permission of the infringement
court to bring proceedings for revocationof the patent before the Patent Office, andeven if the proceedings of the infringement court are delayed, the Patent Officepractically suspends its proceedings forrevocation of the patent (UK 72-7 and74-7). In this manner, judgements on
patent invalidation are integrally made by
the infringement court with the aim of [i]avoiding contradicting judgements and[ii] preventing waste in time and money
due to duplicated procedures, and because [iii] appeals against judgements of
the Patent Office are filed with the court
and the Patent Office does not need tobother to make judgements on patentvalidity, and [iv] the infringement court
makes judgements on patent invalidity, in
addition to patent infringement, and thisprevents patentees from asserting claims
broadly for the infringement issue andnarrowly for the invalidity issue and thus
is beneficial also for alleged infringers.
(B) Case Management Hearing
In patent infringement litigation in
the U.K., a case management hearing isheld to discuss how to proceed with theprocedures up to a trial based on documents submitted by the parties. Moreconcretely, evidence is disclosed, thepatentee’s intention to request a correction of the claims and the details thereof
are confirmed, and witnesses to be examined in the trial are decided. It depends onthe case, but a hearing generally finishes
in around 30 to 60 minutes.
The court of first instance for patent
infringement lawsuit in the U.K. is the
Patent Court or the Intellectual Property
Enterprise Court (IPEC). Actions to seek
compensation less than 500,000 pounds

92

are handled by the IPEC. In a case management hearing, a judge of the IPEC
evaluates whether the point at issue issignificant from the perspective of judicial economy (cost/benefit test) and leads
the litigation by narrowing down the issues. In the meantime, the Patent Court
has introduced the shorter trial scheme
and manages litigation in a costconscious manner.
(C) Claim Construction
In the U.K., scopes of claims havebeen evaluated based on normal interpretation, but due to the introduction of
the doctrine of equivalents by the judgement of the Supreme Court on the
Actavis case, scopes may be evaluatedmore broadly than before. The mock trial
showed an example of evaluating thescope of a claim based on the norm introduced by said Supreme Court judgement,i.e., in accordance with the three-staged
test: [i] whether Defendant Products
achieve the same result in substantiallythe same way as the Patented Invention;[ii] whether it would be obvious to thepersons skilled in the art at the priority
date (knowing that the Defendant Products achieves the same result) that it does
so in substantially the same way as the
Patented Invention; and [iii] whether
strict compliance with the literal wordingof the claim was an essential requirementof the Patented Invention.
The judgement of the Supreme Courton the Actavis case also refers to thestandards for taking into account theprosecution history. Specifically, apatentee’s statements in the prosecution
history may be taken into account ininterpreting claims when the point as
issue is truly unclear if one confines oneself to the specification and claims of the

AIPPI Journal, March 2019patent, and the contents of the fileunambiguously resolve the point, or it
would be contrary to the public interestfor the contents of the file to be ignored,
for example, if a patentee has expressly
said during prosecution that his claim
does not have the broader scope which helater claims in infringement proceedings.
(D) Correction Procedures
In the U.K., not only the Patent
Office but also the court may permit acorrection of a patent specification (UK75), and a patentee is generally permitted
to put forward a corrected claim as a fallback, while maintaining the validity ofthe original claim, as same in the normal
court procedures. This saves the troubleof conducting an examination again
based on a corrected claim and achieves
the settlement of a dispute at one time. In
order to avoid excessively complicating a
trial, usually, alternative claims are
narrowed down to one or the original
claim is abandoned and corrected claims
are narrowed down to two before the trial.
(E) Introduction of Expert Knowledge
Expert witnesses play core roles inpatent infringement lawsuit in the U.K.
They are considered to be important uponmaking a judgement on the validity of apatent, in particular. Traditionally, judges
were supposed to evaluate scopes ofclaims, but the introduction of the doctrine of equivalents by the judgement of
the Supreme Court on the Actavis casehas increased the importance of expert
witnesses also in the evaluation of scopesof claims.
(F) Form of Order Hearing
In patent infringement litigation in
the U.K., the procedure in the form ofAIPPI Journal, March 2019

order hearing is undertaken after a judgement is made concerning whether the
defendant’s product infringes a patentright. In that procedure, a hearing is heldon such issues as the amount of compensation, whether or not to order injunction or the need of a temporary suspension, declaration of the patent validity,
declaration of a patent right infringement,bearing of court costs, and the permissionof filing an appeal. The amounts of compensation are agreed in most cases, but ina case where an agreement is not reached,
the amount of damage is evaluated inanother trial.
5. The U.S.
(1) Mock Trial 20(A) Establishment of Claim No.2
As it is unrealistic to assert counterdefense of claim correction in patent
infringement lawsuit, the U.S. mock trial
was based on the premise that a patenthas contained a claim for the Corrected
Invention (Claim No.2) in addition to aclaim for the Patented Invention (Claim
No.1)
from
registrationof
its
establishment.
In the U.S. mock trial, whether
Product Y satisfies Element F was argued,
and at the initial stage, the validity of thepatent pertaining to Claims No.1 andNo.2 was challenged.
(B) Stay of Court Proceedings
The defendant asserted a lack of an
inventive step as the grounds for invalidation of the Patent and raised a defense ofinvalidity. The defendant also filed arequest for Inter partes review (IPR) with
the Patent Office and then, submitted arequest to the court, seeking the stay ofcourt proceedings until a decision of the
IPR is made, for the purpose of avoiding

93

contradicting judgements and reducing
costs. However, the plaintiff objected.
The judge dismissed the request for thestay on the grounds that the discovery
procedures have been progressing, thetrial date has already been determined,
and the defendant’s request for an IPR
was submitted too late.
(C) Markman Hearing
In the mock trial, the Markman hearing was held for the court to determine
the claim interpretation. During theMarkman hearing, the meaning of theterms “directly support” in Element F of
Claim No.1 and “cylindrically-shaped” inElement E’ of Claim No.2 was argued.
Regarding the term “directly support” in Element F, the plaintiff asserted
that the claim should be interpreted inplain and ordinary meaning. Against this,the defendant argued that the term should
be interpreted to mean “support without
reliance on any other means.” The judge
pointed out that the wording of the claim
cannot be construed to impose such alimitation, but the defendant explainedthat the description specifies the use of aclearance of 20μm without using rolling
bearings and that it should be interpreted
that the rotary shaft (2) is not supported
by anything.
Regarding the term “cylindricallyshaped” in Element E’, the plaintiff
asserted that the claim contains no wording to mean that the rotary valves (6) arecompletely cylindrically-shaped, and that
the Written Opinion made during theprosecution history referred to the clearance, not to the shape of the rotary valves,and should not be taken into account. On
these grounds, the plaintiff asserted thatthe term should be interpreted as “tubular
shape with a circular cross-section”. The

94

defendant argued that it is evident fromthe wording of the claim that the term
should be interpreted to mean “a perfectly
cylindrical shape” and that this interpretation is reasonable also from the prosecution history during which the shape of therotary valves (6) was limited. Additionally, the defendant submitted the declaration by the expert witness (Dr. Asaji).
However, the judge pointed out that thedeclaration contains not a few dubious
points.
The judge ruled that the declarationby the expert witness cannot be adopted
because it is extrinsic evidence and its
grounds are not clear, and concluded thatthe term “directly support” in Element Fshould be interpreted in plain and ordinary meaning and the meaning of theterm cannot be found to be limited during
the prosecution history so that it cannot
be interpreted to mean “support without
reliance on any other means”. On theother hand, the judge ruled that the shapeof the rotary valves (6) is limited inconsideration of the prosecution history
and that the term “cylindrically-shaped”
in Element E’ should be interpreted tomean “cylindrically-shaped throughout
the whole area.”(D) Bench Trial
In the mock trial, a trial by the judge(bench trial) was held on the premise that

AIPPI Journal, March 2019

two months have elapsed since theMarkman hearing.
The defendant first reported that the
Patent Trial and Appeal Board (PTAB)
determined in the IPR proceedings thatpatents pertaining to Claims No.1 andNo.2 are both valid. The judge asked if
the defendant would assert any grounds
for invalidation other than those argued in
the IPR and the defendant answered“No.” Therefore, it was decided that thepatent validity would not be disputed inthis infringement litigation.
The judge declared that only theclaim satisfaction issue concerning Product Y would be examined in the trial, andthe defendant’s expert witness (Dr. Asaji)
received the direct examination from thedefendant and the counter examinationfrom the plaintiff with regard to the pointof whether Product Y satisfies Element F
and Element E’. During the direct
examination, the judge pointed out that
Dr. Asaji is examined as an expert witness and the examination is not for proving the fact. Additionally, regarding aquestion on the significance of the rotary
valves (6) in the plaintiff’s counterexamination, the judge mentioned that theclaim interpretation procedures had
already been completed at the Markman
hearing.
Then, the final oral arguments ofboth parties followed. The plaintiff
asserted that the focus should be placed

AIPPI Journal, March 2019

on the difference between the rotary
valves (6) and the rotary shaft (2), while
the defendant argued that as Product Y
has concave portions, it is evident that theclearance is partially 20μm or wider.
(E) Judgement
The judge determined that Product X
infringes the patent rights for the inventions in question and that Product Y
infringes the patent right pertaining to
Claim No.1 but does not infringe thepatent right pertaining to Claim No.2.
The judge ordered the parties to present
their opinions concerning damage andother reliefs within 10 days.
(2) Explanations(A) Judgement on Patent Invalidity by
the Court and IPR
In the United States, the amendmentof the Patent Act (AIA) in 2011 has
expanded the review system by the Patent
Office. Alleged infringers have come tohave more options for challenging patentvalidity, among which the IPR proceedings are most frequently utilized.
The IPR proceedings do not require
heavy discovery procedures, and theexamination period from the date of anotice for the commencement to the dateof the final decision is basically limited to
no longer than 18 months (US316(a)(11)), which is shorter than that required by district courts. Therefore, an
IPR is a cheaper and faster alternative foralleged infringers than to challenge patentvalidity before the court. Additionally,
the IPR proceedings only deal with theissue of patent validity and therefore
cause no substantial disadvantage toalleged infringers. As a patent is generally presumed to be valid (US 282(a)), an
alleged infringer challenging patent valid-95

ity before a district court needs to overcome that presumption by presenting
clear and convincing evidence, but the
IPR proceedings are undertaken at the
Patent Office, where the presumption ofvalidity does not work, and it suffices toprove the invalidity of a patent with the
preponderance of evidence (US 316(e)).
Due to this difference in standards of
proof, 21 it can be said that patents areinvalidated more easily through the IPR
proceedings than through infringement
litigation.
(B) Stay of Court Proceedings
It has often become the case that analleged infringer files a request for an
IPR with the Patent Office within one
year after receiving a complaint for patent
infringement litigation (US 315(b)) andthen requests the court for the stay of thecourt proceeding until the final decisionof the IPR is made. Whether or not toadmit the request for stay of court proceedings is up to extensive discretion ofjudges and the request may be dismissedon the grounds of a risk of delaying thecourt proceedings. Standards for admitting stay of court proceedings may differ
by its venue, but examples of factors to
be taken into consideration include [i] towhat extent the discovery procedures
have progressed, [ii] whether the trial
date has been determined, [iii] whether
waiting for the IPR decision helps thearrangement of issues to be disputed in
the trial and facilitates the discovery
procedures and the trial, and [iv] whether
the stay would cause any excessive damage to the counterparty or any clear
strategic advantages or disadvantages for
either of the parties. Apart from theGerman infringement court, the infringement court in the U.S. does not directly

96

make a judgement on the possibility ofinvalidation of a patent when deciding
whether or not to stay court proceedings. 22(C) Markman Hearing
After the rendering of the judgementof the Supreme Court on the Markman
case (Markman v. Westview Instruments,
Inc., 517 U.S. 370 (1996)), in patent infringement litigation in the U.S., judges
first decide the claim construction in theMarkman hearing and the jury compares
the scope of claims and alleged productto make a judgement on claim satisfaction and also makes a judgement on
patent validity through such means as
referring to documents of prior arts.
As indicated in the Phillips standard,claims are interpreted in plain andcustomary meaning, i.e., as interpreted bypersons skilled in the art as of the day offiling the patent application. When interpreting the wording of a claim in dispute,the wording itself, statement in thedescription, and prosecution history are
first taken into account as intrinsic evidence. If the meaning of the claim is still
unclear, experts’ testimonies, dictionaries,
learned treatises, etc. are used as extrinsic
evidence (Note 21; the CAFC judgementon the Phillips case). Claim construction
by judges is reviewed de novo at the
court of second instance, and the fact
finding part in claim construction is
examined as to whether or not the relevant judgement by the district court
judges is clearly erroneous (Teva
Pharmaceuticals USA, Inc. v. Sandoz,
Inc., 574 U.S. (2015)).
(D) Judgement in the IPR and Infringement Court Proceedings
When the validity or invalidity of a

AIPPI Journal, March 2019patent is determined in the IPR proceedings while the infringement litigation ispending (US 318(a)), the infringement
court is to proceed with the court
proceedings in accordance with the IPR
conclusion.
When the final written decision on
the validity of a patent is issued by PTAB
in IPR proceedings (US 318(a)), an alleged infringer who requested the IPR is
not permitted to assert the invalidity ofthe patent based on any ground thathe/she raised or reasonably could haveraised during that IPR, under the doctrineof estoppel (US 315(e)(2)). Therefore, it
becomes impossible for such alleged
infringer to make an assertion in the infringement litigation based not only on
the grounds for invalidation that he/she
actually raised in the IPR proceedings but
also on prior arts that he/she could havesubmitted. Nevertheless, as grounds forinvalidation that can be asserted in the
IPR proceedings are limited to the lack ofnovelty and the lack of non-obviousness(inventive step) on the basis of prior art
consisting of patents or printed publication (US 311(b)), even after the issuanceof the final written decision in the IPR
proceedings, an alleged infringer may
challenge the validity of the patent on the
grounds of the lack of novelty or nonobviousness based on a public use invention, or the failure to the patentability (US101), or the description requirements (US112). The scope of prior arts subject tothe doctrine of estoppel is controversial.
Some broadly construe the coverage ofthe doctrine of estoppel, insisting that
alleged infringers may not cite all documents of prior arts that could have beenraised during the IPR as grounds forinvalidation (SAS Institute, Inc. v.
Complementsoft, LLC., 825 F.3d 1341

AIPPI Journal, March 2019(Fed. Cir. 2016)), while others construe
the coverage narrowly.
(E) Counter-defense of claim correction
In patent infringement litigation in
the U.S., correction of claims is not
permitted except for the case of correcting evident errors in formality. A
patentee may not assert a claim correction
as a means to counter-defense for invalidity.
In principle, a patentee can correct
claims only once in the IPR proceedings(US 316(d)), but the correction of a claim
does not affect the rights of a person who
has been using the object pertaining to
the corrected claim prior to the issuanceof the certificate for the correction (Intervening rights; US 318(c) and 252).
Accordingly, in the U.S., whether or not
to correct a patent claim should beconsidered carefully, as the compensation
may not necessarily be ensured whereas
the claim correction results in thelimitation of the scope of the patent right.
It is also important for a patentee to strive
to obtain patents for dependent claims
sufficiently from the beginning in
preparation for a possibility that patent
invalidity may be asserted in the future inpatent infringement lawsuit. In the mocktrial, the Patent was judged to be valid in
the IPR proceedings, and this point was
not argued.
(F) Introduction of Expert Knowledge
In the patent infringement litigationin the U.S., expert witnesses are very
important. In the Markman hearing(claim construction), intrinsic evidence isfirst examined, but expert witnesses playa role in helping judges and the parties
ascertain the understanding of persons
skilled in the art as of the time of filing97

the patent application. In the trial stage,
expert witnesses occupies much more
important role in determining whether
alleged product satisfies the claims, aswell as in finding the details of priordocuments, differences, technical standards of persons skilled in the art, etc.
(G) Consistent Judgement at the CAFC
In the U.S., district courts makejudgements on defenses of patent
invalidity in patent infringement lawsuit,
while the PTAB also examines thevalidity of patents in the IPR proceedings
or other procedures. Accordingly, there
may be cases where contradicting
judgements are made for the validity ofthe same patent. Any appeals against
judgements rendered in patent infringement lawsuit and the IPR proceedings are
filed with the CAFC, but it is consideredunavoidable that judgements at the CAFC
may not be consisted in some cases asstandards of proof for judging patentvalidity differ between district courts andthe PTAB (Novartis AG v. Noven
Pharmaceuticals Inc., 853 F.3d 1289 (Fed.
Cir. 2017)). However, in reality, judgements are unlikely to be contradicting
between district courts and the PTAB
because a request for an IPR cannot bemade after the lapse of one year after
receiving a complaint for patent infringement litigation (US 315(b)).
The IPR proceedings may be repeated several times, but even if a
defendant who has once lost in an
infringement litigation requests an IPR on
the same patent, such request is unlikely
to be accepted (General Plastic Industrial
Co. Ltd. v. Canon Kabushiki Kaisha,(PTAB Sept. 6, 2017)).

98

AIPPI Journal, March 2019an objection to grant (JA 113; DE 59; US 301;
Convention on the Grant of European Patents

Part 4 Conclusion
The infringement courts of the fivecountries adopt various approaches under
different legal systems concerning theissue of patent validity in patent infringement lawsuit, but have been striving toperform duties reasonably with the aim ofrealizing the principle of equity, one-time
dispute resolution, and acceleration ofpatent infringement litigation. We believethat this symposium has provided us withlots of suggestions for concretely improving procedures for patent infringement
litigation in Japan.
It was also significant that we could
obtain the latest information in westerncountries concerning the old and newissue of patent validity in patent infringement lawsuit.
We would like to extend our gratitude for presenters who demonstrated themock trial in a realistic manner and provided us with useful knowledge.
(Notes)1See
http://www.ip.courts.go.jp/eng/vcms_lf/
2018_E_sintoukei_H26-29.pdf.
2
When citing provisions of the Patent Act ofrespective countries, the simple expressions“JA (Japan)”, “DE (Germany)”, “FR (France)”,“UK (the U.K.)”, and “US (the U.S.)” may be
used.
3
Alleged infringer may request the Patent Office
for re-examination during the period for raising99, etc.). Additionally, in European countries
where the Agreement on a Unified Patent Court
is effectuated from now on, actions forrevocation of patents shall be brought before
the central division of the UPC and counterclaims for revocation of patents may be brought
before the local and regional divisions of the
UPC (Agreement on a Unified Patent Court 32
and 33).
4
Materials used in the mock trial, etc. (the case,screened slides, interlocutory judgement ofJapan, etc.) are available on the website of the
IP High Court:
http://www.ip.courts.go.jp/eng/documents/thesis/2018JSIP_summarize_01/index.html
5
The piston compressor of the Patented Invention can be used as a refrigerant compressor
for an automobile air conditioning system.
6
For the comparison and examination of theresults of the mock trial, basic data and diverse
opinions and advice were provided by Patent
attorney Kazuhiro Matsuda (Japan), Attorney atlaw Schüssler Langeheine (Germany), Attorneyat law Simon Ayrton (U.K.), Attorney at law
Kenichi Hattori (U.S.), Attoreny at law Trevor
Hill (U.S.), and Judges Masaki Sugiura,
Sumiko Sekine, Ayako Morioka, Aya
Takahashi, Daisuke Kumagai and Hiromitsu
Magira (IP High Court of Japan).
7
Regarding Japanese presenters, see a separate
report (Makiko Takabe, “Summary of the‘Judicial Symposium on Intellectual Property /TOKYO 2018’” page 67 of this magazine)
8
The Japanese mock trial was based on thepremise that the issues and evidence werearranged in the date of oral arguments (seeCode of Civil Procedure of Japan 164). However, generally in patent infringement lawsuit, acase is referred to preparatory proceedings(Same Code 168) for arranging issues andevidence after the first date of oral arguments.
Trial models of patent infringement lawsuit inTokyo District Court and Osaka District Court
are publicized. Refer to http://www.ip.courts.
go.jp/eng/info/index.html

AIPPI Journal, March 20199

The Japanese mock trial was based on thepremise that the plaintiff has decided not toassert re-defense of claim correction pertaining
to Product Y in response to discussions held
during the procedures to arrange issues.
10
The interlocutory judgement of Japan is
publicized (see Note 4).
11“Explanation of the Act which amends the
Court Act etc. 2004 Amendment (revised
version)” edited by Abe, Ikubo & Katayama(Japan Institute of Invention and Innovation),
p.10
12“Explication of the Practice on Patent Related
Litigation, 3rd edition” authored by Makiko
TAKABE (Kinzai), p.235 - p.236
132016 (Ju) 632, Judgement of the Second Petty
Bench of the Supreme Court of July 10, 2017,
Minshu Vol. 71, No. 6, at 861 (Judgement of
the Supreme Court on the Sheet Cutter Case)
14
Judgement of the IP High Court of August 25,
2009, Hanrei Times No.1319, at 246
15
Abovementioned reference No.12, TAKABE p.
210
16Judgement of the IP High Court of September
17, 2014, Hanrei Jiho No. 2247, at 103;
Judgement of the IP High Court of March 14,2017 (2016 (Ne) 10100), website of the IP
High Court of Japan17
In the German mock trial, Presiding JudgePeter Meier-Beck (German Federal Supreme
Court) acted as a judge and Attorney at law
Christof Augenstein and Christopher Weber(Kather Augenstein) acted as representatives.
18
In the French mock trial, Attorney at law Denis
Monégier du Sorbier (Hoyng ROKH Monegier)acted as a judge and Attorney at law Sabine
Agé and Amandine Métier (Véron & Associés)
acted as representatives.
19
In the UK mock trial, Presiding Judge Richard
Hacon (Intellectual Property Enterprise Court)
acted as a judge and Attorney at law Alex
Wilson and Zoë Butler (Powell Gilbert LLP)
acted as representatives.
20
In the US mock trial, Judge Richard Linn
(United States Court of Appeals for the Federal
Circuit) acted as a judge and Attorney at law
Maxwell A. Fox (Jones Day) and Ryan S.
Goldstein (Quinn Emanuel Urquhart &Sullivan LLP) acted as representatives.
21
In review procedures requested before
November 13, 2018, also due to the difference
in standards for claim construction, patents
were invalidated more easily through the IPR
proceedings than through infringement litigation. In other words, in infringement litigation,
claims were interpreted in an ordinary andcustomary meaning (the Phillips standard;

99
Phillips v. AWH Corp., 415 F.3d 1303 (Fed.
Cir. 2005) (en banc)), while the IPR adopted
the broadest reasonable interpretation andclaims could be interpreted in a broader sense.
However, after the amendment of 37 CFR Part
42 enforced on that day, the Phillips standard
came to be adopted in review procedures
requested on that day onward, and the difference in standards for claim construction waseliminated.
22
IPR is instituted only in a case where there is areasonable likelihood that the petitioner would
prevail with respect to at least 1 of the clams
challenged in the petition (US 314(a)).