Patent

Date

June 28, 2021

Right

Case

2020 (Ne) 10044

CourtIntellectual Property High
Court, Third Division

number- An appeal case of a patent infringement lawsuit in which the court, holding that the
Defendant's product does not infringe the first-instance Plaintiff's patent due togrounds [i] and [ii] below, reversed the part of the judgment in prior instance, which
partially upheld the first-instance Plaintiff's claims, and the court dismissed withprejudice on the merits the first-instance Plaintiff's claims with regard to that part:[i] the wording of claims should be interpreted based on the technical meaning of theclaimed invention, and when interpreted from that viewpoint, the structure of the
Defendant's product does not fulfill the wording of the claims of the first-instancePlaintiff's patent; and[ii] if the wording in question were interpreted broadly to include the structure of the
Defendant's product, the first-instance Plaintiff's patent would be invalid due to lackof an inventive step.
- An appeal case of a patent infringement lawsuit in which the court held that it cannot
be said that the new allegations made by the first-instance Defendant in the appeal
instance are impermissible because they constitute withdrawal of its admission, nor
can it be said that these allegations should be dismissed without prejudice because
they constitute allegations or evidence presented after the time by when they shouldhave been presented (hereinafter referred to as "belated allegations or evidence").
Case type: Compensation for Damages Caused by Patent Infringement
Result: Partial reversal of the prior instance judgment
References: Article 29, paragraph (2) and Article 70 of the Patent Act
Related rights, etc.: Patent No. 4520670
Judgment of the prior instance: Tokyo District Court, 2017 (Wa) 29228, rendered on
January 30, 2020, and a ruling of correction made on March 12, 2020
Summary of the Judgment
1. Background
The first-instance Plaintiff is the patentee of Patent No. 4520670 for an invention
titled "Fluid feeding apparatus, fluid feeding method, recording medium, and program"(hereinafter referred to as the "Patent"). The Patent relates to an invention of anapparatus and program that enable settlement of payment by using a "storage medium,"such as a prepaid card, at a self-service gas station.
i

The first-instance Defendant manufactures and sells the Defendant's apparatus,
which enables settlement of payment by using a contactless IC card (FeliCa TM card) at
a self-service gas station, and the apparatus contains the Defendant's program to haveit operate.
The first-instance Plaintiff alleged that the Defendant's apparatus and the
Defendant's program fall within the technical scope of the Patent, and sought an
injunction and compensation for damages.
The court of prior instance upheld the first-instance Plaintiff's claim for an
injunction, and partially upheld its claim for compensation for damages to the extent of
the principal of approximately 450 million yen (the amount after the ruling ofcorrection).
Both parties were dissatisfied with the parts of the case they had lost, and filed an
appeal.
In this judgment, the court held that the first-instance Plaintiff's claims are
groundless due to the grounds stated in 2. and 3. below, and based on the first-instance
Defendant's appeal, reversed the part of the judgment in prior instance rendered in favorof the first-instance Plaintiff, and dismissed with prejudice on the merits the firstinstance Plaintiff's claims with regard to that part. In addition, with regard to the firstinstance Plaintiff's allegation to the effect that the new allegations made by the firstinstance Defendant in the appeal instance constituted withdrawal of its admission andalso constitute belated allegations or evidence, the court indicated that this allegation
cannot be accepted due to the grounds stated in 4. and 5. below.
2. Regarding the arguments that the Defendant's product fulfills the constituent featuresof the Invention (hereinafter referred to as "arguments on fulfillment")
As an invention is a technical idea which serves as a means for solving a problem,in the process of interpreting the meaning of the wording of claims reciting the structureof an invention, the statements in the description concerning the problem to be solvedby the invention and the operation and effect to be provided by the invention should betaken into account, and the meaning should be examined from the viewpoint of what
operation and effect would be provided and what problem would be solved by thatstructure of the invention.
According to the statements in the description in this case, the structure of theinvention in this case (hereinafter referred to as the "Invention") is intended for solving
the problems that had occurred in prior art that mainly used a magnetic prepaid card.
However, when a contactless IC card is used in the Defendant's oil feeding apparatus,
the problems that are intended to be solved by the Invention do not originally exist, andiithere is also no problem that could be the subject to be solved by means of the Invention.
Therefore, a contactless IC card does not constitute the "storage medium" referred to in
the Invention.
3. Regarding arguments on invalidity
The arguments on invalidity are examined on a premise that the "storage medium"in the Invention is interpreted as including a contactless IC card.
At the time of filing the application for the Patent, an apparatus that enables
settlement of payment by cash at a self-service gas station was publicly known.
It was easy to conceive of replacing payment by cash with payment by a contactless
IC card, in light of such facts as that contactless IC cards were often referred to as"electronic money." Moreover, the process to settle payment for the oil fed by using acontactless IC card by means of the structure of the Invention is one that would benaturally adopted if payment by cash is to be replaced with payment by a contactless
IC card in the abovementioned publicly known apparatus.
Accordingly, the Invention lacks an inventive step in relation to the abovementioned
publicly known apparatus.
4. Regarding withdrawal of an admission
The first-instance Plaintiff alleged that the first-instance Defendant's Allegation on
Non-infringement [iv] constitutes withdrawal of its admission that had been establishedbased on its approval or disapproval in its written answer submitted in the prior instance,
and is impermissible.
However, whereas the question of whether or not an admission has been establishedshould be examined based on the entirety of the party's answer, the first-instance
Defendant, although "approving" that its product fulfills Constituent Feature 1C in its
written answer in prior instance, made the following allegations, for example, in thesection for its approval or disapproval of the first-instance Plaintiff's allegations onequivalence and the section for the first-instance Defendant's allegations in that written
answer: (a) in Constituent Feature 1C of Invention 1, the amount to be debited is set by
the system of the setting instrument, whereas in Constituent Feature 1c of the
Defendant's oil feeding apparatus, the amount to be debited is designated by thecustomer; (b) in the Defendant's oil feeding apparatus, the transactions are completed
in Constituent Feature 1c; and (c) in Constituent Feature 1F of Invention 1, the amountof payment according to the volume of the oil fed is calculated, and the difference withthe debited amount is returned, whereas in Constituent Feature 1f of the Defendant's oil
feeding apparatus, the amount of payment for the sale and purchase that arise fromreturning the volume of oil that could not be fed is calculated. These allegations of theiii

first-instance Defendant should practically be understood to be asserting that theprocesses conducted in the Defendant's oil feeding apparatus differ from the processes
conducted in Constituent Feature 1C of Invention 1. Thus, it can be said that it isinappropriate for the court of prior instance to have simply treated the fulfillment ofConstituent Feature 1C as an issue not disputed between the parties.
According to the above, it cannot be said that the first-instance Defendant's
Allegation on Non-infringement [iv] is impermissible because it constitutes withdrawalof its admission.
5. Regarding whether the first-instance Defendant's new allegations in the appeal
instance constitute belated allegations or evidence
As the first-instance Defendant's Allegations on Invalidity A, B, and D were
presented after the court of prior instance disclosed its interim views concerning thearguments on infringement, they were treated by the court of prior instance as having
been presented belatedly. However, as already pointed out in the section concerning thearguments on fulfillment, it must be said that the manner in which the court of priorinstance arranged issues concerning fulfillment of Constituent Feature 1C1 (Allegation
on Non-infringement [iv]) and fulfillment of Constituent Features 1A, 1C, 1F3, and 1F4(Allegation on Non-infringement [v]) is defective in that an issue that should have beentreated as one disputed between the parties was treated as one involving no such dispute.
Given that matters such as whether and when the parties should make allegations on thearguments on invalidity cannot be considered separately from the process throughwhich the parties present allegations and evidence concerning the arguments on
fulfillment, in this case where it is considered that the parties should have presented
further allegations and evidence concerning the arguments on fulfillment, it is notreasonable to evaluate that the first-instance Defendant's allegations on invalidity were
presented belatedly solely based on the fact that they were presented after the court ofprior instance disclosed its interim views concerning the arguments on infringement.
In addition, it can be said that, in this instance, the first-instance Defendantpresented allegations on invalidity regarding the abovementioned grounds forinvalidation immediately after filing the appeal.
According to the above, the abovementioned allegations on invalidity by the firstinstance Defendant cannot be evaluated as having been presented belatedly either fromthe viewpoint of looking at the overall proceedings in the prior instance and thisinstance or from the viewpoint of focusing only on the proceedings in this instance.
Consequently, none of the allegations on invalidity by the first-instance Defendant
should be dismissed without prejudice as a belated allegation or evidence.
iv

Judgment rendered on June 28, 2021
2020(Ne)10044, Appeal case of seeking compensation based on patent infringement(Court of prior instance: Tokyo District Court, 2017(Wa)29228)
Date of conclusion of oral argument: March 24, 2021
Judgment
Appellant / Appellee: Cosmo Oil Marketing Co., Ltd.
(hereinafter referred to as the "first-instance Plaintiff)

Appellee / Appellant: Comota Co., Ltd.
(hereinafter referred to as the "first-instance Defendant")

Main text
1. Based on the appeal filed by the first-instance Defendant, the part of the judgment inprior instance which is against the first-instance Defendant shall be reversed.
2. All the claims of the first-instance Plaintiff pertaining to the abovementioned partshall be dismissed with prejudice on the merits.
3. The appeal filed by the first-instance Plaintiff shall be dismissed with prejudice on
the merits.
4. The first-instance Plaintiff shall bear the court costs in the first and second instances.
Facts and reasonsNo. 1 Object of the claim(The first-instance Plaintiff)
1. The judgment in prior instance shall be modified as follows.
2. The first-instance Defendant shall neither manufacture, nor sell nor offer to sell the
product stated in 2. in the Item List attached to this judgment.
3. The first-instance Defendant shall dispose of the product stated in the preceding
paragraph.
4. The first-instance Defendant shall neither manufacture, nor use, nor sell, nor offer tosell the program stated in the Program List attached to this judgment nor provide nor
offer to provide it through telecommunications line.
5. The first-instance Defendant shall delete the program stated in the preceding1paragraph.
6. The first-instance Defendant shall pay to the first-instance Plaintiff 950,543,000 yen
as well as the amount accrued on 100,000,000 yen out of the abovementioned amountat the rate of 5% per annum for the period from October 1, 2015 until the completionof the payment and the amount accrued on 850,543,000 yen out of the same amount at
the same rate for the period from September 30, 2018 until the completion of thepayment.
(The first-instance Defendant)
1. The part of the judgment in prior instance which is against the first -instance
Defendant shall be reversed.
2. All the claims of the first-instance Plaintiff pertaining to the abovementioned
reversed part shall be dismissed with prejudice on the merits.
No. 2 Outline of the case, etc. (Abbreviations used in this judgment are as defined in
the judgment in prior instance unless otherwise specified.)
1. Outline of the case(1) The first-instance Plaintiff is the patentee of Patent No. 4520670 (hereinafterreferred to as the "Patent") for an invention titled "Fluid feeding apparatus, fluid feeding
method, recording medium, and program."
The first-instance Defendant manufactures and sells settling instruments that areincorporated into oil feeding apparatuses (the product stated in 1. in the Item List
attached to this judgment), and a program that enables the settlement by electronicmoney can be stored in the same setting instruments. Most of the same setting
instruments are operated at gas stations where oil feeding apparatuses into which thesame setting instruments are incorporated are installed in the state where the same
program is stored and activated.
The first-instance Plaintiff alleged as follows: An oil feeding apparatus into which
the abovementioned setting instrument is incorporated falls within the technical scopeof the inventions claimed in Claims 1 to 3 and 8 of the Patent, and the same setting
instrument falls under an article whose only use is to produce the same oil feeding
apparatus; therefore, the first-instance Defendant's act of manufacturing, selling orotherwise handling the same oil feeding apparatus constitutes the indirect infringementof the patent right in question (the "Patent Right") (Article 101, item (i) of the Patent
Act). Based on this allegation, the first-instance Plaintiff demanded that the firstinstance Defendant suspend the manufacture, sale, and offer for sale of the same setting
instrument and dispose of the same setting instrument under Article 100, paragraphs (1)and (2) of the Patent Act and also demanded that the first-instance Defendant pay
22,811,015,900 yen as compensation for damages (partial claim) and delay damages
accrued thereon at the rate of 5% per annum (the first day of the calculation is October
1, 2015 in relation to 100,000,000 yen out of the abovementioned amount and
September 30, 2018 in relation to the remaining amount) under Article 709 of the Civil
Code.
(2) On January 30, 2020, the court of prior instance rendered the judgment [in priorinstance] that upheld the first-instance Plaintiff's claims to the following extent.
"1. The first-instance Defendant shall neither manufacture, nor sell, nor offer to sell the
product stated in 2. in the Item List attached to this judgment.
2. The first-instance Defendant shall remove the program stated in the Program List
attached to this judgment from the product stated in 2. in the Item List attached to thisjudgment.
3. The first-instance Defendant shall pay to the first-instance Plaintiff 428,347,890 yen
as well as the amount accrued on ●●● out of the abovementioned amount at therate of 5% per annum for the period from October 1, 2015 until the completion of thepayment, the amount accrued on ● ● ● ● ● ● ● ● ● ● ● ● out of the sameamount at the same rate for the period from September 30, 2018 until the completionof the payment, and the amount accrued on ●●●●●●●●●● out of the sameamount at the same rate for the period from June 30, 2019 until the completion of
payment."(3) On March 12, 2020, the court of prior instance rendered a ruling to correct paragraph
3 of the main text of the judgment in prior instance as follows.
"3. The first-instance Defendant shall pay to the first-instance Plaintiff 450,543,000 yen
as well as the amount accrued on ●●● out of the abovementioned amount at therate of 5% per annum for the period from October 1, 2015 until the completion of thepayment, the amount accrued on ● ● ● ● ● ● ● ● ● ● ● ● out of the sameamount at the same rate for the period from September 30, 2018 until the completionof the payment, and the amount accrued on ●●●●●●●●●●●● out of thesame amount at the same rate for the period from June 30, 2019 until the completion of
payment."(4) The first-instance Plaintiff and the first-instance Defendant were dissatisfied withthe parts they had lost and filed an appeal, respectively. After filing the appeal, the first instance Plaintiff arranged its claims as mentioned in No. 1 above in light of the rulingof correction mentioned in (3) above. Of which, arrangement regarding the amount of
the principal of the claim for damages was intended to limit the scope covered by theappeal to 500,000,000 yen out of the part of the claim that the judgment in prior instance3

(after the correction) dismissed with prejudice on the merits.
2. Basic facts, etc. (1)The following facts, etc. are not disputed between the parties or are easily foundbased on evidence stated.
(1) The first-instance Plaintiff engages in the business of selling oils, petrochemical
products, etc., maintaining and managing gas stations, and operating and managing
computer systems relating to gas stations on a regular basis.
The first-instance Defendant engages in the manufacture, sale, etc. of gas stationrelated equipment on a regular basis.
(2)A. The first-instance Plaintiff is the co-owner of the Patent Right as described below.
[Patent number]
Patent No. 4520670[Title of the invention]
Fluid feeding apparatus, fluid feeding method, recording medium, and program[Filing date]July 18, 2001
[Registration date]
May 28, 2010
B. Non-party Hitachi Automotive Systems Measurement Kabushiki Kaisha (hereinafterreferred to as the "Co-owner"; it was Tokiko Techno Kabushiki Kaisha before thechange of indication of the registered holder on May 21, 2015) had held 100% share of
the Patent Right. However, 50% share of the Patent Right was transferred (specificsuccession) to non-party Cosmo Oil Co., Ltd. on February 20, 2014, and the relevant
share was transferred (general succession) to the first-instance Plaintiff on November
17, 2015. The Patent Right is now co-owned by the first-instance Plaintiff and the Coowner.
Incidentally, the Co-owner engages in the development, manufacture, and sale of
instrumentation devices and the planning, designing, and construction, etc. of gas
stations and eco-service stations on a regular basis.
(3)A. Inventions 1 to 3 and 8 stated in Claims 1 to 3 and 8 in the claims of the Patent
Right are segmented into the following constituent features (hereinafter those
constituent features are described as "Constituent Feature 1A" or "1A," etc., and 1C1
and 1C2 are sometimes collectively referred to as "1C," and 1F1 to 1F4 are sometimes
collectively referred to as "1F").
(Invention 1)
1G: A fluid feeding apparatus characterized in that it has
41A: a storage medium reading and writing means which reads and writes the amountdata stored in a storage medium,1B: a flow volume measurement means which measures the fed volume of said fluid,
1C1: a deposit data processing means which imports the amount not exceeding theamount indicated by the amount data in the storage medium that was read by saidstorage medium reading and writing means before the start of the feedin g of said fluid
as deposit data and1C2: writes the amount obtained by deducting the amount of the relevant deposit datafrom the amount of said amount data in said storage medium as a new amount data,
1D: a feeding permission means which makes it possible to feed the fluid in a volume
corresponding to the amount data in the deposit data that was imported by the relevant
deposit data processing means,
1E: a calculation means which calculates a charge to be made based on the flow volume
value measured by said flow volume measurement means, and
1F1: a charge settlement means which has said calculation means calculate the amountcorresponding to the flow volume value measured by said flow volume measurementmeans,
1F2: deducts the amount of the relevant calculated charge from the amount of said
deposit data,
1F3: adds the amount of the remaining difference data to the amount data in said storage
medium, and
1F4: writes the amount data after the relevant addition in said storage medium(Invention 2)
2B: A fluid feeding apparatus stated in Claim 1 that is characterized in that
2A: said deposit data processing means imports the amount not exceeding the amountindicated by the amount data stored in said storage medium before the start of thefeeding of said fluid as deposit data and deducts the amount of the relevant deposit datafrom the amount data in the relevant storage medium(Invention 3)
3C: A fluid feeding apparatus stated in Claim 1 or 2 that is characterized in that it has
3A: the first refund means which adds the amount of the deposit data imported by said
deposit data processing means before the feeding of said fluid to the amount of theamount data in said storage medium if a refund is ordered before the feeding of said
fluid and3B: the second refund means which deducts the amount corresponding to the flow
volume value measured by said flow volume measurement means from the amount of5

said deposit data, adds the amount of the remaining difference data to the amount of theamount data in said storage medium, and writes the amount data after the relevant
addition in said storage medium if a refund is ordered after the feeding of said fluid(Invention 8)
8P: A program which is executed in a fluid feeding apparatus that makes it possible tofeed the fluid in a volume corresponding to the amount data imported as deposit data,which
8C1: imports the amount not exceeding the amount indicated by the amount data in astorage medium that was read by a storage medium reading and writing means before
the start of the feeding of fluid into a computer as deposit data and
8Q: is intended to have the following steps be executed in a sequential order:
8C2: the first step in which the amount obtained by deducting the amount of the relevant
deposit data from said amount data is written in said storage medium as a new amountdata,
8D: the second step in which it is made possible to feed the fluid in a volume
corresponding to the amount data in the deposit data, which were imported in therelevant first step,
8E: the third step in which a charge to be made is calculated based on the flow volume
value measured by a flow volume measurement means, and
8F1: the fourth step in which the amount corresponding to the flow volume value
measured by said flow volume measurement means is calculated,
8F2: the relevant calculated charge is deducted from the amount of said deposit data,
8F3: the amount of the remaining difference data is added to the amount data in saidstorage medium, and
8F4: the amount data after the relevant addition is written in said storage medium
B. The structure of Invention 8 is a description of the structure of the oil feeding
apparatus of Invention 1 from the perspective of a program that has the oil feeding
apparatus execute its operations (symbols, C to F, correspond, respectively).
(4) The first-instance Defendant manufactures and sells setting instruments (aninstrument that sets the volume of oil to be fed and method of payment to be made bya customer), which constitute oil feeding apparatuses at gas stations, to gas stations
affiliated with EMG Marketing Godo Kaisha, to which the same company supplied
gasoline, etc. as an oil wholesaler. Incidentally, the same company was merged byabsorption by Tonen General Sekiyu Kaisha in January 2017, and Tonen General Sekiyu
Kaisha was merged by absorption by JXTG Nippon Oil & Energy Corporation in Aprilof the same year.
6In addition, the first-instance Defendant develops and sells a program that makes it
possible to settle fees, etc. which is stored on a setting instrument manufactured andsold by the first-instance Defendant and is executed in an oil feeding apparatus.
(5) Oil feeding apparatuses using a setting instrument manufactured and sold by the
first-instance Defendant include those that have the structure mentioned in [i] below
and perform operations mentioned in [ii] to [vii] in the case where an electronic money
medium using a contactless IC chip (called "FeliCa"; hereinafter the term "electronicmoney (medium)" as used in this judgment refers to this unless otherwise specified) isused to feed oil and to settle a charge for the feeding. Hereinafter, a program that hasan oil feeding apparatus perform such operations is called the "Defendant's Program,"a setting instrument on which the Defendant's Program is stored is referred to as the"Defendant's Setting Instrument," and an oil feeding apparatus comprising the
Defendant's Setting Instrument is referred to as the "Defendant's Oil Feeding
Apparatus." In addition, the operations mentioned in [ii] to [vii] are sometimes referred
to as "Specific Operation [ii]," etc.
[i] In general, an oil feeding apparatus consists of an oil feeding machine that feeds oilfor a customer, a weighing machine that measures the volume of oil fed and indicatesthe amount of payment obtained by multiplying the unit price of oil by the volume ofoil fed, a setting instrument that sets the volume of oil to be fed and the method of
payment to be made by a customer, etc. The Defendant's Oil Feeding Apparatus is an
oil feeding apparatus comprising the Defendant's Setting Instrument and a weighing
machine (hereinafter the weighing machine constituting the Defendant's Oil Feeding
Apparatus is referred to as the "Defendant's Weighing Machine"). The Defendant's
Setting Instrument has component structures, including a display and a reader.
[ii] A customer who intends to use an electronic money medium to pay for the oil fed
selects the means of payment using electronic money on the display of the Defendant's
Setting Instrument. The customer has his/her electronic money medium touch the readerof the Defendant's Setting Instrument in accordance with an instruction indicated on thedisplay of the Defendant's Setting Instrument (incidentally, to be exact, it is only
necessary to bring the medium within a few centimeters of the reader as the medium
adopts a "contactless" system; therefore, hereinafter the word "hold over" is sometimes
used in place of the word "touch"). The Defendant's Setting Instrument reads thebalance of the electronic money medium by the first touching motion.
[iii] Buttons stating the volumes of oil to be fed or the amounts to be paid are indicatedon the display of the Defendant's Setting Instrument, and a customer can select thevolume of oil to be fed or the amount to be paid by pushing one of those buttons. At
7this time, a customer cannot select any volume of oil to be fed or amount to be paid,
when the payment amounts calculated based on the unit price per unit volume of oil(generic name for gasoline and light oil) (the amounts calculated by multiplying thevolumes of oil to be fed by the unit price) exceed the balance of the electronic money
medium read in [ii] above. Whether individual volumes of oil to be fed and amounts to
be paid are selectable or not are indicated on the display of the Defendant's Setting
Instrument.
[iv] After selecting the volume of oil to be fed or the amount to be paid, a customer
touches the reader of the Defendant's Setting Instrument with the electronic money
medium again. By this second touching motion, the Defendant's Setting Instrument
reads the balance of the electronic money medium again (incidentally, the balance could
differ due to the use of the electronic money medium after the first touching motion),
indicates the balance on the display, deducts the amount of payment corresponding to
the volume of oil to be fed or the amount to be paid as selected by the customer fromthe balance of the electronic money medium, and writes the balance after that deductionin the electronic money medium (underlined by this court; the same applies hereinafter).
The amount of payment corresponding to the selected volume of oil to be fed (the unit
price multiplied by the volume of oil to be fed as selected by the customer) or the factthat the amount to be paid as selected by the customer was deducted is indicated on thedisplay of the Defendant's Setting Instrument, and the balance of the electronic money
medium after the deduction is also indicated thereon.
[v] If a customer conducts the second touching motion mentioned in [iv] above, an
instruction to start the feeding of oil is indicated on the display of the Defendant's
Setting Instrument, and the feeding of oil in the volume as selected by the customer orthe volume of oil corresponding to the amount to be paid as selected by the customer
becomes possible. Therefore, the customer becomes able to take the oil feeding nozzle
from the Defendant's Weighing Machine and feed oil to his/her vehicle.
During oil feeding, the volume of oil fed is indicated on the display of the
Defendant's Weighing Machine, and the indication changes according to the volume ofoil fed. In addition, the amount of payment according to the volume of oil fed up tothen is indicated on the display of the Defendant's Weighing Machine, together with thechange of the volume of oil fed. This amount of payment is the result of multiplying
the unit price of oil by the volume of oil actually fed.
[vi] Where a customer finished the feeding of oil before the volume of oil fed reaches
the volume of oil to be fed or the volume of oil corresponding to the amount to be paidthat they selected in [iv] above, such as the case where they suspended the feeding of8

oil and returned the oil feeding nozzle to its original position on the Defendant's
Weighing Machine, the same price as the price indicated on the display of the
Defendant's Weighing Machine as the amount of payment as mentioned in [v] above isindicated as the amount of purchase on the display of the Defendant's Setting Instrument.
At this time, the amount of refund is indicated on the display of the Defendant's Setting
Instrument, together with an indication to the effect that the amount corresponding to
the volume of oil that was not fed is refunded.
When a customer pushes a button for receiving a refund on the display of the
Defendant's Setting Instrument in the state where the abovementioned amount of refund
is indicated on the display, an instruction is indicated on the display of the Defend ant's
Setting Instrument. If a customer touches the reader of the Defendant's Setting
Instrument with an electronic money medium in accordance with the instruction (third
touch), the Defendant's Setting Instrument adds the amount of refund to the balance ofthe electronic money medium before the refund and writes the balance in the electronicmoney medium in such a way that the balance of the electronic money medium is thatafter the addition. The fact that the amount of refund was charged is indicated on thedisplay of the Defendant's Setting Instrument, and the balance of the electronic money
medium after the refund is indicated thereon. This balance after the refund is the amountobtained by adding the amount of refund to the balance of the electronic money medium
before the refund.
[vii] Even where a customer touches the reader of the Defendant's Setting Instrumentwith an electronic money medium (first touch), selects the volume of oil to be fed, andtouches the reader of the Defendant's Setting Instrument with the electronic money
medium again (second touch) and an instruction to start the feeding of oil is indicatedon the display of the Defendant's Setting Instrument, if the customer does not start thefeeding of oil thereafter, the same amount as the amount of money to be paid by thesecond touch motion is indicated on the display of the Defendant's Setting Instrument
as the amount of refund, together with an indication to the effect that the paid amountis refunded. During this status, the customer can push a button for receiving the refund
on the display of the Defendant's Setting Instrument, and if the customer pushes it, by
the same operation as mentioned in [vi] above (third touch, etc.), the amount deductedby the second touch motion is added to the balance of the electronic money medium,and the balance of the electronic money medium is written in the electronic money
medium in such a way that the balance is that after the addition of the abovementioned
deducted amount.
(6) Card-type FeliCa (Suica card, nanaco card, Edy card, etc.) is a computer with a CPU,9

antenna, memory, etc., and it has calculation and communication functions, etc.
(Exhibits Otsu 37, 38-1, and 38-2).
Therefore, the underlined operations mentioned in (5) above are shared, in a strict
sense, by the Defendant's Oil Feeding Apparatus and a FeliCa card (electronic money
medium). For example, in the underlined operation mentioned in [iv] above, theDefendant's Oil Feeding Apparatus sends the amount of payment or the amountcorresponding to the volume of oil to be fed to a FeliCa card, and the FeliCa card
conducts calculation for deducting the abovementioned amount from the balance of thecard and stores the balance after the deduction in the memory. In addition, the FeliCa
card sends information, such as the fact that the abovementioned amount was used at agas station, to the issuer of the card and the operator of the gas station, etc. through acommunication network connected to the Defendant's Oil Feeding Apparatus, andthereby enables the settlement, etc. between the issuer of the card and the operator of
the gas station.
In this manner, in a strict sense, the Defendant's Oil Feeding Apparatus does notconduct operations of calculations, including deduction from the balance of the card,
and writing.
(7)A. The structures and operations of the Defendant's Oil Feeding Apparatus
mentioned in (5)[i] to [vi] above are segmented as follows in line with the constituent
features of Invention 1 (underlined parts are not necessarily accurate in light of thespecification of FeliCa card, as mentioned in (6) above).
1g: An oil feeding apparatus characterized in that it has
1a: a reader which reads and writes the amount data stored in an electronic money
medium,1b: a means for measuring the volume of oil fed which measures the volume of oil, suchas gasoline and light oil, that was fed
1c1: a deposit data processing means which imports the amount designated by thecustomer not exceeding the amount indicated by the amount data in the storage m ediumthat was read by said reader before the start of the feeding of oil as deposit data, and1c2: writes the amount obtained by deducting the amount of said deposit data from said
amount data in said electronic storage medium as a new amount data,
1d: a feeding permission means which makes it possible to feed oil in a volume
corresponding to the amount data in the deposit data that was imported by the relevant
deposit data processing means,
1e: a calculation means which calculates the amount for refund in the case where acustomer finishes the feeding of oil before the volume of oil fed reaches the10

abovementioned volume of oil, and
1f: a charge settlement means which has the amount of refund calculated based on
abovementioned calculation be written in said electronic money medium in the casementioned above
B. Out of the findings in A. above, the parties dispute over the method of calculationthat is conducted in the calculations stated in 1e and 1f. The first -instance Defendant
alleged that the Defendant's Oil Feeding Apparatus directly calculates the amount of
payment corresponding to the volume of oil that falls short of the volume of oil basedon the amount designated by the customer, that is, the amount of refund, (1e) and writes
it in the electronic money medium (1f). On the other hand, the first-instance Plaintiff
alleged that the Defendant's Oil Feeding Apparatus conducts calculations similar toConstituent Features 1E and 1F of Invention 1. This court reserves a determination
concerning this point.
The first-instance Plaintiff also alleged as follows: [i] regarding the "electronicmoney medium" in 1a, 1c1, 1c2, and 1f, the first-instance Defendant acknowledged, inprior instance, that the Defendant's Oil Feeding Apparatus uses a "storage media,"
without specifying the relevant medium as such; therefore, an admission has been
established in this regard, and the first-instance Defendant is not permitted to dispute
over this point at this stage; [ii] regarding the "amount designated by the customer" in
1c1, the first-instance Defendant also acknowledged the fulfillment of Constituent
Feature 1C1 of Invention 1 without such limitation; therefore, an admission has also
been established, and the first-instance Defendant is not permitted to dispute over thispoint at this stage. This court examines the propriety of these allegations again later.
C. It is considered that the Defendant's Oil Feeding Apparatus can comprise thefollowing structure in relation to the operations mentioned in (5)[ii] to [iv] above.
2a: a deposit data processing means incorporates the amount that is less than the amountindicated by the amount of an electronic money medium before the start of the feedingof oil as deposit data and also deducts the amount of the deposit data from the electronicmoney medium
D. The operation mentioned in (5)[vii] above of the Defendant's Oil Feeding Apparatus
can be described as follows in line with the constituent features of Invention 3 as the
structure of a "refund means."
3a: A refund means which adds the amount of deposit data incorporated by said deposit
data processing means before the feeding of oil to the amount of the amount data in said
electronic money medium if an instruction to refund is given before the feeding of oil(8) Out of the constituent features of the Defendant's Oil Feeding Apparatus described11

as mentioned in (7) above, 1b, 1g, 2a, and 3a fulfill Constituent Features 1B, 1G, 2A,
and 3A of the Invention, respectively (this point is not disputed between the parties).
On the other hand, regarding other Constituent Features 1a, 1c, 1e, and 1f, theparties dispute over the fulfillment of the constituent features of the Invention (details
are described later).
3. Basic facts, etc. (2)The following facts, etc. are not disputed between the parties or are easily foundbased on evidence stated.
(1) Regarding Trial No. 145
A. Request for a trial
The first-instance Defendant filed a request for a trial for the invalidation of the
Patent with the Japan Patent Office on December 17, 2018, while this case was pending
in the court of prior instance (Invalidation Trial No. 2018-800145; hereinafter referred
to as "Trial No. 145"). The summary of grounds for invalidation is as follows.
Incidentally, Exhibits Ko in the same trial are described as "Trial Exhibit Ko A1,"
etc.
[Grounds for invalidation]
Invention 1 does not involve an inventive step in relation to the invention describedin Unexamined Patent Application Publication No. 1995-210754 (Exhibit Otsu 14-1
Publication (Trial Exhibit Ko A1); hereinafter referred to as "Trial Exhibit Ko A1
Publication").
B. Advance notice of a trial decision
On February 21, 2020, the Japan Patent Office ruled that the abovementioned
allegation of the first-instance Defendant is well-grounded and made an advance noticeof a trial decision to invalidate Invention 1.
C. Correction in question(A) On June 29, 2020, the first-instance Plaintiff filed a request for the correction of
the Patent (hereinafter referred to as the "Correction").
(B) The substantial content of the correction of Invention 1 was the correction of thestatement of Constituent Feature 1G as stated below, and underlined parts in Constituent
Features 1X and 1Y were added.
"1X: A fluid feeding apparatus for feeding fuel at a gas station which has…
1Y: wherein it is possible to suspend the oil feeding process after amount data in astorage medium is read by said storage medium reading and writing means before theamount not exceeding the amount indicated by said amount data in the storage medium12

is imported as deposit data"
The first-instance Plaintiff also corrected Invention 8 to add the structures that havesubstantially the same content as Constituent Features 1X and 1Y.
(C) The substantial content of the correction of Invention 3 is the addition ofConstituent Feature 3Z as stated below.
"3Z: also has a paper money insertion portion"(D) Incidentally, Claim 3 before the Correction cited Claims 1 and 2. In the Correction,
the part citing Claim 2 was made into an independent claim and was moved into a newly
added claim, Claim 9. Claim 9 also has structures corresponding to 1X, 1Y, and 3Z as
mentioned above.
(E) The Defendant's Oil Feeding Apparatus fulfills Constituent Features 1X and 3Z thatwere added by the Correction. However, whether the Defendant's Oil Feeding
Apparatus fulfills Constituent Feature 1Y is disputed between the parties as des cribedlater.
(2) Regarding Trial No. 146
A. Request for a trial
The first-instance Defendant filed a request for a trial for the invalidation of the
Patent (Invalidation Trial No. 2018-800146; hereinafter referred to as "Trial No. 146")
with the Japan Patent Office on the same date as the date on which the request for a
trial for invalidation mentioned in (1) above was filed.
Incidentally, Exhibits Ko in the same trial are sometimes described as "Trial Exhibit
Ko B1," etc.
[Ground for Invalidation 1]
Invention 1 does not involve an inventive step in relation to the invention that has
been publicly known to be worked in a stand-alone outdoor-installed settlement
terminal manufactured by the first-instance Defendant, SF-1000 (Exhibit Otsu 16-1
(Trial Exhibit Ko B1) is a manual for SF-1000 and is hereinafter referred to as "Trial
Exhibit Ko B1 Manual"; SF-1000 is hereinafter referred to as "Trial Exhibit Ko B1
Apparatus").
[Ground for Invalidation 2]
Invention 1 does not involve an inventive step in relation to the invention describedin Unexamined Patent Application Publication No. 1999-130198 (Exhibit Otsu 16-4
(Trial Exhibit Ko B4)) (Exhibit Otsu 16-4 is referred to as "Exhibit Otsu 3 Publication"
below in accordance with the judgment in prior instance as it is the same document as
Exhibit Otsu 3).
[Ground for Invalidation 3]
13

Invention 1 does not involve an inventive step in relation to the invention describedin Unexamined Patent Application Publication No. 1992-57794 (Exhibit Otsu 16-21(Trial Exhibit Ko B21); hereinafter referred to as "Trial Exhibit Ko B21 Publication").
B. Regarding Trial No. 146, neither an advance notice of a trial decision was given, nora request for correction was filed.
4. Issues (hereinafter the issues are referred to as "Issue 1," etc. in number order)(1) Whether the Defendant's Oil Feeding Apparatus falls within the technical scope ofInvention 1(2) Whether the Defendant's Setting Instrument falls under a product indirectly
infringing the Defendant's Oil Feeding Apparatus(3) Whether the first-instance Defendant is negligent in relation to infringement(4) Whether the Patent should be invalidated through a trial for patent invalidation(5) Whether damages exist and the amount of damages(6) Scope of products that are subject to a demand for an injunction and a demand for
disposal(omitted)
No. 4 Judgment of this court
1. Technical meaning, etc. of the Invention(1) Statements in the description in question
The description in question (the "Description") states the following in relation to
the problems to be solved by the Invention, means for solving the problems, and effect,
etc.
A. Technical field of the invention
The Invention relates to a fluid feeding apparatus and program that are structured
to use a prepaid card for the settlement of a charge for fluid. ([0001])
B. Prior art
In the past, in the case where a customer intended to use a fuel feeding system at aself-service gas station for the feeding of oil and pay a charge through a settlement
method using a prepaid card, they stopped their vehicle in front of an unoccupied
weighing machine and inserted a prepaid card into the card reader and writer(hereinafter referred to as "RW"), and then designated a type of oil to be fed with theoil type selection switch, inserted the oil feeding nozzle for the designated type of oil
into the oil feeding opening of their vehicle, and started the feeding of oil; when thefeeding of oil ended, the amount of payment corresponding to the volume of oil fed was
14

deducted from the balance data stored in the prepaid card, and the balance data waswritten in the prepaid card and the prepaid card was returned to the customer. ([0004])
C. Problems to be solved by the invention
The abovementioned prior art (hereinafter referred to as the "Prior Art") had thefollowing three problems (hereinafter referred to as the "Three Problems"): [i] as the
prepaid card cannot be seen from outside after it is inserted into the RW, the customer
is likely to forget the fact that the prepaid card is in the RW and leave the gas station
while leaving the prepaid card behind; [ii] if the prepaid card is inserted in the RW
installed on the weighing machine during the feeding of oil, it is inconvenient because
the customer cannot use the prepaid card for other purposes, such as purchasing a drink
by inserting the prepaid card into a drink vending machine, etc., during the feeding ofoil; [iii] a system structured to start the feeding of oil with part of the inserted prepaid
card sticking out of the card insertion slot prevents customers from forgetting their cards
after finishing the feeding of oil, but drivers cannot move away from the weighing
machine because of the possibility of theft of their prepaid cards as inserted prepaid
cards can be pulled out during the feeding of oil. ([0005] to [0007])
D. Means for solving the problems
As means for solving the Three Problems, the Invention adopted a means, etc.
whereby the following operations are controlled: before the start of the feeding of fluid,
amount (y) not exceeding the amount indicated by the amount data in a storage medium(x) is imported as deposit data, and the amount obtained by deducting amount y of therelevant deposit data from amount data x (x - y) is written as a new amount data; theflow volume corresponding to deposit data y is made available for feeding; and theamount to be charged after the feeding of fluid (z) is determined, the amount ofdifference between the amount imported as the deposit data y and the abovementioned
amount to be charged z (y - z) is added to the amount data in the storage medium (x y), and the amount data after the relevant addition ((y - z) + (x - y) = (x - z)) is written
in the storage medium. ([0009] to [0011] and [0016])
E. Effect of the invention
The adoption of the Invention makes it possible to take out a storage medium during
the feeding of fluid. Therefore, the problems mentioned in [i] and [ii] can be solved. In
addition, even if a storage medium is kept inserted during the feeding of oil, the amountof damage from the theft of the storage medium can be lowered as the balance of thestorage medium is zero or small. Therefore, the problem mentioned in [iii] above canbe solved. ([0073] and [0074])(2) Technical meaning of the application of debit processing before feeding15

Incidentally, in the Prior Art, a customer is to insert a prepaid card into the RW
before starting the oil feeding operation. However, debiting of payment for oil fed andwriting of the balance are conducted between the prepaid card and the RW after thecompletion of the oil feeding operation (hereinafter referred to as a "debit after
feeding"). Then, it could be considered that as a simpler means for solving the Three
Problems, it is only necessary to insert a prepaid card into the RW only after thecompletion of the oil feeding operation. In addition, even if it is necessary to insert a
prepaid card into an oil feeding apparatus before the start of the oil feeding operation
for the purpose of recognizing amount x indicated by the amount data in the storage
medium (hereinafter referred to as "card balance"), if it is necessary to do so only forthat purpose, the Three Problems can be simply solved by changing the specificationsof an oil feeding apparatus in such a way to enable a customer to take out a prepaid cardfrom the oil feeding apparatus after card balance x is read and to insert it again after thecompletion of the feeding of oil.
In the Invention, the process of debiting amount y before the start of the feeding ofoil (hereinafter referred to as a "debit before feeding") is added despite the existence of
these simple means for solving the problems. Moreover, the amount of payment for theoil actually fed z differs from amount y in many cases, and in such case, the p rocess of
settling difference between those amounts after the completion of the feeding of oil(hereinafter referred to as "settlement after feeding") is required. Therefore, the numberof times of processing, such as that required for rewriting of the amount data in a
prepaid card, increases from once to twice, and the entire process becomes more
complicated.
The Description states no reason for having adopted a structure, in which theprocess of "debit before feeding" is added in the Invention, though the adoption of thestructure results in the complication of the entire process. However, as long as use at aself-service gas station is supposed, it is reasonable to presumptively recognize that thereason therefor exists in that by the abovementioned simple means it is impossible toeliminate the possibility that a customer will leave the gas station without settling
payment after the completion of the feeding of oil (there is the following statement in[0002] and [0003] of Exhibit Otsu 4 (Unexamined Patent Application Publication No.
1999-11594; hereinafter referred to as "Exhibit Otsu 4 Publication"): for cash
settlement-based self-service gas stations, an "advance payment system" is preferable
to a "deferred payment system" because there is the "possibility that a customer will
escape without making payment for the oil fed").
That is, for operators of self-service gas stations designed for many and unspecified
16

customers, permitting the feeding of oil to customers without receiving any "security"
involves the risk of failure to collect payments. It can be said that the Prior Art, in whicha prepaid card was kept inserted in the RW during oil feeding operation, intended to
avoid the abovementioned risk by keeping the prepaid card, which embodies the val ue
corresponding to the balance, as security. The Invention can be considered to have
solved the Three Problems by a new structure wherein deposit data amount y is kept as
security in place of keeping an article, a prepaid card, as security, while avoiding therisk of failure to collect payments.
In other words, the Prior Art made it possible to operate a self-service gas station
while avoiding the risk of failure to collect payments through the combination of
keeping a prepaid card before the start of the feeding of oil (hereinafter referred to as"keeping of a medium") and debiting payment after the completion of the feeding of oil(hereinafter referred to as a "debit after feeding"). On the other hand, the Invention canbe considered not only to have made it possible to operate a self-service gas station
while avoiding the risk of failure to collect payments but also to have adopted the
combination of "debit before feeding" and "settlement after feeding" for the purpose ofsolving the Three Problems.
2. Regarding the structure, etc. of the Defendant's Oil Feeding Apparatus
According to evidence stated below and the entire import of oral arguments, thefollowing facts are found in relation to the Defendant's Oil Feeding Apparatus.
(1) In general, an oil feeding apparatus comprises an oil feeding machine that fe eds oilfor a customer, a weighing machine that measures the volume of oil fed and indicatesthe amount of payment obtained by multiplying the unit price of oil by the volume ofoil fed, a setting instrument that sets the volume of oil to be fed and the method of
payment to be made by a customer, etc. (entire import of oral arguments)
The Defendant's Oil Feeding Apparatus is an oil feeding apparatus comprising the
Defendant's Setting Instrument and the Defendant's Weighing Machine. The
Defendant's Setting Instrument has component structures, including a display and areader.
(2) When a customer uses an electronic money medium to pay for the oil fed and settles
a charge on the Defendant's Oil Feeding Apparatus, they conduct operations as statedin No. 2, 2.(5) above.
(3) The Defendant's Program is stored on the Defendant's Setting Instrument and is
executed in the Defendant's Oil Feeding Apparatus. This Defendant's Program has the
Defendant's Oil Feeding Apparatus conduct the operations mentioned in (2) abo ve in
response to operations conducted by a customer.
17(4) The Defendant's Weighing Machine and other weighing machines manufactured andsold by the first-instance Defendant are ordinarily set up to "omit" decimals in the final
calculation of the amount of a charge for oil fed. In that case, the amount of payment
for oil fed indicated on the weighing machine and the amount of purchase indicated on
the setting instrument become the same. If the abovementioned setting is changed to"round off decimals to the closest whole number," the amount of payment for oil fed
indicated on the weighing machine and the amount of purchase indicated on the setting
instrument may differ. (Exhibits Otsu 6 and 7)
The Defendant's Oil Feeding Apparatuses and the Defendant's Programs
manufactured and sold by the first-instance Defendant to former EMG-affiliated gas
stations do not include those in which the amount of refund differ from the amountobtained by subtracting the amount of purchase (the amount indicated on the
Defendant's Weighing Machine as the amount of payment) from the amount of payment(the amount debited from an electronic money medium) in the refund process.
(5) The manual for the Defendant's Oil Feeding Apparatus that is distributed to gas
stations at which the Defendant's Oil Feeding Apparatus is installed includes thefollowing statements. (Exhibit Otsu 11)
A. In relation to means for payment by electronic money before feeding, refund in cash
(cashing) is basically not permitted.
B. In the handling of electronic money paid before feeding, a customer is to purchasethe "right to feed oil" in the amount that they paid by electronic money. If a customer
finishes the feeding of oil before the volume of oil fed reaches the volume of oilcorresponding to the amount of their payment, the amount of money corresponding to
the volume of oil that was not fed is refunded to them as a refund for the oil that was
not fed. Specifically, if a customer deposits 5,000 yen by electronic money before
feeding, a transaction of the right to feed oil for 5,000 yen is made between the customer
and the service station. If the customer's vehicle is filled up by oil for 3,000 yen in thesubsequent feeding of oil, the refund process is conducted in a way that the service
station purchases oil for the remaining 2,000 yen from the customer.
(6) At former EMG-affiliated gas stations, it has become possible to settle a charge, etc.
by using a FeliCa card by filing an application with an oil wholesaler, EMG Marketing,since October 1, 2015. (Exhibit Ko 5)(7) In order to make it possible to make settlement by an electronic money medium on
the Defendant's Setting Instrument, it is necessary to store the Defendant's Program in
the Defendant's Setting Instrument and conduct an operation called activat ion at a gas
station where the Defendant's Setting Instrument is installed. The abovementioned
18

activation roughly comprises the following operations: [i] having an indication about
electronic money settlement be displayed on the operation screen of the set ting
instrument of the oil feeding apparatus, [ii] downloading a file relating to the setting ofelectronic money, rewriting an oil feeding control program and a program relating to
the calculation of the amount of electronic money, and putting a program for payment
by using an electronic money medium into an operable state, [iii] putting a contactless
credit card reader into a state available also for electronic money media, and [iv] making
communication settings, including assignment of an ID to each setting instrument andregistration of such IDs with a center that manages and communicates card information,
settlement information, etc.
3. Regarding Issue 1 (arguments that the Defendant's Oil Feeding Apparatus fulfills theconstituent features of the Invention (hereinafter referred to as "arguments on
fulfillment"))(1) Regarding Allegation on Non-infringement [iv]A. Whether or not an admission has been establishedThe first-instance Plaintiff alleged that the first-instance Defendant's Allegation on
Non-infringement [iv] constitutes withdrawal of its admission that had been establishedbased on its approval or disapproval in its written answer submitted in the prior instance,
and is impermissible.
However, whereas the question of whether or not an admission has been establishedshould be examined based on the entirety of the party's answer, the first-instance
Defendant, although "approving" that its product fulfills Constituent Feature 1C in its
written answer in prior instance, made the following allegations, for example, in thesection for its approval or disapproval of the first-instance Plaintiff's allegations onequivalence and the section for the first-instance Defendant's allegations in that written
answer: (a) in Constituent Feature 1C of Invention 1, the amount to be debited is set by
the system of the setting instrument, whereas in Constituent Feature 1c of the
Defendant's Oil Feeding Apparatus, the amount to be debited is designated by thecustomer; (b) in the Defendant's Oil Feeding Apparatus, the transactions are completed
in Constituent Feature 1c; and (c) in Constituent Feature 1F of Invention 1, the amountof payment according to the amount of the oil fed is calculated, and the difference withthe debited amount is returned, whereas in Constituent Feature 1f of the Defendant's
Oil Feeding Apparatus, the amount of payment for the sale and purchase that arise fromreturning the volume of oil that could not be fed is calculated. These allegations of thefirst-instance Defendant should practically be understood to be asserting that theprocesses conducted in the Defendant's Oil Feeding Apparatus differ from the processes
19conducted in Constituent Feature 1C of Invention 1. Thus, it can be said that it isinappropriate for the court of prior instance to have simply treated the fulfillment ofConstituent Feature 1C as an issue not disputed between the parties.
According to the above, it cannot be said that the first-instance Defendant's
Allegation on Non-infringement [iv] is impermissible because it constitutes withdrawalof its admission.
B. Regarding the amount to be debited(A) The specific way of determining the "amount not exceeding the amount indicatedby the amount data in the storage medium" that becomes the amount of a "debit before
feeding," that is, the "amount not exceeding the card balance," is not specified inConstituent Feature 1C1 of Invention 1. In consideration of the statements in the
Description, the amount of debit before feeding is the whole amount of the card balancein Working Example 1 ([0037]), and is the "amount set in advance" (hereinafter referred
to as the "preset amount") in Working Example 2 ([0049]).
Regarding the issue of who conducts the latter "setting," the first -instance Plaintiff
alleged that a customer also sets the amount in some cases. However, the amount set bya customer is supposed to differ in each case of the feeding of oil and can thus not be
considered to be the amount "set in advance". Therefore, the abovementioned allegation
cannot be accepted, and the abovementioned amount should be considered to mean theamount preset by the system of a setting instrument (however, if a customer presets theflat-rate amount to be debited separately from individual occasions of the feeding of oil,the amount may fall under the "amount set in advance"; however, "the volume of oil tobe fed or the amount to be paid" selected by a customer in specific operations [iii] and[iv] of the Defendant's Oil Feeding Apparatus is just to be designated at the time of anindividual occasion of the feeding of oil and differs in each case; therefore, it does not
fit the definition mentioned above).
(B) In this manner, the "amount designated by a customer," which is ordinarily supposed
to be first conceived of as the subject of "debit before feeding," is not described as aworking example, and only the "whole amount of the card balance" or the "amount set
in advance," which is set according to the convenience of gas station operators, isdescribed as a working example. This is probably because the amount of "debit before
feeding" in Constituent Feature 1C1 has the nature of "security" for payment for the oil
to be fed, as pointed out in 1.(2) above. That is, in the step of Constituent Feature 1Cof Invention 1, the amount of "debit before feeding" as security is determined without
regard to the volume of the oil to be fed, and the settlement process based on the premisethat oil was fed is scheduled to be conducted only in the steps of 1D to 1F. The
20

abovementioned settlement process includes the following steps: actual feeding of oil,calculation of a charge based on the volume of oil fed, deduction of the amount of
payment for the oil fed from the amount debited before feeding, and return of theremaining amount. In this manner, the amount of "debit before feeding" itself isdetermined not as the amount of payment for the oil actually fed but as security for theamount to be paid subsequently for the oil fed. Therefore, when determining the amountof debit before feeding, it is only necessary for gas station operators to set anappropriate amount from the perspective of the need to secure payment for the oil fed
and other perspectives, and it is not necessary to reflect customers' intention. Given thisperspective, the working examples do not describe a case where a customer determines
the amount to be debited before feeding because it is not necessary to do so. Therefore,
it is considered that Invention 1 does not assume a structure wherein a customer
determines the amount of "debit before feeding."
On the other hand, in the Defendant's Oil Feeding Apparatus, the "amount notexceeding the amount indicated by the amount data in the electronic money medium"that is the amount of "debit before feeding" is the amount to be paid corresponding to
the volume of oil to be fed that a customer designates before using the Defendant's Oil
Feeding Apparatus. This is because it is first necessary for a customer to purchase the"right to feed oil" by paying a certain amount in the procedure of settlement byelectronic money before feeding that is used in the Defendant's Oil Feeding Apparatus,
as mentioned in 2.(5) above. Therefore, the amount debited in Constituent Feature 1c1of the Defendant's Oil Feeding Apparatus is not security but payment for oil to be fed
itself, and it is thus never determined without regard to the customer's intention.
In this manner, the amount debited before feeding has entirely different meanings
between Invention 1 and the Defendant's Oil Feeding Apparatus, and in a reflection ofthat difference, in the Defendant's Oil Feeding Apparatus, the amount debited before
feeding is to be determined by a customer, which is not assumed in Constituent Feature
1C1 of Invention 1. Therefore, Constituent Feature 1c1 of the Defendant's Oil Feeding
Apparatus does not fulfill Constituent Feature 1C1 of Invention 1.
Incidentally, the first-instance Plaintiff alleged that working examples in which theamount of deposit data imported is the amount to be paid for oil to be fed as set by acustomer ("The amount to be paid for oil to be fed that you set is deposited" in (B) in[Fig. 9] and "Deposited amount/3,000 yen" in (C) therein) are also disclosed in [0061]
to [0068] and [Fig. 9] in the Description, etc. However, it is difficult to determine, basedon the indications in [Fig. 9], that the indications indicate that the amount designatedby the customer is "deposited." Taking into account that paragraphs [0061] to [0068]
21

are parts explaining Working Examples 1 and 2 and that [Fig. 9] is cited as part of that
explanation, it is rather far reasonable to consider that the indications in theabovementioned [Fig. 9] assume and explain the cases where the whole amount of thebalance of the medium or the preset amount is debited as in Working Examples 1 and
2, instead of assuming the case where a customer designates the amount to be paid foroil to be fed. Therefore, the first-instance Plaintiff's allegation cannot be accepted.
(2) Regarding Allegation on Non-infringement [v]A. Whether an admission has been established and whether the first-instance
Defendant's new allegations in the appeal instance constitute belated allegations orevidence
The first-instance Plaintiff alleged that Allegation on Non-infringement [v] isimpermissible because it constitutes withdrawal of its admission that had been
established based on its approval or disapproval in its written answer submitted in theprior instance and is also a belated allegation.
Certainly, in the approval or disapproval of Constituent Feature 1A, etc. in its
written answer in prior instance, the first-instance Defendant did not clearly dispute thepoint that the electronic money medium in the Defendant's Oil Feeding Apparatus falls
under the "storage medium" in the Invention. However, the first-instance Defendant had
alleged that the Defendant's Oil Feeding Apparatus is not the one that embodied thetechnical idea of the Invention. Therefore, it can be said that the Allegation on Non infringement [v] makes this allegation from the perspective of difference in thesettlement means used (prepaid card and contactless IC card). Consequently, as long as
the first-instance Defendant has not expressed approval or disapproval in order tosimply approve the overall arguments on fulfillment, it cannot be said that the firstinstance Defendant withdrew its admission and made a new allegation, and it is also
not reasonable to handle this allegation as a belated allegation.
Therefore, the abovementioned first-instance Plaintiff's allegation cannot be
accepted.
B. Whether a contactless IC card falls under a "storage medium"As the specific circumstances of the "storage medium" in the Invention, theDescription discloses an "electronic money card with built-in IC memory for storing
the amount data" ([0070]) and a "storage medium in a form other than a card, forexample, disc-shaped, tape-shaped, and plate-shaped medium" ([0071]), in addition toa magnetic prepaid card ([0033]). In this manner, the "storage medium" in the Invention
is not necessarily limited to a magnetic prepaid card.
However, in light of the fact that the technical meaning of the Invention is as22

mentioned in 1. above, unless a storage medium used is one for which settlement
through combination of "keeping of a medium" and "debit after feeding" can beassumed, the Three Problems never occur and it thus does not mean that the effect ofsolving the problems by the structure of the Invention was produced. Therefore, astorage medium for which settlement through the abovementioned combination cannot
be assumed does not fall under the "storage medium" in the Invention.
When examining this case from such perspective, as the electronic money medium
used in the Defendant's Oil Feeding Apparatus is a contactless IC card, it can be said
that in terms of its nature, the card is basically expected to be constantly held by acustomer in making settlement, etc. therewith, while only momentarily being held overthe RW as needed. Therefore, when developing an oil feeding apparatus for a self service gas station compatible with electronic money media, a structure wherein the oil
feeding apparatus "keeps" an electronic money medium as an article is hardly assumed.
Therefore, it is impossible for a person skilled in the art who intends to develop an oil
feeding apparatus compatible with electronic money media to adopt the Prior Art aslong as the "keeping of a medium" is the essential structure of the Prior Art.
Consequently, the electronic money medium used in the Defendant's Oil Feeding
Apparatus does not have the Three Problems that are to be solved by the Invention, andis also not subject to the means for solving the problems of the Invention. Therefore, it
should be considered not to fall under the "storage medium" stated in the Invention.
The Defendant's Oil Feeding Apparatus for which electronic money media can be used
is just an oil feeding apparatus for cash settlement, which adopts a settlement procedure
created by changing a basic settlement procedure, wherein a customer hands a certain
amount of cash they have to service staff or puts it in the money slot of the oil feedi ng
apparatus, for the feeding of oil within that amount, and receives the balance (change)
if any (this procedure is introduced in [0002] of Exhibit Otsu 4 Publication as prior art,
and it thus can be considered to have been well-known art) according to the nature ofelectronic money media. Therefore, it should be considered as an art establishedindependent of the technical idea of the Invention. The first-instance Defendant's
Allegation on Non-infringement [v] is considered to allege this point in the form thatthe electronic money medium in the Defendant's Oil Feeding Apparatus is not includedin the "storage medium" in the Invention, and is thus well-grounded.
C. Regarding the first-instance Plaintiff's allegations(A) The first-instance Plaintiff alleged that it is only necessary that the "storage
medium" in the Invention is a "storage medium" suitable for the operations ofConstituent Features 1C and 1F.
23

However, as an invention is a technical idea which serves as a means for solving aproblem, in the process of interpreting the meaning of the wording of claims reciting
the structure of an invention, the statements in the description concerning the problem
to be solved by the invention and the operation and effect to be provided by theinvention should be taken into account, and the meaning should be examined from theviewpoint of what operation and effect would be provided and what problem would be
solved by that structure of the invention. Nevertheless, the abovementioned firstinstance Plaintiff's allegation only concerns the form of the wording without examining
the wording from such perspective and is thus unreasonable.
Therefore, the abovementioned first-instance Plaintiff's allegation cannot be
accepted.
(B) The first-instance Plaintiff alleged that [0070] in the Description contains astatement citing an "electronic money card with built-in IC memory for storing theamount data" as an example of the "storage medium" and that a contactless IC card isalso included in such card.
However, the abovementioned statement only indicates that the storage element ofa card could be an IC memory instead of a magnetic material in response to statements
in [0033], including the statement that "prepaid card 71 comprises a magnetic card,"
and is not a statement indicating that the card operates without contact. Moreover, in
the abovementioned statement, the IC memory is "to store the amount data," and thestatement neither discloses nor suggests that the IC memory has calculation andcommunication functions like a contactless IC card. Therefore, it cannot be said that acontactless IC card falls under the "storage medium" in the Invention based on theabovementioned statement.
Therefore, the abovementioned first-instance Plaintiff's allegation cannot be
accepted.
(C) The first-instance Plaintiff alleged as follows: it is well-known that a contactless IC
card can be used while being put in a ticketing machine, and the Description indicatesthat a storage medium that is not continuously placed in the setting instrument can also
be used; therefore, it cannot be said that a contactless IC card does not fall under the"storage medium" in the Invention.
However, just as the basic facts stated above, when using an electronic money
medium in the Defendant's Oil Feeding Apparatus, the electronic money medium(contactless IC card) is only held over the RW and is not "continuously placed" in theapparatus. Although contactless IC cards in general can be used in the form as allegedby the first-instance Plaintiff, in the Defendant's Oil Feeding Apparatus, a contactless24IC card is used as an "electronic money medium" without being based on such form ofuse. Therefore, the technical meaning of the "electronic money medium" in the
Defendant's Oil Feeding Apparatus differs from that of the "storage medium" in theInvention.
Therefore, the abovementioned first-instance Plaintiff's allegation cannot be
accepted.
(3) Summary of the arguments on fulfillment
According to the above, the first-instance Defendant's Allegations on Noninfringement [iv] and [v] are well-grounded. Therefore, the Defendant's Oil Feeding
Apparatus and the Defendant's Program do not infringe the Patent without the need todetermine whether other allegations on non-infringement is established.
4. Regarding Issue 4 (arguments on invalidity)
For confirmation, arguments on invalidity are examined on the assumption that theamount of "debit before feeding" in Invention 1 also include the amount designated bya customer (see 3.(1)B.(B) above) and that a contactless IC card is also included in the"storage media" in the Patent (see 3.(2)B. above).
Incidentally, in this case, it is only necessary to examine the arguments on invalidity
in relation to Inventions 1 and 3 (those after the Correction). This is as instructed at the
beginning of No. 3, 4. above.
(1) Regarding whether the first-instance Defendant's new allegations in the appeal
instance constitute belated allegations or evidence
As the first-instance Defendant's Allegations on Invalidity A, B, and D were
presented after the court of prior instance disclosed its interim views concerning thearguments on infringement, they were treated by the court of prior instance as having
been presented belatedly. However, as already pointed out in the section concerning thearguments on fulfillment, it must be said that the manner in which the court of priorinstance arranged issues concerning fulfillment of Constituent Feature 1C1 (Allegation
on Non-infringement [iv]) and fulfillment of Constituent Features 1A, 1C, 1F3, and 1F4(Allegation on Non-infringement [v]) is defective in that an issue that should have beentreated as one disputed between the parties was treated as one involving no such dispute.
Given that matters such as whether and when the parties should make allegations on thearguments on invalidity cannot be considered separately from the process throughwhich the parties present allegations and evidence concerning the arguments on
fulfillment, in this case where it is considered that the parties should have presented
further allegations and evidence concerning the arguments on fulfillment, it is notreasonable to evaluate that the first-instance Defendant's allegations on invalidity were25

presented belatedly solely based on the fact that they were presented after the court ofprior instance disclosed its interim views concerning the arguments on infringement .
In addition, it can be said that, in this instance, the first-instance Defendantpresented allegations on invalidity regarding the abovementioned grounds forinvalidation immediately after filing the appeal.
According to the above, the abovementioned allegations on invalidity by the firstinstance Defendant cannot be evaluated as having been presented belatedly either fromthe viewpoint of looking at the overall proceedings in the prior instance and thisinstance or from the viewpoint of focusing only on the proceedings in this instance.
Consequently, none of the allegations on invalidity by the first-instance Defendant
should be dismissed without prejudice as a belated allegation or evidence.
(2) Regarding whether the Correction conforms to the requirements for correction
As the first-instance Defendant made a counter-defense of correction based on the
Correction in relation to all the arguments on invalidity, for convenience, this court firstclarifies that the Correction conforms to the requirements for correction as mentioned
below, and then examines the arguments on invalidity on the premise of the Corrected
Invention.
A. Regarding Constituent Feature 1X
The addition of Constituent Feature 1X is a correction to limit "fluid feeding" before
the correction to "oil feeding," and the parties do not dispute that it conforms to therequirements for correction.
B. Regarding Constituent Feature 1YConstituent Feature 1Y is a structure that makes it possible to suspend the oil
feeding process after the card balance is read before the amount not exceeding the cardbalance is debited.
The first-instance Defendant alleged as follows: the Invention is to solve theproblems in making and settling payment for the oil fed, and it is naturally premisedthat a user actually feeds oil; on the other hand, added Constituent Feature 1Y is a
structure that is originally based on the premise that oil is not fed, and it thus provides
new operation and effect that are completely unrelated to the purpose of Invention 1.
However, as the oil feeding process is supposed to be suspended at a self -service
gas station before the feeding of oil is started based on a user's intention, it cannot be
said that the situation where oil is not fed is against the natural premise of Invention 1.
Moreover, as the operation and effect provided by Constituent Feature 1Y are not clear
from the statements in the Description corresponding to Constituent Feature 1Y, it
cannot be said that Constituent Feature 1Y provides new operation and effect that are26

completely unrelated to the purpose of Invention 1 before the correction.
Consequently, the addition of Constituent Feature 1Y neither substantially enlarges
nor alters the claims in comparison to the claims before the correction.
C. Regarding Constituent Feature 3Z
Constituent Feature 3Z is a structure that additionally has the paper money insertion
portion to make it possible to handle paper money (cash).
The first-instance Defendant alleged as follows: the Invention is an invention thatis naturally premised on payment by using a prepaid card, etc., and the addition of astructure that makes it possible to make payment by using cash, etc. causes the exertionof new operation and effect that are completely unrelated to the operation and effect of
the Invention as stated in the Description; therefore, the addition substantially enlarges
and alters the claims.
However, as the Description discloses a specific embodiment with the paper money
insertion portion ([0024], [0026], [0031], [Fig. 2], and [Fig. 3]), it cannot be said thatpayment by using cash, etc. is completely unrelated to the Invention. In addition, it
cannot be said that the fact that cash can be used in addition to a prepaid card provides
new operation and effect that are completely unrelated to the purpose of the Invention.
Therefore, the addition of Constituent Feature 3Z neither substantially enlarges nor
alters the claims in comparison to the claims before the correction.
(3) Regarding the first-instance Defendant's Allegation on Invalidity B
A. Regarding Trial Exhibit Ko B1 Apparatus as the primary cited invention(A) The public relations magazine published by the first-instance Defendant on April
30, 2000 (Exhibit Otsu 16-19) carries an article to the effect that a "stand-alone
settlement terminal SF-1000" is actually operating at self-service gas stations.
According to photographs and explanatory text in that article, the operation manual
published on March 1, 2001 (Exhibit Otsu 16-18) is recognized as a manual for thesame model as that described in the abovementioned public relations magazine. Then,the same manual and Trial Exhibit Ko B1 Manual (Exhibit Otsu 16-1) were publishedon the same date, and they differ only in that the display is "LED" or "LCD" and do notdiffer in the operational procedures described, the operations of the terminal that arepresumptively recognized from those procedures, and the content of the programs.
Therefore, the structure of Trial Exhibit Ko B1 Apparatus (SF-1000) that had been
publicly known to be worked on the filing date in question can be found based on Trial
Exhibit Ko B1 Manual (excerpt from the manual is indicated in an attachment to thisjudgement).
(B) In this regard, the first-instance Plaintiff alleged that the structure (Trial Exhibit Ko27

B1 Invention) of Trial Exhibit Ko B1 Apparatus as of 2000 (Exhibit Otsu 16-19) cannot
be found based on Trial Exhibit Ko B1 Manual that was published in 2001 (Exhibit
Otsu 16-1) as the operation manual for a product cannot be published after the releaseof the product. However, it is not impossible that an operational manual is prepared a t
a later date due to republication, revision, etc. Therefore, it should be said that it is notprecluded from using Trial Exhibit Ko B1 Manual as evidence to find an invention that
had been publicly known to be worked at least as of March 1, 2001, on which the manualwas prepared (this date is before the filing date of the Patent). Consequently, theabovementioned allegation is unreasonable.
B. The result of comparison between the structure in which Invention 1 (before theCorrection) is applied to an electronic money medium (contactless IC card) and thestructure in which cash is used on Trial Exhibit Ko B1 Apparatus (cited invention) is asindicated in the following table (for the latter, numbers in parentheses indicate therelevant pages of Trial Exhibit Ko B1 Manual, and matters without parentheses arethose that are naturally recognized presumptively based on the general knowledge).
Invention 1

Cited invention

1A: an RW which reads and 1a: for customers who canwrites the amount data stored count the amount of money ininanelectronicmoney their wallets and put cash in

medium,1B:ameasurement

and out from their wallets
flow

volume 1b: has a weighing instrument Common

meanswhich [7]featuremeasures the volume of fluid
fed,
1C1: a deposit data processing 1c1: accepts and takes in papermeans which imports amount y money for amounty not

not exceeding the balance of exceeding amount of cash x
the electronic money medium that a customer has from theread by said RW before the paper money insertion slot ofstart of the feeding of said the apparatus before the start
fluid as deposit data and1C2:

writestheof the feeding of oil [1-5],

amount 1c2: the amount obtained byobtained by deducting amount deducting the abovementioned
y of the relevant deposit data amount y that was taken intofrom said balance x in the the apparatus from amount x

28

electronic money medium as a that the customer had before
new amount data,

putting paper money in theapparatus (x - y) remains in thecustomer's wallet

1D:afeeding

permission 1d: it becomes possible for the Common

means which makes it possible customer

to

feed

oil feature

to feed the fluid in a volume corresponding to amount y ofcorresponding to amount y of the paper money that was
the abovementioned deposit taken into the abovementioned
data that was imported by the apparatus [1-6]
relevant

deposit

data

processing means,
1E: a calculation means which 1e:

has

the

functionto Common

calculates a charge to be made calculatetheamountof feature

based on the flow volume payment for the oil fed basedvalue measured by said flow on the flow volume value
volume measurement means, measured by the weighing
and
1F1:
means

machineachargesettlement 1f1:

which

has

calculates

amountz Commonsaid corresponding to the flow feature

calculation means calculate volume value measured by theamount z corresponding to the weighing

machineflow volume value measured abovementioned
by

said

flow

by

the

calculation

volume function [1-7]measurement means,
1F2:

deducts

therelevant 1f2: deducts amount z from Common

calculated charge z from the amount y that was taken into feature
amount of said deposit data y,

the apparatus [1-7],

1F3: adds the amount of the 1f3: change (y - z) is emitted
remaining difference data (y – from the paper money slot andz) to the amount data (x – y) in the coil return [4] [1-7], andsaidelectronic

medium, andmoney the customer puts the change
in his/her wallet containing theamount (x - y)

1F4: writes the amount data 1f4: the amount of cash that29

after the relevant addition (x - the customer has becomes (x z) in said electronic money z)
medium
1G: A fluid feeding apparatus 1g: An oil feeding apparatus

Commoncharacterized in that it hasfeatureC. Whether a person skilled in the art could have easily conceived of differences
The structures of Invention 1 which are not determined to be common features inthe table above constitute differences.
However, all of those structures are those that an oil feeding apparatus for a self service gas station naturally come to have when replacing payment by cash in Trial
Exhibit Ko B1 Apparatus with payment by an electronic money medium. That is, theabovementioned differences can be summed up in the following two points: in Invention
1, the apparatus has an RW; the amount data of electronic money is electronicallyrewritten by the RW. However, all of those structures are outcomes that inevitably arise
as a result of having monetary value embodied in a tangible object, currency, in the caseof cash being embodied in an intangible object, electronic information.
Moreover, replacement of payment by cash with payment by an electronic money
medium can be easily conceived of from the word "money" in the term "electronicmoney." For example, the following matters are stated in Exhibit Otsu 16-12 (Electronic
Commerce Promotion Council of Japan, "Interim Report on the Study of Standard
Settlement Model Relating to Mobile EC," issued in March 2001): a contactless IC cardis used as "electronic money"; and a mobile phone with built-in FeliCa can serve as an"electronic wallet." These statements provide motivation for the replacement of
payment by cash with payment by electronic money medium.
Based on the above, it can be said that it was merely the result of the exercise ofordinary creativity and was easy for a person skilled in the art to conceive of thestructures of Invention 1 pertaining to the abovementioned differences.
D. Regarding the first-instance Plaintiff's allegations concerning whether a person
skilled in the art could have easily conceived of Invention 1(A) The first-instance Plaintiff alleged as follows: if the cited invention is found basedon a structure in the case where cash is put in Trial Exhibit Ko B1 Apparatus, its
structure becomes totally different from that of Invention 1 in which a storage medium,such as a prepaid card, is used, and the Three Problems cannot occur.
However, if a contactless IC card is used as the "storage medium" in Inventi on 1,
the Three Problems also cannot occur in Invention 1 in the first place, as instructed in
3.(2) above. Nevertheless, in terms of the fulfillment of the constituent features, the30

first-instance Plaintiff alleged that the "storage medium" in Invention 1 includes acontactless IC card that is not premised on the solution of the Three Problems. However,in response to the allegation on invalidity based on the art in which the storage medium
in the cited invention is replaced with a contactless IC card, the first-instance Plaintiff
alleged that the allegation on invalidity cannot be established as the Three Problems are
not solved. These allegations made by the first-instance Plaintiff must be considered toconstitute self-contradiction.
Therefore, the abovementioned first-instance Plaintiff's allegation cannot be
accepted.
(B) The first-instance Plaintiff argued that the first-instance Defendant alleges the lackof an inventive step in the Invention by arguing that the Invention can be reachedthrough the combination of two easy steps.
However, as instructed in C. above, if payment by cash in Trial Exhibit Ko B1
Apparatus is changed to payment by an electronic money medium, the apparatus
naturally comes to have the structures of Invention 1 indicated in the table in B. above,and it is not necessary for a person skilled in the art to "conceive of" those structures.
Therefore, the abovementioned first-instance Plaintiff's allegation cannot be
accepted.
(C) The first-instance Plaintiff alleged that Invention 1 does not fall under the"systematization of service or a method for doing business performed by humans,"
which can be easily conceived of by a person skilled in the art according to the Japan
Patent Office's Examination Guidelines. However, as mentioned in C. above, thegrounds for the allegation that a person skilled in the art could have easily conceivedof Invention 1 are that a person skilled in the art could have easily conceived ofreplacing payment by cash with payment by an electronic money medium and that if aperson skilled in the art conceives of this point, they naturally arrive at the structuresof Invention 1 pertaining to the differences (this is a natural outcome and does not
require the process of conception), and whether Invention 1 falls under the"systematization of service or a method for doing business performed by humans" is
not questioned. Therefore, the first-instance Plaintiff's allegation does not affect theabovementioned determination.
E. Regarding involvement of an inventive step in the Corrected Invention(A) Regarding Constituent Feature 1X
As Trial Exhibit Ko B1 Apparatus is an oil feeding apparatus, Constituent Feature
1X does not constitute a difference.
(B) Regarding Constituent Feature 1Y
31

As long as an oil feeding apparatus for a self-service gas station is an automatic
vending machine for the general public, it is considered to fall within the generalknowledge to make it possible for customers to suspend operation at any stage and not
to require customers to bear a special burden in the case of suspension of operation.
Neither specific structure for suspending the oil feeding process before the card balanceis read nor the technical meaning thereof is clear in the Corrected Invention.
Therefore, it should be said that a person skilled in the art could have easily
conceived of adding such structure to the cited invention based on a method that falls
within the general knowledge.
(C) Regarding Constituent Feature 3Z
Trial Exhibit Ko B1 Manual itself also discloses the idea of making it possible tosettle payment by cash on an oil feeding apparatus by providing a paper money insertion
slot on the apparatus in addition to a card insertion slot, and the idea of making it
possible to respond to multiple settlement means on an automatic vending machine iswell-known art (Exhibit Otsu 3 Publication, etc.). Moreover, Constituent Feature 3Z
only specifies that the apparatus has a paper money insertion slot, and the Description
does not disclose processing procedures, etc. when using a prepaid card and cash incombination. Therefore, a special technical meaning that differs from that of theabovementioned well-known art is not clear.
Consequently, it should be said that a person skilled in the art could have easily
conceived of the addition of such structure based on well-known art.
(D) According to the above, the constituent features added by the Correction do notprovide a basis for the involvement of an inventive step.
F. According to the above, Allegation on Invalidity B is well-grounded.
(4) Regarding Allegation on Invalidity A
A. Comparison between Invention 1 and Trial Exhibit Ko A1 Invention
The result of comparison between Invention 1 and Trial Exhibit Ko A1 Invention isas indicated in the table below. Incidentally, as the working example described in Trial
Exhibit Ko A1 Publication is an example relating to a gas supply unit, Trial Exhibit Ko
A1 Invention is described based on that example in the table below.
Invention 1

Trial Exhibit Ko A1 Invention

1A: a storage medium reading 1a: its meter side control unit Common
and writing means which reads 10 has a portion that "receives feature
and writes the amount data the prepaid amount stored instored in a storage medium,

contactless prepaid card 1 by32

meter side radio receiving
portion 8 and transmits thebalance to prepaid card 1 via
meter side radio transmitting
portion 11,"1B:ameasurement

flow

volume 1b: wherein it has flow volume Common

meanswhich detection device 15,

featuremeasures the volume of fluid
fed,
1C1: a deposit data processing 1c: wherein the full amount x Common
means which imports amount y of the prepaid amount received featurenotexceeding the amount by said

meter

side

radio

indicated by amount data x in receiving portion 8 is stocked
the storage medium that was in ROM 9 on the meter side (inread by said storage medium this state, a user can use gas atreading and writing means any time by opening the gas
before the start of the feeding cock), and by running fixedof said fluid as deposit data, amount depositing circuit 18,
wherein deposit data y may be it is possible to leave only
designated by a customer, andamount y to be deposited as

amount designed by a user (customer)
obtained by deducting the in the meter and return theamount of the relevant deposit remaining amount (x – y) to
1C2:

writesthedata from the amount of said prepaid card 1,
amount data (x - y) in saidstorage medium as a newamount data,
1D: makes it possible to feed 1d: wherein it has a means for Common
the

fluid

in

a

volume calculating the upper limit of featurecorresponding to the amount the volume of gas to be useddata in the deposit data that corresponding to amount y
was imported by the relevant stocked in ROM 9 on the meter
deposit data processing means, side, and
1E: a calculation means which

Difference 1

calculates a charge to be made33

based on the flow volume
value measured by said flow
volume measurement means,
and
1F1:
means

a

chargesettlement 1f: wherein if there is the Difference 2

which

has

said remaining

amountafter

calculation means calculate settlement of a charge based on
the amount corresponding to the volume used up to then, the
the

flow

volumevalue remaining amount is stocked

measured by said flow volume and can be refunded to prepaid
measurement means,
1F2:

deducts

thecard 1
relevant

calculated charge from theamount of said deposit data,
1F3: adds the amount of theremaining difference data to
the amount data in said storage
medium, and
1F4: writes the amount data
after the relevant addition insaid storage medium
1G: A fluid feeding apparatus A contactless prepaid cardcharacterized in that it has

based gas meter characterized
in thatB. Regarding Difference 1(A) Content of Difference 1
It is unclear whether flow volume detection device 15 in Trial Exhibit Ko A1
Invention has the "calculation means" in Constituent Feature 1E of Invention 1.
(B) Whether a person skilled in the art could have easily conceived of Difference 1
Trial Exhibit Ko A1 Publication contains the following statement: "… volume ofgas corresponding to the deposited amount is calculated, and when this volume becomes
zero, shutoff device 16 is shut off. Further, the supply of gas can be stopped by theuser's intention during the supply of gas. In this case, the charge for gas used up to thenis settled" [0019]. In light of this statement, it can be said that it is also suggested that
Trial Exhibit Ko A1 Invention has a means for calculating a charge based on the flow

34

volume of fluid. In addition, it is obvious that an oil feeding apparatus for feeding fuelat an automated gas station is supposed to naturally have a means for calculating acharge based on the volume of oil fed.
Therefore, Difference 1 is not a substantial difference, or even if it is a difference,
it can be said that a person skilled in the art could have easily conceived of adopting
Constituent Feature 1E pertaining to Difference 1 in Invention 1, which is a fluid
feeding apparatus for feeding fuel at a gas station.
C. Regarding Difference 2(A) Content of Difference 2
The inventions have commonality only in terms of a "charge settlement means
which has the calculation means calculate the amount based on the volume used up tothen, deducts the amount of the relevant calculated charge from the amount of said
deposit data, and refunds the amount of the remaining difference data to said storage
medium." However, in Trial Exhibit Ko A1 Invention, [i] the charge settlement means"has the calculation means calculate the amount based on the volume used up to then,"but it is unclear whether it "has said calculation means calculate the amountcorresponding to the flow volume value measured by a flow volume measurementmeans" like Invention 1. [ii] It is also unclear whether the process of "refund to a storage
medium" in Trial Exhibit Ko A1 Invention includes the process of "addition to theamount data in the storage medium" and the process of "writing of the amount data after
the relevant addition in said storage medium."(B) Whether a person skilled in the art could have easily conceived of Difference 2
a. Regarding the point mentioned in [i] above
It is obvious to a person skilled in the art that the "volume used up to then" isdetected by "flow volume detection device 15" in Trial Exhibit Ko A1 Invention.
Moreover, it is easy for a person skilled in the art to structure an oil feeding apparatus
so that it has a means for calculating a charge based on the volume of oil fed (B. above).
Therefore, a person skilled in the art could have easily conceived of the structure ofInvention 1 pertaining to the point mentioned in a. above.
b. Regarding the point mentioned in [ii] above
In Trial Exhibit Ko A1 Invention, in Constituent Feature 1c, by running fixedamount depositing circuit 18, it is possible to leave only the amount to be deposited in
the meter and return the remaining amount to prepaid card 1. Therefore, it can be said
that Trial Exhibit Ko A1 itself suggests the following: if intending to further return theremaining amount to prepaid card 1, to which the remaining amount was returned by
fixed amount depositing circuit 18, through the refund in Constituent Feature 1f, that35

process is to be conducted by a method of further addition to the amount da ta of theremaining amount returned to prepaid card 1 by fixed amount depositing circuit 18, andthe amount adding the remaining amount arising from the refund is to be written as thebalance of prepaid card 1. In general, it is extremely natural to adopt a structure wherein
the amount of refund is added to the amount data in a storage medium and the amountdata after the relevant addition is written in said storage medium in order to make a
refund in the amount data of the remaining amount after a transact ion in the storage
medium (incidentally, on page 32 of the "advance notice of a trial decision" (Exhibit
Otsu 47) in Trial No. 145, multiple patent documents are cited and the court finds that
it is a well-known art).
Therefore, a person skilled in the art who came across Trial Exhibit Ko A1 Invention
could have easily considered the structure of Invention 1 pertaining to Difference 2 asa matter required to identify the invention in light of the abovementioned well -known
art only by exercising ordinary creativity.
D. Regarding involvement of an inventive step in the Corrected Invention(A) Regarding Constituent Feature 1X
Constituent Feature 1X to the effect that a fluid feeding apparatus is "for feeding
fuel at a gas station" is added in Corrected Invention 1. On the other hand, Trial Exhibit
Ko A1 Invention is not specified as such. Therefore, this point constitutes a difference.
However, the essential feature of the Invention exists in the settlement procedure ata self-service gas station and does not exist in the flow volume measurement means(meter) itself. With regard to Constituent Feature 1X of Corrected Invention 1, theapplication of the contactless prepaid card-based meter in Trial Exhibit Ko A1 Invention
to a "fluid feeding apparatus for feeding fuel at a gas station" has commonality in termsof a settlement procedure used for a meter that feeds fluid in return for a value. In
addition, Trial Exhibit Ko A1 Publication includes a statement to the effect that theinvention can also be used for a water meter. On the other hand, in [0069] in the
Description, it is stated that the invention is also applicable to fluid other than fuel, suchas drinking water. Therefore, it can be said that the technical fields of those inventions
are related to each other. Consequently, it can be said that a person skilled in the art
could have easily conceived of obtaining Constituent Feature 1X of Corrected Invention
1 by applying Trial Exhibit Ko A1 Invention to fuel oil, not limiting the usage of Trial
Exhibit Ko A1 Invention to the usage indicated as an example in Trial Exhibit Ko A1
Publication.
(B) Regarding Constituent Features 1Y and 3Z
A person skilled in the art could have easily conceived of the structures of Corrected36Invention 1 pertaining to Constituent Features 1Y and 3Z, as instructed in (3)E. above
in relation to Allegation on Invalidity B.
E. Regarding the first-instance Plaintiff's allegations(A) The first-instance Plaintiff alleged that Invention 1 and Trial Exhibit Ko A1
Invention differ in the technical field. However, this allegation cannot be accepted as
mentioned in D. above.
(B) The first-instance Plaintiff first alleged that Constituent Feature 1C of Invention 1
and Constituent Feature 1c of Trial Exhibit Ko A1 Invention are different from eachother, and then alleged as follows: in Trial Exhibit Ko A1 Invention, in terms of thecharacteristics of the invention as a feeding apparatus for water, gas, etc. in cottage
areas, a customer, in principle, deposits the full amount, and the adoption of a structure
wherein "by running fixed amount depositing circuit 18, it is possible to leave only theamount to be deposited in the meter and return the remaining amount to prepaid card
1" is merely an additional matter; there is a disincentive to change the design of such
Trial Exhibit Ko A1 Invention and adopt the structure of Invention 1 wherein only partof the balance of a card is imported, and there is also no motivation to do so; in addition,even if a person skilled in the art can conceive of importing part of the balance of acard, there is a disincentive to change Trial Exhibit Ko A1 Invention to adopt thestructure of Invention 1 and there is also no motivation to do so as Trial Exhibit Ko A1
Invention has already realized the same effect by the "fixed amount depositing circuit."
However, the basic operations of Constituent Feature 1C of Invention 1 andConstituent Feature 1c of Trial Exhibit Ko A1 Invention are designed to recognize
amount x stored in a prepaid card, transfer amount y in the stored amount to the feeding
apparatus, and write the remaining amount (x – y) in the prepaid card, and these
operations are common to those constituent features. In addition, there is no sign that a
special device for conducting such operations is used in Invention 1, and Invention 1 isconsidered to achieve such operations by general means. Therefore, it is not found thatthose constituent features are substantially different from each other.
Consequently, the abovementioned first-instance Plaintiff's allegation cannot be
accepted.
(C) Regarding Constituent Features 1X and 1Y, the first-instance Plaintiff also allegedthat there is a disincentive or no motivation. However, both of those constituent features
are nothing more than a method that falls within the general knowledge or theapplication of well-known art. Therefore, no special motivation is required, and nodisincentive exists. Therefore, the first-instance Plaintiff's allegation cannot be accepted.
(D) The first-instance Plaintiff alleged that there is a disincentive to add Constituent
37

Feature 3Z that is designed for the combined use of paper money to Trial Exhibit Ko
A1 Invention, which is designed to solve the problem of inconvenience arising from theuse of coins (cash).
However, the fact that a prepaid card is a settlement means that has been developed
to eliminate the inconvenience of settlement by cash is not exclusively related to Trial
Exhibit Ko A1 Invention. However, cash is still the most versatile settlem ent means
today. Therefore, the fact that many automatic vending machines compatible withprepaid cards are also designed to be compatible with cash falls within the generalknowledge. In addition, Constituent Feature 3Z of Corrected Invention 3 merely sta testhat the fluid feeding apparatus has a paper money insertion portion, and does not
specify how settlement by using paper money is made and how that settlement by using
paper money is related to the entire settlement procedure of the Corrected Invention byusing a "storage medium" (card). Therefore, it is impossible to find that settlement byusing paper money has a special technical meaning. In that case, provision of a paper
money insertion slot on Trial Exhibit Ko A1 Invention based on a general metho d isalso nothing more than a mere matter of design variation. Therefore, motivation is not
required to do so, nor there is disincentive to do so.
Consequently, the abovementioned first-instance Plaintiff's allegation cannot be
accepted.
(E) Incidentally, as mentioned at the beginning of this section, this examination of thearguments on invalidity is based on the premise that the Defendant's feeding apparatus
also fulfills the constituent features of Invention 1 as Invention 1 also includes the cases
where a customer designates the amount of debit before feeding. Therefore, thefollowing argument cannot be established: in Trial Exhibit Ko A1 Invention, a customer
designates the amount of debit before feeding, while Invention 1 does not include suchdesignation method; therefore, this point constitutes a difference, and this difference
cannot be overcome.
(5) Summary concerning the arguments on invalidity
According to the above, the first-instance Defendant's Allegations on Invalidity B
and A are well-grounded. Therefore, without the need to determine whether otherallegations on invalidity are established, the Patent should be invalidated through a trial
for patent invalidation even after the Correction.
5. Conclusion
Accordingly, the first-instance Plaintiff's claims are groundless and should bedismissed with prejudice on the merits. The judgment in prior instance that partiallyupheld the first-instance Plaintiff's claims is unreasonable. Therefore, based on the38

appeal filed by the first-instance Defendant, the part of the judgment in prior instancewhich is against the first-instance Defendant is reversed, and all of the first-instancePlaintiff's claims pertaining to the same part is dismissed with prejudice on the merits.
The appeal filed by the first-instance Plaintiff has no grounds and therefore is dismissedwith prejudice on the merits. The judgment is rendered as indicated in the main text.
Intellectual Property High Court, Third Division
Judge: UEDA Takuya
Judge: TSUNO Michinori
Presiding Judge TSURUOKA Toshihiko is unable to sign and seal this document due tohis retirement.
Judge: UEDA Takuya

39

Attachment
Item List
1. Product name: Setting instrument "POS 21"
2. Product name: Setting instrument "POS 21" (one in which the program stated in the
Program List attached to this judgment is stored)

40

Attachment
Program List
(The principal claim is made based on the structure not including the underlined parts,and the alternative claim is made based on the structure including the underlined parts.)
A program having constituent features a to f and y stated below, which is executed onan oil feeding apparatus comprising a setting instrument. However, it includes a
program that has the process of instructing an electronic money medium and a thi rdparty organization, in place of the setting instrument, to deduct or add the designatedamount when writing the amount data in the electronic money medium.
a: A program which is executed on an oil feeding apparatus that makes it possible tofeed oil in a volume corresponding to the amount data imported as deposit data,y: which is a program for making it possible to suspend the oil feeding process after theamount data in a storage medium is read by a reader before the amount not exceeding
the amount indicated by the amount data in said electronic money medium is imported
as deposit data,
f. by executing the following steps in a sequential order:
b: the first step in which the amount not exceeding the amount indicated by the amountdata in an electronic money medium that was read by the reader before the start of thefeeding of oil is imported in the oil feeding apparatus as deposit data and the amountobtained by deducting the amount of the relevant deposit data from the amount of said
amount data in said electronic money medium as a new amount data,c: the second step in which it is made possible to feed oil in a volume corresponding to
the amount data in the deposit data that was imported in said first step,d: the third step in which the volume of oil fed measured by a means for measuring thevolume of oil that was fed from the volume of oil corresponding to the amount data inthe deposit data and a charge to be added is calculated based on the amount of money
corresponding to the remaining volume of oil to be fed, ande1: the fourth step in which the amount of money corresponding to said remaining
volume of oil to be fed is calculated,
e2: the relevant calculated amount is added to the amount data in said electronic money
medium, ande3: the amount data after the relevant addition is written in said electronic money
medium

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42

LCD
display

Paper money return slot

Paper money insertion slot

Receipt ejection slot

Card insertion slot
Customers insert a card,such as a member card andcredit card, in this slot.

Prepaid card insertion slot

Depending on the specifications, some types of outdoor terminals do not have the"prepaid card insertion slot" or the "card insertion slot." Please note that this manual
describes an outdoor terminal with both slots as an example.

Handling of cards

Coin return

Coin slot

LED operation panel
Customers actuallyoperate the panel, andthe panel indicates thedetails of operations.

[Outside abuilding]

Other lanes

Lane 2

PIF is not necessary
in the case of using
only weighing
machines made by
Comota, "G-STAR."[Self-service console][Weighing machine]

Lane 1[Outdoor terminal][Expansion unit][Prepaid card reader][P05 body][Inside a building]

Proximity sensor
The sensor detects thepresence of customers.
[A4-compatible printer]

An example of connection between an outdoor terminal and peripherals is indicated below.
Incidentally, connection differs for each customer, so the following connection is not always
applicable. For details, please make inquiries with the business offices of Comota Co., Ltd.

This manual explains the operations of outdoor terminals such as
the following.
Intercom
This is an intercom forcalling staff.

Diagram of connection between an outdoor
terminal and peripherals

Part names and functions

Attachment

Extract from Trial Exhibit Ko B1 Manual

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