Patent
Right

Date
Case number

May 26, 2023
2022 (Ne) 10046

Court

Intellectual Property
High Court, Special
Division- A case in which, concerning an invention of a system equipped with multiple
terminal devices connected to a server via a network, the court held that the act of
newly creating a system, which consists of a server existing outside Japan and user
terminals existing in Japan, is an act of working the above invention and falls under"production" as prescribed in Article 2, paragraph (3), item (i) of the Patent Act.
Case type: Injunction, etc.
Result: Partial modification of the prior instance judgment, Partial appeal dismissed
References: Article 2, paragraph (3), item (i) of the Patent Act
Related rights, etc.: Patent No. 6526304
Summary of the Judgment
1.

Background
The present case is one in which Appellant, who has the patent right (Patent

Right) for the patent registered as Patent No. 6526304 with the title for the invention,"Comment Delivery System" (Patent), argued that the systems (Defendant's Systems)
for online video delivery services with commentary (Defendant's Services), which areoperated by Appellee Y1, a US corporation, belong to the technical scope of theinvention claimed in the Patent, and that the act by Appellee Y1 of distributing, fromthe servers (Defendant's Servers) existing in the US for use for Defendant's Services,
the files (Defendant's Files) pertaining to Defendant's Services to the user terminals
existing in Japan, falls under "production" (Article 2, paragraph (3), item (i) of the
Patent Act) of Defendant's Systems and infringes on Patent Right, and also argued
that Appellee Y2 substantively engages in the above act jointly with Appellee Y1,
thereby demanding against Appellee, et al., pursuant to Article 100, paragraphs (1)and (2) of the Patent Act, for an injunction against the distribution of Defendant'sFiles to the user terminals existing in Japan, and for deletion of the programs for
Defendant's Servers, and for removal of Defendant's Servers, as well as for joint
payment of a sum of 10,000,000 yen along with delay charges as part of compensationon the ground of joint tort of patent infringement.
In the prior instance, the court dismissed Appellant's claims entirely bydetermining as follows: Defendant's Systems satisfy all constituent features of theinvention claimed by the Patent, and belong to the technical scope thereof; however,from the perspective of territorial principle, the court's interpretation is that in orderfor the "production" according to Article 2, paragraph (3), item (i) of the Patent Act toibe applicable, a product which satisfies all constituent features of the patented
invention must be newly created in Japan; meanwhile, Defendant's Servers, which areconstituent features of Defendant's Systems, all exist in the United States, and it is
impossible for only the user terminals existing in Japan to satisfy all constituent
features of the invention claimed by the Patent; as such, it cannot be acknowledgedthat Appellee, et al. "produced" Defendant's Systems in Japan; in addition, it cannot
be acknowledged that Appellee Y2 was engaging in work related to Defendant'sServices; accordingly, the court cannot acknowledge that infringement of Patent Rightby Appellee, et al. took place.
Appellant, who was dissatisfied with the judgment of the prior instance, file d the
Appeal, in which Appellant enlarged its claims this time by changing the part thatconcerns compensation and seeking a sum of 1,000,000,000 yen along with delay
charges.
The main point of dispute in the present case is whether or not it can be said thatthe act performed by Appellee Y1 when Defendant's Systems were newly created falls
under "production" (Article 2, paragraph (3), item (i) of the Patent Act) as an act ofworking the inventions of Claims 1 and 2 (Inventions) in the scope of claims for the
Patent and infringes on the Patent Right.
In the present case, in connection with the point of dispute above, opinions ofthird parties were solicited for the first time as a process that was newly adopted after
the revision of the Patent Act in 2021 to gather evidence (Article 105-2-11 of the
Patent Act) concerning the "production" as an act of working an invention of a system
whose server exists outside Japan, and many opinions were submitted as evidence.
2.

Outline of Judgment(1) In the judgment of the present case (Judgment), [1] concerning the claim madeagainst Appellee Y1, the court acknowledged that there was infringement of Patent
Right by Appellee Y1, and ordered an injunction against the distribution, in
Defendant's Service 1, from Appellee Y1's server to the user terminals existing inJapan (hereinafter referred to as "Domestic User Terminals"), of video files andcommentary files in a way that enables the comments, which appear in a video on adisplay device of a user terminal to be displayed in a certain manner, and also
partially approved the claim within the extent of ordering for payment of a sum of
11,015,517 yen along with delay charges in compensation on the ground of tort, anddismissed the rest of the claim, and [2] concerning the claim made against Appellee
Y2, the court dismissed it entirely.
(2) In the Judgment, the court ruled that the act by Appellee Y1 in Defendant'siiServices falls under "production" (Article 2, paragraph (3), item (i) of the Patent Act)as an act of working the Inventions and thus the above act infringes on the Patent
Right.
Of the above, the determination as to whether or not the act by Appellee Y1 in the
FLASH version of Defendant's Service 1 falls under "production" as an act ofworking the Invention 1 is summarized below.
In the Judgment, the court ruled likewise for the "production" of systems in other
Defendant's Services pertaining to Invention 1, and also for the "production" ofsystems in Defendant's Services pertaining to Invention 2.
A. Meaning of "production" in network-type system
Invention 1 is an invention of a comment delivery system which is equipped withmultiple terminal devices connected to a server via network, and the invention type isa product invention.

The court's interpretation is that "production" of a product as anact of working the invention (Article 2, paragraph (3), item (i) of the Patent Act)refers to an act of newly creating a product which belongs to the technical scope of an
invention.
The court's interpretation is that "production" in an invention of a system(network-type system) which connects a server and terminals via the Internet or someother network, as in the case of Invention 1, and which performs a unified function asa whole, refers to an act wherein multiple elements, which singularly do not satisfy allof the constituent features of the invention, are organically related to one another via
network connection to possess a function that satisfies all of the constituent featuresof said invention as a whole, thereby newly creating said system.
B. "Act of newly creating" the system (Defendant's System 1) pertaining toDefendant's Service 1
In the FLASH version of Defendant's Service 1, when a user specifies a webpage
in Defendant's Service 1 in order to display a desired video on the browser of a user
terminal in Japan, the web server of Appellee Y1 sends the HTML file and SWF fileof the above webpage to the user terminal, and the files received by the user terminal
are stored in the cache of the browser, and later, when the user presses a play button
in said video on a webpage displayed on the browser on the user terminal, the browser
sends a request to the video delivery server and comment delivery server of Appellee
Y1 pursuant to the order stored in the above SWF file, and each of the above servers,
by following said request, respectively sends a video file and comment file to the user
terminal, and the user terminal which receives the above files will be able to overlay
comments on the video on the browser.

In this manner, at the point in time when aiii

user terminal receives the above files, Appellee Y1's above servers and the user
terminal are connected via network using the Internet, so that it becomes possible tooverlay comments on the video on the browser of the user terminal.

As such, it canbe said that Defendant's System 1, which is equipped with a function which satisfies
all of constituent features of Invention 1, is newly created as of the point in time when
the user terminal receives the above files (the above act of newly creating Defendant'sSystem 1 is hereinafter referred to as "Production 1-1").
C. Applicability of "act of newly creating" Defendant's System 1 (Production 1-1)
to "production" as prescribed in Article 2, paragraph (3), item (i) of the Patent Act(A) The territorial principle in relation to patent rights means that the patent rightof each country is prescribed by the law of such country in regard to the establishment,
transfer, and effect, etc. of the patent right, and that the patent right is protected onlyin the territory of the country concerned.

The court's interpretation is that the above

principle also applies to the Patent Act of Japan.
In regard to Production 1-1, the files are sent from a server existing in the UnitedStates to user terminals in Japan, so that the receipt of the files by user terminals takes
place across the United States and Japan.

Also, Defendant's System 1, which is

newly created, exists across the United States and Japan.

As such, whether or not

Production 1-1 falls under "production" according to Article 2, paragraph (3), item (i)of the Patent Act of Japan from the perspective of territorial principle is at issue.
(B) Today, in a network-type system, it is often commonly performed that theserver is installed in a location overseas (outside Japan).

The location of the server

does not cause obstruction to the use of a network-type system.

As such, even if aserver constituting a network-type system, which is the allegedly infringing property,
exists outside Japan, if the terminals constituting said system exist domestically (inJapan), it is possible to use the terminal to work the invention in Japa n, and such use
would affect the economic interests which can be obtained by a patent holder fromworking the invention in Japan.
In that case, the interpretation concerning an invention of a network-type system
to the effect that the invention of a network-type system uniformly does not fall under"working" according to Article 2, paragraph (3) of the Patent Act in Japan , in strict
compliance with the territorial principle and based on the reason that the server,which is a part of the elements constituting said system, exists outside Japan, allows
for a situation wherein patent workaround becomes easily possible merely by
installing a server outside Japan, thereby causing the protection to be given over thepatent right pertaining to the invention of said system to be insufficient.
iv

Accordingly, such interpretation is not justified.
On the other hand, the interpretation that the "working" according to Article 2,paragraph (3) of the Patent Act is uniformly applicable based on the reason that theterminal, which is a part of the elements constituting said system, exists in Japan , is toprovide excessive protection over the patent right and may create a situation which
obstructs economic activities, so that such interpretation is not justified, either.
When the above circumstances are taken into consideration, it is reasonable tointerpret, concerning whether or not the act of newly creating a network-type systemfalls under "production" as prescribed in Article 2, paragraph (3), item (i) of the
Patent Act from the perspective of appropriately protecting the patent right pertaining
to the invention of a network-type system, that even in the case wherein the server,which is a part of the elements constituting said system, exists outside Japan, if s aid
act can be considered as having been performed in the territory of Japan, then said act
falls under "production" as prescribed in Article 2, paragraph (3), item (i) of the
Patent Act, by comprehensively taking into consideration factors such as the specificmanner of said act, the function and role played by the elements, which exist in Japan,
from among the elements constituting said system, and the place where the effect ofsaid invention can be obtained from the use of said system, and the effect of such use
to the economic interests of the patent holder of the invention.
When the above is considered with regard to Production 1-1, the specific mannerin which Production 1-1 takes place is such that the files are sent by a server existingin the United States to the user terminals in Japan, and the user terminals in Japan
receive said files.

As such, the transmission and receipt are performed as a package,and considering that Defendant's System 1 is completed when the user terminals inJapan receive the files, it can lead to the conception that the above transmission andreceipt are performed in Japan.
Next, Defendant's System 1 consists of Appellee Y1's server existing in the UnitedStates and the user terminals existing in Japan, and the above user terminals existingin Japan perform the main functions of Invention 1, which are Constituent Feature 1F,or the function of a judgment part required for displaying the comments in a mannerthat does not overlap with each other, and Constituent Feature 1G, or the function of adisplay position control part.
Furthermore, Defendant's System 1 can be accessed from Japan via the above user
terminal, so that the effect of Invention 1, which is to use commentary incommunication to make the invention more entertaining, is manifested in Japan, andthe use in Japan may affect the economic interests which can be obtained byv

Appellant by using the system, which pertains to Invention 1, in Japan.
When the above circumstances are comprehensively taken into consideration,
Production 1-1 can be regarded as taking place in the territory of Japan, so that it isacknowledged that, in relation to Invention 1, Production 1-1 falls under "production"
as prescribed in Article 2, paragraph (3), item (i) of the Patent Act.
(C) In response, Appellee, et al. state as follows: [1] Given that a "patent shall beprotected only in the territory of the country concerned" according to the territorial
principal, it is a natural consequence that an act of creation outside Japan does not fallunder "production" according to Article 2, paragraph (3), item (i) of the Patent Act ,and given that, according to the all-elements rule, working of a patented invention
means working all of the elements constituting the patented invention; if even a partof the patented invention is created outside Japan, then it should be said that such act
does not fall under "production" as stipulated in Article 2, paragraph (3), item (i) of
the Patent Act; [2] There is a leap of logic in thinking that, in light of the risk ofpatent workaround, "production" should be applicable if even a part of a productwhich satisfies constituent features is created in Japan, and rather, what is more
problematic is the interpretation that if a part of a product which satisfies constituent
features is created in Japan, then such product shall immediately be protected by the
Patent Act of Japan; [3] In Japan, precedents such as a Supreme Court judgment on"Card Reader Case" (Supreme Court Judgment 2000 (Ju) No. 580 rendered by First
Petty Bench on September 26, 2002 / Minshu Vol. 56, No. 7, page 1551) have strictly
conformed to the territorial principle, and making an exception would clearly cause
adverse effect, and even if a case of exception to the territorial principle w ere to be
made, such exception should be made by a legislative process.
However, in regard to the argument of [1], concerning the invention of a network type system, whether or not the act of newly creating a system, which is an allegedly
infringing property, falls under "production" according to Article 2, paragraph (3),item (i) of the Patent Act should be interpreted as falling under "production"according to the same provision if said act can be regarded as having been performedin the territory of Japan, by comprehensively taking into consideration thecircumstances explained above (B), even if the server, which is a part of the elements
constituting said system, exists outside Japan.

As such, the argument of [1] cannot

be accepted.
In regard to the argument of [2], the aforementioned determination as to theapplicability of "production" according to Article 2, paragraph (3), item (i) of the
Patent Act does not mean that if a part of a product which satisfies the constituentvifeatures is created in Japan, then such product shall immediately be protected by the
Patent Act of Japan.

As such, the argument of [2] is lacking in its premise.

In regard to the argument of [3], the territorial principle for a patent right meansthat the patent right of each country is prescribed by the law of such country
concerning the establishment, transfer, and effect, etc. of the patent right, and that thepatent right is protected only in the territory of the country concerned.

In light of theforegoing, the interpretation to the effect that said act falls under "production"according to Article 2, paragraph (3), item (i) of the Patent Act when the act isregarded as having been done only in the territory of Japan as described above is notagainst the territorial principle.

In addition, the court's interpretation of the Supreme

Court judgment on the Card Reader Case, as mentioned by Appellee, et al., is that, inorder to fall under "production" as a natural consequence of the territorial rule, theSupreme Court's ruling does not require the act of newly creating a product which
satisfies all constituent features of the patented invention to have been completed in
the territory of Japan.

Furthermore, according to the treaties concluded by Japan,

and the Patent Act and other laws and regulations, the territorial principle does not
require that the act of newly creating a product which satisfies all constituent featuresof a patented invention be completed in the territory of Japan in order to fall under"production".

In light of the foregoing, the argument of [3] cannot be accepted.

Accordingly, the above claims by Appellee, et al. have no grounds.
D. Agent of "production" of Defendant's System 1
Defendant's System 1 was newly created after going through the process of theabove B.

Appellee Y1 installs and manages the web server, video delivery server,and comment delivery server pertaining to Defendant's System 1, and these servers
send HTML files, SWF files, video files, and comment files to user terminals, and thereceipt of these files by user terminals requires no separate operation by the user side
but is performed automatically pursuant to the description of the program uploaded byAppellee Y1 on the server.

In light of these circumstances, it should be said that theagent of "production" of Defendant's System 1 is Appellee Y1.
E. Conclusion
Based on the above, the court acknowledges that Appellee Y1, by Production 1-1,
infringed on Patent Right by "producing" (Article 2, paragraph (3), item (i) of the
Patent Act) Defendant's System 1.

vii

Judgment rendered on May 26, 2023
2022 (Ne) 10046, Appeal Case of Seeking Injunction and the like against Patent
Infringement(Court of prior instance: Tokyo District Court 2019 (Wa) 25152)
Date of Conclusion of Oral Argument: March 29, 2023
Judgment
Appellant

DWANGO Co., Ltd.

Attorneys

Seiji Ohno
Hirofumi Tada

Patent Attorney

Tomohiro Matsuno

AppelleeFC2, Inc.

(Hereinafter, referred to as the "Appellee FC2".)
Attorneys

Jun Takahashi
Toshimitsu Dan
Toshiaki Miyagawa

AppelleeHomepage System, Inc.

(Hereinafter, referred to as the "Appellee HPS".)
Attorney

Yoshiyuki Hamada

Main Text
1 In the judgment in prior instance, the part related to the Appellee FC2 shallbe changed as follows.
(1) In "FC2 Video" (https://video.fc2.com/), the Appellee FC2 shall not delivera video file and a comment file from a server of the Appellee FC2 to user terminals
existing in Japan in such a manner that comments overlaid and displayed on a video ina display device of a user terminal move in a horizontal direction and are displayed so
as not to overlap each other.
(2) The Appellee FC2 shall pay, to the Appellant, 11,015,517 yen and themoney according to each of rates described in the "delay damages rate (per annum)"
column to each of the moneys described in the "approved amount" column in
Attachment 4-1, the list of approved amounts from each of the days described in the"date to start counting delay damages" column until completion of the payment.
1(3) All the remaining claims by the Appellant against the Appellee FC2 shallbe dismissed.
2 The appeal by the Appellant against the Appellee HPS shall be dismissed.
3 The expanded claim by the Appellant against the Appellee HPS in this court
shall be dismissed.
4 Between the Appellant and the Appellee FC2, the court costs shall be divided
into ten parts through the first and second courts, in which the Appellant shall bear
seven parts thereof and the Appellee FC2 shall bear the remainder, and between theAppellant and the Appellee HPS, the Appellant shall bear all the court costs in thiscourt.
5 No. 1 (1) and (2) of this judgment can be provisionally executed.
6 For the Appellee FC2, an additional period for filing a final appeal and apetition for acceptance of final appeal shall be 30 days.
Facts and ReasonsNo. 1

Object of the Appeal
1 The judgment in prior instance shall be rescinded.
2 The Appellees shall not deliver each of the files described in the list of the

Defendant's files in Attachment 1 to user terminals existing in Japan.
3 The Appellees shall erase each of the programs described in the list of the
programs for the Defendant's Server in Attachment 2.
4 The Appellees shall remove each of the servers described in the list of
Defendant's Servers in Attachment 3.
5 (1) Principal claim
The Appellees shall pay, to the Appellant, jointly and severally
1,000,000,000 yen and the money at the rate of 5% per annum thereto from June 1,
2019 until completion of the payment.
(2) Alternative claim
The Appellees shall pay jointly and severally 1,000,000,000 yen and themoney according to each of rates described in the "delay damages rate (per annum)"
column to each of the moneys described in the "claimed amount" column in the list ofalternative claimed amounts from each of the days described in the "date to start
counting delay damages" column in the Attachment 5 until completion of the payment.
No. 2

Outline of the Case (abbreviations as in the judgment in prior instance unlessotherwise prescribed)
2

1 Summary of the caseThis case is one in which the Appellant, who has the patent right for the patentregistered as Patent No. 6526304 with the title of the invention "Comment Delivery
System" (hereinafter, referred to as the "Patent", and the patent right related to the
Patent as the "Patent Right"), asserted that each of the systems (hereinafter,
collectively referred to as "each of the Defendant's Systems", and each of them as"Defendant's System 1" or the like according to the number of each of the Defendant'sServices) according to "FC2 Video", which is a video delivery service with commentson the Internet (https://video.fc2.com/, hereinafter, referred to as the "Defendant'sService 1"), "FC2 SayMove!" (http://say-move.org/, hereinafter, referred to as the
Defendant's Service 2"), and "FC2 HIMAWARI Video" (http://himado.in/, herein after,
referred to as the Defendant's Service 3", and the Defendant's Services 1 to 3 arecollectively called "Each of the Defendant's Services") operated by the Appellee FC2,
a US corporation, belong to the technical scope of the invention according to th e
Patent, and that the act by the Appellee FC2 of distributing each of the files describedin the list of the Defendant's files (hereinafter, referred to as "each of the Defendant'sFiles") in Attachment 1 from each of the servers described in the list of the
Defendant's Servers existing in the U.S. in Attachment 3 (hereinafter, referred to as"each of the Defendant's Servers) to user terminals existing in Japan falls under"production" (Article 2, paragraph (3), item (i) of the Patent Act) of each of the
Defendant's Systems and infringes the Patent Right, and also asserted that theAppellee HPS substantively engages in the above act jointly with the Appellee FC2,
thereby demanding against the Appellees, pursuant to Article 100, paragraphs (1) and(2) of the Patent Act, for an injunction against the distribution of each of the
Defendant's Files to the user terminals existing in Japan, for erasing of each of the
programs described in the list of the programs for the Defendant's Servers in
Attachment 2 (hereinafter, referred to as the "program for the Defendant's Servers"),
and for removal of each of the Defendant's Servers as well as for joint payment of
10,000,000 yen as a part of the damages on the ground of the joint tort of the patent
infringement and the delay damages at the rate of 5% per annum prescribed in the
Civil Code before amendment by the 2017 Law No. 44 (hereinafter, referred to as the"Civil Code before amendment") on the ground of joint tort of patent right
infringement from the day following the date of delivery of the complaint thereto until
completion of the payment.
The court of prior instance determined that [i] each of the Defendant's Systems
satisfies all the constituent features of the invention according to the Patent and3belongs to the technical scope thereof, [ii] however, in the light of the principle ofterritoriality, which means that the effects of the patent right are approved only in aterritory of the country concerned, in order for the "production" according to Article 2,paragraph (3), item (i) of the Patent Act to be applicable, it should be interpreted thata product which satisfies all the constituent features of the patent invention needs tobe newly created in Japan; however, each of the Defendant's Servers, which is aconstituent element of each of the Defendant's Systems, exists in the United States,
and it is impossible for only the user terminals existing in Japan to satisfy all theconstituent features of the invention according to the Patent and thus, it cannot befound that the Appellees "produced" each of the Defendant's Systems in Japan andmoreover, it cannot be found that the Appellee HPS was engaging in the work related
to each of the Defendant's Services during the period in which the Appellant asserted
the infringement.

Thus, the court of prior instance determined that the facts of theinfringement of the Patent Right by the Appellees cannot be approved, and dismissed
all the claims by the Appellant.
Thus, the Appellant instituted this lawsuit against the judgment in priorinstance.
Moreover, the Appellant principally claimed for 1,000,000,000 yen, which is apart of the amount of damages pertaining to Article 102, paragraph (2) of the Patent
Act and the delay damages for the part of May in 2019 (part from the 17th to the 31stof the same month) in this court for the part related to the claim for damages andalternatively changed the litigation to the claim for the damages pertaining to thesame paragraph for the part from the 17th of the same month to August 31 of 2022 or
the claim for 1,000,000,000 yen, which is a part of the amount of damages pertaining
to paragraph (3) of the same Article and the delay damages, and expanded the claim.
2 Basic Facts (facts without indication of evidence are indisputable fact s orfacts approved by entire import of argument.)(1) Parties
A. The Appellant is a stock company with businesses of planning, development,
manufacture, sales, rental, and the like of network systems using a computer.
B. The Appellee FC2 is a US corporation with businesses of operation and thelike of blogs and video delivery sites on the Internet.
C. The Appellee HPS is a stock company with businesses of various
information providing services and the like using the Internet.
(2) The Patent
A. History of the application4

Since it is as described in No. 2, 2(2) in "Facts and Reasons" in the judgment inprior instance, the description shall be cited.
B. Scope of claims
The scope of claims of the Patent is configured by claims 1 to 13, and thedescription in claims 1 and 2 is as follows (hereinafter, the invention according toclaim 1 shall be referred to as "Invention 1", the invention according to claim 2 as
"Invention 2", and they shall be collectively referred to as "each of the Inventions").
[Claim 1]
A comment delivery system including a server and a plurality of terminal
devices connected to the server via a network, in which
the server:receives a first comment and a second comment to a video given by a user
who is viewing the video transmitted from the server; andtransmits the video and comment information to the terminal device;
the comment information includes:
the first comment and the second comment; anda comment given time, which is a video play time indicating an elapsed timeof the video with a beginning of the video as a reference, corresponding to a point oftime when each of the first comment and the second comment is given, comprising:means for displaying the video and the first comment and the second comment
at least partially overlapping the video and moving in a horizontal direction on adisplay device of the terminal device in a video play time corresponding to thecomment given time on the basis of the video and the comment information;a determining portion which determines whether or not a display position of thesecond comment when displayed on the video overlaps a display position of the firstcomment; anda display-position control portion for adjustment such that the first commentand the second comment are displayed at positions not overlapping each other, when
they are determined to overlap, whereinby means of transmission of the video and the comment information by theserver to the terminal device, the display device of the terminal device displays:
the video; andat the video play time corresponding to the comment given time, the firstcomment and the second comment at least partially overlapping the video and moving
in the horizontal direction in a manner that the first comment and the second commen t
do not overlap each other.
5

[Claim 2]
A comment delivery system including a video delivery server and a comment
delivery server, and a plurality of terminal devices connected to them via a network,in whichthe comment delivery server:receives a first comment and a second comment to the video given by a user
who is viewing the video transmitted from the video delivery server;transmits comment information to the terminal device;
the video delivery server transmits the video to the terminal device;
the comment information includes:
the first comment and the second comment; anda comment given time, which is a video play time indicating an elapsed timeof the video with a beginning of the video as a reference, corresponding to a point oftime when the first comment and the second comment are given, respectively,
comprising:means for displaying the video and the first comment and the second comment
at least partially overlapping the video and moving in a horizontal direction on adisplay device of the terminal device in a video play time corresponding to thecomment given time on the basis of the video and the comment information;a determining portion which determines whether or not a display position of thesecond comment when displayed on the video overlaps a display position of the firstcomment; anda display-position control portion for adjustment such that the first commentand the second comment are displayed at positions not overlapping each other, when
they are determined to overlap, whereinby means of transmission of the comment information by the comment delivery
server and of the video by the video delivery server to the terminal device,respectively, the display device of the terminal device displays:
the video; andat the video play time corresponding to the comment given time, the firstcomment and the second comment at least partially overlapping the video and moving
in the horizontal direction in a manner that the first comment and the second comment
do not overlap each other.
C Separate description of constituent features
Each of the Inventions is separately described as constituent features as follows.
(A) Invention 1
6

1I. A comment delivery system,
1A. which is a comment delivery system including a server and a plurality ofterminal devices connected to the server via a network, in which
1B. the server
receives a first comment and a second comment to a video given by a user
who is viewing the video transmitted from the server; and1C. transmits the video and comment information to the terminal device;
1D. the comment information includes:
the first comment and the second comment; anda comment given time, which is a video play time indicating an elapsed timeof the video with a beginning of the video as a reference, corresponding to a point oftime when each of the first comment and the second comment is given, comprising:
1E. means for displaying the video and the first comment and the second
comment at least partially overlapping the video and moving in a horizontal direction
on a display device of the terminal device in a video play time corresponding to thecomment given time on the basis of the video and the comment information;
1F. a determining portion which determines whether or not a display posit ionof the second comment when displayed on the video overlaps a display position of thefirst comment; and1G. a display-position control portion for adjustment such that the firstcomment and the second comment are displayed at positions not overlapping eachother, when they are determined to overlap, wherein
1H. by means of transmission of the video and the comment information by theserver to the terminal device, the display device of the terminal device displays:
the video; andat the video play time corresponding to the comment given time, the firstcomment and the second comment at least partially overlapping the video and moving
in the horizontal direction in a manner that the first comment and the second comment
do not overlap each other.
(B) Invention 2
2I. A comment delivery system
2A. which is a comment delivery system including a video delivery server anda comment delivery server, and a plurality of terminal devices connected to them via a
network, in which
2B. the comment delivery server:receives a first comment and a second comment to the video given by a user7

who is viewing the video transmitted from the video delivery server;
2C1. transmits comment information to the terminal device;
2C2. the video delivery server transmits the video to the terminal device;
2D. the comment information includes:
the first comment and the second comment;
a comment given time, which is a video play time indicating an elapsed timeof the video with a beginning of the video as a reference, corresponding to a point oftime when the first comment and the second comment are given, respectively,
comprising:
2E. means for displaying the video and the first comment and the second
comment at least partially overlapping the video and moving in a horizontal direction
on a display device of the terminal device in a video play time corresponding to thecomment given time on the basis of the video and the comment information;
2F. a determining portion which determines whether or not a display position
when the second comment is displayed on the video overlaps a display position of thefirst comment; and2G. a display-position control portion for adjustment such that the firstcomment and the second comment are displayed at positions not overlapping eachother, when they are determined to overlap, wherein
2H. by means of transmission of the comment information by the comment
delivery server and of the video by the video delivery server to the terminal device,respectively, the display device of the terminal device displays:
the video; andat the video play time corresponding to the comment given time, the firstcomment and the second comment at least partially overlapping the video and moving
in the horizontal direction in a manner that the first comment and the second comment
do not overlap each other.
(3) Operation of each of the Defendant's Services
Besides deletion of the phrase from "it is to be noted that" on page 17, line
11 to the end of line 13 in the judgment in prior instance, it is as descri bed in No. 2, 2(5) in "Facts and Reasons" in the judgment in prior instance, which shall be cited.
(4) Configuration of each of the Defendant's Systems
A. Defendant's System 1
Defendant's System 1 is a comment delivery system including a "video
delivery server" and a "comment delivery server" and a plurality of terminal devices
connected to them via a network and satisfies the constituent features 1A, 1G, and 1I
8

of Invention 1 and the constituent features 2A, 2G, and 2I of Invention 2.
B Defendant's Systems 2 and 3
Defendant's Systems 2 and 3 are the comment delivery system including the"comment delivery server" and a plurality of terminal devices connected to this via a
network, respectively, and satisfy the constituent features 1G and 1I of Inven tion 1
and the constituent features 2G and 2I of Invention 2.
3 Jurisdiction of international court
Besides alteration of the term an "office" on page 18, line 10 in the judgment inprior instance to a "sales office" and "Article 3-2 of the Code of Civil Procedure"from the same line to line 11 to "Article 3-2, paragraph (3) of the Code of Civil
Procedure", it is as described in No. 2, 2(7) in "Facts and Reasons" in the judgment inprior instance and thus, it shall be cited.
4 Issues(1) Governing law (Issue 1)(2) Whether or not each of the Defendant's Systems belongs to the technicalscope of Invention 1 (Issue 2)(3) Whether or not each of the Defendant's Systems belongs to the technicalscope of Invention 2 (Issue 3)(4) Presence/absence of "production" of each of the Defendant's Systems by
the Appellees (Issue 4)(5) Establishment of the defense of invalidity (Issue 5)
A Lack of inventive step (Invalidation Reason 1) with Unexamined Patent
Application Publication No. 2004-193979 (Exhibit Otsu 17, hereinafter referred to as"Exhibit Otsu 17 publication" in some cases) as a primary cited reference (Issue 5 -1)
B Lack of inventive step (Invalidation Reason 2) with Unexamined Patent
Application Publication No. 2004-297245 (Exhibit Otsu 18, hereinafter referred to as"Exhibit Otsu 18 publication" in some cases) as a primary cited reference (Issue 5 -2)
C Lack of inventive step (Invalidation Reason 3) with Unexamined Patent
Application Publication No. 2004-15750 (Exhibit Otsu 19, hereinafter referred to as"Exhibit Otsu 19 publication" in some cases) as a primary cited reference (Issue 5 -3)
D Lack of inventive step (Invalidation Reason 4) with "Annotation to Online
Video Contents and Application by Viewers", Daisuke Yamamoto, Takashi Nagao,
Transactions of the Japanese Society for Artificial Intelligence, Vol. 20 (issued in
November 2005) (Exhibit Otsu 20, hereinafter referred to as "Exhibit Otsu 20
document" in some cases) as a primary cited reference (Issue 5-4)
E Lack of inventive step (Invalidation Reason 5) with Unexamined Patent9

Application Publication No. 2003-111054 (Exhibit Otsu 21, hereinafter referred to as"Exhibit Otsu 21 publication" in some cases) as a primary cited reference (Issue 5 -5)
F Lack of inventive step (Invalidation Reason 6) with International Publication
No. WO00/64150 (Exhibit Otsu 24, hereinafter referred to as "Exhibit Otsu 24
publication" in some cases) as a primary cited reference (Issue 5-6)
G Lack of inventive step (Invalidation Reason 7) with U.S. Patent Publication
No. 2004/0098754 (Exhibit Otsu 25, hereinafter referred to as "Exhibit Otsu 25
document" in some cases) as a primary cited reference (Issue 5-7)
H Violation of clarity requirement (Invalidation Reason 8) (Issue 5-8)
I Violation of support requirement (Invalidation Reason 9) (Issue 5-9)
J Violation of enablement requirement (Invalidation Reason 10) (Issue 5-10)
K Violation of prior application requirement (Invalidation Reason 11) (Issue
5-11)
L Lack of novelty and lack of inventive step due to violation of division
requirement (Invalidation Reason 12) (Issue 5-12)
M Lack of inventive step and the like due to violation of requirement ofpriority (Invalidation Reason 13) (Issue 5-13)
N Violation of public order and morality (Invalidation Reason 14) (Issue 5-14)(6) Establishment of abuse of right (Issue 6)(7) Necessity of injunction and removal or the like (Issue 7)(8) Amount of damage of the Appellant (Issue 8)
No. 3

Assertion by Parties related to Issues
1 Issue 1 (governing law)
It is as described in No. 3, 1 of "Facts and Reasons" in the judgment in priorinstance, which shall be cited.
2 Issue 2 (Whether or not each of the Defendant's Systems belongs to thetechnical scope of Invention 1)
Besides the alteration of the term "Defendant's system" to "each of the
Defendant's Systems", the term "Defendant's service" to "Defendant's Services", andthe "Invention" to "each of the Inventions", it is as described in No. 3, 2 in "Facts andReasons" in the judgment in prior instance, which shall be cited.
3 Issue 3 (Whether or not each of the Defendant's Systems belongs to thetechnical scope of Invention 2)
Besides the alteration of the term "Defendant's System" to "each of the
Defendant's Systems", and the term "Defendant's service" to "Defendant's Services", it10

is as described in No. 3, 3 in "Facts and Reasons" in the judgment in prior instance,
which shall be cited.
4 Issue 4 (Presence/absence of "production" of each of the Defendant'sSystems by the Appellees)
The term "Defendant's System" shall be altered to "each of the Defendant'sSystems", the "Invention" to "each of the Inventions", the "Defendant' System" to"each of the Defendant's Systems", and the supplemental assertions by the parties inthis court shall be added as follows, and it is as described in No. 3, 4 in "Facts andReasons" in the judgment in prior instance, which shall be cited.
(1) Supplemental assertion by Appellant in this court
A. Relationship between "production" and the principle of territoriality(A) "Production" (Article 2, paragraph (3), item (i) of the Patent Act) is an actof newly creating a product belonging to the technical scope of an invention.
The principle of territoriality only means that "the effect of the patent rightis approved only in the territory of a country", and it is a leap of logic immediatelyfrom there to such interpretation that, in order to launch the "production", a productwhich satisfies all the constituent features of the patent invention needs to be newly
created in Japan as in the judgment in prior instance.
If it is interpreted that even all the constituent features are required to besatisfied in the country for the principle of territoriality to exert effects of the patentright, infringement of the patent related to the network can be evaded extremely easily
only by disposing the "server" outside the country, which causes the unreasonablesituation that the effect of the patent right related to the network in our country isremarkably weakened.

Particularly, since it is now extremely easy to provide aservice in the country by using a server outside the country, if such interpretation was
adopted, it would be difficult to question responsibility for infringement of the patentright in important technical fields, which would incur unreasonable results.
Moreover, even in the Criminal Code subject to the legality principle(Article 31 of the Constitution), establishment of domestic crimes is affirmed byrealization of some of the constituent features in Japan, and it is inter preted that the
principle of territoriality is satisfied (see Supreme Court Judgment 2013(A)510
rendered by Third Petty Bench Decision / Keishu Vol. 68, No. 9, p. 1053 on
November 25, 2014), and regarding the principle of territoriality in the Patent Act, too,it should be interpreted that, even if a part of a product which satisfies the constituent
features is created outside the country, if the other parts are created in the country, it
falls under "production".
11

Furthermore, the principle of territoriality is clearly stipulated in laws in the
U.S., Germany, the U.K., and the like, but even if some of the constituent features are
satisfied outside the country, courts rendered determinations to approve the patentright infringement as interpretation theory (Exhibits Ko 308, 312, 315, 317, and thelike) and have made substantial determination on the principle of territoriality on thebasis of the current situation that the Internet spreads across borders.
(B) As described above, in the relationship with the principle of territoriality,
if even a part of a product satisfying the constituent features of the patent invention iscreated in Japan, it should be interpreted to fall under "production".

The

determination in the judgment in prior instance different from the above is erroneous.
B Applicability to "production" (Article 2, paragraph (3), item (i) of the Patent
Act)(A) Each of the Defendant's Systems is configured by a server existing in the
U.S. and a large number of user terminals existing in Japan.

Representing each of

the Defendant's Systems, an HTML 5 version of the Defendant's System 1 will be
explained by using the drawings in Attachment 8-1 (in the drawing, only one user
terminal is described by representing all user terminals), and operations thereof are as
follows.
[i] A user specifies a desired video page to a user terminal.

As a result,

without any further operation by the user, [ii] to [ix] described below are operated.
[ii] The user terminal transmits to a server requests for webpage data and a JS
file corresponding to the specified video page.
[iii] The server receives the requests for webpage data and the JS file inresponse to (ii).
[iv] The server transmits the requested webpage data and JS file to the user
terminal in response to [iii].
[v] The user terminal receives the webpage data and JS file in response to [iv].
[vi] The user terminal transmits requests for a video file and a comment file tothe server in accordance with the received JS file in response to [v].
[vii] The server receives the requests for the video file and the comment file inresponse to (vi).
[viii] The server transmits the requested video file and comment file to theuser terminal in response to [vii].
[ix] The user terminal receives the video file and the comment file transmitted
from the server in response to [viii].
[x] The user clicks a play button.
12[xi] The user terminal plays and displays the comment moving on the video in
response to [x].
(B) Regarding the relationship between the operation of the Defendant'sSystem 1 in the aforementioned (A) and the "production", as described below, [iv] isstart of the production and [ix] is completion of the production.
The aforementioned (A) [i] to [iii] are an act of ordering the production of
Defendant's System 1 and the server accepting it on the basis of the operation by theuser, which is not included in "production" but is performed before the start thereof.
By the aforementioned (A) [iv] to [ix], the comment moving on the video on
the user terminal is brought into a state capable of playing and displaying, andDefendant's System 1 belonging to the technical scope of each of the Inventions is
newly created.
Thus, the aforementioned (A) [iv] (transmission of the webpage data and the
JS file by the server) is start of the "production" and the aforementioned (A) [ix](reception of the video file and the comment file by the user terminal) is completionof the "production".
(C) As described above, the "production" of the Defendant's System 1 isconfigured by:[a] Transmission of the webpage data, the JS file, the video file, and thecomment file by the server existing in the U.S. (the aforementioned (A) [iv] and[viii]), and[b] Reception of the webpage data, the JS file, the video file, and the comment
file described above by the user terminal existing in Japan (the aforementioned (A)[v] and [ix]).
The transmission in [a], which is a part of the "production", is performed in
the United States, while the reception in [b], which is another part, is performed inJapan.
(D) In this regard, even if the server transmits the webpage data, the JS file, thevideo file, and the comment file, unless they are received by the user terminal, thecomment moving on the video cannot be played and displayed on the user terminal
and thus, Defendant's System 1 is not considered to be completed until the user
terminal receives each of the aforementioned files.

Only after the reception by theuser terminal, the comment moving on the video on the user terminal can be playedand displayed, which is a state where the Defendant's System 1 included in thetechnical scope of each of the Inventions is newly created and thus, the reception of
the video file and the like by the user terminal performed in Japan (the13aforementioned (C) [b]) is also a part of the "production".
Moreover, regarding the "production" act, it cannot be determined in whatplace the "production" act was performed while ignoring where the newly created"product" is generated.
Most of the Defendant's System 1 (parts configured in the large number ofuser terminals existing Japan) is newly created in Japan, and at least most of the"production" act can be conceived to be conducted in Japan and thus, the Defendant'sSystem 1 can be considered to be "produced" in Japan (Article 2, paragraph (3), item(i) of the Patent Act).
C Subject of "Production"(A) The act of working asserted by the Appellant in this case is the file delivery
act and the like by the Appellees from each of the Defendant's Servers toward the user
terminals existing in Japan, and the act toward the user terminals existing outside thecountry is not asserted as the act of working.
(B) Since the aforementioned B (C) [a] is the transmission by the server, it isobvious that the subject is the Appellees.

Moreover, since [b] is performed by thetransmission of the webpage data, the JS file, the video file, and the comment filefrom the server without intervention of the user's operation in accordance with [a], thesubject of [b] is also the Appellees.
The "production" of the Defendant's System 1 is creation by the transmissionof the webpage data, the JS file, the video file, and the comment file from the server
existing in the United States by using a large number of user terminals existing inJapan as a so-called material and thus, it is performed only by the Appellees, and theusers' acts are not included.
The aforementioned B (A) [x] and [xi] are an act by the user to use the
Defendant's System 1 and is not included in the "production" but is performed after
the completion thereof.
According to the above, the subject of the production of the Defendant'sSystem 1 is the Appellees.
(2) Supplemental assertion by the Appellees in this court
A. With respect to the assertion on the relationship between the "production"and the principle of territoriality(A) There is no dispute on that the "production" in Article 2, paragraph (3),item(i) of the Patent Act is an act of newly creating a product belonging to thetechnical scope of the Patent invention.
According to the principle of territoriality, "the effect of the patent is
14

approved only in the territory of the country concerned" and thus, from the viewpointthat it is natural consequence that the act of creation outside the country does not f all
under "production" in Article 2, paragraph (3), item (i) of the Patent Act and that,
according to the all-elements Rule, the working of the patent invention is to work all
the elements configuring the patent invention, if even a part of a product is pr oduced
outside the country, it should not fall under "production" in Article 2, paragraph (3),item (i) of the Patent Act.
Therefore, the determination in the judgment in prior instance that, in orderto fall under "production" in Article 2, paragraph (3), item (i) of the Patent Act, aproduct satisfying all the constituent features of the patent invention needs to be
newly created in Japan is justifiable.
(B) The Appellant cites the following points as grounds for the applicability to"production" in Article 2, paragraph (3), item (i) of the Patent Act, that if even a partof a product satisfying the constituent features of the patent invention is created inJapan, which is groundless.
a. A point that, in the Criminal Code, even if some of the constituent features
are in Japan, crimes committed inside the country is establishedAccording to judicial precedents, regarding embezzlement of a product ofperformance for illegal reasons, establishment of the embezzlement is approved(Supreme Court Judgement on October 10, 1961), and establishment of theft is also
approved for thefts of prohibited items (Supreme Court Judgment on February 15,1949).

Each requirement in criminal punishment is interpreted independently ofpresence/absence of the civil right to claim.
The assertion by the Appellant is equal to the argument that, since even if
the product of performance for illegal reasons or prohibited items are targets ofcriminal protection, civil claim for return should be approved.
Moreover, unlike criminal law whose enforcement against a defendantoutside Japan is practically impossible, a lawsuit under the civil law can be instituted
against a defendant outside Japan, and enforcement is also possible in a case of acountry under mutual recognition.

Thus, an adverse effect by forcing theinterpretation of the Patent Act unique to our country to citizens/corporations in othercountries is more significant in civil law.
Therefore, applicability to "production" in Article 2, paragraph (3), item (i)of the Patent Act should be understood from a viewpoint of integrity with treaties andinternational harmonization as interpretation of the civil right to claim and thus, adoes not constitute a ground for the Appellant's assertion.
15

b. A point that infringement of network-related patents can be avoided only by
installing the "server" outside the country
Just because the possibility of patent workaround is a problem, it is a leap oflogic to consider that if only a part of a product satisfying the constituent features iscreated in Japan, it falls under "production".

Rather, the interpretation that, if a partof a product satisfying the constituent features is created in Japan, the effects of the
Patent Act in our country immediately take effect has more problems.

If a claim for

injunction or a claim for damages can be made for all the "production" acts by thecreation of a part of the product satisfying the constituent features of the patentinvention, it could lead to such a consequence that a lawsuit can be instituted on the
ground of patent right infringement in Japan if even only one of the Internet users ispresent in Japan.

In this case, the idea of the patent right in Japan is forced on

operators in other countries by ignoring patent systems of the other countries having
different systems, which goes against the fundamental idea of the principle ofterritoriality that the patent system in each country should be respected and violates
the Paris Treaty and seriously affects international harmonization.
Furthermore, if patent right infringement in a foreign country is approvedfor operators in Japan with a similar interpretation (patent right infringement in theforeign country is approved if a service with a server existing in Japan can be viewed
by a browser from the foreign country, for example.), any services made open to the
public on the Internet constitute patent right infringement in any country in the worldand enable institution of lawsuits as a result, which would remarkably confuse theorder of the Patent Act.
Therefore, if there is an irrational point in the interpretation that the productsatisfying all the constituent features of the patent invention needs to be created inJapan in order to fall under "production", it should be dealt with by revisions of thepatent systems and treaties of the countries, and it is not appropriate to unnecessarily
expand the effects of the patent rights in Japan to the other countries by theinterpretation of the Patent Act in Japan and thus, b does not constitute a ground forthe assertion by the Appellant.
c. A point in which, in the United States, Germany, the United Kingdom, andthe like, it is determined that the patent right infringement is approved, even if someof the constituent features are satisfied outside the country
The examples of the foreign countries cited by the Appellant are only
several examples in the three countries, and to conclude that exceptions to theprinciple of territoriality should be made by the determination in individual c ourts
16with such a few examples has not examined its legitimateness at all, and it should be
regarded as a leap of logic.

In the court examples in our country, the principle ofterritoriality has been strictly conformed to by the Supreme Court Judgment of theCard Reader Case (Supreme Court Judgment 2000 (Ju) No. 580 rendered by First
Petty Bench on September 26, 2002 / Minshu Vol. 56, No. 7, page 1551) and the like,and an adverse effect caused by making an exception thereto is clearly anticipated as
described above and thus, even if an exception to the principle of territoriality is to be
made, it should be dealt with by a legislative process.
Therefore, c does not constitute a ground for the assertion by the Appellant.
B With respect to the assertion on the applicability of "production" (Article 2,paragraph (3), item (i) of the Patent Act)(A) In light of the Patent Act that clearly defines "working" and places a highvalue on predictability for a third party / legal stability, it is reasonable that t he
determination on whether the "act" by the Appellees falls under "production" should
be made by a "filtering test" by using such a method that firstly confirms the "act" by
the Appellees not by comparison with the patent invention but by a natural act an d
examines whether the "product" which is "newly created" by the act is "included in
the technical scope of the invention".
Since the "act" which is the "production" should not be discussed with the"constituent features", it is not allowable to consider an act performed by a third party
or only a result of a causal relation as the "act" by the Appellees.
By examining this in relation to this case, the act by the Appellee FC2
related to the "production" of each of the Defendant's Systems is only manufacture ofa program corresponding to each of the Defendant's Systems and upload of the
program to the server, both of which are completed in the U.S.
After that, an act of use including the upload of the comments and the videos
by the users exists until the comment and the video are displayed on the user terminal,
but the display device on the user terminal is a general-purpose browser, and the actof use has no relation with the featured part of each of the Inventions.

Moreover,since the Internet is open to the world, the act of use is not an act performed only inJapan, and to interpret this as the act of working under the Patent Act in Japan should
be considered to be violation of the principle of territoriality.
Furthermore, in Defendant's System 1, the user terminal only passively
displays the video and the comment in accordance with the description in the program
uploaded by the Appellee FC2 to the server and the contents of the comments
uploaded by a third party to the server of the Appellee FC2 and the video uploaded to17the server of the Appellee FC2 (in Defendant's Systems 2 and 3, the video uploaded toa third party's server), and it does not have a featured structure or perform a featured
operation.

The video and the comment displayed on the user terminal are only aresult of use of an already produced device (each of the Defendant's Systems) by auser using the general-purpose browser of the user terminal, and the "act" to "newly""create" the "product" does not exist there.
The written opinion in Exhibit Otsu 311 points out that "in general, a system
related to communication is accompanied by transmission/reception of data and thus,
the interpretation including even repetition of production, disposal of the system
related to the communication for the first unit, the second unit, the third unit, the n-th
unit in the "production" at timing of the data transmission/reception means that thesystem is re-produced at each timing of the data transmission/reception in the system,
which cannot be employed." (the written opinion Exhibit Otsu 327 also points out asimilar indication), and according to this indication, it should be considered that theact of the Appellee FC2 does not fall under the "production" of Invention 1.
As described above, the production of each of the Defendant's Systems iscompleted by installing a server in the U.S., by storing the program, and by bringing
them into a providable state via the Internet.
Therefore, the assertion by the Appellant that the start of the production ofeach of the Defendant's Systems is transmission in the aforementioned (1) B (A) [iv]and the completion thereof is the reception of [ix] is groundless.
(B) a. Even if the reception act in the user terminal is interpreted as an act ofworking in Japan, as described in the aforementioned A, in order to fall under"production" in Article 2, paragraph (3), item (i) of the Patent Act, the productsatisfying all the constituent features of the patent invention needs to be newly createdin Japan, but each of the Defendant's Servers, which is a constituent feature of each of
the Defendant's Systems, exists in the U.S., and not all the constituent features of theinvention according to the Patent are satisfied only by the user terminal existing inJapan and thus, the "production" of each of the Defendant's Systems in Japan is not
approved.
b. In this regard, the Appellant asserts that most of Defendant's System 1 (apart configured by a large number of user terminals existing in Japan) is newly
created in Japan, and at least most of the "production" act can be conceived in Japanand thus, Defendant's System 1 is "produced" (Article 2, paragraph (3), item (i) of the
Patent Act) in Japan.
However, the assertion by the Appellant is to cause foreseeability to be los t
18

for a third party in a point that applicability of the production act is determined on thebasis of an unclear reference such as the "most", which is unreasonable.
Moreover, the assertion by the Appellant argues the "act", which is"production", by the "constituent features", and it is unreasonable also in a point thatan "act to newly create" a "product" (each of the Defendant's Systems) belonging to
the technical scope of the invention is confused with a state brought about by use ofeach of the Defendant's Systems, which is the "product" (the comment moving on thevideo becomes displayable on the user terminal).
Furthermore, even if this reference is adopted, in each of the Defendant'sSystems, creation of a program and incorporation thereof in a server are performed
outside the country, and it is obvious that "most" of the system is not created in Japan.
Therefore, the aforementioned assertion by the Appellant is groundless.
C With respect to the assertion of the subject of "production"
The Appellant asserts that the "production" of Defendant's System 1 isconstituted by [a] transmission of webpage data, a JS file, a video file, and thecomment file by a server existing in the U.S. and [b] reception of the webpage data,
the JS file, the video file, and the comment file by a user terminal existing in Japan,
and since [a] is the transmission by the server, the subject is the Appellees, and since[b] is performed by transmission of the webpage data, the JS file, the video file, andthe comment file from the server in response to [a] without intervention of the user's
operation, the subject of [b] is also the Appellees.
However, the transmission act in [a] is not performed by the Appellee FC2
but is automatically performed in response to a request, since a program wasincorporated in the server connected to the Internet, and it is only a consequence ofthe causal effect.
Subsequently, [b] is performed by specification of a webpage by a user or aclick by a user on the play button displayed on the webpage, and since an operation by
the user is intervened, its premise itself is erroneous.

Moreover, even if the Appellee

FC2 performs the transmission act in [a], since the Patent Act clearly distinguishes
and prescribes "transfer" and "acceptance", "import" and "export", and "provision"and "reception", it should not be interpreted that the Appellee FC2 performs the act ofreception in [b].
Therefore, the aforementioned assertion by the Appellant is groundless.
5 Issue 5 (establishment of defense of invalidity)
Corrections shall be made as follows, and it is as described in the
Attachment to the judgment in prior instance "Assertion by the parties on
19establishment of defense of invalidity", which shall be cited.
(1) Subsequent to "Exhibit Otsu 17 publication" on page 127, line 8 in the
judgment in prior instance, "([0005], [0007], [0008], [0017], [0041], [0045], [0047],[0066], [0122], [0125] to [0127], [0129], [0130], [0135] to [0138], [0192], FIGS. 14,
15, and 18)" shall be added, and the phrase "shall be called." shall be added
subsequent to "'note storage memory'" on the same page, line 16.
(2) The phrase "[0137]" on page 128, line 18 in the judgment in prior instanceshall be altered to "[0136], [0137]", "overlap the determination portion" on p age 129,line 23 to "overlap, the determination portion", "inhere, and thus" on page 130, lines 4
to 5 to "inhere.", "publicly-known art to be changed" on the same page, line 7 to "tochange is publicly-known and thus", and "is applied" on the same page, line 8 to ",and a publicly-known art as such is applied", and subsequent to "Exhibits Otsu 26 to
28" on the same page, lines 19 to 20, "([0059] and [0095] in Exhibit Otsu 26, on theupper left column on page 4, lines 2 to 8, 14 to 19 in Exhibit Otsu 27, [0007] and[0011] in Exhibit Otsu 28)" shall be added.
(3) Subsequent to "Exhibits Otsu 48, 61, 62" on page 131, line 1 in the
judgment in prior instance, the phrase "(Exhibit Otsu 48 on page 80, Exhibit Otsu 61
on pages 190, 191, 196, and 199, Exhibit Otsu 62 on pages 182 and 188)" shall be
added, and the phrase "is the invention and has a technical field in common" on thesame page, line 4 shall be altered to "since the technical field is in common in a point
that".
(4) Subsequent to "Exhibit Otsu 18 publication" on page 137, line 16 in the
judgment in prior instance, "([0001], [0005], [0007], [0009], [0012], [0013], [0019] to[0021], [0028], [0029])" shall be added, and the phrase "overlap the determination
portion" on page 139, line 17 shall be altered to "overlap, the determination portion"(5) Subsequent to "Exhibit Otsu 19 publication" on page 146, line 11 in the
judgment in prior instance, "([0004], [0005], [0007], [0014], [0020], [0023], [0032],[0036], [0049], [0050], [0060], [0068], [0069], FIG. 9)" shall be added, and the phrase"shall be called." shall be added subsequent to "'difference time memory'" on the same
page, line 21.
(6) Subsequent to "'utterance information'" on page 147, line 3 in the judgmentin prior instance, the phrase "shall be called." shall be added, the phrase "or less" on
the same page, line 15 shall be deleted, and the phrase "overlap the determination
portion" on page 148, line 1 shall be altered to "overlap, the determination portion",and "NTT invention" on page 151, line 18 to "Exhibit Otsu 19 Invention".
(7) Subsequent to "Exhibit Otsu 20 document" on page 152, line 10 in the20

judgment in prior instance, "('3.1 System configuration', '4.1 Annotation editing page','4.2 Text annotation', '5. Annotation reliability')" shall be added, and the phrase"overlap the determination portion" on page 154, line 4 shall be altered to "overlap,
the determination portion".
(8) Subsequent to "Exhibit Otsu 21 publication" on page 160, the last line in
the judgment in prior instance, "([0003], [0030], [0035], [0037], [0038], [0041],[0043] to [0045], [0050], [0051], [0057], [0060], FIG. 5)" shall be added, the phrase"TBS invention" on page 162, lines 2 to 3 shall be altered to "Exhibit Otsu 21
invention", the phrase "overlap the determination portion" on the same page, line 20
to "overlap, the determination portion".
(9) Subsequent to "Exhibit Otsu 24 publication" on page 170, line 3 in the
judgment in prior instance, "(Abstract)" shall be added, the phrase "overlap thedetermination portion" on page 171, lines 2 to 3 shall be altered to "overlap, thedetermination portion", and "of Exhibit Otsu 24 publication" on page 178, line 5 shallbe deleted.
(10) Subsequent to "Exhibit Otsu 25 publication" on page 179, line 6 in the
judgment in prior instance, "([0032], [0034], [0035], [0042], [0045], [0059], FIGS.
1A and 1B)" shall be added, the phrase "overlap the determination portion" on page
181, lines 1 to 2 shall be altered to "overlap, the determination portion", and "of
Exhibit Otsu 25 " on page 184, line 11 shall be deleted.
(11) The part from page 187, line 15 to page 196, line 1 in the judgment inprior instance shall be altered as follows.
"8 Issue 5-8 (Violation of clarity requirement (Invalidation Reason 8))(Assertion by Appellees)
The description that 'to the terminal device, the video and the comment
information are transmitted' in constituent feature 1C of Invention 1 is not clear as toat what timing the comment received by the server is transmitted to the terminal.
Therefore, the description in the scope of claims (claim 1) of Invention 1 isunclear and does not conform to the clarity requirement (Article 36, paragraph (6),item (ii) of the Patent Act) and thus, the Patent has an invalidation reason of violationof the clarity requirement (Article 123, paragraph (1), item (iv) of the Patent Act).
(Assertion by the Appellant)
The scope of claims (claim 1) of the Invention 1 does not prescribe thetiming of the comment transmission but prescribes the point that the commen t
information related to the comment given by the user is transmitted to the terminal
and thus, extension of the invention is clear, which conforms to the clarity
21

requirement.
Therefore, Invalidation Reason 8 asserted by the Appellees is groundless.
9 Issue 5-9 (Violation of support requirement (Invalidation Reason 9))(Assertion by the Appellees)
The description in [0008] in the Description, together with the description in[0004] that 'the prior art ... comments cannot be exchanged on a real -time basis, which
is not sufficiently interesting as communication.', should be interpreted to describe
that, when the comment delivery server receives a comment, the comment istransmitted to the terminal device 'each time'.
On the other hand, the scope of claims (claims 1 and 2) of Inventions 1 and2 has no description on at what timing the terminal device receives the comment
information, and without the description that, when the comment delivery server
receives a comment, it transmits the comment to the terminal device 'each time', it is
impossible to perform exchange of the comments on a real-time basis and thus, claims
1 and 2 lacking description on that point exceed the range described in the detailed
description of the invention.

Thus, it does not conform to the support requirement(Article 36, paragraph (6), item (i) of the Patent Act).
Subsequently, [0011] in the Description has the description that 'according
to the present invention, ... and in the comment information input with respect to thevideo, when a comment erasing request indicating the comment to be erased is input,
the comment is caused not to be displayed and thus, whether the comment is not
appropriate for the video or not can be displayed considering an intention of the user,which can improve entertainment in communicating using the comment.'
On the other hand, the scope of claims (claims 1 and 2) of Inventions 1 and2 has description that the terminal device displays the comment but does not havedescription on not to display and thus, means for solving the problem of the invention
described in the detailed description of the invention is not reflected and exceeds therange described in the detailed description of the invention and thus, it does notconform to the support requirement.
Therefore, the Patent has an invalidation reason of violation of the support
requirement (Article 123, paragraph (1), item (iv) of the Patent Act).
(Assertion by Appellant)[0008] in the Description only describes claims of the original application ofthis case and has no relation with the scope of claims (claims 1 and 2) of Inventions 1
and 2.
Moreover, [0011] in the Description only describes the problem of the22invention corresponding to the claim of the initial application, and the p roblem isdifferent from the problems in Inventions 1 and 2.
Therefore, Invalidation Reason 9 asserted by the Appellees lacks the premise
thereof, which is unreasonable.
10 Issue 5-10 (Violation of enablement requirement (Invalidation Reason 10))
(Assertion by Appellees)
As in the aforementioned 9 (assertion by the Appellees), since the scope ofclaims (claims 1 and 2) of Inventions 1 and 2 does not have the description on at whattiming the terminal device receives the comment information, the exchange of thecomments on the real-time basis is not possible, and [0011] in the Description has thedescription that 'when a comment erasing request indicating the comment information
to be erased is input, the comment is caused not to be displayed', but even though thescope of claims (claims 1 and 2) of Inventions 1 and 2 has the description that theterminal device displays the comment, it does not have description on not to display
the comment and thus, it falls under the case in which the invention cannot be grasped
from one claim.
Then, the description in the detailed description of the invention in the
Description is not considered to have clearly and sufficiently described to such a
degree that a person ordinarily skilled in the art can work Inventions 1 and 2 and thus,
it does not conform to the enablement requirement (Article 36, paragraph (4), item (i)of the Patent Act).
Therefore, the Patent has an invalidation reason of violation of theenablement requirement (Article 123 paragraph (1), item (iv) of the Patent Act).
(Assertion by Appellant)
Due to the reason similar to that described in the aforementioned 9(Assertion by Appellant), Invalidation Reason 10 asserted by the Appellees lacks thepremise thereof, which is unreasonable.
11 Issue 5-11 (Violation of prior application requirement (invalidation reason
11))(Assertion by Appellees)
Patent No. 4695583 (hereinafter, referred to as 'Another Litigation Patent 2',
Exhibit Otsu 44) on which the request was based in the Tokyo District Cou rt 2016(Wa) 38565 case of seeking injunction and the like of the patent right infringement(hereinafter, referred to 'Another Litigation Case', Exhibit Otsu 15) in which theAppellant instituted against the Appellees as the 'defendants' was filed (Patent
Application No. 2006-333851, Date of application: December 11, 2006, Exhibit Otsu
2311) before the application of this case.
However, Inventions 1 and 2 are identical to or substantially identical to theinventions according to claims 1 to 3 of Another Litigation Patent 2 and thus, they
violate the prior application requirement (Article 39 of the Patent Act) and cannot be
granted a patent.
Therefore, the Patent has an invalidation reason of violation of the priorapplication requirement (Article 123, paragraph (1), item (ii) of the Patent Act).
(Assertion by Appellant)
Inventions 1 and 2 and the invention according to claims 1 to 3 of Another
Litigation Patent 2 are different at least in points that [i] the inventions according toclaims 1 to 3 of Another Litigation Patent 2 include a requirement that 'each time thecomment information is received', while Inventions 1 and 2 do not have such arequirement; [ii] Inventions 1 and 2 include a requirement that the first and the second
comments move in a horizontal direction, while the inventions according to claims 1
to 3 of Another Litigation Patent 2 do not have such a requirement.
Therefore, Invalidation Reason 11 asserted by the Appellees is groundless.
12 Issue 5-12 (Lack of novelty and of inventive step due to violation ofdivision requirement (Invalidation Reason 12))(Assertion by Appellees)This application is a division of application in which a part of the original
application (date of application: March 2, 2007, priority date: December 11, 2 006.
Exhibit Otsu 9) was sequentially divided (No. 2, 2(2)[i] to [viii] in the cited judgmentin prior instance.
like.

Hereinafter, each of them shall be called "application of [i]" or the

The application of [viii] is this application.).
Claim 1 at the filing of the applications of [iv] to [viii] is identical to claim 1of the application of [iii], and claim 1 after amendment in the applications of [v] to[vii] has identical contents with that of claim 1 of the application of [iv].
Particularly, the applications of [vi] and [vii] are filed with the claim identical to thatof the application of [iii] and after that, amendment equal to that of the application of[iv] was made and then, decision of refusal was rendered on the ground that it isidentical to the application of [iv].
According to the above, the applications of [iv] to [vii] (particularly, theapplications of [vi] and [vii]) should be considered to be abusive division of
application used to evade restrictions on the time for amendment (Article 17-2,
paragraph (1), item (iii) of the Patent Act), and the effect of division of applicationthat the division of application is regarded to be filed at the time of the original
24

application (Article 44, paragraph (2) of the Patent Act) is not considered to be
produced.
Then, the date of application of this application is October 29, 2018, whichis the actual date of application, and thus, Inventions 1 and 2 do not satisfy therequirements of novelty and inventive step (Article 29 of the Patent Act) in relation
with the inventions described in the Description and the like of the applications [iv] to[vii].
Therefore, the Patent has invalidation reasons of lack of novelty and lack ofinventive step (Article 123, paragraph (1), item (ii) of the Patent Act).
(Assertion by Appellant)
Since this application is a legal division of application prescribed in Article
44, paragraph (1) of the Patent Act, the date of application of this application isretroactive to the time of the original application (date of application: March 2, 2007,priority date: December 11, 2006) under the same Article, paragraph (2).
Therefore, Invalidation Reason 12 asserted by the Appellees lacks thepremise thereof, which is unreasonable.
13 Issue 5-13 (Lack of inventive step and the like due to violation ofrequirement of priority claim (Invalidation Reason 13))
(Assertion by Appellees)
Since the application (Patent Application No. 2006-333850) on the basis ofwhich the priority is claimed of the original application does not satisfy therequirement for amendment, a priority claim based on Article 41, paragraph (1), item(i) of the Patent Act is not allowed for the original application.

In view of necessityof reliability and consistent determination on registration information related topatents, the novelty and the inventive step of Inventions 1 and 2 should be determinedwith the actual date of application of the Application (October 29, 2018) as thestandard time.
However, since the Appellant made public the service using the art related toInventions 1 and 2 with the name 'Niconico Video' on December 12, 2006,
NIWANGO, which was an operation company at that time, actively began issuingpress releases from January, 2007 after the service was made public, and the art
became publicly-known, Another Litigation Patent 2 was published (Exhibit Otsu 11)
at the time of the filing at the latest, and Inventions 1 and 2 had been publicly-known
and thus, Inventions 1 and 2 do not have novelty.
Therefore, the Patent has an invalidation reason of lack of inventive step
(Article 123, paragraph (1), item (ii), Article 29 of the Patent Act).
25

(Assertion by Appellant)
Whether or not the filing of the Patent Application No. 2006-333850 on thebasis of which the domestic priority claim of the original application was madeviolates the requirement for amendment as asserted by the Appellees does not
influence the priority claim of the original application (Article 41, paragraph (1) of
the Patent Act).

Moreover, illegal amendment was not made in this original

application, and this application is a legal division application.
Therefore, Invalidation Reason 13 asserted by the Appellees lacks thepremises thereof, which is unreasonable.
14 Issue 5-14 (Violation of public order and morality (Invalidation Reason 14))
(Assertion by Appellees)
The judgment of the first court of another lawsuit rendered on September 19,
2018 (Exhibit Otsu 15) determined that the invention according to Another Litigation
Patent 2 does not belong to the technical scopes of Inventions 1 and 2, by stating thatthe comment information is transmitted to the terminal 'each time' when the comment
information is received from the terminal, while the program of the Appellee FC2
does not satisfy this requirement and the like.
Then, the Appellant filed the Application for Inventions 1 and 2 byremoving the requirement of the aforementioned 'each time' for the purpose ofovercoming the result of another lawsuit and thus, Inventions 1 and 2 fall under theinvention, which might disrupt 'public order' as described in Article 32 of the Patent
Act.
Therefore, the Patent has an invalidation reason of violation of public orderand morality (Article 123, paragraph (1), item (ii) of the Patent Act).
(Assertion by Appellant)
The assertion by Appellees will be contested."
6 Issue 6 (Establishment of abuse of right)
Since it is as described in No. 3, 6 in "Facts and Reasons" in the judgment inprior instance, it shall be cited.
7 Issue 7 (Necessity of injunction and removal or the like)
Besides the alteration of the "Defendant's Server" to "each of the
Defendant's Servers", the "Defendant's Service" to "each of the Defendant's Services",the "Defendant's file" to "each of the Defendant's files", and the "Defendant's Syste m"
to "each of the Defendant's Systems", it is as described in No. 3, 8 in "Facts andReasons" in the judgment in prior instance, which shall be cited.
8 Issue 8 (Amount of damage of the Appellant)26

(Assertion by Appellant)(1) Principal claims
A. Amount of damages under Article 102, paragraph (2) of the Patent Act
The Appellees produced each of the Defendant's Systems and provided eachof the Defendant's Services from May 17, 2019, when the establishment of the Patent
Right was registered, to August 31, 2022, and produced sales of XXXXXXXXXX yen,whereby the Appellees obtained an amount of profits (marginal profits) not less than
XXXXXXXXX 0, 000 yen (Exhibit Ko 24).

Among them, the sales amount fromMay 17 to 31, 2019 (amount for May) was XXXXXXXX yen, and the amount ofmarginal profits was not less than XXXXXXXX yen.
The production of each of the Defendant's Systems by the Appellees falls
under an infringement act of the Patent Right related to Inventions 1 and 2 and thus,
under Article 102, paragraph (2) of the Patent Act, the aforementioned marginal profit
amount obtained by the Appellees is presumed to be an amount of damages theAppellant suffered due to the aforementioned infringement act (hereinafter, thispresumption shall be called "presumption (1)" in some cases.).
B Absence of reasons for presumption ruination and the like(A) The Appellees assert that [i] in the aforementioned marginal profit amountof each of the Defendant's Services, the part related to the service for delivering thevideo to which comment indication is not attached does not fall under the profit
obtained by working of Inventions 1 and 2; [ii] the comment display function of
Inventions 1 and 2 is a part of the function in each of the Defendant's Systems
providing each of the Defendant's Services, which is the video delivery service withcomment and does not have attraction for customers, which falls under the reasons forruination of presumption (1) and the like.
However, regarding [i], in each of the Defendant's Services, the user cangive a comment to the video, and creation of such a state itself is an infringement actof the Patent Right and thus, even if the user did not actually use the comment giving
function, and a ratio of the video to which no comment was given was high, it does
not immediately lead to the conclusion that the aforementioned amount of marginal
profit of each of the Defendant's Services does not fall under the profit received fromthe working of Inventions 1 and 2.
Regarding [ii], it is obvious that the comment display function of Inventions
1 and 2 has a strong attraction for customers from the active imitation thereof by theAppellees and "bilibili video".
Therefore, the aforementioned assertion by the Appellees is unreasonable.
27

(B) As described above, the Appellees' assertion on reasons for presumption
ruination and the like is unreasonable and thus, the amount of damages of theAppellant (only for May, 2019) based on Article 102, paragraph (2) of the Patent Act
is XXXXXXXX yen from the presumption (1).
C Attorney costs
The amount of damages of the Appellant corresponding to the attorney fee
having a considerable causal relation with the infringement act of the Patent Right by
the Appellees is not less than 10% of the amount of damages in the aforementioned
B(B).
(2) Alternative claims
A. Amount of damages under Article 102, paragraph (2) of the Patent Act(A) The sales amount from May 17, 2019 to August 31, 2022 by production ofeach of Defendant's Systems and by provision of each of Defendant's Services by theAppellees is, as described in the "subtotal" column in the list of sales amounts and thelike in the Attachment 6, XXXXXXXXXXXX yen, the marginal profit amount is, as
described in the "subtotal" column in the list of marginal profit amounts and the likein the Attachment 7-1, not less than XXXXXXXXXXXX yen.
(B) Since the production of each of Defendant's Systems by the Appellees falls
under the infringement act of the Patent Right according to Inventions 1 and 2, under
Article 102, paragraph (2) of the Patent Act, the total amount of XXXXXXXXXXXX
yen of the marginal profit amount of XXXXXXXXXXXX yen in the aforementioned(A) obtained by the Appellees and the amount corresponding to 10% consumption tax
of XXXXXXXXXXXX yen described in the "amount corresponding to theconsumption tax" in the Attachment 7-1 is presumed to be the amount of damages theAppellant suffered due to the aforementioned infringement act (hereinafter, thispresumption shall be called "presumption (2)" in some cases).
However, since the assertions by the Appellees on the reasons forpresumption ruination and the like are all unreasonable as described in the
aforementioned (1) B, the amount of damages of the Appellant under the same
paragraph (for the period from May 17, 2019 to August 31, 2022) becomes theaforementioned total amount by presumption (2).
B Amount of damages under Article 102, paragraph (3) of the Patent Act(A) In "Research and Study Report on How to Utilize Patents and the like on
the basis of Value Evaluation of Intellectual Property ~ Actual State of Intellectual
Property (Resources) Values and Royalty Rate ~" (hereinafter, referred to as the"Report"Exhibit Ko 23) prepared by Teikoku Databank, LTD., as "1. Trends of28

Royalty Rate" in "III. Royalty Rates in Each Country", it is described that the royalty
rate of the domestic questionnaire result in the "software" industrial field is "6.3%".
(B) The video delivery service with a comment function is attractive in a pointthat viewers give comments to the video and view the video while sharing them.
However, if Inventions 1 and 2 are not worked, the comments overlap each other andcannot be read, which drastically deteriorates the attraction of this service and thus,
contribution by Inventions 1 and 2 to sales and profits of each of Defendant's Services
is extremely large.
Moreover, the overlapping of the comments on the video can be prevented
especially by the technique of Inventions 1 and 2, and an attractive video delivery
service with a comment function can be provided, which cannot be replaced by otherconfigurations.
(C) The Patent is for preventing imitation of "NICONICO VIDEO", which is amajor business of the Appellant, and the Appellant does not license this Patent toother companies and employs a policy to exclude infringement acts by othercompanies even through lawsuits.
Therefore, if the Patent is to be licensed to other companies, the licensing
would not be granted at a royalty rate of an industrial standard, but an extremely highlicensing fee should be set.
With this regard, the Appellees assert that the Appellant licensed the Patentto the operation company of "bilibili video", but the video service with comments of
the "bilibili video" is not based on the license of the Patent, and the Appellant is now
preparing for a patent infringement lawsuit against the aforementioned operationcompany and thus, the aforementioned assertion by the Appellees is unreasonable.
(D) The royalty rate set ex-post for those who infringed a patent right should
naturally be an amount higher than a usual royalty rate.
(E) By comprehensively considering the circumstances in the aforementioned(A) to (D) and other circumstances appearing in this case, the royalty rate to be abasis of calculation of the amount of damages corresponding to the royalty under
Article 102, paragraph (3) of the Patent Act in this case is not less than 20%.
Then, the amount of damages corresponding to the royalty under Article 102,
paragraph (3) of the Patent Act of the Appellant is not less than the total amount of
XXXXXXXXXXX yen acquired by multiplying the sales of XXXXXXXXXXXX yen
described in the "subtotal" column in the list of sales amounts and the like in the
Attachment 6 (part from May 17, 2019 to August 31, 2022) by the royalty rate of 20%
and the amount of XXXXXXXXX yen corresponding to consumption tax of 10%29

described in the "amount corresponding to consumption tax" column in the same list.
C Attorney costs
The amount of damages of the Appellant corresponding to the attorney costs
having a considerable causal relation with the infringement act of the Patent Right by
the Appellees is not less than 10% of each of the amount of damages in Article 102,
paragraph (2) of the Patent Act in the aforementioned A (B) (excluding the amountcorresponding to the consumption tax) or the amount of damages in the same Article,
paragraph (3) in the aforementioned B (E) (excluding the amount corresponding to theconsumption tax.).
(3) SummaryThus, the Appellant claims against the Appellees for joint payment
principally of the amount of damages XXXXXXXX yen under Article 102, paragraph(2) of the Patent Act, 1,000,000,000 yen, which is a part of the total amount of theamount corresponding to the attorney costs, and the delay damages thereof at the rateof 5% per annum thereto prescribed in the Civil Code before revision from June 1,
2019 until completion of the payment and joint payment alternatively for
XXXXXXXXXXXX yen described in the "amount of damages under Article 102,
paragraph (2) of the Patent Act" column in the list of amounts of marginal profits andthe like in Attachment 7-1 or 1,000,000,000 yen (selective assertion), which is a partof XXXXXXXXXXXX yen described in the "amount of damages under Article 102,
paragraph (3) of the Patent Act" column in the list of sales amounts and the like in
Attachment 6 and the delay damages at the rate described in the "delay damages rate
(per annum)" column from each date described in the "date to start counting delay
damages" column until completion of the payment with respect to each money
described in the "claimed amount" column in the list of alternative claimed amounts
in Attachment 5.
(Assertion by Appellees)(1) Principal claims
A. With respect to the assertion of the amount of damages under Article 102,
paragraph (2) of the Patent Act
In the assertion by the Appellant, the part in which the sales of each of the
Defendant's Services for the part (for May) from May 17 to 31, 2019 is XXXXXXXX
yen and the marginal profit amount is not less than XXXXXXXX yen is denied, andthe remaining part will be contested.
Exhibit Ko 24 cited by the Appellant is for the sales of the Appellee HPSfrom November 1, 2013 until September 30, 2014 and is not for the sales of each of30

the Defendant's Services for the part for May of 2019.

The sales and the marginal

profit amount of each of the Defendant's Services for the period from the same month
until August in 2022 is as described in Exhibit Otsu 84.
B Reasons for presumption ruination and the like(A) Inventions 1 and 2 are inventions related to the comment display function,
but in each of the Defendant's Services, the video using the comment display function
is extremely rare to begin with.

For example, in XXXXXXXX pieces of the video

published in "FC2 Video" in Defendant's Service 1 at a point of the time of January
11, 2021, the number of those to which one or more comments are given remains
XXXXXX, and the rate is XXXX percent (Exhibit Otsu 85).

This is because theprofits of "FC2 Video" rely mainly on adult video contents, and while viewing theadult videos, users rarely communicate with each other through comments and thelike, and if a large number of comments are displayed, the video becomes hard toview or the like.
In the aforementioned marginal profits of each of Defendant's Services, thepart related to the service that delivers the video with no comment indication does not
fall under the profit obtained by the working of Inventions 1 and 2 and thus, Article
102, paragraph (2) of the Patent Act is not applicable to this part.
(B) The comment display function of Inventions 1 and 2 is a part of thefunction in each of Defendant's Systems providing each of Defendant's Services,which is the video delivery service with comments and does not have attraction forcustomers.

In each of Defendant's Services, what attracts customers is a charm of

the video itself including originality of the adult videos posted by users and otherelements, and the customers are not attracted by the comment display functions orparticularly by the elements of Inventions 1 and 2.
Moreover, in each of Defendant's Services, importance of the comment
display function is extremely low or rather, for the users who want to view the videos,
if many comments are displayed on the video, such an adverse effect that the video is
hard to view occurs and thus, many video delivery services do not use the comment
display function according to Inventions 1 and 2.

The Appellee FC2 also puts

importance on that point, and abolished the function of displaying comments on thevideo on August 2, 2022.
In each of Defendant's Services as above, the comment display function of
Inventions 1 and 2 is worked only in a part of the functions of the entire system anddoes not have attraction for customers, which falls under the reasons for ruination ofpresumption (1).
31

(C) As described in the aforementioned (A), in the aforementioned marginal
profits of each of the Defendant's Services, Article 102, paragraph (2) of the Paten t
Act is not applied to the part related to the service of delivering the video with nocomment indication added.

Moreover, due to the reasons for ruination in the

aforementioned (B), presumption (1) asserted by the Appellant should be entirely
ruined, and even if the ruination of the presumption (1) remains in part, the ruination
rate thereof is not less than 99.99%.
Therefore, the assertion on the amount of damages by the Appellant on thebasis of the same paragraph is unreasonable.
C With respect to the assertion on the attorney costs
The assertion by the Appellant will be contested.
(2) Alternative claims
A With respect to assertion on the amount of damages under Article 102,
paragraph (2) of the Patent Act
It is accepted that the sales amount of each of the Defendant's Services fromMay 17, 2019 to August 31, 2022 is XXXXXXXXXXXX yen, and the marginal profit
amount is XXXXXXXXXXXX yen.
However, as described in the aforementioned (1) B (C), due to the reasonsfor presumption ruination that, in the aforementioned marginal profits of each of
Defendant's Services, Article 102, paragraph (2) of the Patent Act is not applied to thepart related to the service of delivering the video with no comment indication added,
the comment display function of Inventions 1 and 2 is worked only in a part of thefunctions of the entire system and does not have attraction for customers, thepresumption (2) of Appellant's assertion is entirely ruined, and even if the ruination of
the presumption (2) remains to a part, the ruination rate thereof is not less than
99.99%.
Moreover, even if payment of damages to the Appellees FC2 is ordered inthis case, it is subjected to export exemption on the consumption tax.
B With respect to the assertion on the amount of damages under Article 102,
paragraph (3) of the Patent Act(A) On the basis of the "Average value of royalty rate of patent right" in the"Questionnaire results" of this Report having the item of "Computer technology" at"3.1%" (page 7), the rate of "6.3%" asserted by the Appellant as the standard of theroyalty rate of the patent right related to the computer technology is too high.
(B) As in the aforementioned (1) B (B), in each of the Defendant's Services,
what attracts customers is the charm of the video itself including originality of the32adult videos posted by users and other elements, and the customers are not attracted
by the comment display functions of Inventions 1 and 2 or rather, for users who wantto view the video, such an adverse effect occurs that, when many comments are
displayed on the video, the video becomes difficult to view and thus, many video
delivery services do not use the comment display function according to Inventions 1
and 2.

This means that, in the video delivery business, Inventions 1 and 2 are not indemand and have no economical values.
(C) As described in the aforementioned (1) B (A), in each of Defendant'sServices, there are few videos using the comment display function, and in each of
Defendant's Services, those delivering a video with no comment indication do not fallunder the working of Inventions 1 and 2.
(D) Since the Appellant licenses the Patent to the operation company of"bilibili video" operated in China, it cannot be considered that the Appellant does notlicense the Patent to the other companies and employs a policy of excluding
infringement acts by the other companies even through litigation.
(E) According to the above, the royalty rate of the Patent is zero, and even if
some can be approved, it should be extremely lower than the royalty rate level of theother patent right related to the computer technology and thus, the assertion on theamount of damages by the Appellant under Article 102, paragraph (3) of the Patent
Act is groundless.
C. With respect to the assertion on the attorney costs
The assertion by the Appellant will be contested.
(3) Summary
According to the above, both the Appellant's principal claims and alternative
claims related to the claim for damages are groundless.
No. 4

Judgment of this court
1 Described matters of the Description(1) The Description (Exhibit Ko 2) has the following description (for FIGS. 1

to 10 cited in the description below, see Attachment 9).
A [Technical Field][0001]The present invention relates to a comment delivery system, a terminal device,a comment delivery method, and a program which can perform communication
between users by using contents being played, while playing video contents.
[Background Art]33

[0002]
Conventionally, there is a system which displays comments given by a user ona video such as a broadcasted TV program together with the video, for example.
For example, there is such a system that, in a bulletin board related to TV
programs and the like with different broadcast times depending on a region, postingfor one scene of the TV program is stored correspondingly to net time from start ofthe broadcast, and even if the time to view the bulletin board is different, the posting
made before is displayed correspondingly to the scene of the TV program (see Patent
Document 1, for example).

According to this system, a user can view and enjoy thecomment while watching the TV program without feeling a time lag of the broadcast
time.
[Technical Problem][0004]
However, in the aforementioned system in the prior art, the comment is simply
registered in association with the video time (video play time) and is played with thevideo and thus, users cannot exchange comments on a real-time basis, which is not
sufficiently interesting as communication.
[0005]The present invention was made in view of such circumstances and has an
object to provide a comment delivery system, a terminal device, a comment delivery
method, and a program which enable sharing of the same video and promotion ofcommunication among users by using a comment.
B [Solution to Problem][0006]In order to solve the aforementioned problem, the present invention is acomment delivery system in which a video delivery server which delivers video data,
a comment delivery server which delivers a comment for the video, and a plurality ofterminal devices connected via a network, characterized in that the comment delivery
server has a first comment-information storage portion which receives and storescomment information including comment given time, which is video play time
indicating elapsed time of the video with a beginning of the video as a reference, at apoint of time when the comment was given by the terminal device and the comment
each time when it is transmitted from any one terminal device in the plurality ofterminal devices and a comment-information delivery portion which reads out thecomment information stored in the first comment-information storage portion anddelivers it to the terminal device, and the terminal device has a video play portion34

which receives and plays video data delivered from the video delivery server, acomment-information reception portion which receives the comment information
input for the video to be played from the comment delivery server, a second
comment-information storage portion which stores the comment information received
by the comment-information reception portion, and a display portion which displays
the video played by the video play portion, reads out the comment in the comment
given time corresponding to the video play time of the video to be played from thesecond comment-information storage portion, and displays the read-out comment withthe video.
[0007]
Moreover, the present invention is, in the aforementioned comment delivery
system, characterized by having a determination portion which determines whether or
not the display position of the comment displayed by the comment display portion
overlaps a display position of another comment, and a display-position control portion
which displays comments at positions where they do not overlap each other, when thedetermination portion determines that the comment display positions overlap.
C [Advantageous Effects of Invention][0011]
According to the present invention, it was configured such that, in the input
comment information, the comment to which the comment given time corresponding
to the video play time of the video to be played corresponds is read out of thecomment information, and the read-out comment contents are displayed with thevideo.

In the comment information input for the video, when a request for erasing

the comment indicating the comment information to be erased is input, it isconfigured such that the comment is not displayed and thus, such display can be madethat a user's intention is taken into consideration on whether or not the comment is
improper for the video, whereby entertainment in the communication using thecomment can be improved.
D [Description of Embodiments][0013]
The comment delivery system according to an embodiment of the present
invention will be explained below with reference to the drawings.

FIG. 1 is aconceptual diagram illustrating a configuration of the comment delivery system
according to the embodiment of this invention.

In this drawing, a video delivery

server 1 delivers video data in response to a delivery request from a terminal device 3.
This delivery is performed by streaming delivery, for example.
35

A comment delivery

server 2 receives the comment for the video delivered by the video delivery server 1
from the terminal device 3 and delivers the video to each of the terminal devices 3 tobe viewed.

The terminal device 3 is connected to the video delivery server 1 and thecomment delivery server 3 via a network 4, receives and displays the video deliveredfrom the video delivery server 1, and receives and displays on the video the comment
delivered from the comment delivery server 3.
[0014]
Subsequently, the comment delivery server 2 and the terminal device 3 in
FIG. 1 will be further explained by reference to the drawings.

FIG. 2 is a schematic

block diagram illustrating a configuration of the comment delivery server 2.

In thisdrawing, a comment-information storage portion 21 stores contents of the commentand the video play time with the point of time to start play of the video as a reference
at a point of time when the comment contents are given as the comment given time inassociation with the comment contents as the comment information.
An example of data stored in this comment-information storage portion 21 is
illustrated in FIG. 3.

In the comment-information storage portion 21, a plurality ofpieces of the comment information which collects the comments for the video
delivered by the video delivery server 1 by a thread are stored.

Each of the pieces ofcomment information includes information on a video ID which identifies the video
and a thread ID which identifies a thread so that which thread of what video can be
identified.

The comment information includes, other than the comment given time

and the comment contents, actual time for posting comment information(corresponding to the aforementioned actual time information) indicating actual time
when the comment was given (uttered), a user name, which is information fo r
identifying the user who gave the comment, and comment data associated with acomment display method, which is information for specifying how the comment isdisplayed on the video in plural.

When the video of the video ID is being played,

and the comment data are received from the terminal device 3 which is viewing thecomment of the thread with the thread ID, the received comment data are configured
to be additionally stored.

Here, since the thread ID is stored in association with thevideo ID, even the same video or a plurality of different threads can be identified.
This comment-information storage portion 21 corresponds to the aforementioned firstcomment-information storage portion.
[0015]
Subsequently, a comment-information delivery portion 22 reads out thecomment information stored in the comment-information storage portion 21 and36

delivers it to the terminal device 3.

A comment-information update management

portion 23 adds the additional comment information received from the terminal device
3 via a communication portion 24 to the comment-information storage portion 21 andstores it in accordance with the video ID and the thread ID.
The communication portion 24 performs various types of communication withthe terminal device 3, outputs the information transmitted from the terminal device 3
to the comment-information update management portion 23, and outputs an
instruction to add the comment information and to cause it to be stored or outputs adelivery instruction of the comment information to the comment-information delivery
portion 22.
[0016]
Subsequently, the terminal device 3 will be explained by reference to thedrawings.

FIG. 4 is a schematic block diagram for explaining a configuration of theterminal device 3.
In this drawing, a video play portion 31 transmits a delivery request for thevideo specified by the user of the terminal device 3 to the video delivery server 1 andreceives and plays the video delivered from the video delivery server 1.

A comment -information reception portion 32 receives the comment information input for thevideo to be played from the comment delivery server 2.

A comment-information

storage portion 33 stores the comment information received by the comment information reception portion 32.

This comment-information storage portion 33

corresponds to the aforementioned second comment-information storage portion.
[0017]A display device 34 is a liquid-crystal display device, a CRT (Cathode Ray
Tube), or the like and displays various types of information.

A firs t display portion

35 displays a video played by the video play portion 31, reads out a comment towhich the comment given time corresponding to the video play time of the video to beplayed corresponds in the comment information stored in the comment -information
storage portion 33 from the comment information, and displays the read-out comment
with the video by the display device 34.

Moreover, the first display portion 35 has afunction of overlay-displaying the comment contents on the video.

The second

display portion 36 displays a list of comments as a comment list on the display device
34 on the basis of the comment data stored in the comment-information storage
portion 33.

Here, they are displayed in an order of information of actual time forposting the comment included in the comment data.
[0018]
37

The information displayed on this display device 34 will be further explained.
FIG. 5 is a diagram illustrating an example of the information displayed on thedisplay device 34.

In a display column 101, a URL (uniform resource locator) when

this comment delivery server is accessed is displayed.
video ID of the video to be played is displayed.

In a display column 102, a

In a display column 103, thecumulative number of view requests of the currently displayed video is displayed as
the number of views.

Regarding this number of views, when another user causes thevideo to be played (view requested), the count number of users viewing the same
video is increased at that point of time, and the count number is updated and displayed.
In a display column 104, a video displayed by the first display portion is displayed.
A display column 105 is a region where a comment displayed by the second display
portion is displayed, and here, the comment is displayed on the video displayed by thedisplay column 104.

Moreover, here, the display column 105 is set to a size larger

than that of the display column 104, and overlay-displayed comments and the like aretrimmed on an outer side of a screen of the video so that it can be grasped that thecomment itself is not included in the video but is written by the user for the video.
[0019]On an operation panel 106, a play button, a stop button, a rewind button, a fast forward button, a volume adjusting button, a column displaying a play state indicating
at what part in the entire video is now played, and the like are displayed, and byplacing a cursor on any one of the buttons by a mouse and by clicking it, an input of
the operation corresponding to the button is accepted.

On a display column 107, alength of play time of the entire video and video play time of the video currently
displayed in the display column 105 are displayed.

In an input column 108, a nameof a user who utters a comment on the video is input through an input portion 37.
Here, it may be so configured that a check box is provided in the vicinity of the input
column 108, whether or not a mail address is to be input is selected in response towhether or not this check box was checked, and when the check box is checked, theinput column 108 is divided into two parts so that inputs of the name of the user andthe mail address of the user are accepted.

In an input column 109, information

specifying how to display the comment is input.

Regarding how to display thecomments, a position where the comment is displayed on the video, a font, a letter
size, a start position and an end position for the moving display, a direction for themoving display, and the like can be set as information for specifying the overlaydisplay, for example.

It is to be noted that, here, how to display the comment may be

determined in advance so that the user does not have to make an input.
38

[0020]In a comment column 110, a comment is input by the user through the input
portion 37.

A button 111 transmits to the comment delivery server 2 a comment

input in the comment column 110, the name of the user input in the input column 108,and the information on how to display the comment input in the input column 109.
A display column 112 is a region in which a comment list, which is a list of thecomments, is displayed.

In this comment list, a number (sign 112a) indicating anutterance order given to the comment, the name of the user who input the comment(sign 112b), the comment given time when the comment was written (sign 112c), anda part of an uttered comment (sign 112d) are displayed in accordance with theinformation on the order of the actual posted time.

It may be so configured that, in

this display column 112, an input column such as a check box for specifying whether
or not the display column 112 is to be displayed on the screen is provided so that thedisplay is to be made or to be hidden in accordance with an instruction on whether or
not the input in this input column may be displayed.

Moreover, it may be so

configured that the number of a part of the comments displayed in this display column
112 is changed in accordance with an instruction by the user.

A display column 113

displays details of the comment to which the cursor is placed by the user in thecomment list displayed in the display column 112.

Regarding the details of thecomment, the entire comment, the name of the user who uttered the comment, themail address, and the like are displayed.
[0022]
Subsequently, returning to FIG. 4, the input portion 37 is an input device suchas a mouse and a keyboard and accepts an input of various types of information froma user.

A selection portion 38 accepts an input of selection of a comment input

through the input portion 37 in the list of comments displayed by the second display
portion 36.

A play control portion 39 reads out the comment data of the comment

selected by the selection portion 38 from the comment-information storage portion 33
and, from the video play time corresponding to the comment given time of the readout comment data, causes the video to be played by the first display portion and to be
displayed on the display device 34, and causes the comment contents of the read -outcomment data to be displayed by the first display portion 35 on the display device 34.
[0023]A transmission portion 40 accepts a data input of the comment contents for thevideo displayed by the first display portion 35 and transmits to the comment delivery
server the video play time as the comment given time at the point of time when the39

comment contents were input together with the comment contents.

Moreover, thetransmission portion 40 has a function of transmitting various types of information to
the comment delivery server 2 or the video delivery server 1 in accordance with an
instruction input from the input portion 37.
[0024]
Subsequently, an operation of the aforementioned comment delivery system
will be explained.

Here, first, an outline of the operation of the comment delivery

system will be explained.
First, the terminal device 3 accesses the comment delivery server 2, receives
data of a list of the videos whose comments were written at a recent time, anddisplays it on the display device 34.

At this time, on the display device 34, a video

name, a thread name, and the like are displayed as the recent video list as shown in
FIG. 6, for example.

Here, when a thread to be viewed is selected by the user, andthe name of the thread is clicked by a mouse, the terminal device 3 transm its to thevideo delivery server 1 the video ID set for the video corresponding to the clickedthread, makes a request for delivery of the video, transmits to the comment delivery
server 2 the thread ID and the video ID set for the clicked thread, and makes a request
for transmission of comment information.

Upon receipt of this, the video delivery

server 1 performs streaming delivery of the video specified by the video ID to theterminal device 3 which made the delivery request.

Meanwhile, the comment

delivery server 2 reads out the comment information corresponding to the thread ID
and the video ID from the comment-information storage portion 21 and delivers it to
the terminal device 3 which made the delivery request.
[0025]The terminal device 3 receives the video delivered from the video delivery
server 1 and displays it on the display device 34 and displays the comment contentson the video on the basis of the comment information delivered from the comment
delivery server 2.

Here, in accordance with the video play time from start of playingof the video, the comment contents for which the comment given time matching thevideo play time is set are sequentially displayed on the video.
E [0026]
Subsequently, the operations of the comment delivery server 2 and the terminal
device 3 will be sequentially explained.
First, the operation of the comment delivery server 2 will be explained by using a
flowchart in FIG. 7.

A communication portion 24 of the comment delivery server 2

detects whether or not the delivery request for the comment information has been40

received from the terminal device 3 (Step S101).

When the delivery request for thecomment information has been received, the communication portion 24 gives adelivery instruction of the comment information to the comment-information delivery
portion 22.

Here, the video ID and the thread ID of the comment information

included in the delivery request are output to the comment-information delivery
portion 22.

The comment-information delivery portion 22 reads out the comment

information corresponding to the video ID and the thread ID output from thecommunication portion 24 from the comment-information storage portion 21 (StepS102) and delivers the read-out comment information to the terminal device 3 which
made the delivery request (Step S103).

Here, all pieces of the comment information

associated with the video ID and the thread ID are transmitted altogether.
[0027]On the other hand, when the comment data transmitted from the terminal
device 3, not the delivery request for the comment information, are received (Step
S104), the communication portion 24 outputs the comment data to the comment information update management portion 23.

The comment-information update

management portion 23 refers to the comment-information storage portion 21,
identifies the comment information on the basis of the video ID and the thread ID
included in the comment data output from the communication portion 24, andadditionally stores the received comment data with respect to the identified comment
information (Step S105).

When it is additionally stored, the comment-informationdelivery portion 22 identifies the terminal device 3, which is a terminal device 3
playing the video with the video ID concerned and viewing the comment of the thread
ID concerned together with the video with the video ID concerned, and delivers the
additionally stored comment data to each of the identified terminal devices 3 (Step
S106).

On the other hand, when it is not the delivery request for the comment

information or comment data transmitted from the terminal device 3 has not been
received, the processing proceeds to Step S101.

Here, as a method of identifying theterminal device 3 which is playing the video with the same video ID and viewing th ecomment of the thread with the thread ID concerned, there can be such a method thata session is established in advance with the terminal device 3 which accessed thecomment delivery server 2, and the terminal device 3 whose session is valid can be
identified as that viewing the video, for example.
[0028]
Subsequently, an operation of the terminal device 3 will be explained byreference to the drawings.

FIG. 8 is a flowchart for explaining the operation of the41

terminal device 3.
When an instruction to play the video is input from the user (Step S201), theinput portion 37 of the terminal device 3 transmits to the video delivery server 1 thevideo ID of the instructed video by the transmission portion 40, makes a delivery
request for the video, and transmits to the comment delivery server 2 the delivery
request for the comment information.

Then, when the comment-information

reception portion 32 receives the comment information delivered from the comment
delivery server 2 (Step S202), it causes the comment information to be stored in thecomment-information storage portion 33.
[0029]
When the comment information is received and stored in the comment information storage portion 33, the video play portion 31 receives the video deliveredfrom the video delivery server 1, plays the received video, and displays it by the firstdisplay portion 35 on the display device 34 (Step S203).

When the video play isstarted, the first display portion 35 determines whether or not there is comment data towhich the comment given time matching the video play time is set on the basis of thecurrent video play time by referring to the comment-information storage portion 33(Step S204).

When there is the comment data to which the comment given time

matching the video play time is set (Step S205 - YES), the first display portion 35
calculates a display position of the comment data (Step S206).

In accordance withthe calculated display position, the display control of the comment on the video is
executed (Step S206).
On the other hand, the video play portion 31 determines whether or not the play
has ended and if the play has ended, the processing is finished, while if the play has
not ended, the processing proceeds to Step S204.
[0030]On the other hand, in Step S205, if there is no comment to be displayed, thetransmission portion 40 detects whether or not a comment has been input from the
input portion 37 (Step S209).

If there is an input of a comment, play time (video

play time) indicated by a player of software which plays the video at a point of time
when the comment was input (point of time when a "write" button (sign 111) was
clicked) is read out, the video play time is made the comment given time, and thevideo ID of the video being played, the thread ID of the comment being viewed, thecurrent actual time information (information of the current time), the user name of theuser of the terminal device 3, the input comment contents, and the comment display
method are associated and additionally stored in the comment list as the comment42

information in the comment-information storage portion 33 (Step S210).

The

transmission portion 40 transmits the additionally stored comment information to thecomment delivery server 2 (Step S211), and the processing proceeds to Step S208 .
[0031]In Step S209, when it is not a comment input, the terminal device 3 detects
whether or not the comment data have been received by the comment-information
reception portion 32 (Step S212).

When the comment data is received, the comment -information reception portion 32 additionally stores the received comment data in thecomment-information storage portion 33 and the processing proceeds to Step S208.
[0032]On the other hand, in Step S212, when it is not the reception of the comment
data, the selection portion 38 of the terminal device 3 detects whether or not an input
of a comment selection operation was performed from the input portion 37 (Step
S214).

When there is an input of the comment selection operation, the selection

portion 38 outputs comment contents of the selected comment data to the play control
portion 39.

Upon receipt of this output, the play control portion 39 reads out thecomment given time stored in association with the selected comment data by referringto the comment-information storage portion 33 and rewinds or fast-forwards the video
play position in accordance with the video play time according to the read -outcomment given time so that the play is performed from the video play time matching
the comment given time stored in association with the comment data (Step S215), andcauses the comment contents of the comment given time to be displayed, and theprocessing proceeds to Step S208.
F [0033]
Subsequently, a case where a comment is displayed on the screen will be
explained by reference to drawings.

Here, in the "List of recent comments" in FIG. 5,

a case in which a thread of "Share how you like the food" associated with the video of"Rice omelet by famous chef" was selected will be explained.

When this thread isselected, the video of "Rice omelet by famous chef" is played in a region of thedisplay column 104 in FIG. 5, for example.

The comment is sequentially displayedon the video in accordance with the video play time.

In FIG. 5, the screen in a casewhere the video play time is 9 seconds is shown, and here, a comment by a user F of
"Looks delicious!" with the comment given time of 9 seconds is movingly displayed
from a right side to a left side of the screen (sign 115).

When the video playproceeds, and the video play time reaches 13 seconds, a screen as shown in FIG. 9 isdisplayed.

Here, the comment with the comment given time of 9 seconds of "Looks
43

delicious!" has moved to the left side on the screen, and only a part "..cious!" isdisplayed in a trimmed state outside the display column 104 and inside the display
column 109 (sign 200).

Moreover, a comment by a user Z of "Work by a famouschef is good." with the comment given time of 10 seconds is displayed at a position
below the comment by the user B (sign 201), and a comment by a user E of "Where
does this egg come from?" with the comment given time of 12 seconds is displayed at
a position on a lower side of the screen (sign 202).

As described above, thecomments are sequentially displayed.
[0034]As described above, the explanation was made with attention given to an
operation of only one terminal device 3, but actually, comments can be exchanged
among users who are viewing the same video and in the same thread as follows.
Here, explanation will be made by reference to FIG. 10.
For example, when a video is played, and a comment that "Where does this egg
come from?" is additionally input as an utterance by a user E (sign a) at a point oftime when the video play time is 12 seconds, the comment information of theadditionally input comment is delivered to the terminal device 3 which views thesame video in the same thread through the comment delivery server 2.
[0035]
After the delivery, when the same video is played by another user C (sign b),
the comment information including the added comments is delivered to the terminal
device 3 of the user C.

And at a point of time when the video play time is 12

seconds, a comment by the user E that "Where does this egg come from?" is displayed.
When the user C who viewed this comment inputs, as a reply thereto, a comment that
"It seems from XX prefecture." and transmits it to the comment delivery server 2(sign c) at a point of time when the video play time of the user C is 15 seconds (at apoint of time of 100 seconds in the video play time of the user E, for example), thetransmitted comment is delivered to the terminal device 3 of the user E.

At this time,

at a point of time of 100 seconds of the video play time, for example, a part of theuser C's comment is displayed in accordance with an order of actual time in a list ofcomments of the user E (sign d).

For example, it is displayed at the bottom (or at thetop) of the comment list as the latest comment.

Then, when a part of the comment isclicked by the user E who viewed this comment list, the video being played returns to
the point of time of 150 seconds of the video play time and is played, and a commentof "It seems from XX prefecture." is displayed on the screen of the user E's terminal
device 3 (sign e).

As a result, the user E can enjoy it as if a reply was made to44his/her comment.

By repeating such exchange of comments, even users viewing thevideo at different timings can promote communication through comments.

As

described above, the comments are managed in an order of comment input in actual
time and are displayed as a comment list so that even users with video play timings
not matching one another can exchange comments on a real-time basis, whereby thecommunication can be promoted.
[0036]
Moreover, when the comment as above and the video play from a point of time
when the comment was written are repeated, a difference in video play timings getsclose to 0 among the users, and comments can be exchanged while the same video isviewed substantially at the same timing.
[0037]
Here, the case in which a plurality of the users are viewing the same video was
explained, but in such a situation that no user is viewing a certain video, if a user
plays the video, the comment information having been stored until then is delivered tothe terminal device 3 from the comment delivery server 2 and is sequentially playedin accordance with a timing of the video play.

As a result, even in a situation where

no other users are viewing, the comments made in the past can be viewed sequentiallyin accordance with the video play time of the video.

Here, comments can also be

written.
[0038]
It is to be noted that, in the aforementioned embodiment, the case in which,when a comment is added to the comment list, and the added comment is clicked by auser, it is played from the video play time matching the comment given time set forthe comment, and the comment is displayed has been explained, but if the added
comment is not clicked, the comment is displayed on the video at a point of time
when the video play time has reached the comment given time set for the added
comment.
Moreover, even if a comment was written by another user in the video playtime of the video being viewed by himself/herself, it is displayed in the commen t listin the order of actual time and thus, by clicking the added comment, the comment canbe viewed by rewinding or fast-forwarding to a point of time when the comment was
written.

Moreover, here, when the video play time is rewound, the comments having

been written until then, including the newly written additional comments, aresequentially displayed correspondingly to the comment given time in accordance withthe video play time.
45

[0039]Moreover, here, rewinding and fast-forwarding of the play time can be
performed by moving a slide bar of the play-state display column of the operation
panel 106, but with this operation, the video is rewound or fast-forwarded, which
results in such a state that the comment desired to be viewed disappears soon from th escreen and becomes hard to find, but by selecting it from the comment list, viewing is
made possible from a scene desired to be viewed.
Moreover, in the aforementioned embodiment, the case in which the comment
data delivered from the comment delivery server 2 are received by the terminal device
3 and are reflected on the screen to be displayed was explained, but it may be so
configured that a comment input by the user on his/her own terminal device 3 isimmediately (before it is transmitted to the comment delivery server 2 and is received
on the comment delivery server 2 side) displayed on a screen at a point of time when
the comment is input.

Specifically, when a comment is input in Step S209 in FIG. 8,

the input comment is displayed on his/her own terminal device 3, the processing
proceeds to Step S210 at which the input comment is additionally stored in thecomment list and then, it is transmitted to the comment delivery server 2.
G [0040]Subsequently, display of a comment will be explained.
For the input comment, its position for display such as an upper stage, a middle
stage, a lower stage, and the like on the screen and display time for moving display ofthe comment can be set by inputting display time for the moving display of thecomment in the input column 109.

Moreover, if the display time is to be set, it canbe so configured that the comment is displayed on the upper stage of the screen for acertain period of time (4 seconds, for example) and then erased, for example.
Moreover, the moving speed can be adjusted by specifying time from when it appears
in the display region on the screen until when it moves to an outside of the region andthen, disappears (4 seconds, for example).

Furthermore, in a case where a large

number of comments are intensively input at a certain video play time or the like, ifthey overlap on a line at the same height, when they are displayed, they can bedisplayed at a changed height on the screen or moving-displayed.

Furthermore, if

the moving speed is different depending on a length of a character string of thecomment due to the setting of the display time, the subsequent comment might catchup before the comment finishes moving and thus, in such a case, too, it may be so
configured that the subsequent comment is displayed on the line at the different heightor moving-displayed.
46

[0043]
It is to be noted in the aforementioned embodiment, the case where the video
delivery server 1 and the comment delivery server 2 are different servers was
explained, but it may be so configured that the functions of the video delivery server 1
and the comment delivery server 2 are realized by the same server.
Moreover, in the aforementioned embodiment, when the comment and thevideo are viewed in this service, the case where the comment delivery server 2 isaccessed, the data of the recent comment list are received, and the video and thethread are selected from the recent comment list displayed on the display device 34
was explained, but it may be so configured that the thread for this video is specified,and a URL with which the comment and the video can be viewed is created and madepublic on the Internet.

Specifically, a URL including the video ID and the thread ID

and from which the video can be played and the comment information of the thread
can be received by being clicked may be written on a bulletin board on a blog or a siteof the Internet so that other users can click.

Moreover, such URL may be set to a

thumbnail image or the like so as to be clicked.
H [0063]
As described above, the embodiment of the present invention has been
described in detail with reference to the drawings, but specific configuration is not
limited to this embodiment but includes designs and the like within a range notdeparting from the gist of the present invention.
(2) According to the described matters in the aforementioned (1) and thedescription in the scope of claims according to each of the Inventions, the Description
is found to have a disclosure as follows regarding each of the Inventio ns.
A. Conventionally, there is such a system that displays comments made by auser on a video such as a broadcasted TV program together with the video, but in thissystem, the comment is simply registered correspondingly to the video time (video
play time) and is played together with the video and thus, users cannot exchangecomments on a real-time basis, which is not sufficiently interesting as communication([0002], [0004]).
B. The "present invention" has an object to provide a comment delivery system
which enables sharing of the same video and promoting of communication amongusers by using a comment ([0005]).
The comment delivery system of the "present invention" employs, in order tosolve the aforementioned problem, such a configuration including a server and aplurality of terminal devices connected thereto via a network and characterized in that47

[i] the server receives a comment given for the video by a user who is viewing thevideo transmitted from the server and transmits, to the terminal device, comment
information including a comment given time, which is a video play time indicating anelapsed time of the video with a beginning of the video as a reference andcorresponding to a point of time when the comment was given; [ii] the terminal
device receives the video and the comment information related to the video from theserver and overlay-displays the comment on the video in the comment given timecorresponding to the video play time of the video, and moreover, [iii] the system has adetermination portion which determines whether or not a display position of thecomment displayed on the terminal device overlaps a display position of anothercomment and a display-position control portion which displays the comments at
positions where each of the comments does not overlap each other, when thedetermination portion determines that the comment display positions overlap ([0006],[0007], [0018]).
According to the "present invention", such an effect is exerted that, in the
input comment information, the comment to which the comment given timecorresponding to the video play time of the video to be played corresponds is read out
from the comment information, and the read-out comment contents can be displayedwith the video, whereby entertainment in the communication using the comments canbe improved ([0011]).
2 Issue 1 (governing law)
Other than the correction as follows, it is as described in No. 4, 2 in "Facts andReasons" in the judgment in prior instance, which will be cited.
(1) The phrase "580" on page 74, line 17 in the judgment in prior instance shallbe altered to "No. 580", and a part from "of this case" on the same page, line 18 to theend of line 20 shall be altered to "regarding the claims for injunction of delivery ofeach of the Defendant's files under Article 100, paragraphs (1) and (2) of the Patent
Act by the Appellant against the Appellees and for erasing of the program for the
Defendant's Server and removal of each of the Defendant's Servers, the laws andorders of our country, which is a country where the Patent Right was registered, shallbe the governing law."(2) Subsequent to the word "judgment" on page 74, line 25 in the judgment inprior instance, "reference" shall be added, and "Japanese Patent" on page 75, line 2
shall be altered to "Patent Right in our country", "Japan" on the same page, line 4 to"our country", and "the pertaining governing law is the Japanese law." on the same
page, line 5 to "for that, the laws in our country shall be the governing law.".
48

3 Issue 2 (Whether or not each of Defendant's Systems belongs to the technicalscope of Invention 1) and Issue 3 (Whether or not each of Defendant's Systems
belongs to the technical scope of Invention 2)
Other than the alternation of the "Invention" to "each of the Inventions","Basic facts (6)" to "Basic facts (4)", and "Defendant's System" to "each of
Defendant's Systems", it is as described in No. 4, 3 and 4 in "Facts and Reasons" inthe judgment in prior instance, which shall be cited.
4 Issue 4 (Presence/absence of "production" of each of Defendant's Systems by
the Appellees)(1) Found facts
Other than the correction as follows, it is as described in No. 4, 5(1) in"Facts and Reasons" in the judgment in prior instance, which shall be cited.
A. The part on page 104, lines 19 to 22 in the judgment in prior instance shallbe altered as follows.
"According to the Basic Facts in No. 2, 2 as well as each of the pieces ofevidence and the entire import of the oral argument which will be described later, thefollowing facts are found with regard to the management of each of Defendant'sServices and the operation of each of Defendant's Systems and the like.
A. Management situation of each of Defendant's Services by the Appellee
FC2"
B. The phrase "Defendant's Service 1 is" on page 105, line 4 in the judgment inprior instance shall be altered to "in Defendant's Service 1", "Defendant's Service 3
is" on the same page, line 25 to "in Defendant's Service 3, and "which is" on the same
page, the last line to "is prepared".
C. The phrase "Defendant's Service" on page 106, line 3 in the judgment inprior instance shall be altered to "each of Defendant's Services", "3(3)B(A)a" on thesame page, line 14 to "3(2)A(B)a", and the part from the same page, line 22 to page
111, line 24 shall be altered as follows.
"C Process in which a video with a comment is displayed on the user terminal
existing in Japan (hereinafter, referred to as the "user terminal in the country") in
Defendant's Service 1
In Defendant's Service 1, the process in which the video with acomment is displayed on the user terminal in the country is classified according to the
FLASH version and the HTML 5 version as follows (Exhibits Ko 5 and 6, the entire
import of the oral argument).
(A) FLASH version of Defendant's Service 1 (see Attachment 8-2)49

[i] The user installs Adobe Flash Player as a plugin (expanded function) of abrowser in the user terminal (user terminal in the country, hereinafter, the same
applies to this clause) in advance.
[ii] The user specifies a webpage of Defendant's Service 1 for causing thedesired video to be displayed on the browser of the user terminal.
[iii] In response to [ii], the web server of Appellee FC2 transmits the HTMLfile and the SWF file of the aforementioned webpage to the user terminal.
[iv] The user terminal receives the aforementioned HTML file and SWF fileand stores them in a cache of the browser.
FLASH loads the SWF file in the cache of the browser.
[v] The user presses the play button of the video in the webpage displayedon the browser of the user terminal.
[vi] In the SWF file loaded by FLASH in [iv], an order to demand thebrowser to make a request for acquisition of information related to the video and thecomment is stored, FLASH instructs the browser to acquire the video file and thecomment file in accordance with the order, the browser makes a request for the video
file to the video delivery server of the Appellee FC2 in accordance with the
instruction, and makes a request for the comment file to the comment delivery serverof Appellee FC2.
[vii] In response to the request in [vi], the video delivery server of Appellee
FC2 transmits the video file, and the comment delivery server of Appellee FC2transmits the comment file to the user terminal, respectively.
[viii] The user terminal receives the video file and the comment file in [vii].
As a result, the user terminal causes the comment to be overlaydisplayed on the video in the browser on the basis of the received video file andcomment file.
At the display, calculation for determining whether the twocomments overlap or not and, when it is determined that they overlap, specification of
display positions which do not overlap are executed on the basis of a condition
specified by the SWF file.
(B) HTML 5 version of Defendant's Service 1 (see Attachment 8-3)[i] The user specifies the webpage of Defendant's Service 1 in order to cause
the desired video to be displayed on the browser of the user terminal (the user
terminal in the country, hereinafter, the same applies to this clause).
[ii] In response to [i], the web server of Appellee FC2 transmits the HTMLfile and the JS file of the aforementioned webpage to the user terminal.
50

[iii] The user terminal receives the aforementioned HTML file and JS fileand stores them in the cache of the browser.
[iv] In the JS file stored in [iii], an order to demand the browser to make arequest for acquisition of information related to the video and the comment is stored,
the browser makes a request for the video file to the video delivery server of Appellee
FC2 and makes a request for the comment file to the comment delivery server ofAppellee FC2 in accordance with the order.
[v] In response to the request in [iv], the video delivery server of Appell ee
FC2 transmits the video file, and the comment delivery server of Appellee FC2transmits the comment file to the user terminal, respectively.
[vi] The user terminal receives the video file and the comment file in [v].
[vii] The user presses the play button of the video in the webpage displayedon the browser of the user terminal.
As a result, the user terminal causes the comment to be overlaydisplayed on the video in the browser on the basis of the received video file andcomment file.
At the display, calculation for determining whether the twocomments overlap or not and, when it is determined that they overlap, specification of
display positions which do not overlap are executed on the basis of a condition
specified by the JS file.
D. Process in which the video with a comment is displayed on the user terminalin the country in Defendant's Services 2 and 3
In Defendant's Services 2 and 3, the process in which the video with acomment is displayed on the user terminal in the country is classified according to the
FLASH version and the HTML 5 version as follows (Exhibits Ko 5 and 6, the entire
import of the oral argument).
It is to be noted that Defendant's Service 1 differs from Defendant's Services
2 and 3 in a point that, in Defendant's Service 1, the video file is transmitted from thevideo delivery server of Appellee FC2 to the user terminal, whereas in Defendant'sServices 2 and 3, the video file is transmitted from the video delivery server ofanother video delivery service to the user terminal.
(A) FLASH version of Defendant's Services 2 and 3[i] The user installs Adobe Flash Player as a plugin (expanded function) of abrowser in the user terminal (user terminal in the country, hereinafter, the same
applies to this clause) in advance.
[ii] The user specifies a webpage of Defendant's Service 2 or 3, causing the51

desired video (the video of another video delivery service registered in Defendant'sService 2 or 3) to be displayed on the browser of the user terminal.
[iii] In response to [ii], the web server of Appellee FC2 transmits the HTMLfile and the SWF file of the aforementioned webpage to the user terminal.
[iv] The user terminal receives the aforementioned HTML file and SWF fileand stores them in a cache of the browser.
FLASH loads the SWF file in the cache of the browser.
[v] In the SWF file loaded by FLASH in [iv], an order to demand thebrowser to make a request for acquisition of information related to the video and thecomment is stored, FLASH instructs the browser to acquire the video file and thecomment file in accordance with the order, and the browser makes a request for thecomment file to the comment delivery server of Appellee FC2 and makes a request for
the video file to the video delivery server of another video delivery service inaccordance with the instruction.
[vi] In response to the request in [v], the comment delivery server ofAppellee FC2 transmits the comment file, and the video delivery server of anothervideo delivery service transmits the video file to the user terminal, respectively.
[vii] The user terminal receives the video file and the comment file in [vi].
[viii] The user presses the play button of the video in the webpage displayedon the browser of the user terminal.
As a result, the user terminal causes the comment to be overlaydisplayed on the video in the browser on the basis of the received video file andcomment file.
At the display, calculation for determining whether the twocomments overlap or not, and when it is determined that they overlap, specification of
display positions which do not overlap are executed on the basis of a condition
specified by the SWF file.
(B) HTML 5 version of Defendant's Services 2 and 3[i] The user specifies the webpage of Defendant's Service 2 or 3 in order tocause the desired video (the video of another video delivery service registered in
Defendant's Service 2 or 3) to be displayed on the browser of the user terminal (theuser terminal in the country, hereinafter, the same applies to this clause).
[ii] In response to [i], the web server of the Appellee FC2 transmits theHTML file and the JS file of the aforementioned webpage to the user terminal.
[iii] The user terminal receives the aforementioned HTML file and JS fileand stores them in the cache of the browser.
52

[iv] In the JS file stored in [iii], an order to demand the browser to make arequest for acquisition of information related to the video and the comment is stored,
and the browser makes a request for the comment file to the comment delivery serverof Appellee FC2 and makes a request for the video file to the video delivery server ofanother video delivery service in accordance with the order.
[v] In response to the request in [iv], the comment delivery server ofAppellee FC2 transmits the comment file, and the video delivery server of anothervideo delivery service transmits the video file to the user terminal, respectively.
[vi] The user terminal receives the video file and the comment file in [v].
[vii] The user presses the play button of the video in the webpage displayedon the browser of the user terminal.
As a result, the user terminal causes the comment to be overlaydisplayed on the video in the browser on the basis of the received video file andcomment file.
At the display, calculation for determining whether the twocomments overlap or not and, when it is determined that they overlap, specification of
display positions which do not overlap are executed on the basis of a condition
specified by the JS file.
D. All instances of "Defendant's Service" on page 111, line 25, from the same
page, the last line to page 112, line 1 in the judgment in prior instance shall be alteredto "each of Defendant's Services".
(2) Presence/absence of "production" of each of Defendant's Systems byAppellee FC2
A. Whether or not the act of Appellee FC2 in the FLASH version of
Defendant's Service 1 is applicable to the "production" (Article 2, paragraph (3), item(i) of the Patent Act) as the act or working of Invention 1(A) Introduction
Invention 1 is an invention of a comment delivery system including aplurality of terminal devices connected to a server via a network, and the type of theinvention is an invention of a product, and the "production" (Article 2, paragr aph (3),item (i) of the Patent Act) of the product as an act of working is interpreted to refer toan act of newly creating a product belonging to the technical scope of the invention.
As in Invention 1, the "production" in the invention of the system i n which
the server and the terminal are connected via a network such as the Internet and which
exerts an integrated function as a whole (hereinafter, referred to as a "network -typesystem") is interpreted to refer to such an act of newly creating the system in which a
53

plurality of elements, each of which does not singularly satisfy all the constituent
features of the invention, are connected via the network so as to have an organic
relationship with one another and to have a function of satisfying all the c onstituent
features of the Invention as a whole.
Thus, in determining whether or not the act of Appellee FC2 in the FLASH
version of Defendant's Service 1 falls under the "production" (Article 2, paragraph (3),item (i) of the Patent Act) as the act of working of the Invention 1, first, in the
FLASH version of Defendant's Service 1, what is the act of newly creating
Defendant's System 1 shall be examined, and on the basis of this, whether or not theact falls under the "production" in Article 2, paragraph (3), item (i) of the Patent Act
and what the subject of the act is shall be sequentially examined.
(B) Act of newly creating Defendant's System 1 in the FLASH version of
Defendant's Service 1
a. In the FLASH version of Defendant's Service 1, as in No. 4, 5(1)C(A) in the
judgment in prior instance cited after correction, in response to the user specifying the
webpage of Defendant's Service 1 for causing the desired video to be displayed on thebrowser of the user terminal in the country ([ii]), the web server of the Appellee FC2transmits the HTML file and the SWF file of the aforementioned webpage to the user
terminal ([iii]), these files received by the user terminal are stored in a cache of th ebrowser, and FLASH of the user terminal loads the SWF file in the cache of thebrowser ([iv]); subsequently, when the user presses the play button of the video in the
webpage displayed on the browser in the user terminal ([v]), in accordance with theorder stored in the aforementioned SWF file, FLASH instructs the browser to acquire
the video file and the comment file, and the browser makes a request for the video fileto the video delivery server of Appellee FC2 and a request for the comment file to thecomment delivery server of Appellee FC2 in accordance with the order ([vi]), and in
response to the aforementioned request, the video delivery server of the Appellee FC2transmits the video file, and the comment delivery server of the Appellee FC2transmits the comment file to the user terminal, respectively ([vii]), and the user
terminal receives the video file and the comment file ([viii]).

As a result, the user

terminal can cause the comment to be overlay-displayed on the video in the browser
on the basis of the received video file and comment file.

As described above, at apoint of time when the user terminal received the video file and the comment file([viii]), the video delivery server and the comment delivery server of Appellee FC2
and the user terminal are connected via the network using the Internet, and theoverlay-display of the comment on the video is made possible in the browser of the54user terminal and thus, it can be considered that Defendant's System 1 including thefunction satisfying all the constituent features of Invention 1 is newly created at the
point of time when the user terminal received each of the aforementioned files(hereinafter, the aforementioned act of newly creating Defendant's System 1 shall bereferred to as "Production 1-1").
b. On the other hand, the Appellees assert that: [i] the act of Appellee FC2
related to the "production" of each of Defendant's Systems is only manufacture of aprogram corresponding to each of Defendant's Systems and upload of the program tothe server, both of which are completed in the U.S., and after that, an act of use
including the upload of the comments and the videos by the users exists until thecomment and the video are displayed on the user terminal, but the display device on
the user terminal is a general-purpose browser, and the act of use has no relation withthe featured part of each of the Inventions; [ii] in Defendant's System 1, the user
terminal only passively displays the video and the comment in accordance with thedescription in the program uploaded by Appellee FC2 to the server, and the contentsof the comments uploaded by a third party to the server of Appellee FC2 and thevideo uploaded to the server of Appellee FC2 (the video uploaded to a third party's
server in Defendant's Systems 2 and 3).

The video and the comment displayed on

the user terminal is only a result of use of an already produced device (each of
Defendant's Systems) by a user using the general-purpose browser of the user terminal,
and the "act" to "newly" "create" the "product" does not exist there; [iii] according to
the point described in Exhibit Otsu 311 that "in general, a system related tocommunication is accompanied by transmission/reception of data and thus, theinterpretation that even repetition of production, disposal of the system related to thecommunication for the first unit, the second unit, the third unit, and the n -th unit isincluded in the 'production' every time at timing of transmission/reception of the datameans that the system is re-produced at each timing of the data transmission/reception
in the system, which cannot be accepted", it should be considered that the act ofAppellee FC2 does not fall under the "production" of Invention 1.
However, regarding [i], it should be considered that Defendant's System 1
including the function which satisfies all the constituent features of Invention 1 is notcompleted only by the manufacture of the program corresponding to Defendant'sSystem 1 and the upload of the program to the server by the Appellee FC2 as
described in the aforementioned a.
Regarding [ii], as described in the aforementioned a, the video delivery server
and the comment delivery server of the Appellee FC2 are connected to the user
55

terminal via the network using the Internet, and Defendant's System 1 including thefunction satisfying all the constituent features of Invention 1 is newly created by thereception by the user terminal of a required file, and if the user terminal does notreceive the aforementioned file, Defendant's System 1 cannot play the role.
Regarding [iii], as described above, Defendant's System 1 is newly created
when the video delivery server and the comment delivery server of Appellee FC2 areconnected to the user terminal via the network using the Internet, and the user
terminal receives a required file, and it exists until the file stored in the cache of thebrowser of the user terminal is disposed of.

Moreover, even if the creation of

Defendant's System is repeated each time the aforementioned file is received, i tcannot be considered not to fall under the "production" for that reason.
Therefore, the aforementioned assertion by the Appellees is groundless.
(C) Whether or not Production 1-1 falls under the "production" in Article 2,paragraph (3), item (i) of the Patent Act
a. The principle of territoriality for the patent right means that the patent rightin each country is prescribed by laws in the country concerned for the establishment,
transfer, effects, and the like thereof, and the effects of the patent ri ght are approved
only in the territory of the country concerned (see Supreme Court Judgment 1995 (O)No. 1988 rendered by Third Petty Bench on July 1, 1997 / Minshu Vol. 51, No. 6,
page 2299, Supreme Court Judgment 2000 (Ju) No. 580 rendered by First Petty Benchon September 26, 2002 / Minshu Vol. 56, No. 7, page 1551), and it is interpreted thatthe aforementioned principle is also applicable in the Patent Act of our country.
As described in the aforementioned (B)a, Production 1-1 is performed suchthat the web server of the Appellee FC2 transmits the HTML file and the SWF file of
the webpage of Defendant's Service 1 for causing the desired video to be displayed tothe user terminal in the country, the user terminal receives them, the video delivery
server of the Appellee FC2 transmits the video file, and the comment delivery serverof Appellee FC2 transmits the comment file to the user terminal, respectively, and theuser terminal receives them, and the aforementioned web server, the video delivery
server, and the comment delivery server are all present in the U.S., while the user
terminal exists in Japan.

That is, in Production 1-1, the transmission of each of theaforementioned files from the server existing in the U.S. to the user terminal in the
country and the reception of them by the user terminal are performed across the U.S.
and our country.
our country.

The newly created Defendant's System 1 exists across the U.S. andThus, from the principle of territoriality, whether or not Production 1 -1

falls under the "production" in Article 2, paragraph (3), item (i) of the Patent Act in56

our country is relevant.
b. In the network-type system, installation of a server outside Japan(hereinafter, referred to simply as "outside the country") is generally perf ormed atpresent, and since the country in which the server exists does not constitute an
obstacle in use of the network-type system, even if the server constituting the
network-type system, which is an alleged infringement article, exists outside thecountry, if the terminal constituting the system exists in Japan (hereinafter, referred toas "in the country"), the system can be used in the country by using it, and the use can
influence economic profits that the patentee can obtain by working the invention in
the country.
Then, regarding the invention of the network-type system, by strictlyinterpreting, without any exception, the principle of territoriality and by interpretingthat the invention does not fall under the "working" in Article 2, paragraph ( 3) of the
Patent Act in our country on the ground that the server, which is a part of the elements
constituting the system, exists outside the country means that the patent can be easily
avoided only by installing the server outside the country, and the patent rightaccording to the invention of the system cannot be sufficiently protected, which is notreasonable.
On the other hand, the interpretation without any exception that theinvention falls under the "working" in Article 2, paragraph (3) of the Patent Act on the
ground that the terminal, which is a part of the elements constituting the system,
exists in the country becomes excessive protection for the patent right and could incura trouble in economic activities, which also is not reasonable.
On the basis of the above, from the viewpoint of appropriate protection of
the patent right pertaining to the invention of the network-type system, regardingwhether or not the act of newly creating the network-type system falls under the"production" in Article 2, paragraph (3), item (i) of the Patent Act, even if the server,which is a part of the elements constituting the system exists outside the country, bycomprehensively considering a specific mode of the act, a function/role performed in
the invention by those elements existing in the country among the elements
constituting the system, a place where the effect of the invention can be obtained byuse of the system, an influence that the use thereof exerts on the economic profits ofthe patentee of the invention and the like, it is reasonable to interpret that, when theact is found to be performed in the territory of our country, it falls under the"production" in Article 2, paragraph (3), item (i) of the Patent Act.
By examining this for Production 1-1, the specific mode of Production 1-1 is57

performed by transmission of each of the files from the server existing in the U.S. tothe user terminal in the country and by reception of them by the user terminal in the
country, in which the transmission and the reception (transmission/reception) are
performed as a unit, and Defendant's System 1 is completed by the reception of eachof the files by the user terminal in the country and thus, it can be conceived that the
aforementioned transmission/reception is performed in the country.
Subsequently, Defendant's System 1 is constituted by the server of Appellee
FC2 existing in the U.S. and the user terminal existing in the country, and theaforementioned user terminal existing in the country performs a function of thedetermining portion of constituent feature 1F and the function of the display-position
control portion of constituent feature 1G required as major functions of Invention 1 todisplay comments to be displayed on the video so as not to overlap each other.
Moreover, Defendant's System 1 can be used from inside the country via theaforementioned user terminal, and the effect of Invention 1, which is improvement ofentertainment in communication using the comment, is exerted in the country, and theuse thereof in the country can influence the economic profits obtained by Appellant
by using the system according to Invention 1 in the country.
Bycomprehensively

consideringtheaforementioned

circumstances,

Production 1-1 can be considered to be performed in the territory of our country andthus, it is found to fall under the "production" under Article 2, paragraph (3), item (i)of the Patent Act in the relationship with Invention 1.
c. On the other hand, the Appellees assert that: [i] according to the principle ofterritoriality, "the effect of the patent is approved only in a territory of the country
concerned" and thus, from the viewpoint that it is natural consequence that the act of
creation overseas (outside the country) does not fall under the "production" in Article
2, paragraph (3), item (i) of the Patent Act and that, according to the all -elements Rule,
the working of the patent invention is to work all the elements configuring the patentinvention concerned, so that if even a part of a product is created overseas, it should
be considered not to fall under the "production" in Article 2, paragraph (3), item (i) of
the Patent Act; [ii] just because the possibility of patent workaround is a problem, it isa leap of logic to consider that if only a part of a product satisfying the constituent
features is created in the country, it falls under the "production" or rather, theinterpretation that, if a part of a product satisfying the constituent features is createdin the country, the effects of the Patent Act in our country immediately take effect has
more problems; and [iii] in the court examples in our country, the principle ofterritoriality has been strictly conformed to by the Supreme Court Judgment of the58

Card Reader Case (judgment rendered by First Petty Bench on September 26, 2002 as
described above) and the like, and an adverse effect caused by making an exception
thereto is clearly anticipated and thus, even if an exception to the principle ofterritoriality is to be made, it should be dealt with by a legislative process.
However, regarding [i], with respect to the invention of the network-typesystem, on whether or not the act of newly creating a system to be an alleged
infringement article falls under the "production" in Article 2, paragraph (3), item (i)of the Patent Act, even if the server, which is a part of the elements configuring thesystem concerned, exists outside the country, when the act concerned can be regarded
as having been performed in the territory of our country, it should be interpreted tofall under the "production" in Article 2, paragraph (3), item (i) of the Patent Act bycomprehensively considering the circumstances taught in the aforementioned b andthus, the assertion in [i] cannot be accepted.
Regarding [ii], with respect to the aforementioned determination on whether
or not it falls under the "production" in Article 2, paragraph (3), item (i) of the Patent
Act, it should not be considered such that, even if a part of a product satisfying theconstituent features is created in the country, the effects of the Patent Act in ourcountry immediately take effect and thus, the assertion in [ii] lacks the premise
thereof.
Regarding [iii], in the light that the principle of territoriality for the patentright means that the patent right in each country is prescribed by laws in the country
concerned for the establishment, transfer, effects, and the like thereof, and the effectsof the patent right are approved only in the territory of the country concerned, itshould be considered that the interpretation, when the act concerned can be found tobe performed in the territory of our country as described above, it falls under the"production" in Article 2, paragraph (3), item (i) of the Patent Act does not violate theprinciple of territoriality.

In addition, the Supreme Court Judgment of the Card

Reader Case cited by the Appellees is not considered to even teach that, in order tofall under the "production" as a natural consequence from the principle of territoriality,
the act of newly creating a product satisfying all the constituent features of the Patent
Invention is required to be completed in the territory of our country.

Moreover, inthe treaties concluded by our country and the Patent Act and other laws and orders, aswell, there is no such prescription as the contents of the principle of territoriality that,in order to fall under the "production", the act of newly creating the product satisfying
all the constituent features of the patent invention is required to be completed i n the
territory of our country and thus, the assertion in [iii] cannot be accepted.
59

Therefore, the aforementioned assertion by the Appellees is groundless.
(D) Subject that "produced" Defendant's System 1 (according to FLASH
version of Defendant's Service 1)
a. Defendant's System 1 (according to the FLASH version of Defendant'sService 1) is newly created as the result of, as in the aforementioned (B) a, the web
server of the Appellee FC2 transmitting the HTML file and the SWF file of the
webpage of the Defendant's System 1 for causing the desired video to be displayed tothe user terminal, the user terminal receiving them, in response to the request from thebrowser in accordance with the order by the aforementioned SWF file stored in thecache of the browser of the user terminal, the video delivery server of Appellee FC2transmitting the video file, and the comment delivery server of Appellee FC2transmitting the comment file to the user terminal, respectively, and the user terminal
receiving them.

In light of Appellee FC2 installing and managing the

aforementioned web server, the video delivery server, and the comment delivery
server, and these servers transmitting the HTML file and the SWF file, the video file,
as well as the comment file to the user terminal, and the reception of each of the files
by the user terminal being performed automatically without intervention of a separate
operation by the user but in accordance with the description in the program uploaded
by Appellee FC2 to the server, the subject that "produced" Defendant's System 1should be considered to be Appellee FC2.
With this regard, in the "production" of Defendant's System 1, as in the
aforementioned (B) a, it is required that the user specifies the webpage of Defendant'sService 1 for causing the desired video to be displayed in the browser of the user
terminal ([ii]) and presses the play button for the video in the webpage displayed on
the browser ([v]), but in the webpage displayed on the basis of the HTML file stored
in the web server installed and managed by Appellee FC2, each of the aforementioned
acts by the user is limited to an act performed with viewing the page and watching thevideo by the user.

That is, when the page is displayed on the browser, as describedabove, the web server of Appellee FC2 transmits the HTML file and the SWF file ofthe page to the user terminal, and these files received by the user terminal are stored
in the cache of the browser ([iv]), and regarding the request for the video file and thecomment file, it is made in accordance with the order by the aforementioned SWF file([vi]), and a particular act by the user is not required in obtaining the aforementioned
video file and comment file and thus, each of the aforementioned acts by the user islimited to those performed through viewing the webpage managed by Appellee FC2,
and the act of "production" of Defendant's System 1 by the user himself/herself cannot
60be evaluated as subjective performance.
b. In response to the above, the Appellees assert that [i] the transmission by theserver existing in the U.S. of the webpage data, the JS file (SWF file in the FLASH
version), the video file, and the comment file is not performed by Appellee FC2, but it
is automatically performed in response to a request due to the incorporation of the
program in the server connected to the Internet, which is only a flow of a causal
effect; [ii] the reception by the user terminal existing in Japan (in the country) of theaforementioned webpage data, the JS file (SWF file), the video file, and the comment
file is performed by user's specifying of the webpage or clicking on the play button
displayed on the webpage, which means that the user's operation intervenes.

Even if

Appellee FC2 performs the transmission act in [i], since the Patent Act clearly
distinguishes and prescribes "transfer" and "acceptance", "import" and "export", and"provision" and "reception", it should not be interpreted that Appellee FC2 performs
the aforementioned act of reception.
However, regarding [i], as described in the aforementioned a, Appellee FC2
installs and manages the web server, the video delivery server, and the comment
delivery server, and these servers transmit the HTML file and the SWF file, the video
file, as well as the comment file to the user terminal, and the reception of each of thefiles by the user terminal is performed automatically without intervention of aseparate operation by the user but in accordance with the description in the program
uploaded by Appellee FC2 to the server and thus, the subject that "produced"
Defendant's System 1 should be considered to be Appellee FC2.
Moreover, regarding [ii], as described in the aforementioned a, each of theuser's acts of specifying of the webpage or clicking on the play button displ ayed on
the webpage is limited to the performance through viewing of the webpage managed
by Appellee FC2, and the reception of each of the aforementioned files by the user
terminal is automatically performed without intervention of a separate operation by
the user as described above and thus, the subject that causes the user terminal toreceive each of the aforementioned files should be considered to be Appellee FC2.
Therefore, the aforementioned assertion by the Appellees is groundless.
(E) Summary
According to the above, it is found that Appellee FC2 "produced" (Article 2,paragraph (3), item (i) of the Patent Act) Defendant's System 1 by Production 1 -1.
B. Whether or not the act of Appellee FC2 in the HTML 5 version of
Defendant's Service 1 falls under the "production" (Article 2, paragraph (3), item (i)of the Patent Act) as the act of working of Invention 1
61

(A) Act of newly creating Defendant's System 1 in the HTML 5 version of the
Defendant's Service 1
As described in the aforementioned A(A), the "production" in the inventionof the network-type system is interpreted to refer to an act of newly creating thesystem in which a plurality of elements, each of which does not singularly satisfy all
the constituent features of the invention concerned, are connected via the network so
as to have an organic relationship with one another and to have a function ofsatisfying all the constituent features of the Invention as a whole.
In the HTML 5 version of the Defendant' Service 1, as in No. 4, 5(1) C ( B)in the judgment in prior instance cited after correction, in response to the user
specifying the webpage of Defendant's Service 1 for causing the desired video to be
displayed on the browser of the user terminal in the country ([i]), the web server ofAppellee FC2 transmits the HTML file and the JS file of the aforementioned webpage
to the user terminal ([ii]), these files received by the user terminal are stored in thecache of the browser ([iii]), after that, in accordance with the order stored in the
aforementioned JS file, the browser makes a request for the video file to the video
delivery server of Appellee FC2 and makes a request for the comment file to thecomment delivery server of Appellee FC2 ([iv]), in response to the aforementioned
request, the video delivery server of Appellee FC2 transmits the video file, and thecomment delivery server of Appellee FC2 transmits the comment file to the user
terminal, respectively ([v]), and the user terminal receives the aforementioned video
file and comment file ([vi]), whereby the user terminal can overlay-display thecomment on the video in the browser on the basis of the received video file andcomment file.

As described above, at a point of time when the user terminal receives

the aforementioned video file and comment file ([vi]), the video delivery server andthe comment delivery server of Appellee FC2 and the user terminal are connected via
the network using the Internet, and the comment can be overlay-displayed on thevideo in the browser of the user terminal.

Thus, it can be considered that, at the

point of time when the user terminal receives each of the aforementioned files,
Defendant's System 1 including the function satisfying all the constituent features ofInvention 1 is newly created (hereinafter, the aforementioned act of newly creating
Defendant's System 1 shall be called "Production 1-2" and shall be called together
with Production 1-1 "Production 1").
(B) Whether or not Production 1-2 falls under the "production" under Article 2,paragraph (3), item (i) of the Patent Act
a. As described in the aforementioned (A), Production 1-2 is performed by the62transmission by the web server of Appellee FC2 to the user terminal of the HTML fileand the JS file of the webpage of Defendant's Service 1 for causing the desired video
to be displayed, the reception thereof by the user terminal, the transmission of thevideo file by the video delivery server of Appellee FC2 and of the comment file by
the comment delivery server of Appellee FC2 to the user terminal, respectively, andthe reception thereof by the user terminal.

However, the aforementioned web server,

the video delivery server, and the comment delivery server all exist in the U.S., while
the user terminal exists in the country.

That is, in Production 1-2, the transmissionof each of the aforementioned files from the server existing in the U.S. to the user
terminal in the country and the reception thereof by the user terminal are performed
across the U.S. and our country, and the newly created Defendant's System 1 exists
across the U.S. and our country.

Thus, in view of the principle of territoriality,

whether or not Production 1-2 falls under the "production" under Article 2, paragraph(3), item (i) of the Patent Act of our country is relevant.
b. From the viewpoint taught in the aforementioned A (C) b, by examining
Production 1-2, the specific mode of Production 1-2 is performed by the transmissionof each of the files from the server existing in the U.S. to the user terminal in the
country, and the reception thereof by the user terminal in the country, in which thetransmission and the reception (transmission/reception) are performed as a unit, andDefendant's System 1 is completed by the reception of each of the files by the user
terminal in the country and thus, it can be conceived that the aforementioned
transmission/reception is performed in the country.
Subsequently, Defendant's System 1 is configured by the server of Appellee
FC2 existing in the U.S. and the user terminal existing in the country, and theaforementioned user terminal existing in the country performs a function of thedetermining portion of the constituent feature 1F and the function of the displayposition control portion of the constituent feature 1G required as major funct ions ofInvention 1 to display comments to be displayed on the video so as not to overlap
each other.
Moreover, Defendant's System 1 can be used from inside the country via theaforementioned user terminal, and the effect of Invention 1, which is improvement ofentertainment in communication using the comment, is exerted in the country, and theuse thereof in the country can influence the economic profits obtained by Appellant
by using the system according to Invention 1 in the country.
Bycomprehensively

consideringtheaforementioned

circumstances,

Production 1-2 can be considered to be performed in the territory of our country and63thus, it is found to fall under the "production" under Article 2, paragraph (3), item (i)of the Patent Act in the relationship with Invention 1.
(C) Subject that "produced" Defendant's System 1 (according to HTML 5
version of Defendant's Service 1)
Defendant's System 1 (according to HTML 5 version of Defendant's Service
1) is newly created as the result that, as in the aforementioned (A), the web server ofAppellee FC2 transmits the HTML file and the JS file of the webpage of Defendant'sService 1 for causing the desired video to be displayed to the user terminal, the user
terminal receives them and, in response to the request from the browser in accordancewith the order by the aforementioned JS file stored in the cache of the browser of theuser terminal, the video delivery server of Appellee FC2 transmits the video file, andthe comment delivery server of Appellee FC2 transmits the comment file to the user
terminal, respectively, and the user terminal receives them.

Appellee FC2 installs

and manages the aforementioned web server, the video delivery server, and thecomment delivery server, and these servers transmit the HTML file and the JS file, thevideo file, and the comment file to the user terminal, and the reception of each of thefiles by the user terminal is performed automatically without intervention of aseparate operation by the user but in accordance with the description in the program
uploaded by Appellee FC2 to the server and thus, the subject that "produced"
Defendant's System 1 should be considered to be Appellee FC2.
With this regard, in the "production" of Defendant's System 1, as in the
aforementioned (A), it is required that the user specifies the webpage of Defendant'sService 1 for causing the desired video to be displayed in the browser of the user
terminal ([i]), but in the webpage displayed on the basis of the HTML file stored in
the web server installed and managed by Appellee FC2, the aforementioned act by theuser is limited to an act performed with viewing the page and watching the video by
the user, and as described above, since the reception of each of the aforementioned
files after that is automatically performed in accordance with the description in the
program uploaded by Appellee FC2 without intervention of a separate operation by
the user, the act of "production" of Defendant's System 1 by the user himself/herself
cannot be evaluated as subjective performance.
(D) Summary
According to the above, it is found that Appellee FC2 "produced"
Defendant's System 1 by Production 1-2.
C. Whether or not the act of Appellee FC2 in Defendant's Services 2 and 3 falls
under the "production" (Article 2, paragraph (3), item (i) of the Patent Act) as the act
64

of working of Invention 1(A) Act of newly creating Defendant's System 2 or 3 in Defendant's Services 2
and 3
As described in the aforementioned A(A), the "production" in the inventionof the network-type system is interpreted to refer to an act of newly creating a system
in which a plurality of elements, each of which does not singularly satisfy all theconstituent features of the invention, are connected via the network so as to have anorganic relationship with one another and to have a function of satisfying all theconstituent features of the Invention as a whole.
In the FLASH version of Defendant' Services 2 and 3, as in No. 4, 5 (1) D(A) in the judgment in prior instance cited after correction, when the user specifies the
webpage of Defendant's Service 2 or 3 for causing the desired video to be displayedon the browser of the user terminal in the country ([ii]), in response to that, the web
server of Appellee FC2 transmits the HTML file and the SWF file of theaforementioned webpage to the user terminal ([iii]), these files received by the user
terminal are stored in the cache of the browser, FLASH of the user terminal loads the
SWF file in the cache of the browser ([iv]), and subsequently, in accordance with theorder stored in the aforementioned SWF file, FLASH instructs the browser to acquire
the video file and the comment file, and the browser makes a request for the comment
file to the comment delivery server of Appellee FC2 and makes a request for the video
file to the video delivery server of another video delivery service in accordance with
the instruction ([v]), and in response to the aforementioned request, the comment
delivery server of Appellee FC2 transmits the comment file and the aforementioned
video delivery server transmits the video file to the user terminal, respectively ([vi]),and the user terminal receives the aforementioned video file and comment file ([vii]),
whereby the user terminal can cause the comment to be overlay-displayed on thevideo in the browser on the basis of the received video file and comment file.
Moreover, in the HTML 5 version of Defendant's Services 2 and 3, as in No.
4, 5 (1) D (B) in the judgment in prior instance cited after correction, in respons e tothe user specifying the webpage of Defendant's Service 2 or 3 for causing the desired
video to be displayed on the browser of the user terminal in the country ([i]), the web
server of Appellee FC2 transmits the HTML file and the JS file of the aforementioned
webpage to the user terminal ([ii]), these files received by the user terminal are stored
in the cache of the browser ([iii]), and subsequently, in accordance with the orderstored in the aforementioned JS file, the browser makes a request for the comment fileto the comment delivery server of Appellee FC2 and makes a request for the video file65

to the video delivery server of another video delivery service ([iv]), and in response to
the aforementioned request, the comment delivery server of Appellee FC2 transmits
the comment file and the video delivery server transmits the video file to the user
terminal, respectively ([v]), and the user terminal receives the aforementioned video
file and the comment file ([vi]), whereby the user terminal can cause t he comment tobe overlay-displayed on the video in the browser on the basis of the aforementioned
video file and comment file thus received.
As described above, at a point of time when the user terminal receives theaforementioned video file and comment file ([vii] in the FLASH version, [vi] in theHTML 5 version), the video delivery server of another video delivery service as wellas the comment delivery server of Appellee FC2 and the user terminal are connected
via the network using the Internet, and the comment can be overlay-displayed on thevideo in the browser of the user terminal.

Thus, it can be considered that, at the

point of time when the user terminal receives each of the aforementioned files,
Defendant's System 2 or 3 including the function satisfying all the constituent featuresof Invention 1 is newly created (hereinafter, the act of newly creating Defendant'sSystem 2 shall be called "Production 2" and the act of newly creating Defendant'sSystem 3 shall be called "Production 3".).
(B) Whether or not Productions 2 and 3 fall under the "production" under
Article 2, paragraph (3), item (i) of the Patent Act
a. As described in the aforementioned (A), Productions 2 and 3 are performedby the transmission by the web server of Appellee FC2 of the HTML file and the SWF
file or the JS file of the webpage of Defendant's Service 2 or 3 for causing the desired
video to be displayed to the user terminal, the reception thereof by the user terminal,
the transmission of the comment file by the comment delivery server of Appellee FC2
and the video file by the video delivery server of another video delivery service to theuser terminal, respectively, and the reception thereof by the user terminal.

However,

at least both the aforementioned web server and the comment delivery server exist in
the U.S., and the aforementioned video delivery server also exists outside the country
in some cases (No. 4, 5(1) B (B) in the judgment in prior instance cited after
correction), while the user terminal exists in the country.

That is, in Productions 2

and 3, the transmission of each of the aforementioned files from the server existingoutside the country to the user terminal in the country and the reception thereof by theuser terminal are performed across outside the country and inside the country, and the
newly created Defendant's Systems 2 and 3 exist across outside the country and inside
the country.

Thus, in view of the principle of territoriality, whether or not
66

Productions 2 and 3 fall under the "production" under Article 2, paragraph (3), item(i) of the Patent Act in our country is relevant.
b. From the viewpoint taught in the aforementioned A (C) b, by examining
Productions 2 and 3, the specific modes of Productions 2 and 3 are performed by thetransmission of each of the files from the server existing outside the country (note that,as described in the aforementioned a, the video delivery server might exist in the
country in some cases) to the user terminal in the country and the reception thereof by
the user terminal in the country, in which the transmission and reception(transmission/reception) are performed as a unit, and Defendant's System 2 or 3 iscompleted by the reception of each of the files by the user terminal in the country andthus, it can be conceived that the aforementioned transmission/reception are
performed in the country.
Subsequently, Defendant's Systems 2 and 3 are configured by the comment
delivery server of Appellee FC2 existing in the U.S., the video delivery server
existing outside or inside the country, and the user terminal existing in the country,
and the aforementioned user terminal existing in the country performs a function of
the determining portion of the constituent feature 1F and the function of the displayposition control portion of the constituent feature 1G required as major functions ofInvention 1 to cause comments to be displayed on the video so as not to overlap eachother.
Moreover, Defendant's Systems 2 and 3 can be used from inside the country
via the aforementioned user terminal, and the effect of Invention 1, which is
improvement of entertainment in communication using the comment, is exerted in the
country, and the use thereof in the country can influence the economic profits
obtained by Appellant by using the system according to Invention 1 in the country.
Bycomprehensively

consideringtheaforementioned

circumstances,

Productions 2 and 3 can be considered to be performed in the territory of our country
and thus, it is found to fall under the "production" under Article 2, paragraph (3), item(i) of the Patent Act in the relationship with Invention 1.
(C) Subject that "produced" Defendant's Systems 2 and 3
Defendant's Systems 2 and 3 are newly created as the result of, as in the
aforementioned (A), the web server of the Appellee FC2 transmitting the HTML fileand the SWF file or the JS file of the webpage of Defendant's Service 2 or 3 forcausing the desired video to be displayed to the user terminal, the user terminal
receiving them and, in response to the request from the browser in accordance withthe order by the aforementioned SWF file or JS file stored in the cache of the browser
67

of the user terminal, the comment delivery server of the Appellee FC2 transmitting
the comment file and the video delivery server of another video delivery service
transmitting the video file to the user terminal, respectively, and the user terminal
receiving them.

The Appellee FC2 installs and manages the aforementioned web

server and comment delivery server, and these servers transmit the HTML file and the
SWF file or the JS file as well as the comment file to the user terminal, and thereception of each of the files by the user terminal is performed automatically without
intervention of a separate operation by the user but in accordance with the description
in the program uploaded by Appellee FC2 to the server and thus, the subject that"produced" Defendant's Systems 2 and 3 should be considered to be Appellee FC2.
With this regard, in the "production" of Defendant's Systems 2 and 3, as in
the aforementioned (A), it is required that the user specifies the webpage ofDefendant's Service 2 or 3 for causing the desired video to be displayed in thebrowser of the user terminal ([ii] in the FLASH version, [i] in the HTML 5 version),
but in the webpage displayed on the basis of the HTML file stored in the web server
installed and managed by Appellee FC2, the aforementioned act by the user is limited
to an act performed with viewing the page and watching the video by the user, and as
described above, since the reception of each of the aforementioned files after that is
automatically performed in accordance with the description in the program uploaded
by Appellee FC2 to the server without intervention of a separate operation by the user,
the act of "production" of Defendant's System 2 or 3 by the user himself/herself
cannot be evaluated as subjective performance.
(D) Summary
According to the above, it is found that Appellee FC2 "produced"
Defendant's System 2 by Production 2 and "produced" Defendant's System 3 by
Production 3.
D. Whether or not the act of Appellee FC2 in Defendant's Service 1 falls underthe "production" (Article 2, paragraph (3), item (i) of the Patent Act) as the act ofworking of Invention 2
Defendant's System 1 newly created by Production 1 of Appellee FC2satisfies all the constituent features of Invention 2 and belongs to the technical scope
thereof and thus, on the grounds similar to those taught in the aforementioned A and
B, Production 1 is found to fall under the "production" under Article 2, paragraph (3),item (i) of the Patent Act also in the relationship with Invention 2.
E. Whether or not the act of Appellee FC2 in Defendant's Services 2 and 3 falls
under the "production" (Article 2, paragraph (3), item (i) of the Patent Act) as the act
68

of working of Invention 2
Defendant's Systems 2 and 3 newly created by Productions 2 and 3 ofAppellee FC2 satisfy all the constituent features of Invention 2 and belong to thetechnical scope thereof and thus, on the grounds similar to those taught in the
aforementioned C, Productions 2 and 3 are found to fall under the "production" under
Article 2, paragraph (3), item (i) of the Patent Act also in the relationship with
Invention 2.
F. Conclusion
According to the above, it is found that Appellee FC2 "produced"
Defendant's System 1 by Production 1, Defendant's System 2 by Production 2, andDefendant's System 3 by Production 3, and infringed the Patent Right.
The assertion by Appellees against that is groundless.
(3) Presence/absence of "production" of each of Defendant's Systems byAppellee HPS
The situation of involvement of Appellee HPS with each of Defendant'sSystems is as No. 4, 5 (1) E in the judgment in prior instance cited after correction,
and at least on May 17, 2019 when the establishment of the Patent Right was
registered and after, it is not found that Appellee HPS engaged in the business related
to each of Defendant's Services and there is no other evidence sufficient to approve it.
Therefore, it is not found that Appellee HPS "produced" each of Defendant'sSystems and infringed the Patent Right.
The assertion by Appellant against that is groundless.
5 Issue 5 (Establishment of the defense of invalidity)
As described in Attachment 10 (Determination on Issue 5 (Establishment of
the defense of invalidity))
6 Issue 6 (Establishment of abuse of right)
Appellees assert that the Application was filed for the purpose of dragging
up another litigation again (see the assertion by Appellees in "(14) Issue 5-14
(Violation of public order and morality (Invalidation Reason 14))" described in
Attachment 10), and in view of the history of application as above, it is obvious thatthe division of the Application was filed for the purpose of substantially deviatingfrom the prescription in Article 17-2, paragraph (3), item (iii) and item (iv) of the
Patent Act and thus, exercise of the Patent Right against Appellees is abuse of rightand is not allowed.
However, in light of the teaching in (12) and (14) described in Attachment
10, the assertion by the Appellees lacks the premises thereof, which cannot be69

accepted.
7 Issue 7 (Necessity of injunction and removal or the like)(1) Injunction
A. As described in the aforementioned 4, it is found that Appellee FC2"produced" Defendant's System 1 by Production 1, Defendant's System 2 by
Production 2, and Defendant's System 3 by Production 3, and infringed the Patent
Right.
Moreover, as described in the aforementioned 4(2)A(B)a and the same B(A),in Production 1, the video file and the comment file are transmitted from the server ofAppellee FC2 to the user terminal in the country, and these files are received by theuser terminal in the country, whereby Defendant's System 1 was "produced".
With regard to this point, Appellee FC2 asserts that, regarding Defendant'sService 1, the function of overlay-displaying the comment on the video in the display
device of the user terminal was abolished on August 2, 2022, and the specification
was changed to provision of a comment display region separately from the video
display region.
Thus, by examining that, it is found that, according to the evidence (Exhibits
Otsu 97 to 99), in Defendant's Service 1, at a point of time of March 14, 2023, thespecification is configured such that the comment is displayed on a region different
from the region on which the video is displayed.

Note that there is no evidence

sufficient to find that the specification change was made before that date.
Then, it cannot be found that the infringement of the Patent Right by
Production 1 has been committed by Appellee FC2 on the same day and after.
However, in Defendant's Service 1, the service in which the comment isdisplayed together with the video has been still provided, and by considering that it iseasy to overlay-display the comment on the video again by changing the specification
so as to provide the service related to the Patent Right infringement, in order toprevent the infringement of the Patent Right by Production 1, it is found to benecessary to injunct the delivery of the video file and the comment file from theserver of Appellee FC2 to the user terminal existing in Japan (transmission of both
files to the user terminal in the country and having them received by the user terminalin the country) in such a mode that the comments overlay-displayed on the video on
the display device of the user terminal move in the horizontal direction and are
displayed so as not to overlap each other.
B. Moreover, regarding Productions 2 and 3, in view that Appellee FC2transferred the business related to Defendant's Services 2 and 3 to Shwe Nandar Co.,70

Ltd. on September 25, 2020 (No. 4, 5 (1) A (B) a in the judgment in prior instancecited after correction), it is not found that Appellee FC2 infringed the Patent Right by
Productions 2 and 3 on the same day and after, and it is not found, either, that there isa concern of future infringement and thus, regarding Productions 2 and 3, it should beconsidered that there is no necessity for the injunction of the delivery of the video fileand the comment file.
C. According to the above, Appellant's claim for injunction is found to be
grounded to the limit of making a claim against Appellee FC2 for the injunction of thedelivery of the video file and the comment file from the server of Appellee FC2 to theuser terminal existing in the country in such a mode that the comments overlaydisplayed on the video on the display device of the user terminal move in thehorizontal direction and are displayed so as not to overlap each other in Defendant'sService 1.
(2) Removal and the like
A. As described in the aforementioned (1), on March 14, 2023 and after, it is
not found that infringement of the Patent Right by Production 1 has been committed
by Appellee FC2.
In addition, in Defendant's Service 1, at a point of time of January 11, 2021
when the delivery service of the video with comments pertaining to the Patent Right
infringement was provided, too, among XXXXXXXX pieces of video made public in
Defendant's Service 1, the number of pieces of the video with comments was
XXXXXXX (Exhibit Otsu 85), and the rate remains at XXXX %, and as described in
the aforementioned (1) A, in Defendant' Service 1, it is possible to provide the video
delivery service without infringing the Patent Right and thus, the erasing of the
program and the removal of the server related to Defendant's Service 1 are not foundto be necessary.
B. Subsequently, Appellee FC2 transferred the business related to Defendant'sServices 2 and 3 to Shwe Nandar Co., Ltd. on September 25, 2020 as described in the
aforementioned (1) B.
There is no evidence sufficient to find that Appellee FC2 holds the programs
and servers pertaining to Defendant's Services 2 and 3.
Then, the erasing of the program and the removal of the server pertaining toDefendant's Services 2 and 3 are not found to be necessary.
C. According to the above, both the claim for erasing of the program for
Defendant's Server and the claim for removal of each of Defendant's Servers byAppellant are groundless.
71

8 Issue 8 (Amount of damage of Appellant)(1) Amount of damage pursuant to Article 102, paragraph (2) of the Patent Act
A. Principal claims
Appellant asserts that Appellees produced each of Defendant's Systems andprovided each of Defendant's Services from May 17, 2019, when the establishment of
the Patent Right was registered, to August 31, 2022, and produced a sale of
XXXXXXXXXX yen, whereby Appellees obtained the amount of profits (marginal
profits) not less than XXXXXXXXXX yen.

Among them, the sales amount fromMay 17 to 31, 2019 (amount for May) was XXXXXXXX yen, and the amount ofmarginal profits was not less than XXXXXXXX yen.
However, the aforementioned sales amount and the marginal profit amountsubmitted by Appellant as the grounds for the aforementioned assertion by Exhibit Ko
24 cannot be approved, and there is no other evidence sufficient to approve them.
Therefore, the aforementioned assertion by Appellant is groundless.
B Alternative claims(A) Rate of each o Defendant's Services provided by Defendant's Systems 1 to
3 "produced" by Productions 1 to 3
As described in the aforementioned 4, Appellee FC2 "produced" Defendant'sSystem 1 by Production 1, Defendant's System 2 by Production 2, and Defendant'sSystem 3 by Production 3 and infringed the Patent Right, and all of Productions 1 to 3
are performed by the transmission of the video file and the comment file by the serverto the user terminal and the reception thereof by the user terminal.
However, in view of the facts that the number of pieces of the video withcomments delivered by each of Defendant's Services is limited, and at a point of timeof January 11, 2021, among XXXXXXXX pieces of the video made public in
Defendant's Service 1, the number of pieces of the video with comments was
XXXXXXX (Exhibit Otsu 85), and the rate remains at XXXX%, and although each of
Defendant's Services was provided also in languages other than Japanese, most of theusers thereof exist in Japan (Exhibit Ko 9, the entire import of the oral argument), it isreasonable to acknowledge that the rate of those provided by Defendant's Systems 1 to
3 "produced" by Productions 1 to 3 in each of Defendant's Services is XXX% over thewhole period during which the Patent Right was infringed.
(B) Amount of Profits of Appellee FC2 (amount of marginal profit)a. Defendant's Service 1
According to Exhibit Otsu 84, it is found that the sales amount of
Defendant's Service 1 during the period from May 17, 2019 to August 31, 2022 is, as72

described in "Defendant's Service 1" column in the "Sales amounts" column of the listof sales amount and the like in the Attachment 6, XXXXXXXXXXXX yen in total,
and the amount of marginal profits thereof is, as described in "Defendant's Service 1"
column in the "Marginal profit amount" column of the list of marginal profit amounts
and the like in Attachment 7-1, XXXXXXXXXXXX yen in total.
Among them, the rate of those provided by Defendant's System 1"produced" by Production 1, which is the infringement act of the Patent Right is, as
described in the aforementioned (A), XXX% and thus, the sales amount by Production
1 is found to be XXXXXXXXXXX yen (XXXXXXXXXXXX yen × XXXXX), andthe amount of marginal profits of Appellee FC2 obtained by Production 1 is found tobe, as described in the "Production 1" column in the "Marginal profit breakdown"column of the calculation of marginal profit amount in the Attachment 7 -2,
XXXXXXXXX yen in total.
b Defendant's Service 2
According to Exhibit Otsu 84, it is found that the sales amount of
Defendant's Service 2 during the period from May 17, 2019 to October 31, 2020 is, as
described in the "Defendant's Service 2" column in the "Sales amounts" column of thelist of sales amount and the like in Attachment 6, XXXXXXXX yen in total, and theamount of marginal profits thereof is, as described in the "Defendant's Service 2"
column in the "Marginal profit amount" column of the list of marginal profit amounts
and the like in Attachment 7-1, XXXXXXXX yen in total.
Among them, the rate of those provided by Defendant's System 2"produced" by Production 2, which is the infringement act of the Patent Right is, as
described in the aforementioned (A), XXX% and thus, the sales amount by Production
2 is found to be XXXXXX yen (XXXXXXXX yen × XXXXX), and the amount ofmarginal profits of the Appellee FC2 obtained by Production 2 is found to be, as
described in the "Production 2" column in the "Marginal profit breakdown" column ofthe calculation of marginal profit amount in Attachment 7-2, XXXXXX yen in total.
c Defendant's Service 3
According to Exhibit Otsu 84, it is found that the sales amount of
Defendant's Service 3 during the period from May 17, 2019 to October 31, 2020 is, as
described in the "Defendant's Service 3" column in the "Sales amounts" column of thelist of sales amount and the like in Attachment 6, XXXXX yen in total, and theamount of marginal profits thereof is, as described in the "Defendant's Service 3"
column in the "Marginal profit amount" column of the list of marginal p rofit amounts
and the like" in Attachment 7-1, XXXXXX yen in total.
73

Among them, the rate of those provided by Defendant's System 3"produced" by Production 3, which is the infringement act of the Patent Act is, as
described in the aforementioned (A), XXX% and thus, the sales amount by Production
3 is found to be XXXX yen (XXXXXX yen × XXXXX), and the amount ofmarginal profits of Appellee FC2 obtained by Production 3 is found to be, as
described in the "Production 3" column in the "Marginal profit breakdo wn" column ofthe calculation of marginal profit amount in Attachment 7-2, XXXX yen in total.
d Conclusion(a) According to the aforementioned a to c, the amount of marginal profits ofAppellee FC2 obtained by Productions 1 to 3 is found to be, as descri bed in the"Marginal profit amount (including part corresponding to consumption tax (10%))"column of the calculation of marginal profit amounts in Attachment 7-2,
XXXXXXXXXXX yen in total.
It is to be noted that, Appellee FC2 asserts that even if the pa yment of thedamages is ordered to Appellee FC2 in this case, it is subject to export exemption on
the consumption tax.

However, since there is no evidence sufficient to approve thatthe provision of each of the Defendant's Services by Appellee FC2 falls under theexport transaction, the aforementioned assertion by Appellee FC2 is groundless.
(b) As described above, the amount of marginal profits of Appellee FC2
obtained by Productions 1 to 3 is XXXXXXXXXXX yen in total, and this amount ofmarginal profits is presumed to be the amount of damage suffered by the Appellant
under Article 102, paragraph (2) of the Patent Act (hereinafter, this presumption shallbe referred to as the "Presumption").
(C) Ruination of presumption
The Appellees assert that, in each of the Defendant's Services, the fact that thecomment display function of each of the Inventions is a part of the functions of thewhole system and does not have attraction for customers falls under the reason for
ruination of the Presumption.
Thus, by examining this, in consideration that, in the video delivered by eachof the Defendant's Services, most of those contributing to the sales amount are adultvideos (Exhibits Ko 4-1, 2, 9, 11, entire import of the oral argument), and it cannot bedenied that the display of the comments on the video interferes with the viewing, atthe point of time of January 11, 2021, among XXXXXXXX pieces of video madepublic in the Defendant's Service 1, the number of pieces of the video with comments
was XXXXXXX (Exhibit Otsu 85), and the rate remains at XXXX%, the role playedby the comment display function is limited, and it is found that most of the users of74

each of the Defendant's Services use it for the purpose of viewing the videos
themselves rather than the comment display function.

The technically featured partof each of the Inventions is to prevent display, in an overlapping manner, a pluralityof comments overlay-displayed on the video in the video with comment delivery
system (aforementioned 1 (2) B), and the technical meaning itself is found to belimited in the aforementioned system.
By comprehensively considering the aforementioned circumstances, it isreasonable to find that the contribution rate of each of the Inventions to the use ofeach of the Defendant's Services is XX, and for the part exceeding the aforementioned
contribution rate, there is no considerable causal effect found between the marginal
profit amount in the aforementioned (B) d (b) and the amount of damages suffered by
the Appellant.
Therefore, the Presumption is found to be ruined to the aforementioned limit
and thus, the amount of damages of the Appellant based on the Article 102, paragraph(2) of the Patent Act corresponds to the rate of the aforementioned marginal profit
amount and it is found to be, as described in the "Amount of damages under Article
102, paragraph (2) of the Patent Act" column in the Breakdown list of approved
amounts in the Attachment 4-2, XXXXXXXXX yen in total.
(2) Amount of damages based on Article 102, paragraph (3) of the Patent Act(Alternative claims)
A Regarding the amount of damages of the Appellant based on Article 102,
paragraph (3) of the Patent Act, [i] in "Research and Study Report on How to Utilize
Patents and the like on the basis of Value Evaluation of Intellectual Property ~ Actual
State of Intellectual Property (Resources) Values and Royalty Rate ~" (the "Report")
prepared by Teikoku Databank, LTD., "(2) Questionnaire Result" in "1. Royalty Rateby Technical Category (domestic questionnaire)" in "II. Royalty Rates in Our
Country" describes that the "average value of the royalty rate of the patent right" is"3.7%" for the "Whole", "2.9%" for "Electric", and "3.1%" for "Computer
Technology", "1. Trends of Royalty Rate" in "III. Royalty Rates in Each Country"
describes "6.3%" for "Software" in the industrial field as the questionnaire result on
the royalty rates of domestic businesses, and "Royalty Rates of Judicial Decision byIndustry (2004 to 2008)" in "(i) Japan" in "2. Questionnaire Result of Royal ty Rates
by Judicial Decision" has the description that, in the royalty rates by judicial decision
for the "electric" industry, the average value is "3.0%", the maximum value is "7.0%",
and the minimum value is "1.0%" (number of cases: "6"); [ii] as descri bed in the
aforementioned (1) B (C), the technically featured part of each of the Inventions is to75

prevent display, in an overlapping manner, a plurality of comments overlay-displayedon the video in the video with comment delivery system, and by comprehen sively
considering that the technical meaning thereof is not high, the contribution of each of
the Inventions to the formation of purchaser motivation in each of the Defendant'sServices is limited, and various circumstances emerge in this case, it is reas onable toapprove the amount obtained by multiplying the sales according to Productions 1 to 3
by the royalty rate of 2%.
Since it is found that the total amount of the sales amounts by Productions 1
to 3 (including the part corresponding to the consumption tax (10%)) is
XXXXXXXXXXX yen (XXXXXXXXXXX yen + XXXXXX yen + XXXX yen (total
amount of each of the sales amounts of the Productions 1 to 3 described in the
aforementioned (1) B (B) a to c added with the part corresponding to the consumptiontax (10%))), it is XXXXXXXX yen (XXXXXXXXXXX yen X 0.02).
None of the assertions against the above by the Appellant and Appellees canbe accepted.
B The assertion of the amount of damages based on Article 102, paragraph (2)of the Patent Act and the assertion of the amount of damage based on the same Article,
paragraph (3) by the Appellant are found to be selective and thus, it is acknowledgedthat the higher total amount of damages XXXXXXXXX yen based on the same
Article, paragraph (2) in the aforementioned (1) B (C) is the amount of damages of
the Appellant of this case.
(3) Attorney costs
The amount of damage according to Productions 1 to 3 of the Appellant is,
as described in the "Amount of damages under Article 102, paragraph (2) of the
Patent Act" column in the Breakdown list of approved amounts in Attachment 4-2,
XXXXXXXXX yen in total.
By considering various circumstances such as the nature/contents of thiscase, the approved amount of this case, the history of procedures in the court of priorinstance and this court, and the like, it is reasonable to acknowledge that the amountcorresponding to the attorney costs having a considerable causal relation with the tort
by the Patent Right infringement of Appellee FC2 is, as described in the "Amountcorresponding to attorney's fee" column in the Breakdown list of approved amounts in
the Attachment 4-2, XXXX yen in total.
(4) Summary
According to the above, the amount of damages of the Appellant in this caseis, as described in the "Total for all the periods" column in the "Subtotal of amount of76

damages" column in the Breakdown list of approved amounts in the Attachment 4 -2,
11,015,517 yen in total.
Thus, the Appellant may make a claim against Appellee FC2 for payment of
11,015,517 yen as compensation of damages based on the tort of the Patent Right
infringement, and the delay damages at each of the rates described in the "Delaydamages rate (per annum)" column from each date described in the "Date to start
counting delay damages" column until completion of the payment with respect to eachof the moneys described in the "Approved amount" column in the list of approved
amounts in Attachment 4-1.
No. 5

Conclusion
According to the above, the claims of the Appellant have reasons to the limit of

the claim against Appellee FC2 for injunction of, in Defendant's Service 1, thedelivery of the video file and the comment file from the server of Appellee FC2 to theuser terminal existing in the country so as to realize such a mode that the comments
overlay-displayed on the video on the display device of the user terminal move in thehorizontal direction and are displayed so as not to overlap each other and a claim forpayment of 11,015,517 yen and the money at each of the rates described in the "Delaydamages rate (per annum)" column from each date described in the "Date to start
counting delay damages" column until completion of the payment with respect to eachof the moneys described in the "Approved amount" column in the list of approved
amounts in Attachment 4-1, while the remaining is groundless and shall be dismissed.
Therefore, the judgment in prior instance which dismissed all the claims of theAppellant (excluding the expanded claim in this court) is partially unreasonable, andthis appeal is partially grounded, and the expanded claim by the Appellant in thiscourt is partially grounded and thus, the judgment shall be rendered as in the main
text by changing the part relating to Appellee FC2 in the judgment in prior instance asin the main text, clause 1 of this judgment, by dismissing the appeal by the Appellant
against Appellee HPS, and by dismissing the expanded claim by the Appellant against
Appellee HPS in this court.
Intellectual Property High Court, Special Division
Presiding Judge:

OHTAKA Ichiro

Judge:KANNO Masayuki

Judge:

HONDA Tomonari

Judge:SHOJI Tamotsu

77

Judge:78

OGAWA Takatoshi

Attachment 1
1

List of Defendant's files

In "FC2 Video" (https://video.fc2.com/), the video file and the comment filedelivered by the Appellees from the server to the user terminal (including thosedelivered separately and those in which the video file and the comment file are in aunit)
2

In "FC2 SayMove!" (http://say-move.org/), the video file and the comment filedelivered by the Appellees from the server to the terminal of the video viewer(including those delivered separately and those in which the video file and thecomment file are in a unit)
3

In "FC2 HIMAWARI Video" (http://himado.in/), the video file and thecomment file delivered by the Appellees from the server to the terminal of the video
viewer (including those delivered separately and those in which the video file and thecomment file are in a unit)

79

Attachment 2
1

List of programs for Defendant's Servers

In "FC2 Video" (https://video.fc2.com/), the program for server by which theAppellees deliver the video file and the comment file to the user terminal (including
the program for server for delivering either one of the video file and the comment fileand the program for server for delivering the video file and the comment file as a unit)
2

In "FC2 SayMove!" (http://say-move.org/), the program for server (including

the program for server for delivering either one of the video file and the comment fileand the program for server for delivering the video file and the comment file as a unit)
by which the Appellees deliver to the user terminal the video file and the comment
file (including those in which the video file and the comment file are a unit)
3

In "FC2 HIMAWARI Video" (http://himado.in/), the program for server(including the program for server for delivering either one of the video file and thecomment file and the program for server for delivering the video file and the comment
file as a unit) by which the Appellees deliver to the user terminal the video file andthe comment file (including those in which the video file and the comment file are a
unit)

80

Attachment 3
1

List of Defendant's Servers

In "FC2 Video" (https://video.fc2.com/), the server provided for use by theAppellees to deliver the video file and the comment file to the user terminal(including the server provided to be used for delivering either one of the video fileand the comment file, and the server provided to be used for delivering the video fileand the comment file as a unit)
2

In "FC2 SayMove!" (http://say-move.org/), the server provided for use by theAppellees to deliver the video file and the comment file to the user terminal(including the server provided to be used for delivering either one of the vi deo fileand the comment file, and the server provided to be used for delivering the video fileand the comment file as a unit)
3

In "FC2 HIMAWARI Video" (http://himado.in/), the server provided for use by

the Appellees to deliver the video file and the comment file to the user terminal(including the server provided to be used for delivering either one of the video fileand the comment file, and the server provided to be used for delivering the video fileand the comment file as a unit)

81

ATTACHMENT 4-1

LIST OF APPROVED AMOUNTSDATE TO STARTAPPROVED
COUNTINGPERIODAMOUNTDELAY
DAMAGESMay 17 - 31, 2019
Jun. 1, 2019
Jun. 1 - 30, 2019
Jul. 1, 2019
Jul. 1 - 31, 2019
Aug. 1, 2019
Aug. 1 - 31, 2019
Sep. 1, 2019
Sep. 1 - 30, 2019
Oct. 1, 2019
Oct. 1 - 31, 2019Nov. 1, 2019Nov. 1 - 30, 2019
Dec. 1, 2019
Dec. 1 - 31, 2019
Jan. 1, 2020
Jan. 1 - 31, 2020Feb. 1, 2020Feb. 1 - 29, 2020
Mar. 1, 2020
Mar. 1 - 31, 2020
Apr. 1, 2020
Apr. 1 - 30, 2020
May 1, 2020
May 1 - 31, 2020
Jun. 1, 2020
Jun. 1 - 30, 2020
Jul. 1, 2020
Jul. 1 - 31, 2020
Aug. 1, 2020
Aug. 1 - 31, 2020
Sep. 1, 2020
Sep. 1 - 30, 2020
Oct. 1, 2020
Oct. 1 - 31, 2020
Nov. 1, 2020
Nov. 1 - 30, 2020
Dec. 1, 2020
Dec. 1 - 31, 2020
Jan. 1, 2021
Jan. 1 - 31, 2021
Feb. 1, 2021
Feb. 1 - 28, 2021
Mar. 1, 2021
Mar. 1 - 31, 2021
Apr. 1, 2021
Apr. 1 - 30, 2021
May 1, 2021
May 1 - 31, 2021
Jun. 1, 2021
Jun. 1 - 30, 2021
Jul. 1, 2021
Jul. 1 - 31, 2021
Aug. 1, 2021
Aug. 1 - 31, 2021
Sep. 1, 2021
Sep. 1 - 30, 2021
Oct. 1, 2021
Oct. 1 - 31, 2021
Nov. 1, 2021
Nov. 1 - 30, 2021
Dec. 1, 2021
Dec. 1 - 31, 2021
Jan. 1, 2022
Jan. 1 - 31, 2022
Feb. 1, 2022
Feb. 1 - 28, 2022
Mar. 1, 2022
Mar. 1 - 31, 2022
Apr. 1, 2022
Apr. 1 - 30, 2022
May 1, 2022
May 1 - 31, 2022
Jun. 1, 2022
Jun. 1 - 30, 2022
Jul. 1, 2022
Jul. 1 - 31, 2022
Aug. 1, 2022
Aug. 1 - 31, 2022
Sep. 1, 2022

82

DELAY
DAMAGESRATE (PER
ANNUM)
5%
5%
5%
5%
5%
5%
5%
5%
5%
5%
5%
3%
3%
3%
3%
3%
3%
3%
3%
3%
3%
3%
3%
3%
3%
3%
3%
3%
3%
3%
3%
3%
3%
3%
3%
3%
3%
3%
3%
3%

TOTAL OF ALL
PERIODS

83

ATTACHMENT 4-2

PERIODBREAKDOWN LIST OF APPROVED AMOUNTSAMOUNT OF
DAMAGESSUBTOTALAMOUNT
UNDER
OF
CORRESPONDING
ARTICLE 102,AMOUNTTO ATTORNEY'S
PARAGRAPHOF
FEE(2) OF THE
DAMAGESPATENT ACT

May 17 - 31, 2019
Jun. 1 - 30, 2019
Jul. 1 - 31, 2019
Aug. 1 - 31, 2019
Sep. 1 - 30, 2019
Oct. 1 - 31, 2019Nov. 1 - 30, 2019
Dec. 1 - 31, 2019
Jan. 1 - 31, 2020Feb. 1 - 29, 2020
Mar. 1 - 31, 2020
Apr. 1 - 30, 2020
May 1 - 31, 2020
Jun. 1 - 30, 2020
Jul. 1 - 31, 2020
Aug. 1 - 31, 2020
Sep. 1 - 30, 2020
Oct. 1 - 31, 2020
Nov. 1 - 30, 2020
Dec. 1 - 31, 2020
Jan. 1 - 31, 2021
Feb. 1 - 28, 2021
Mar. 1 - 31, 2021
Apr. 1 - 30, 2021
May 1 - 31, 2021
Jun. 1 - 30, 2021
Jul. 1 - 31, 2021
Aug. 1 - 31, 2021
Sep. 1 - 30, 2021
Oct. 1 - 31, 2021
Nov. 1 - 30, 2021
Dec. 1 - 31, 2021
Jan. 1 - 31, 2022
Feb. 1 - 28, 2022
Mar. 1 - 31, 2022
Apr. 1 - 30, 2022
May 1 - 31, 2022

84

Jun. 1 - 30, 2022
Jul. 1 - 31, 2022
Aug. 1 - 31, 2022
TOTAL FOR ALL
THE PERIODS

85

ATTACHMENT 5

LIST OF ALTERNATIVE CLAIMED AMOUNTSDATE TO START
DELAY
CLAIMED
COUNTING
DAMAGESPERIODAMOUNT
DELAY
RATE (PER
DAMAGESANNUM)
May 17 - 31, 2019
Jun. 1, 20195%
Jun. 1 - 30, 2019
Jul. 1, 20195%
Jul. 1 - 31, 2019
Aug. 1, 20195%
Aug. 1 - 31, 2019
Sep. 1, 20195%
Sep. 1 - 30, 2019
Oct. 1, 20195%
Oct. 1 - 31, 2019Nov. 1, 20195%Nov. 1 - 30, 2019
Dec. 1, 20195%
Dec. 1 - 31, 2019
Jan. 1, 2020
5%
Jan. 1 - 31, 2020Feb. 1, 2020
5%Feb. 1 - 29, 2020
Mar. 1, 2020
5%Mar. 1 - 31, 2020
Apr. 1, 2020
5%
Apr. 1 - 30, 2020
May 1, 20203%
May 1 - 31, 2020
Jun. 1, 20203%
Jun. 1 - 30, 2020
Jul. 1, 20203%
Jul. 1 - 31, 2020
Aug. 1, 20203%
Aug. 1 - 31, 2020
Sep. 1, 20203%
Sep. 1 - 30, 2020
Oct. 1, 20203%
Oct. 1 - 31, 2020
Nov. 1, 20203%
Nov. 1 - 30, 2020
Dec. 1, 20203%
Dec. 1 - 31, 2020
Jan. 1, 2021
3%
Jan. 1 - 31, 2021
Feb. 1, 2021
3%
Feb. 1 - 28, 2021
Mar. 1, 2021
3%
Mar. 1 - 31, 2021
Apr. 1, 2021
3%
Apr. 1 - 30, 2021
May 1, 2021
3%
May 1 - 31, 2021
Jun. 1, 2021
3%
Jun. 1 - 30, 2021
Jul. 1, 2021
3%
Jul. 1 - 31, 2021
Aug. 1, 2021
3%
Aug. 1 - 31, 2021
Sep. 1, 2021
3%
Sep. 1 - 30, 2021
Oct. 1, 2021
3%
Oct. 1 - 31, 2021
Nov. 1, 2021
3%
Nov. 1 - 30, 2021
Dec. 1, 2021
3%
Dec. 1 - 31, 2021
Jan. 1, 2022
3%
Jan. 1 - 31, 2022
Feb. 1, 2022
3%
Feb. 1 - 28, 2022
Mar. 1, 2022
3%
Mar. 1 - 31, 2022
Apr. 1, 2022
3%
Apr. 1 - 30, 2022
May 1, 2022
3%
May 1 - 31, 2022
Jun. 1, 2022
3%
Jun. 1 - 30, 2022
Jul. 1, 2022
3%
Jul. 1 - 31, 2022
Aug. 1, 2022
3%
Aug. 1 - 31, 2022
Sep. 1, 2022
3%

86

TOTAL FOR ALL
THE PERIODS

87

ATTACHMENT6
LIST OF SALES AMOUNTS AND THE LIKESALES AMOUNTSPERIODAMOUNTOFDAMAGESAMOUNTAMOUNT AMOUNTUNDERCORRESPO
DEFE DEFE DEFE
CORRESPO CORRESPO ARTICLENDAN NDAN NDAN SUBTOT NDING TO
NDING TO NDING TO
102,
AL
ROYALTY
T'S
T'S
T'S
CONSUMPT ATTORNEY PARAGRAP(ROYALTYSERVI SERVI SERVIION TAX'S FEE
H (3) OFRATE 20%)
CE 1 CE 2 CE 3
THE
PATENT
ACT

May 17 - 31,
2019Jun. 1 - 30,
2019
Jul. 1 - 31,
2019Aug. 1 - 31,
2019
Sep. 1 - 30,
2019Oct. 1 - 31,
2019
Nov. 1 - 30,
2019
Dec. 1 - 31,
2019
Jan. 1 - 31,
2020
Feb. 1 - 29,
2020
Mar. 1 - 31,
2020
Apr. 1 - 30,
2020
May 1 - 31,
2020
Jun. 1 - 30,
2020
Jul. 1 - 31,
2020
Aug. 1 - 31,
2020
Sep. 1 - 30,
2020

88

Oct. 1 - 31,
2020
Nov. 1 - 30,
2020
Dec. 1 - 31,
2020
Jan. 1 - 31,
2021
Feb. 1 - 28,
2021
Mar. 1 - 31,
2021
Apr. 1 - 30,
2021
May 1 - 31,
2021
Jun. 1 - 30,
2021
Jul. 1 - 31,
2021
Aug. 1 - 31,
2021
Sep. 1 - 30,
2021
Oct. 1 - 31,
2021
Nov. 1 - 30,
2021
Dec. 1 - 31,
2021
Jan. 1 - 31,
2022
Feb. 1 - 28,
2022
Mar. 1 - 31,
2022
Apr. 1 - 30,
2022
May 1 - 31,
2022
Jun. 1 - 30,
2022
Jul. 1 - 31,
2022
Aug. 1 - 31,
2022

89

TOTAL FOR
ALL THEPERIODSTRUNCATE AFTER DECIMAL POINT

90

ATTACHMENT 7-1 LIST OF MARGINAL PROFIT AMOUNTS AND THE LIKEMARGINAL PROFITAMOUNTAMOUNTAMOU AMOUNOFNTTDAMAGE
CORRE CORRES S UNDERAMOUNSPOND PONDIN ARTICLE
DEFE DEFE DEFET OF
PERIODING TOG TO
102,
NDAN NDAN NDANPARTIA
SUBTCONSU ATTORN PARAGR
T'S
T'S
T'S
L CLAIM
OTAL
MPTIO
EY'S
APH (2)SERVI SERVI SERVI
N TAX
FEE
OF THECE 1 CE 2 CE 3
PATENT
ACT
May 17 - 31,
2019Jun. 1 - 30,
2019
Jul. 1 - 31,
2019Aug. 1 - 31,
2019
Sep. 1 - 30,
2019Oct. 1 - 31,
2019
Nov. 1 - 30,
2019
Dec. 1 - 31,
2019
Jan. 1 - 31,
2020
Feb. 1 - 29,
2020
Mar. 1 - 31,
2020
Apr. 1 - 30,
2020
May 1 - 31,
2020
Jun. 1 - 30,
2020
Jul. 1 - 31,
2020
Aug. 1 - 31,
2020
Sep. 1 - 30,
2020

91

Oct. 1 - 31,
2020
Nov. 1 - 30,
2020
Dec. 1 - 31,
2020
Jan. 1 - 31,
2021
Feb. 1 - 28,
2021
Mar. 1 - 31,
2021
Apr. 1 - 30,
2021
May 1 - 31,
2021
Jun. 1 - 30,
2021
Jul. 1 - 31,
2021
Aug. 1 - 31,
2021
Sep. 1 - 30,
2021
Oct. 1 - 31,
2021
Nov. 1 - 30,
2021
Dec. 1 - 31,
2021
Jan. 1 - 31,
2022
Feb. 1 - 28,
2022
Mar. 1 - 31,
2022
Apr. 1 - 30,
2022
May 1 - 31,
2022
Jun. 1 - 30,
2022
Jul. 1 - 31,
2022
Aug. 1 - 31,
2022

92

TOTAL FOR
ALL THEPERIODSTRUNCATE AFTER DECIMAL POINT

93

ATTACHMENT 7-2

PERIODCALCULATION OF MARGINAL PROFIT AMOUNTSMARGINAL PROFIT BREAKDOWNMARGINALPROFITAMOUNT(INCLUDINGPRODU PRODU PRODU SUB
PART
CTION
CTION
CTION
TOT
CORRESPONDI
1
2
3
AL
NG TO
CONSUMPTION TAX (10%))

May 17 - 31, 2019
Jun. 1 - 30, 2019
Jul. 1 - 31, 2019
Aug. 1 - 31, 2019
Sep. 1 - 30, 2019
Oct. 1 - 31, 2019Nov. 1 - 30, 2019
Dec. 1 - 31, 2019
Jan. 1 - 31, 2020Feb. 1 - 29, 2020
Mar. 1 - 31, 2020
Apr. 1 - 30, 2020
May 1 - 31, 2020
Jun. 1 - 30, 2020
Jul. 1 - 31, 2020
Aug. 1 - 31, 2020
Sep. 1 - 30, 2020
Oct. 1 - 31, 2020
Nov. 1 - 30, 2020
Dec. 1 - 31, 2020
Jan. 1 - 31, 2021
Feb. 1 - 28, 2021
Mar. 1 - 31, 2021
Apr. 1 - 30, 2021
May 1 - 31, 2021
Jun. 1 - 30, 2021
Jul. 1 - 31, 2021
Aug. 1 - 31, 2021
Sep. 1 - 30, 2021
Oct. 1 - 31, 2021
Nov. 1 - 30, 2021
Dec. 1 - 31, 2021
Jan. 1 - 31, 2022
Feb. 1 - 28, 2022
Mar. 1 - 31, 2022

94

Apr. 1 - 30, 2022
May 1 - 31, 2022
Jun. 1 - 30, 2022
Jul. 1 - 31, 2022
Aug. 1 - 31, 2022
TOTAL FOR ALL
THE PERIODS

95

ATTACHMENT 8-1

OPERATION OF EACH OF DEFENDANT'S SYSTEMS(HTML 5 VERSION OF DEFENDANT'S SYSTEM 1)[FIG]

SERVER

UNITED STATESJAPANREQUEST FOR
WEB PAGE DATAAND JS FILE

WEBPAGE DATAAND JS FILEREQUEST FOR
VIDEO ANDCOMMENT FILE

VIDEO ANDCOMMENT FILESPECIFY DESIREDVIDEO PAGE
CLICK PLAY
BUTTONATTACHMENT 8-2

USER TERMINALBROWSER

PLAY DISPLAY

FLASH VERSION OF DEFENDANT'S SERVICE 1

VIDEO
DELIVERYSERVERWEB SERVER

UNITED STATESTRANSMIT WEBPAGE
HTML FILE AND SWF
FILE TO USERTERMINAL

COMMENTDELIVERYSERVER

TRANSMITVIDEO FILE L

TRANSMITCOMMENTFILE

RECEIVE
VIDEO FILE

RECEIVECOMMENT
FILE

JAPAN

RECEIVE HTML FILE
AND SWF FILE
USER INSTALLS ADOBE FLASH PLAYER IN
USER TERMINAL IN ADVANCE AS PLUG -IN(EXPANDED FUNCTION) FOR BROWSERUSER

REQUEST
FOR VIDEO
FILE

REQUEST FOR
COMMENTFILECACHE OFBROWSERUSER SPECIFIES WEBPAGE OF DEFENDANT'SSERVICE 1 FOR CAUSING DESIRED VIDEO TO BEDISPLAYED ON BROWSER OF USER TERMINAL(PLUG-IN)

USER PRESSES VIDEO PLAY BUTTON ON
WEBPAGE DISPLAYED ON BROWSER IN
USER TERMINALUSER TERMINAL96

BROWSERATTACHMENT 8-3

HTML 5 VERSION OF DEFENDANT'S SYSTEM 1

VIDEO
DELIVERYSERVERWEB SERVER

UNITED STATESTRANSMITWEBPAGE HTML
FILE AND JS FILE
TO USER TERMINALCOMMENTDELIVERYSERVER

TRANSMITVIDEO FILE L

TRANSMITCOMMENTFILE

RECEIVE
VIDEO FILE

RECEIVECOMMENT
FILE

JAPAN

RECEIVE HTML
FILE AND JS FILE
USER SPECIFIES WEBPAGE OF DEFENDANT'SSERVICE 1 FOR CAUSING DESIRED VIDEO TO BEDISPLAYED ON BROWSER OF USER TERMINALUSER

REQUEST
FOR VIDEO
FILE

CACHE OFBROWSERBROWSERUSER PRESSES VIDEO PLAY BUTTON ON WEB
PAGE DISPLAYED ON BROWSER ON USERTERMINAL

USER TERMINAL

97

REQUEST FOR
COMMENTFILEATTACHMENT 9DESCRIPTION DRAWINGS[FIG. 1]TERMINAL
DEVICETERMINAL
DEVICETERMINAL
DEVICENETWORKVIDEO DELIVERYSERVERCOMMENTDELIVERY SERVER[FIG. 2]
COMMENT-INFORMATIONUPDATE MANAGEMENT PORTION

COMMUNICATIONPORTIONCOMMENT-INFORMATIONSTORAGE PORTION

COMMENT-INFORMATIONSTORAGE PORTION[FIG. 3]
COMMENT INFORMATIONCOMMENT INFORMATIONVIDEO IDTHREAD ID
COMMENT GIVEN TIME COMMENT-DATA POSTING ACTUAL TIME USER NAME COMMENT CONTENTS

98

COMMENT DISPLAY METHOD

[FIG. 4]
INPUT
PORTION
SELECTIONPORTION

TRANSMISSIONPORTION

PLAY CONTROLPORTION

VIDEO PLAY
PORTIONCOMMENTINFORMATIONSTORAGE PORTION
COMMENTINFORMATIONRECEPTION PORTIONSECOND DISPLAYPORTION
FIRST DISPLAYPORTIONDISPLAY
DEVICE[FIG. 5]ADDRESSVIEW

LOOKS
DELICIOUS!

OF CHICKEN RICEWITH KETCHUP
RICE OMELET WITH
HASHED BEEF, TOO

LOOKS DELICIOUS
BY FAMOUS CHEF
EGG FROM WHERE
WHERE IS RESTAURANT

HOW TO BREAK EGG
WHAT'S OMELETRICE WITH CURRYI THOUGHT SO
HAVING EATEN
WHAT'S RECIPE

PLAY STOPREWIND/FAST FORWARD

ONE
LINE

WRITE

99

[FIG. 6]
LIST OF RECENT VIDEOSTHREAD NAME

VIDEO

TIME OF FINAL COMMENT USER NAME OF FINAL COMMENTSHARE HOW YOU LIKE FOOD
CLOSE IN, BASEBALL FANS!
THEME IS DOLPHINTODAY'S ECONOMY IS ...

RICE OMELET BY FAMOUS CHEF
BASEBALL CLASSANIMAL QUIZ
23 O'CLOCK NEWS
RICE OMELET BY FAMOUS CHEF
HIT SONG THIS WEEKX HOUR XX MINUTESX HOUR XY MINUTESX HOUR XZ MINUTESX HOUR ZY MINUTESX HOUR YY MINUTESX HOUR YY MINUTESTELL ME RESTAURANT FOR RICE OMELETTHAT ARTIST IS COMING

NEXT[FIG. 7]
<PROCESSING ON COMMENT DELIVERY SERVER SIDE>START

DELIVERYREQUEST FOR COMMENT INFORMATIONRECEIVED?

READ OUT COMMENTINFORMATIONCORRESPONDING TO
SPECIFIED VIDEO ID AND
THREAD ID

TRANSMIT READ-OUT
COMMENT INFORMATIONTO TERMINAL DEVICE
WHICH MADE DELIVERYREQUESTCOMMENT DATARECEIVED?

IDENTIFY APPLICABLE
COMMENT INFORMATIONBASED ON VIDEO ID AND
THREAD ID AND
ADDITIONALLY STORE
RECEIVED COMMENTDATAWHEN THERE IS USERPLAYING VIDEO OF
VIDEO ID AND
VIEWING COMMENT OF
THREAD ID, DELIVERRECEIVED COMMENTDATA TO TERMINALDEVICE OF USER

100

[FIG. 8]<PROCESSING
ON TERMINAL
SIDE>

START

IS THERE INSTRUCTION TO PLAY VIDEO?

TRANSMIT DELIVERY REQUESTFOR COMMENT INFORMATIONTOGETHER WITH SPECIFIED VIDEOID TO COMMENT DELIVERYSERVER AND RECEIVE COMMENTINFORMATION FROM COMMENTDELIVERY SERVERCOMMENT INPUT?

START PLAYING VIDEO
DELIVERED FROM VIDEO
DELIVERY SERVER
DETERMINE PRESENCE/ABSENCE
OF COMMENT DATA MATCHING
VIDEO PLAY TIME BASED ON
CURRENT VIDEO PLAY TIME

IS THERECOMMENT MATCHING VIDEO
PLAY TIME?

CALCULATE DISPLAYPOSITION OF COMMENTSTART DISPLAY CONTROLOF COMMENTCOMMENT DATARECEIVED?
SET VIDEO PLAY TIME AT POINT
OF TIME WHEN COMMENT WASINPUT TO COMMENT GIVEN TIME
AND ADDITIONALLY STOREVIDEO ID, THREAD ID, AND
ACTUAL TIME INFORMATION AS
WELL AS USER NAME, COMMENTCONTENTS, AND COMMENTDISPLAY METHOD AS COMMENTDATA IN COMMENTINFORMATION

ADDITIONALLYSTORE RECEIVEDCOMMENT DATATRANSMIT ADDITIONALLYSTORED COMMENTINFORMATION TO COMMENTDELIVERY SERVER

PLAY END?
END[FIG. 9]ADDRESS
VIEW
THAT'SRIGHT!

WORK BY FAMOUS
CHEF IS GOOD.

OF CHICKEN RICEWITH KETCHUP
RICE OMELET WITH
HASHED BEEF, TOO

LOOKS DELICIOUS
BY FAMOUS CHEF
EGG FROM WHERE
WHERE IS RESTAURANT

HOW TO BREAK EGG
WHAT'S OMELETRICE WITH CURRY

WHERE DOES
THIS EGG COME FROM?

PLAY STOPREWIND/FAST FORWARD

ONE
LINE

WRITE

101

I THOUGHT SO
HAVING EATEN
WHAT'S RECIPEFOR THATCOMMENT SELECTION
OPERATION?

REWIND/FAST FORWARD
VIDEO PLAY POSITION IN
ACCORDANCE WITH
VIDEO PLAY TIMEACCORDING TOCOMMENT GIVEN TIME
OF SELECTED COMMENTDATA[FIG. 10]
FROM WHERE
EGG
DOES EGG
YOU'RE USING FROM
WHERE
COME?

WHAT'SRICEOMELET
WITH
CURRY

FRO M
XX PRE FECT UR E

CLICK
(PLAY START)USER EIT SEEMSFROM XX
PREFECTURE

IT SEEMSFROM XX
PREFECTURE

USER C(PLAY START)

102

FRO M
XX
PREFE CTUR E

FRO M
XX
PREFE CTUR E

Attachment 10

Determination on Issue 5 (Establishment of the defense ofinvalidity)
5

Issue 5 (Establishment of the defense of invalidity)(1) Issue 5-1 (Lack of inventive step (Invalidation Reason 1) with Exhibit Otsu

17 publication as a primarily cited reference)
A. Introduction
The Appellees assert that: [i] Exhibit Otsu 17 describes Exhibit Otsu 17
Invention (the judgment in prior instance, from page 127, lines 8 to 24) as follows;[ii] the Invention 1 and Exhibit Otsu 17 Invention are different only in a point that
Invention 1 includes a determining portion which determines whether or not a display
position of the second comment when displayed on the video overlaps a display
position of the first comment (constituent feature 1F) and a display-position control
portion for adjustment such that, when they are determined to overlap, the firstcomment and the second comment are displayed at positions not overlapping eachother (constituent feature 1G), while Exhibit Otsu 17 Invention does not include suchconfiguration (Difference 1); [iii] according to Exhibits Otsu 26 to 28, in order tosolve the problem of lowering of visibility caused by overlapping display of character
strings, when the text information is to be displayed in the "video", determination onwhether or not the character strings overlap, and in the case of overlap, changing of
the positions so that they do not overlap was publicly known (the position-change
publicly-known art) at the time of priority date of the Application (priority date of theoriginal application, the same applies to the following), and the determination onwhether or not the character strings overlap and in the case of overlap, changing of
the position so as not to overlap was customarily used in the art for displaying the text
information in the "video" (the position-change customarily-used art); [iv] according
to Exhibits Otsu 48, 61, and 62, at the time of the priority date of the Application, in
the "screen display of a computer", a determining function of determining whether or
not display positions of two different displayed objects overlap and when they are
determined to overlap, a display-control function of adjustment such that they aredisplayed at positions that do not overlap were well known (the position-change wellknown art 2); and [v] a person ordinarily skilled in the art could have easily conceivedof the configuration of Invention 1 related to Difference 1 (configurations ofconstituent features 1F and 1G) by applying the position-change publicly-known art,
the position-change customarily-used art, or the position-change well-known art 2 in
Exhibit Otsu 17 Invention and thus, Invention 1 lacks inventive step and thus, it shallbe determined as follows.
103

[Exhibit Otsu 17 Invention]"(A) (G) A viewer machine which plays a video and displays a single or a plurality ofcomments given to the video on the video, characterized by having(B) a memory which stores the comment and a synchronized description
described in SMIL (Synchronized Multimedia Integration Language) which specifies
timing to start display of the comment (hereinafter, referred to as a "comment storing
memory");(C) a video play portion which plays and displays the video; and(D) a comment playing portion which reads out the comment for which thedisplay should be started at timing corresponding to a video play time of the video inthe synchronized description stored in the memory on the basis of the video play timeof the video to be played and displays the read-out comment on a viewer screen, inwhich(E) the comment overlaps at least a part of the video; and(F) the comment moves horizontally."
B.

The

position-change

publicly-known

art

and

the

position-change

customarily-used art
The Appellees assert that paragraphs [0059] and [0095] in Exhibit Otsu 26,
Exhibit Otsu 27 on the upper left column on page 4, lines 2 to 8, 14 to 19, andparagraphs [0007] and [0011] in Exhibit Otsu 28 illustrate the position-change
publicly-known art, and from these descriptions, the position-change customarilyused art can be acknowledged.
(A) Described matters in Exhibit Otsu 26
Exhibit Otsu 26 (Unexamined Patent Application Publication No. 1996 107552 publication) has descriptions as follows:"[Industrial Field of Application]
The present invention relates to a text-broadcast special playing device and a teletextbroadcast special playing device and in more detail to a text-broadcast special playing
device and a teletext-broadcast special playing device having special program
presenting/processing functions such as reception/demodulation of text broadcast datatransmitted by superimposing data consisting of characters and figures on a verticalblanking interval of a TV (television) video signal and singular display, superimposed
display, or scroll-display of this data on a TV screen." ([0001]), "[Prior Art] In a text
broadcasting system currently in operation, the text broadcast data are sent out in adata packet format with the data superimposed in a predetermined horizontal scanning
period in a vertical blanking interval of a television signal as a unit length.
104

These

text broadcast data include not only text information but also information data of
figures and the like.

Therefore, in the following explanation, these pieces of data

shall be collectively referred to simply as program data." ([0002]), "As a publiclyknown document describing the text broadcasting system, "Guide to ~ Hybrid
Position System ~ Text Broadcasting Reception" (edited by Japan Broadcasting
Corporation, published by Japan Broadcasting Corporation, Sho 61-1-15) has adetailed description, for example.

On the basis of this document, the text

broadcasting system as a premise of the Invention will be explained below mainly in
relation to matters related to the present invention in particular.

The text

broadcasting is broadcasting by encoding image information configured by texts andfigures and superimposing it on a TV broadcast wave in a form of a digital signal, by
converting it to a video signal on a reception side, and by displaying it on a TV
receiver.

A text signal having the image information is superimposed in a VBL(vertical blanking interval) not appearing on the TV screen in the TV video signal andtransmitted."([0003]), "There are two types of display of text broadcasting; that is,single display in which the whole screen is a text program, and a super display inwhich the text program is superimposed on a part of the TV screen for display.
Moreover, there are display modes such as [i] a full-screen fixed display (stationary
text and a figure are displayed in a display region); [ii] a super fixed display(stationary text and a figure are superimposed and displayed on a video of the TV
broadcasting); [iii] subtitle display (super fixed display in which a text and a figure
directly related to the contents of a TV broadcast program broadcast at the same time
are displayed); [iv] one-line horizontal-scroll display (a text and a figure in one
horizontal line moving from right to left are displayed by being superimposed on thevideo of the TV broadcasting); [v] full-screen vertical scroll (a text and a figure
moving from down to up are displayed in a main-text display region); and [vi] multiscreen display (a main-text display region is divided into four quadrants, and a screen
is displayed on each quadrant at the same time by the full-screen fixed display)."([0009]), "The text broadcasting is a kind of data transmission, and texts and figures,
which are information to be transmitted, are encoded, divided into appropriate lengths,
superimposed on H (horizontal scanning period) in the VBL (vertical blanking
interval) of the video signal, and transmitted.

A process from the transmission topresentation is hierarchized in accordance with a layered model established by ISO(International Organization for Standardization) so as to be consistent with datatransmission having other, different rules (protocols)." ([0010]), "The present
invention was made in view of such points and has an object to provide a text 105

broadcast special playing device and a teletext-broadcast special playing device
configured to obtain information of text broadcasting and teletext broadcasting while
viewing the TV video by converting the full-screen fixed display screen to a scroll
screen so as to realize scroll-display without a break in the text in the middle."([0058]), "[Means for Solving the Problem] In order to solve the aforementioned
problems, (1) in a text-broadcast receiving device which receives/demodulates text
data transmitted by superimposing data consisting of characters, figures, and added
sound on a vertical blanking interval of a television video signal, having a presentedscreen conversion table for storing text information for each block of a minimum
character unit and a special-play control portion for scroll-display based on thepresented-screen conversion table in order to convert a full-screen fixed display
screen to a scroll screen; and moreover, (2) the special-play control portion has acoordinate-address conversion portion for converting a presented coordinate of thetransmitted text data to an address of the presented-screen conversion table and a table
generating portion for generating the presented-screen conversion table on the basis of
the address converted by the coordinate-address conversion portion; and moreover,(3) the scroll-display by the special-play control portion is superimposed display; andmoreover, (4) the presented-screen conversion table includes a character code
indicating a size of a character, a color code indicating a display color, and an
attribute code for character decoration processing or the like; and moreover, (5) when
the text-broadcast program is viewed on a wide-aspect monitor, a display-mode
discriminating portion for discriminating a screen mode and a special-play display
control portion for automatically converting a presentation position to an optimal
position in accordance with the screen mode discriminated by the display-mode
discriminating portion are provided; and moreover, (6) when the text-broadcast
program is to be displayed on a video different from the TV broadcast in which thetext broadcast is superimposed on the wide-aspect monitor, when the video has a
CinemaScope size or the like and subtitles, and when the subtitles move by a subtitle
moving function and overlap the scroll-display position, a subtitle-position detection
portion for detecting a subtitle position and the special-play display control portion
for retreating to an optimal position by avoiding the subtitle position detected by thesubtitle-position detection portion are provided; and moreover, (7) a signal detection
portion for detecting average brightness and a peak brightness of a specified region on
the TV video and the special-play display control portion which compares a value ofthe presented position and moves the presented position to a region with lower
brightness, easy to be seen, and not obstructing information of the TV video are106

provided." ([0059]), "Moreover, when a subtitle is provided by a subtitle moving
function or the like, the subtitle position is detected by the subtitle-position detection
portion 30, and scroll-display is performed by the special-play (scroll) displayposition control portion 31 to an optimal position by avoiding the subtitle position(claim 6).

Furthermore, average brightness and peak brightness of a specified region

on the TV video are detected by the signal detection portion 5, and the presented
position is moved by the special-play (scroll) display-position control portion 31 to aregion with lower brightness, easy to reproduce, and not obstructing the informati onof the TV video, and scroll-displayed (claim 7)." ([0095]).
From the aforementioned description, it is found that Exhibit Otsu 26
discloses such an art that, in text broadcasting in which image information configured
by characters and figures is encoded and superimposed in a form of a digital signal on
the TV broadcast wave, converted to a video signal on a reception side, and displayedon a TV receiver, when the TV video has a subtitle, the scroll-display is made at an
optimal position by avoiding the subtitle position so that the subtitle does not overlap
the scroll-display position of the text data.

On the other hand, the aforementioned

art described in Exhibit Otsu 26 is an art related to a TV receiver on the premise of
the text broadcasting and is not related to the video in general.
(B) Described matters in Exhibit Otsu 27
Exhibit Otsu 27 (Unexamined Patent Application Publication No. 1984 105788 publication) has the following description: "Field of the Invention The present
invention relates to a teletext receiver.", "Background Art and Problem In television
broadcasting, television multiplex text-broadcast for broadcasting various types of
information such as news, weather forecasts, announcements, and the like by using a
vertical blanking interval of main programs is considered.

As an example, there is asystem proposed by NHK, and this system has display modes as follows: (i) fullscreen fixed mode: As shown in FIG. 1, an image of text broadcast is fixed anddisplayed on a full screen of a picture tube; (ii) vertical scroll mode: As shown in FIG.
2, an image of text broadcasting is displayed over the full screen of the picture tube,
but this is scrolled in an upper direction at an appropriate speed except the uppermost
line; and (iii) horizontal scroll mode: As shown in FIG. 3, one line in a sentence of thetext broadcast is displayed with respect to a main broadcast image, but this is scrolled
in a horizontal direction." (so far, on page 1), "Incidentally, in the horizontal scroll
mode, as shown in FIG. 3, as well, the one line by the text broadcast is superimposedand displayed with respect to the main broadcast image and thus, if characters by themain broadcast such as a name of a batter in a baseball game, for example, is107displayed at this display position, the two displays overlap and both become hard tosee." (on page 4, upper left column, lines 2 to 8), "Object of the Invention An objectof the present invention is to solve the problems as described above and particularly
to prevent a cost increase at that time as much as possible." (on page 4, upper left
column, lines 9 to 12), "Summary of Invention Thus, in the present invention, a
position in the horizontal scroll is made changeable to a vertical direction by using afunction for vertical scroll.

Therefore, overlap of characters in the horizontal scroll

and characters in the main broadcasting can be avoided, and both can be viewed." (onpage 4, upper left column, lines 13 to 19), "Effects of Invention Since a display
position in the horizontal scroll can be set in an arbitrary line, the displayed characterin the horizontal scroll does not overlap the character in the main broadcast image, butboth can be viewed.

Moreover, a cost increase is rarely caused by this." (on page 6,

lower right column, lines 12 to 17).
From the aforementioned description, it is found that Exhibit Otsu 27
discloses such an art that, in the receiver of television multiplex text broadcasting, theoverlap of the character in the main broadcast image and the displayed character of
the text broadcasting is avoided, and both can be viewed.

On the other hand, theaforementioned art described in Exhibit Otsu 27 is the art related to the receiver on
the premise of the television multiplex text broadcasting and is not related to thevideo in general.
(C) Described matters in Exhibit Otsu 28
Exhibit Otsu 28 (Unexamined Patent Application Publication No. 1994165139 publication) has the following description:"[Industrial Field of Application] The present invention relates to a closed caption
decoder for extracting a text signal transmitted by being superimposed on a video
signal and for displaying text information at a predetermined position on a screen, anda television receiver including this closed caption decoder and displaying the text
information together with the video on the screen." ([0001]), "[Prior Art] In the
United States, a closed caption (character multiplex) system in which the samecontents as those in sound are made into text information, which is superimposed on ascanning line signal in the vertical blanking interval of a video signal and transmitted
is employed for many television programs, video software, and the like, so that a deaf
person and a hearing-impaired person can enjoy television broadcasting in the samemanner as a healthy person, and a character encoding method, a transmission method,
and the like are defined in detail on the basis of the FCC (Federal Communications
Commission) standards.

In Japan, utilization of the closed caption system for108language teaching materials is being considered." ([0002]), "[Problem to b e Solved by
the Invention] Since the conventional closed caption decoder is as described above,
when the closed caption decoder is used as a language teaching material, with such adisplay style that a display position of text information is not fixed but is changed foreach screen, the text information should be followed with the eyes each time thescreen is changed and thus, it is not possible to concentrate on the subtitles, and theteaching effect is lowered." ([0006]), "In addition, when the Japanese subtitle is to becompared with the English subtitle of the closed caption, there is a problem that thedisplay position cannot be changed on the receiver side even if the subtitle of theclosed caption overlaps the Japanese subtitle and becomes difficult to read." ([0007]),"The present invention was made in order to solve the problem as described above andhas an object to provide a closed caption decoder capable of changing a display
position of a closed caption on a receiver side by providing a function of converting
address data, and a television receiver including the closed caption decoder." ([0008]),"[Means for Solving the Problem] A closed caption decoder according to the present
invention is, in a closed caption decoder which extracts and decodes an encoded text
signal superimposed on a video signal in a vertical blanking interval and displays text
information at a predetermined position on a screen, characterized by including means
for specifying a display position of the text information on a screen, a circuit for
converting a display address of the text information included in a text signal into a
display address corresponding to the specified display position, and means fordisplaying the text information at the converted display address." ([0009]), "A
television receiver according to the present invention includes the closed caption
decoder and displays the text information together with the video on a screen."([0010]), "[Action] A closed caption decoder and a television receiver including thesame according to the present invention extract and decode a text signal superimposedon a video signal in a vertical blanking interval, convert a display address of text
information included in the text signal into a display address specified on a receptio nside by a conversion program, a cursor, or the like, and display the text information at
the converted display address." ([0011]), and "[Effect of the Invention] As describedabove, in the closed caption decoder and the television receiver including the sameaccording to the present invention, the display address of the text information by theclosed caption determined on the transmission side of the video signal can be changedon the reception side and thus, such an excellent effect is exerted that it be comeseasier to concentrate on the text information by fixing it to a certain display position
and to compare the two by moving it to a position not overlapping the text
109

information by an open caption, for example." ([0023]).
From the aforementioned descriptions, it is found that Exhibit Otsu 28
discloses such an art that exerts the effect that, in the television receiver including theclosed caption decoder which displays on the screen the text information transmitted
by being superimposed on the video signal together with the video, overlap between
the Japanese subtitle and the English subtitle in the closed caption can be avoided, andthe two can be compared more easily, for example.

On the other hand, theaforementioned art described in Exhibit Otsu 28 is an art related to the television
receiver including the closed caption decoder which displays the text information on ascreen together with the video and is not related to the video in general.
(D) Conclusion
As described above, each of the arts described in Exhibits Otsu 26 to 28 isan art related to the television receiver and the like on the premise of the text
broadcast and is not related to the video in general, or is not identical to theconfiguration of Invention 1 according to Difference 1.
From the descriptions in Exhibits Otsu 26 to 28 on which the Appellees basetheir arguments, it cannot be found that, at the time of the priority date of the
Application, the position-change publicly-known art asserted by the Appellees was
publicly known, or that the position-change customarily-used art asserted by theAppellees was customarily used.
C. Position-change well-known art 2
The Appellees assert that, from the descriptions in Exhibit Otsu 48, on page80, Exhibit Otsu 61, on pages 190, 191, 196, and 199, and Exhibit Otsu 62, on pages
182 and 188, the position-change well-known art 2 can be acknowledged.
(A) Described matters in Exhibit Otsu 48
Exhibit Otsu 48 ("ActionScript Pocket Reference") has the following
descriptions:"09 Examine whether it

overlaps another instance (collision

determination)", "This is a method of examining the overlap (collision determination)
between the commentary movie-clip instance and an arbitrary xy coordinate oranother movie clip, a button, or a text field instance.

If they overlap, true will return,while if not, false will return.", "The xy coordinate ((blackened triangle), (white
triangle)) which can be specified in the aforementioned format is a global coordinate."
For the determination condition of (blackened star), specify true for the determination
in a region with a line/paint (hit region), or false for the determination in a region
rectangle of the instance.

This determination condition cannot be set in the format

below for examining the overlap between the instances.
110

It is determined with theregion rectangle at all times." (so far, on page 80).
From the aforementioned description, it is found that Exhibit Otsu 48
discloses such an art (collision determination) that examines overlap between themovie-clip instance, and other movie clips, a button, and a text field instance.
(B) Described matters in Exhibit Otsu 61
Exhibit Otsu 61 (Foundation ActionScript Animation: Making Things
Move!) has the following description (abstract translation of original English):"Collision detection method ... (blackened square) a test can be conducted on the basisof an actual pixel of each of the objects (movie clips).

That is, it is a test on whether

the shape of this movie clip overlaps the shape of that movie clip.

As the test, (there

are such methods that) an actual pixel which can be visually recognized for creating agraphic of the movie clip is considered, or a test is conducted on the basis of theboundary of the rectangle of the movie clip.
for how it would be applied.
Flash.

Thus, this method has several options

This format of collision detection is incorporated in(blackened square) ... a test can be conducted also on the basis of a distance.

A distance between two objects is measured, and "are they close enough to collide?"is asked.

This is close to a collision detection method of a role of a setter

himself/herself.

It is necessary to calculate the distance and to determine when theobject becomes sufficiently close.", "hitTest is embedded", "The Flash movie clip has
included a method called hitTest." (so far, on page 190), "The following method is thesimplest method for determining whether a collision has occurred or not.

That is, afirst object is specified, and a periphery thereof is surrounded by a rectangle.

A sideon an upper part of the rectangle passes an uppermost part of a pixel which can bevisually recognized in the graphic of the object, a side of a lower part passes througha lowermost part of the visually recognizable pixel, and left and right sides pass thefarthest part of the visually recognizable pixel.
the object to be tested with respect to that.

Similar processing is executed forOn the basis of the above, it is checked

whether these two rectangles cross each other in any way.

If they cross each other, acollision has occurred." (on page 191), "Collision detection based on distance: In thissection, incorporation of the hitText in a method group is discarded, and the collision
detection is performed by oneself.

In order to determine whether the two objects

would collide or not, this includes a method of using a distance between them." (onpage 196), "A problem accompanying a good operation example of hitTest based on acollision distance based on hitting is supposed to include many problems related to areaction of a complete program when two objects collide against each other, and amethod of efficiently manipulating intersection among many objects and the like,111which have not been discussed.

However, I have managed to create an explanationof hitTest without using many of those which have not yet been shown.", "The idea is
as follows.

That is, at the center of the display screen, a movie clip of one large

circle called a center ball is installed.

And a movie-clip group of smaller circles is

added, and random sizes and speeds are set to those circles.
of a basic motion code and are bounced back by a wall.

They move on the basis

On an edge of each of thecircles, a collision check based on the distance between each of the moving balls andthe center ball is conducted.

In the case of a collision, an offset of a target to be hit

is calculated on the basis of an angle between the two balls and the shortest distanceto avoid the collision.

OK, this might be difficult to understand.

What it means isthat, if a moving ball collides against the center ball, the ball is bounced back.
is performed by setting the target just outside the center ball.

This

Then, once the ballreaches the target, a collision would not occur and thus, the hitting operation ends,
and it begins to move simply on the basis of a usual motion code.", "The result is as if
a bubble is bounced back by a large bubble, as shown in FIG. 9-4.

A few of thesmall bubbles enter the large bubble in accordance with the moving speed thereof, butthey are bounced back." (so far, on page 199).
From the aforementioned description, it is found that Exhibit Otsu 61
discloses such an art that the collision check for determining whether two objects(movie clips) collide or not is performed, and in the case of the collision, one of theobjects is bounded back by the other.
(C) Described matters of Exhibit Otsu 62
Exhibit Otsu 62 ("Web production seminar FlashMX2004") has thefollowing descriptions: "action to discriminate a hit region", "Use hitTest", "'hittest();'in ActionScript determines whether an instance having an overlapping region overlaps
the hit region.

In the case of overlap, true is returned, while if not, false is returned.","Use example of hitTest: In this Lesson, hitTest is used, and it is configured such that,when a popup window comes onto 'topicFitBase', which is the movie clip for
determination placed on a stage, the popup window is joined thereto without a gap
and returns to an original position so as to be adsorbed." (so far, on page 182), "It is
configured such that, by moving the popup window which has been moved to acertain position, the popup window returns to the original position.", "Here, anotherinstance is disposed at the same coordinate position as the position where the popup
window was first disposed.

When the popup window overlaps the instance, thecoordinate of the popup window is substituted by the coordinate of the instance.

Inthis way, the popup window returns to the original coordinate position." (so far, on112

page 188).
From the aforementioned descriptions, it is found that Exhibit Otsu 62
discloses an art configured such that, when the popup window is overlaid on themovie clip for determination "topicFitBase", the popup window returns to the original
coordinate position.
(D) Conclusion
As described above, Exhibit Otsu 48 discloses the art for examining theoverlap between the movie clip instance and another movie-clip instance (collision
determination), Exhibit Otsu 61 discloses the art that the collision check fordetermining whether or not the two objects (movie clips) collide is performed, and in
the case of a collision, one of the objects is bounced back by the other, and Exhibit
Otsu 62 discloses the art that it is configured such that, when the popup window is
overlaid on the movie clip for determination "topicFitBase", the popup window
returns to the original coordinate position.

But when it is determined that they

overlap, one of the objects is simply bounced back by the other, or the popup window
returns to the original coordinate position, and it cannot be considered to be a functionof adjustment so that they are displayed at positions not overlapping each other(display control function).

Moreover, none of the arts described in Exhibits Otsu 48,

61, and 62 is identical with the configuration of Invention 1 according to Difference 1(the configurations of the constituent features 1F and 1G), either.
Moreover, it cannot be acknowledged that, from the descriptions in E xhibits
Otsu 48, 61, and 62 on which the Appellees base their arguments, the position -change
well-known art 2 asserted by the Appellees was well known at the time of priority
date of the Application.
D. How easily Difference 1 could have been conceived of
The Appellees assert that a person ordinarily skilled in the art could have
easily conceived of the configuration of Invention 1 according to Difference 1(configurations of the constituent features 1F and 1G) by applying the position -change
publicly-known art, the position-change customarily-used art, or the position-change
well-known art 2 in Exhibit Otsu 17 Invention.
However, as described in the aforementioned B and C, from the descriptions
in Exhibits Otsu 26 to 28, 48, 61, and 62 on which the Appellees base their arguments,
none of the position-change publicly-known art, the position-change customarily-used
art, and the position-change well-known art 2 can be acknowledged and thus, theaforementioned assertion by the Appellees lacks the premise thereof, and cannot be
accepted.
113

E. Summary
As described above, it cannot be approved that the configuration of
Invention 1 according to Difference 1 (configurations of constituent features 1F and
1G) could have been easily conceived of in Exhibit Otsu 17 Invention as asserted by
the Appellees.
Moreover, the constituent features 2F and 2G of Invention 2 correspond toconstituent features 1F and 1G of Invention 1, respectively, and thus, similarly to theabove, it cannot be approved that the configurations of constituent features 2F and 2Gof Invention 2 could have been easily conceived of in Exhibit Otsu 17 Invention.
Therefore, even without the need to determine the remaining points,
Invalidation Reason 1 asserted by the Appellees is groundless.
(2) Issue 5-2 (Lack of inventive step with Exhibit Otsu 18 publication as theprimarily cited reference (Invalidation Reason 2))
A. Appellees assert that Invention 1 lacks inventive step because [i] Exhibit
Otsu 18 describes Exhibit Otsu 18 invention (judgment in prior instance, from page
137, line 16 to page 138, line 2) as follows; [ii] Invention 1 and Exhibit Otsu 18
invention are different only in a point that Invention 1 includes the determining
portion which determines whether or not, when the second comment is displayed on
the video, the display position overlaps the display position of the first comment(constituent feature 1F) and the display-position control portion which makes
adjustment such that, when they are determined to overlap, the first commen t and thesecond comment are displayed at positions not overlapping each other (constituent
feature 1G), while Exhibit Otsu 18 invention does not include such configurations(Difference 1); and [iii] a person ordinarily skilled in the art could have easily
conceived of the configurations of Invention 1 according to Difference 1(configurations of constituent features 1F and 1G) by applying the position-change
publicly-known art, the position-change customarily-used art, or the position-change
well-known art 2 in Exhibit Otsu 18 invention.
[Exhibit Otsu 18 Invention]"(A)(F) A display device which plays a video and displays a text on the video,
comprising:(B) a storage portion which collects a single piece or a plurality of pieces oftext data corresponding to the video and stores them in a log file;(C) a video play portion which plays and displays the video; and(D) a single or a plurality of text-data display portions which read the text data
and display the single piece or the plurality of pieces of text data, wherein
114(E) the single piece or the plurality of pieces of text data are displayed by atleast partially overlapping the video"
B. However, as taught in the aforementioned (1) D, from the descriptions in
Exhibits Otsu 26 to 28, 48, 61, and 62 on which the Appellees base their arguments,
none of the position-change publicly-known art, the position-change customarily-used
art, and the position-change well-known art 2 can be acknowledged, and it cannot beapproved that a person ordinarily skilled in the art could have easily conceived of theconfiguration of Invention 1 according to Difference 1 (configurations of constituent
features 1F and 1G) in Exhibit Otsu 18 invention and thus, the aforementioned
assertion by the Appellees lacks the premise thereof, and cannot be accepted.

Thesame applies to Invention 2.
Therefore, even without the need to determine the remaining points,
Invalidation Reason 2 asserted by the Appellees is groundless.
(3) Issue 5-3 (Lack of inventive step with Exhibit Otsu 19 publication as theprimarily cited reference (Invalidation Reason 3))
A. The Appellees assert that Invention 1 lacks inventive step because [i]Exhibit Otsu 19 describes Exhibit Otsu 19 invention (judgment in prior instance, frompage 146, line 11 to page 147, line 6) as follows; [ii] Invention 1 and Exhibit Otsu 19
invention are different only in a point that Invention 1 includes the determining
portion which determines whether or not, when the second comment is displayed on
the video, the display position overlaps the display position of the first comment(constituent feature 1F) and the display-position control portion which makes
adjustment such that, when they are determined to overlap, the first comment and thesecond comment are displayed at positions not overlapping each other (constituent
feature 1G), while Exhibit Otsu 19 invention does not include such configurations(Difference 1); and [iii] a person ordinarily skilled in the art could have easily
conceived of the configurations of Invention 1 according to Difference 1(configurations of the constituent features 1F and 1G) by applying the position -change
publicly-known art, the position-change customarily-used art, or the position-change
well-known art 2 in Exhibit Otsu 19 invention.
[Exhibit Otsu 19 Invention]"(A)(F) A live viewer terminal 21 in a live delivery system, having a live delivery
server 100 which receives a single or a plurality of chat messages transmitted from aplurality of live viewer terminals 21 and transmits them to each of the live viewer
terminals 21, and the live viewer terminal 21 which is connected to the live delivery
server 100, displays a video, and displays the chat message on the video,
115

characterized by having:(B) a memory (difference time memory) for temporarily storing a single or aplurality of utterances (chat messages) and an utterance time indicating a differencetime from start of live play time at a point of time when the utterance was made;(C) a communicating device 22 which receives chat input informationtransmitted from the live delivery server 100 each time when the live delivery server
100 receives the chat input information from the live viewer terminal 21 and stores itin the memory;(D) a video play portion which is connected to the live delivery server 100 andplays a video in the live viewer terminal 21; and(E) a media dedicated player 23 which reads out the message with which theutterance time corresponding to video play time of the video (utterance information)is associated in the single or the plurality of messages stored in the memory on thebasis of the video play time of the video to be played and scroll-displays the read-out
message on the video."
B. However, as taught in the aforementioned (1) D, from the descriptions in
Exhibits Otsu 26 to 28, 48, 61, and 62 on which the Appellees base their arguments,
none of the position-change publicly-known art, the position-change customarily-used
art, and the position-change well-known art 2 can be acknowledged, and it cannot beapproved that a person ordinarily skilled in the art could have easily conceived of theconfiguration of Invention 1 according to Difference 1 (configurations of constituent
features 1F and 1G) in Exhibit Otsu 19 invention and thus, the aforementioned
assertion by the Appellees lacks the premise thereof, and cannot be accepted.

Thesame applies to Invention 2.
Therefore, even without the need to determine the remaining points,
Invalidation Reason 3 asserted by the Appellees is groundless.
(4) Issue 5-4 (Lack of inventive step with Exhibit Otsu 20 document as theprimarily cited reference (Invalidation Reason 4))
A. The Appellees assert that Invention 1 lacks inventive step because: [i]Exhibit Otsu 20 describes Exhibit Otsu 20 invention (judgment in prior instance, frompage 152, lines 10 to 21) as follows; [ii] Invention 1 and Exhibit Otsu 20 invention are
different only in a point that, in Invention 1, the first comment and the second
comment "move in a horizontal direction" (constituent feature 1E), while this point i s
not clear in Exhibit Otsu 20 invention (Difference 1), and Invention 1 includes thedetermining portion which determines whether or not, when the second comment isdisplayed on the video, the display position overlaps the display position of the first116

comment (constituent feature 1F) and the display-position control portion whichmakes adjustment such that, when they are determined to overlap, the first commentand the second comment are displayed at positions not overlapping each other(constituent feature 1G), while it is not clear if Exhibit Otsu 20 invention includes
such configuration or not (Difference 2); [iii] regarding Difference 1, a person
ordinarily skilled in the art could have easily conceived of the configuration of
Invention 1 according to Difference 1 (configuration of the constituent feature 1E) byapplying the art of scroll-display of a text displayed on a screen of a terminal device
in a horizontal or vertical direction (Exhibits Otsu 29 to 33 and the like), which is abasic art and a customarily-used art of a video editing software or programing in
Exhibit Otsu 20 invention; and [iv] regarding Difference 2, a person ordinarily skilledin the art could have easily conceived of the configuration of Invention 1 according to
Difference 2 (configurations of the constituent features 1F and 1G) by applying theposition-change publicly-known art, the position-change customarily-used art, or the
position-change well-known art 2 in Exhibit Otsu 20 invention.
[Exhibit Otsu 20 Invention]"(E) A system having (A) a display device which plays a video and displays a single
or a plurality of annotations given to the video, in which(B) information related to time to cause the annotation to match a time axis of avideo is stored, comprising:(C) a video play portion which plays and displays the video in a video display
region for playing a video, and(D) a display portion which reads out an annotation and displays the annotationon the video on the basis of the time axis of the video to be played."
B. However, as taught in the aforementioned (1) D, from the descriptions in
Exhibits Otsu 26 to 28, 48, 61, and 62 on which the Appellees base their arguments,
none of the position-change publicly-known art, the position-change customarily-used
art, and the position-change well-known art 2 can be acknowledged, and it cannot beapproved that a person ordinarily skilled in the art could have easily conceived of theconfiguration of Invention 1 according to Difference 2 (configurations of theconstituent features 1F and 1G) in Exhibit Otsu 20 invention and thus, theaforementioned assertion by the Appellees lacks the premise thereof, and cannot be
accepted.

The same applies to Invention 2.
Therefore, even without the need to determine the remaining points,

Invalidation Reason 4 asserted by the Appellees is groundless.
(5) Issue 5-5 (Lack of inventive step with Exhibit Otsu 21 publication as the117primarily cited reference (Invalidation Reason 5))
A. The Appellees assert that the Invention 1 lacks inventive step because: [i]Exhibit Otsu 21 describes Exhibit Otsu 21 invention (judgment in prior instance, frompage 160, the last line to page 161, line 15) as follows; [ii] Invention 1 and Exhibit
Otsu 21 invention are different only in a point that Invention 1 includes thedetermining portion which determines whether or not, when the second comment isdisplayed on the video, the display position overlaps the display position of the firstcomment (constituent feature 1F) and the display-position control portion whichmakes adjustment such that, when they are determined to overlap, the first commentand the second comment are displayed at positions not overlapping each other(constituent feature 1G), while it is not clear if Exhibit Otsu 21 invention includes
such configuration or not (Difference 1); and [iii] a person ordinarily skilled in the art
could have easily conceived of the configuration of Invention 1 according to
Difference 1 (configurations of the constituent features 1F and 1G) by applying theposition-change publicly-known art, the position-change customarily-used art, or the
position-change well-known art 2 in Exhibit Otsu 21 invention.
[Exhibit Otsu 21 Invention]"(A) A system for simultaneously delivering a video and a text, including a server anda plurality of terminal devices connected thereto via a network, including(B) a plurality of information terminal devices 200 which play the video anddisplay a single or a plurality of texts on the video such that the two are seen
simultaneously, in which(C) a display memory 272 for temporarily storing a single or a plurality of texts
and relative time information from a point of time of start of video play (play time
information of the text in play of the video); and(D) a display control portion 270 which plays and displays the video on a video
area displaying a video and reads out from the display memory 272 the single orplurality of texts corresponding to relative time corresponding to the video play timeof the video in the information stored in the display memory 272 on the basis of thevideo play time of the video to be played, scrolls the read-out text on a data area, anddisplays it overlapping at least a part of the video are provided."
B. However, as taught in the aforementioned (1) D, from the descriptions in
Exhibits Otsu 26 to 28, 48, 61, and 62 on which the Appellees base their arguments,
none of the position-change publicly-known art, the position-change customarily-used
art, and the position-change well-known art 2 can be acknowledged, and it cannot beapproved that a person ordinarily skilled in the art could have easily conceived of the118configuration of Invention 1 according to Difference 1 (configurations of constituent
features 1F and 1G) in Exhibit Otsu 21 invention and thus, the aforementioned
assertion by the Appellees lacks the premise thereof, and cannot be accepted.

Thesame applies to Invention 2.
Therefore, even without the need to determine the remaining points,
Invalidation Reason 5 asserted by the Appellees is groundless.
(6) Issue 5-6 (Lack of inventive step with Exhibit Otsu 24 publication as theprimarily cited reference (Invalidation Reason 6))
A. The Appellees assert that Invention 1 lacks inventive step because: [i]Exhibit Otsu 24 describes Exhibit Otsu 24 invention (judgment in prior instance, frompage 170, lines 3 to 14) as follows; [ii] Invention 1 and Exhibit Otsu 24 invention are
different only in a point that, in Invention 1, the first comment and the second
comment "move in a horizontal direction" (constituent feature 1E), while it is notclear in Exhibit Otsu 24 invention (Difference 1), and Invention 1 includes thedetermining portion which determines whether or not, when the second comment isdisplayed on the video, the display position overlaps the display position of the firstcomment (constituent feature 1F) and the display-position control portion whichmakes adjustment such that, when they are determined to overlap, the first commentand the second comment are displayed at positions not overlapping each other(constituent feature 1G), while it is not clear if Exhibit Otsu 24 invention includes
such configuration or not (Difference 2); [iii] regarding Difference 1, a person
ordinarily skilled in the art could have easily conceived of the configuration of
Invention 1 according to Difference 1 (configuration of the constituent feature 1E) byapplying the art of scroll-display of a text displayed on a screen of a terminal device
in a horizontal or vertical direction (Exhibits Otsu 29 to 33 and the like), which i s abasic art and a customarily-used art of a video editing software or programing in
Exhibit Otsu 24 invention; and [iv] regarding Difference 2, a person ordinarily skilledin the art could have easily conceived of the configuration of Invention 1 accordi ng to
Difference 2 (configurations of the constituent features 1F and 1G) by applying theposition-change publicly-known art, the position-change customarily-used art, or the
position-change well-known art 2 in Exhibit Otsu 24 invention.
[Exhibit Otsu 24 Invention]"(A)(E) A display device which plays a video and displays a single or a plurality ofchat messages on the video, characterized by having:(B) a chat server which records the chat message;(C) a video play portion which plays and displays the video on a first display
119column, which is a region where the video is displayed; and(D) a chat-message display portion which reads out the chat message anddisplays the chat message on a second display column, which is a region where thechat message is displayed."
B. However, as taught in the aforementioned (1) D, from the descriptions in
Exhibits Otsu 26 to 28, 48, 61, and 62 on which the Appellees are base theirarguments, none of the position-change publicly-known art, the position-change
customarily-used art, and the position-change well-known art 2 can be acknowledged,
and it cannot be approved that a person ordinarily skilled in the art could have easily
conceived of the configuration of Invention 1 according to Difference 2 in Exhibit
Otsu 24 invention and thus, the aforementioned assertion by the Appellees lacks thepremise thereof, and cannot be accepted.

The same applies to Invention 2.

Therefore, even without the need to determine the remaining points,
Invalidation Reason 6 asserted by the Appellees is groundless.
(7) Issue 5-7 (Lack of inventive step with Exhibit Otsu 25 document as theprimarily cited reference (Invalidation Reason 7))
A. The Appellees assert that Invention 1 lacks inventive step because: [i]Exhibit Otsu 25 describes Exhibit Otsu 25 invention (judgment in prior instance, frompage 179, lines 6 to 25) as follows; [ii] Invention 1 and Exhibit Otsu 25 invention are
different only in a point that, in Invention 1, the first comment and the second
comment "move in a horizontal direction" (constituent feature 1E), while this point is
not clear in Exhibit Otsu 25 invention (Difference 1), and Invention 1 includes thedetermining portion which determines whether or not, when the second comment isdisplayed on the video, the display position overlaps the display position of the firstcomment (constituent feature 1F) and the display-position control portion whichmakes adjustment such that, when they are determined to overlap, the first commentand the second comment are displayed at positions not overlapping each other(constituent feature 1G), while it is not clear if Exhibit Otsu 25 invention includes
such configuration or not (Difference 2); [iii] regarding Difference 1, a person
ordinarily skilled in the art could have easily conceived of the configuration of
Invention 1 according to Difference 1 (configuration of constituent feature 1E) byapplying the art of scroll-display of a text displayed on a screen of a terminal device
in a horizontal or vertical direction (Exhibits Otsu 29 to 33 and the like), which is abasic art and a customarily-used art of video editing software or programing in
Exhibit Otsu 25 invention; and [iv] regarding Difference 2, a person ordinarily skilledin the art could have easily conceived of the configuration of Invention 1 according to120

Difference 2 (configurations of the constituent features 1F and 1G) by applying theposition-change publicly-known art, the position-change customarily-used art, or the
position-change well-known art 2 in Exhibit Otsu 25 invention.
[Exhibit Otsu 25 Invention]"(A) A display device which plays a video and displays a single or a plurality ofcomments on the video, in which(B) a message subject located on a lower part of a window 110 has start time
substantially corresponding to a timeline point of an AV product viewed by a viewer,
and a storage system 1230 accumulates information (CT-related information) related
to a relationship with a point on the timeline of the AV product together with acomment input by the viewer.
(E) A display device, characterized by (C) having a video play portion whichplays and displays the AV product on a window 120 (FIG. 1B), which is a region
where the AV product is displayed, and(D) a comment display portion which reads out a comment correspond ing to acomment input time corresponding to the timeline of the AV product from the storage
system 1230 in the CT-related information accumulated in the storage system 1230 on
the basis of the play time of the AV product to be played and displays the read -outcomment on the windows 110 and 150, which are regions for displaying thecomment."
B. However, as taught in the aforementioned (1) D, from the descriptions in
Exhibits Otsu 26 to 28, 48, 61, and 62 on which the Appellees base their arguments,
none of the position-change publicly-known art, the position-change customarily-used
art, and the position-change well-known art 2 can be acknowledged, and it cannot beapproved that a person ordinarily skilled in the art could have easily conceived of theconfiguration of Invention 1 according to Difference 2 (configurations of constituent
features 1F and 1G) in Exhibit Otsu 25 invention and thus, the aforementioned
assertion by the Appellees lacks the premise thereof, and cannot be accepted.

Thesame applies to Invention 2.
Therefore, even without the need to determine the remaining points,
Invalidation Reason 7 asserted by the Appellees is groundless.
(8) Issue 5-8 (Violation of clarity requirement (Invalidation Reason 8))
The Appellees assert that, the description that "transmits the video andcomment information to the terminal device" in constituent feature 1C of Invention 1
is not clear in terms of at what timing the comment received by the server istransmitted to the terminal and thus, the description in the scope of claims (claim 1) of
121

the Invention 1 is unclear and fails to fulfill the clarity requirement (Article 36,
paragraph (6), item (ii) of the Patent Act).
However, according to the description in the scope of claims (claim 1) of
Invention 1 that "a comment delivery system including a server and a plurality ofterminal devices connected to the server via a network, in which the server receives afirst comment and a second comment to a video given by a user who is viewing thevideo transmitted from the server and transmits the video and comment information to
the terminal device", it can be understood that the timing of transmission that"transmits the video and comment information to the terminal device" in consti tuent
feature 1C is after the server receives the first comment and the second comment tothe video given by the user who is viewing the video and thus, the contents of"transmits the video and comment information to the terminal device" in constituent
feature 1C are clear.
Therefore, Invalidation Reason 8 asserted by the Appellees is groundless.
(9) Issue 5-9 (Violation of support requirement (Invalidation Reason 9))
The Appellees assert that: [i] since the description in paragraph [0008] in the
Description together with the description in paragraph [0004] should be understood todescribe that the comment is transmitted to the terminal device "each time" when thecomment delivery server receives the comment, but in view that the scopes of claims(claims 1 and 2) of Inventions 1 and 2 do not have description on timing at which theterminal device receives the comment information, and it is impossible to exchangecomments on a real-time basis and, claims 1 and 2 exceed the range described in the
Detailed Description of the Invention, and thus fail to fulfill the support requirement(Article 36, paragraph (6), item (i) of the Patent Act); [ii] paragraph [0011] of the
Description has such description that "according to the present invention, ... and in thecomment information input with respect to the video, when a comment erasing request
indicating the comment information to be erased is input, the comment is caused not
to be displayed and thus, whether or not the comment is not appropriate for the video
can be displayed by considering an intention of the user, which can improveentertainment in communication using the comment.", but the scopes of claims(claims 1 and 2) of Inventions 1 and 2 have the description on the display of thecomment by the terminal device but do not have the description on not to display andthus, the means for solving the problem of the invention described in the Detailed
Description of the Invention is not reflected, and the scope described in the Detailed
Description of the Invention is exceeded, thus failing to fulfill the support
requirement.
122

By examining the above, the support requirement is prescribed such that "theinvention for which the patent is sought should be stated in the detailed explanation of
the invention in the Description" (Article 36, paragraph (6), item (i) of the Patent Act)and is a requirement to prevent monopoly of an art not disclosed (supported) in the
Detailed Description of the Invention in advance and thus, when violation of the
support requirement is asserted, it is reasonable to interpret that, if it is specificallyasserted to be too wide, the assertion should be specific in a relationship between a
specific invention specifying matter and the description in the Description.
However, the aforementioned assertion by the Appellees does not specify theinvention specifying matters in Inventions 1 and 2 and does not specifically point out
that the description is too wide in the relationship with that in the Description, either
or rather, it only points out that the description in the Description is not described in
the scope of claims and thus, the assertion itself is groundless.
Therefore, Invalidation Reason 9 asserted by the Appellees is groundless.
(10) Issue 5-10 (Violation of enablement requirement (Invalidation Reason 10))The Appellees assert that the scopes of claims (claims 1 and 2) of Inventions
1 and 2 do not have the description on at what timing the terminal device receives thecomment information, the exchange of the comments on the real-time basis is notpossible, and [0011] in the Description has the description that "when a comment
erasing request indicating the comment information to be erased is input, the commentis caused not to be displayed", but even though the scopes of claims (claims 1 and 2)
of Inventions 1 and 2 have the description that the terminal device displays thecomment, they do not have description on not to display the comment and thus, it falls
under the case in which the invention cannot be grasped from one claim, and thedescription in the Detailed Description of the Invention in the Description does notdescribe clearly and sufficiently enough to such a degree that a person ordinarily
skilled in the art could have worked Inventions 1 and 2, thus failing to fulfil l the
enablement requirement (Article 36, paragraph (4), item (i) of the Patent Act).
However, as taught in the aforementioned (8), from the description in thescope of claim (claim 1) of Invention 1, the timing of the transmission referred to in
constituent feature 1C that "the video and the comment information are transmitted tothe terminal device" can be understood to be after the server received the firstcomment and the second comment to the video given by the user who is viewing thevideo, and even though claims 1 and 2 do not have the description that the terminal
device does not display the comment, it does not apply to the case that the invention
cannot be grasped from one claim and thus, Invalidation Reason 10 asserted by the123Appellees lacks the premise thereof, and groundless.
(11) Issue 5-11 (Violation of prior application requirement (Invalidation
Reason 11))The Appellees assert that Patent No. 4695583 (Other Litigation Patent 2) on
which the request was based in another litigation (Exhibit Otsu 15) was filed (Patent
Application No. 2006-333851, date of application: December 11, 2006, Exhibit Otsu
11) before the application of this case, but since Inventions 1 and 2 are identical or
substantially identical to the inventions according to claims 1 to 3 of Other Litigation
Patent 2, they violate the prior application requirement (Article 39 of the Patent Act)and cannot be granted a patent.
However, Inventions 1 and 2 and the inventions according to claims 1 to 3 ofOther Litigation Patent 2 are different at least in [i] all the inventions according toclaims 1 to 3 of Other Litigation Patent 2 include the requirement of "each time thecomment information is received", while Inventions 1 and 2 do not have suchrequirement; and [ii] both Inventions 1 and 2 include the requirement that the first andsecond comments move in the horizontal direction, while the inventions according toclaims 1 to 3 of Other Litigation Patent 2 do not include such requirement and thus,
the aforementioned assertion by the Appellees cannot be accepted.
Therefore, Invalidation Reason 11 asserted by the Appellees is groundless.
(12) Issue 5-12 (Lack of novelty and of inventive step due to violation ofdivision requirement (Invalidation Reason 12))The Appellees assert that: [a] this application is a patent application(application [viii]) obtained by further dividing the patent application (applications [i]to [vii]) in which a part of the original patent application (Exhibit Otsu 9) was
sequentially divided, claim 1 at the filing of the applications [iv] to [viii] is identicalto claim 1 of the application [iii], and claim 1 after amendment according to theapplications [v] to [vii] is identical to claim 1 of the application [iv]; [b] theapplications [vi] and [vii] are filed with the claim identical to that of the application[iii] and after that, amendment identical to that of the application [iv] was made andthen, decision of refusal was rendered on the ground that it is identical to theapplication [iv]; [c] the applications [iv] to [vii] (particularly, the applications [vi] and[vii]) should be considered to be abusive division of application used to evaderestrictions on the time for amendment (Article 17-2, paragraph (1), item (iii) of the
Patent Act) and thus, the effect of division of application that the division of
application is regarded to be filed at the time of the original application (Article 44,
paragraph (2) of the Patent Act) is not produced for these applications; and [d] the124date of application of this application is October 29, 2018, which is the actual date ofapplication and thus, Inventions 1 and 2 do not satisfy the requirements of novelty andinventive step in the relation with the inventions described in the Description and thelike of the applications [iv] to [vii] and thus, the Patent has the invalidation reasons oflack of novelty and lack of inventive step.
However, the Application (application [viii]) is found to fall under a "newpatent application" divided from "a patent application containing two or moreinventions" prescribed in Article 44, paragraph (1) of the Patent Act (Exhibit Ko 2,
Exhibits Otsu 1 to 9 (including branch numbers.)) in a relationship with the original
application and the applications [i] to [vii] and thus, the date of application of the
Application should be considered to be retroactive to the time of the original
application (date of application: March 2, 2007) pursuant to the same Article,
paragraph (2).
Moreover, pursuant to the revision of the Patent Act by the 2006 Law No. 55(enforced on April 1, 2007), for the purpose of suppressing abuse of the divisional
application system, if the grounds for rejection in the examination of the divisional
application are the same as those already noticed in the original application and thelike, a notice to that effect should also be issued (Article 50-2 of the Patent Act), andupon receipt of the notice, the same restriction on amendment similar to the receipt ofthe last notice of reasons for rejection should be imposed (Article 17-2, paragraph (5)of the Patent Act), but in view that there are no provisions which prescribe that thedivisional application itself by repeating the same invention is illegal on the Patent
Act before and after the revision, the history of application asserted by the Appellees
should not be considered to influence the aforementioned finding.
Therefore, Invalidation Reason 12 asserted by the Appellees is groundless.
(13) Issue 5-13 (Lack of inventive step and the like due to violation ofrequirement of priority claim (Invalidation Reason 13))The Appellees assert that: [i] the application (Patent Application No. 2006 333850) on the basis of which the priority of the original application is claimed does
not satisfy the requirement for amendment, a priority claim based on Article 41,
paragraph (1), item (i) of the Patent Act is not allowed for the original application andthus, in view of necessity of reliability and consistent determination on registration
information related to patents, the novelty and the inventive step of Inventions 1 and 2
should be determined with the actual date of application of the Application (October
29, 2018) as the base time; and [ii] the Appellant made public the service using the art
related to Inventions 1 and 2 with the name "Niconico Video" on December 12, 2006,
125

NIWANGO, which was an operation company at that time, actively began issuingpress releases from January, 2007 after the service was made public, and the art
became publicly-known, Other Litigation Patent 2 was made public (Exhibit Otsu 11)
at the time of the filing at the latest, and Inventions 1 and 2 had been well -known andthus, Inventions 1 and 2 lack inventive step.
However, whether or not the filing of the Patent Application No. 2006 333850 on the basis of which the domestic priority claim of the original application
was made violates the requirement for amendment as asserted by the Appellees does
not influence the priority claim of the original application (Article 41, paragraph (1)of the Patent Act).

Moreover, illegal amendment was not made in this original

application, and the Application is a legal divisional application.

Therefore,

Invalidation Reason 13 asserted by the Appellees is groundless.
(14) Issue 5-14 (Violation of public order and morality (Invalidation Reason
14))
The Appellees asserted that the judgment of the first court of anotherlitigation (Exhibit Otsu 15) determined that the invention according to Other
Litigation Patent 2 does not belong to the technical scopes of Invent ions 1 and 2 bystating that the comment information is transmitted to the terminal "each time" thecomment information is received from the terminal, while the program of Appellee
FC2 does not satisfy this requirement and the like, but the Appellant filed theApplication with respect to Inventions 1 and 2 by removing the requirement of theaforementioned "each time" for the purpose of overcoming the result of anotherlitigation and thus, Inventions 1 and 2 fall under the invention which might disrupt"public order" in Article 32 of the Patent Act.
However, in this case, even with the circumstances asserted by the Appellees,
it cannot be approved that Inventions 1 and 2 fall under the invention which might
disrupt "public order" in Article 32 of the Patent Act.
Therefore, Invalidation Reason 14 asserted by the Appellees is groundless.

126