OVERVIEW OF THE JAPANESE LEGAL SYSTEM

Proceedings of Patent Infringement Suit
(Two-Phase Proceedings System)
1st Phase(Infringement)

2nd Phase(Damages)

 The court arranges issues and evidence todetermine whether or not the patent wasinfringed in the preparatory proceedings.
 Explanatory Session may be held.
 When the court does not find aninfringement, the court will conclude thecase.
 When the court finds an infringement,
the court will disclose its preliminary viewon the infringement and proceed thecase to the 2nd Phase (examination ondamages).
 The court may attempt to settle andpreside over the proceedings for court
settlement.

Explanatory Session• Each party presents its
argument on technicalmatters.
• Three technical advisers（leading experts, such asacademics or researchers ）attend the session.
• Following the presentations,
technical advisers present
explanation about technicalmatters. and Q&A session isheld.

 The court arranges issues and evidence
relating to calculating damages.
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OVERVIEW OF THE JAPANESE LEGAL SYSTEM

Fulfillment of the Technical Scope of Invention
 Rules for claim construction
“The technical scope of a patented invention shall be determined based upon thestatements in the scope of claims attached to the application.“（Patent Act§70Ⅰ）

“[T]he meaning of each term used in the scope of claims shall be interpreted inconsideration of the statements in the description and drawings attached to theapplication.”（Patent Act §70Ⅱ）

File Wrapper Estoppel or Prosecution History Estoppel may be considered.

 Basic steps for determination of literal infringement(1) The claim is divided into technical elements (constituent features) .
(2) The features of the alleged infringing product/method are also divided as well.
(3) Each constituent feature of the patented invention is compared with the corresponding featureof the alleged infringing product/method.

 Doctrine of Equivalents (DOE) （Supreme Court, Feb. 24th,1998, “Ball spline bearing”
case）
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OVERVIEW OF THE JAPANESE LEGAL SYSTEM

Comparison between Invention and D method The Patented Invention is divided into 6 technical elements (constituent features), andeach feature is compared with the corresponding feature of D method as follows.
Patented Invention

D method

A control method for car navigation
Ａ Control method for car navigation
system that displays a map on asystem comprising a server and aａdisplay screen, the method comprisingterminal that displays a map on asteps of:screen of D terminal, which includes:
reading, from first memory means inwhich facility data comprising display
data indicative of a plurality of service
facilities and coordinate data
indicative of existing positions of theＢservice facilities have previously been
stored, the display data to display theplurality of service facilities on thedisplay screen;holding D spot data including D namedata indicative of a plurality of spots
and D play the plurality of spots
corresponding to the D name data onthe screen; position data indicative ofｂ
existing positions of the spots in D
server of the car navigation system inorder to display the plurality of spots
corresponding to the designated the Dname data on the screen;

designating one of the plurality ofservice facilities displayed on theＣ display screen in accordance with anoperation;

receiving an instruction to register
one of the plurality of spots displayedｃ on the screen as a "memo position";
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OVERVIEW OF THE JAPANESE LEGAL SYSTEM

Comparison between Invention and D method
Patented Invention

D method

reading coordinate data corresponding
obtaining D position data
to the designated one service facility
corresponding to the designated spotｄD
from the first memory means;from D server to be registeredaccording to the instruction;
storing the read coordinate data as
Ｅ user registered data in second
memory means;storing the D position data as D memo
ｅ data in D server;

displaying a position indicated by thecoordinate data read from the second
memory means by superimposing aＦ
predetermined pattern on to the map
when the map is displayed on thedisplay screen.

superimposing an icon on the map
indicated by the D position data of D
memo data read from D server whenｆthe map is displayed on the screen.

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SCENE 1 THE 2ND DATE FOR ORAL ARGUMENT

Proceedings of the 2nd Date for Oral Argument
Procedures Conducted on This Date
Statement of the Outcome ofthe Preparatory Proceedings＝ The court and the parties confirm the issues indispute.

Explanatory Session＝ Each party presents its argument on technical matters.
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SCENE 1 THE 2ND DATE FOR ORAL ARGUMENTSCENE1: The Second Date for Oral Argument
Statement of the Outcome of the Preparatory Proceedings

The court and both parties:
 No dispute regarding the description of D method.
 Issues in dispute
１. Whether or not the system of D method satisfies “car navigationsystem”
2. Whether or not D server satisfies “first memory means”
3. Whether or not D method comprises “second memory means”

 Plaintiff： No allegation of infringement under DOE
 Defendant : No allegation of the defense of patent invalidity
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SCENE 1 THE 2ND DATE FOR ORAL ARGUMENT -EXPLANATORY SESSION-

１．Technical Significance of the Invention（Plaintiff’s Allegations)
Conventional Art [0003][0004]：the user needs to display a position to be registered on themap, therefore the user needs to accurately know a location of the position previously, andcomplicated operations are needed for displaying the location on the screen.
Let’s register thelocation of IP Sushi
Ginza.

The map of
Yokohama City
Kanagawa
Prefecture

I still can’t get to thescreen of Ginza area...

The map ofKawasaki City
Kanagawa
Prefecture

Finally the screen displaysthe Ginza area, but where
is IP Sushi Ginza?

Very complicatedoperations...

The map ofGinza, ChuoWardTokyo

Objective of the Invention (the Problem to be Solved) [0005]：To provide a car navigation
system control method which allows the user to register a user registration without
performing complicated operations for displaying service facilities on the map.

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SCENE 1 THE 2ND DATE FOR ORAL ARGUMENT -EXPLANATORY SESSION-

１．Technical Significance of the Invention（Plaintiff’s Allegations)
Mode of Operation of the Invention [0007]：“the display data indicative of a plurality of service facilities and the position coordinate data
indicative of the existing positions of the service facilities are previously stored in the firstmemory means. By designating one of the plurality of service facilities … by the operation,
the coordinate data corresponding to the designated one service facility is read out from thefirst memory means and the user position is registered into the second memory means. …
the coordinate data which is stored as user registered data is read out and the positionindicated on the map by the coordinate data is superimposed onto the map by apredetermined pattern and can be displayed on the screen.”
Effect of the Invention [0020]：“…by merely designating one of the plurality of service facilities displayed … in accordancewith an operator input, the coordinate data corresponding to the designated one service
facility is read out from the first memory means and stored in the second memory means asuser registered data. Each user, therefore, can register the user position by a simple
operation, even if each user does not know accurate locations of service facilities…”
The Example Cited in the Specification [0008]-[0018]：
The example is merely “an embodiment” of “a preferred car navigation system” for theinvention.

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SCENE 1 THE 2ND DATE FOR ORAL ARGUMENT -EXPLANATORY SESSION-

１．Technical Significance of the Invention（Plaintiff’s Allegations)(1)READING: Among the plurality of service facilities displayed on the display screen in accordancewith display data read out from the first memory means , reading coordinate data from the firstmemory means corresponding to one service facility designated by the user （Elements B, C and D），(2)STORING: Storing the read coordinate date as user registered data in the second memory means（Element E），(3) SUPERIMPOSING: As the map is displayed on the display screen, reading the coordinate data fromthe second memory means , and superimposing a predetermined pattern ( ) on to the map to display
a position indicated by the coordinate data （Element F）
A plurality ofservice facilities
displayed on thescreen inaccordance withdisplay data readfrom
First MemoryMeans

Restaurant/ Sushi
Tokyo/ Ginza
・IP Sushi Ginza・IQ Sushi Ginza
・Ginza IT Sushi・・Display Screen

Read outStoreRead out・Coordinate data・User registered dataFirst Memory
Means

Second Memory
MeansSuperimpose

Display Screen

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２. Fulfillment of Element A（Plaintiff’s Allegations）(1)

The “system” in the invention is not
limited to a system where all thefeatures are incorporated as one
component. The demonstration of asystem which has all the featuresinstalled in a vehicle in the specificationis merely an embodiment.

(2) D method satisfies the “car navigation
system” of the invention, as D serverand D terminal communicate with eachother via a network so as to displaydata received from D server on thescreen of D terminal.
• Prosecution history : The Written Opinion
does not limit the scope of the Invention tothe navigation system installed in a vehicle.
It only explains a car navigation system incomparison with a navigation system for apedestrian (Cited Invention 1).

First Memory Means

Second Memory Means

D method can fulfill the technical significanceof the invention when D server carries eachof the memory means and communicateswith D terminal via a network.

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(1)

SCENE 1 THE 2ND DATE FOR ORAL ARGUMENT -EXPLANATORY SESSION-３. Fulfillment of Elements B and D（Plaintiff’s Allegations）“First memory means” in the invention does not specify memory medium, and is not
limited to a CD-ROM in the embodiment.

(2) In D method, 1) D server stores “D spot data (=“D name data” + “D position data”) todisplay a list of names of spots on the screen by using “D name data”, and 2) D method
obtains “D position data” corresponding to the designated spot.
(3) Therefore, D method satisfies the Elements B and D.

A plurality ofspots displayedin accordancewith D spot dataread fromD Server

Restaurant/ Sushi
Tokyo/ Ginza・IP Sushi Ginza・IQ Sushi Ginza・Ginza IT Sushi・・Obtain・D position dataD Server11

SCENE 1 THE 2ND DATE FOR ORAL ARGUMENT -EXPLANATORY SESSION-

４. Fulfillment of Elements E and F（Plaintiff’s Allegations）(1)

In D method, 1) “D position data” obtained from D server are to be stored in “D server” as “D memodata”, and 2) D method reads out “D memo data” from “D server” to display the position on a map
indicated by the position data by superimposing an icon on the map.

(2)

“First memory means” and “second memory means” in the invention only need to be media to fulfill
the respective function defined by the claim.

(3)“D spot data” and “D memo data” are stored separately in D server, and D server fulfills both functions
required in “first memory means” and “second memory means”.

(4)

Therefore, D method satisfies Elements E and F.

A plurality ofspots displayedin accordancewith D spot dataread from
D ServerRestaurant/ Sushi
Tokyo/ Ginza
・IP Sushi Ginza・IQ Sushi Ginza
・Ginza IT Sushi・・ObtainMemorize

Read out

・D position data

・D memo data

D ServerD serverSuperimpose12

SCENE 1 THE 2ND DATE FOR ORAL ARGUMENT -EXPLANATORY SESSION-(Defendant's Allegations)

１．Disclosure in the Specification【Fig.1】

Upon operation of the position registration key, apair of longitude and latitude data and display
pattern data of a selected facility are read out fromthe CD-ROM and are written in the RAM, forming aposition registration data table【Fig.4】・Map data
・Service list display data, detailed
display data for each facilities
・Position coordinate data (longitudeand latitude data) of each facility
・Display pattern data corresponding
to each facility

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SCENE 1 THE 2ND DATE FOR ORAL ARGUMENT -EXPLANATORY SESSION-(Defendant's Allegations)

２．D Method

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SCENE 1 THE 2ND DATE FOR ORAL ARGUMENT –EXPLANATORY SESSION–(Defendant's Allegations)

３. Claim construction（１）Method for controlling car navigation system”（A)・Specification
・The car navigation system is a single equipment comprising plural elements (GPS sensor, systemcontroller, memories and the like), the elements being connected by bass lines (Fig. 1)・Large volume data, such as map data and service facilities data, are stored in a CD-ROM [0010]
・When a user selects a facility, the position coordinate (a pair of longitude and latitude data) and thedisplay pattern data for the selected facility are read out from CD-ROM and are written in RAM, inthe position registration data table. [0015] [Fig.3]
・The CPU determines whether the location of the selected service facility is within the area currently
displayed on the display, and if yes, goes on to display the display pattern (facility mark) on the map
being displayed. [0017][Fig.4]
・Opinion submitted during prosecution ：By providing the second memory means using RAM backed up by
power supply from a large capacity car-battery, the registration data can be continuously stored,
resulting in improved convenience for users. Such an effect can only be obtained because thenavigation system is installed in a vehicle with a large capacity car-battery.

➡"Navigation System" of the Patent is a single equipment that can beinstalled in a car. As such, the “control method” comprises featuresunique to such a single appliance.

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３．Claim Construction（２） First Memory Means （B,D)
・The claim： Description by an abstract word “memory means”
・Detailed description ：・The only example of “first memory means” disclosed in thespecification is CD-ROM connected to other elements by basslines [Fig. 1] [0010]
・By storing the facility data in a CD-ROM, which is an inexpensive
memory medium, and by storing user position registering datain a rewritable RAM, improved convenience and cost reduction
can both be achieved. [0015]

・No disclosure other than the above➡“first memory means“ refers to a memory medium such as CDROM, incorporated in a single equipment.
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SCENE 1 THE 2ND DATE FOR ORAL ARGUMENT –EXPLANATORY SESSION–(Defendant's Allegations)

３．Claim Construction（３）“Second Memory Means”(E,F）
・Wording of the claim：
・The claim language distinguishes two memory media, each storing
different type of data.

・Detailed description in the specification：・All that are described are two different memory media, i.e. CD-ROM(“first memory means”) and RAM ( “second memory means” ) [0009]
・“By storing ・・・ facility data in a CD-ROM, which is an inexpensive memory
medium, and storing user position data in rewritable RAM, improved
convenience and cost reduction can both be [0015]
・No disclosure other than the above descriptions➡“second memory means" refers to a memory medium distinguishedfrom the memory medium as “first memory means“.
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４．Comparison
D method is not within the scope of the claim（１）“method for controlling a car navigation system”（A）？➡No・D’s car navigation system is characterized in that the data istransmitted by wireless network transmission between the user
terminal and the remote server.

・ D’s system, unlike the system disclosed in the specification, is not asingle equipment which can be installed in a vehicle. As such, D
method differs technically from the control method of the Invention.

（２）“first memory means” （B,D）？➡No・D server (a remote server) is not a portable storage means (such asCD-ROM) in a single equipment, which can be installed in a vehicle.

（３）“second memory means”（E,F）？➡No・Two distinct memory media do not exist. D memo data and D spot
data are both stored in a single server.

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SCENE 1 THE 2ND DATE FOR ORAL ARGUMENT –EXPLANATORY SESSION–Q&A Session
 Why did P submit the Written Opinion?
 Why does the specification disclose two separate storage
media in the embodiment?
 What was the state of art in storage media at the time offiling?

 What are the differences between D system and a systemwith all components installed as a whole in a vehicle?
 What was the common general technical knowledge for thestructure of a car navigation system at the time of filing?
 Why does the specification have not described a systemthat connects a terminal and a server by network?

Does the D method have the effect of the Invention?
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SCENE 2 THE 3RD DATE FOR ORAL ARGUMENT

Final Step of the Phase for Examination on Infringement

The court discloses its preliminary view on infringement
and attempts to arrange a settlement.

The court terminates the attempt of settlement, andproceeds the case to the 2nd Phase (examination ondamages).

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