PatentDate

April 25, 2024

RightCase

2021 (Ne) 10086

Court

Intellectual Property High
Court, First Division

number- A case of seeking an injunction against the manufacture, etc. of the Appellee's
Product based on the patent right related to the patent for an invention titled "Lampand lighting device," in which the court found concerning the configuration specified
by parameters related to the patent right, that the parameters related to theconfiguration of the Appellee's Product are included in the working form that ischanged within the scope where they do not lose the identicalness with the invention
embodied in the Appellee's Product, which is a product produced by working apatented invention, related to the prior use right, and the court found theestablishment of the prior use right.
Case type: Injunction
Result: Appeal dismissed
Reference: Article 79 of the Patent Act (Related to Patent Right 1)
Related rights, etc.: Patent No. 5658831 (Patent Right 1), Patent No. 5584841 (PatentRight 2), Patent No. 5453503 (Patent Right 3), Patent No. 5492344 (Patent Right 4),
Patent No. 5975400 (Patent Right 5), Patent No. 5498618 (Patent Right 6), and Patent
No. 5486727 (Patent Right 7)
Judgment in prior instance: Osaka District Court, 2017 (Wa) 1390
Summary of the Judgment
1. In this case, Appellant 1 (first-instance plaintiff/Appellant) who has the patent right
related to the patent (Patent 1) for an invention titled "Lamps and lighting device"(Patent Right 1) and the patent right related to the patent for an invention titled"Lightingequipment"(PatentRight5),andAppellant2(first-instanceplaintiff/Appellant) who has the patent right related to the patent for an invention titled"Illumination light source and lighting device" (Patent Right 2), the patent right related
to the patent for an invention titled "Light source unit and lighting equipment" (PatentRight 3), the patent right related to the patent for an invention titled "Light source unit
and lighting equipment" (Patent Right 4), the patent right related to the patent for aninvention titled "Lighting equipment" (Patent Right 6), and the patent right related tothe patent for an invention titled "Light source unit and lighting equipment" (PatentRight 7), made the following requests against the Appellee (first-instancedefendant/Appellee) on the grounds that the products (Appellee's products; Appellee's1

products are divided into Appellee's Product 1 through Appellee's Product 16) related
to manufacture and sale by the Appellee.
In short, Appellant 1 requested an injunction against the manufacture, etc. ofAppellee's Products 1 through 5 and 7 through 16 and compensation for damages basedon Patent Right 1 and an injunction against the manufacture, etc. of Appellee's Product6 and compensation for damages based on Patent Right 5. Appellant 2 requested aninjunction against the manufacture, etc. of Appellee's Products 4 and 5 andcompensation for damages based on Patent Right 2 and an injunction against themanufacture, etc. of Appellee's Product 6 and compensation for damages based on
Patent Rights 3, 4, 6, and 7 respectively.
The judgment in prior instance dismissed all requests of the Appellants as follows:
concerning the request based on Patent Right 1, the court of prior instance determinedthat the invention related to Claim 1 after the correction that is relat ed to the argument
in counterdefense for the correction against the Appellee's invalidity defense does not
fulfill the constituent features and found the establishment of the invalidity defense on
the grounds of the lack of novelty based on the publicly worked invention of Claim 20
after the correction; concerning Claims 1, 3, 14, 16, and 17 and Claims 17 and 18 after
the correction, the court of prior instance found the establishment of prior use defense;
concerning the request based on Patent Right 2, the court of prior instance found theestablishment of the invalidity defense on the grounds of the lack of novelty based on
the publicly worked invention; concerning the request based on Patent Right 3, the courtof prior instance found the establishment of the invalidity defense on the grounds of thelack of novelty based on the publicly worked invention; concerning the request basedon Patent Right 4, the court of prior instance found the establishment of the invalidity
defense on the grounds of the lack of novelty based on the publicly worked invention;
concerning the request based on Patent Right 5, the court of prior instance determinedthat it does not satisfy the invention related to Claim 1; concerning the request basedon Patent Right 6, the court of prior instance found the establishment of the invalidity
defense on the grounds of the lack of novelty based on the publicly worked invention;and concerning the request based on Patent Right 7, the court of prior instance foundthe establishment of the invalidity defense on the grounds of the lack of novelty basedon the publicly worked invention respectively. Dissatisfied with the judgment in priorinstance, the Appellants filed this appeal.
2. In this judgment, the court rendered almost the same decision as the aforementioned
judgment in prior instance; however, concerning establishment of the prior use defense(Issue 10), which is a major issue related to the request based on Patent Right 1, the2court explained as follows, also in light of the arguments, etc. of the parties in thesecond instance, and determined that the manufacture and sale of Appellee's Products
1 through 5 and 7 through 16 by the Appellee are included in the scope covered by theAppellee's non-exclusive license.
(1) Inventions 1 (Claims 1, 3, 14, 16, and 17 of Patent 1)
A. Inventions 1 are related to a linear LED lamp using light emitting diodes (LED) anda lighting device equipped with the same. There was a problem that the area with highlight emission luminance (the part where LEDs are provided) and the area with low
light emission luminance (the part where LEDs are not provided) appear repeatedly
along the LED alignment direction, which causes difference in the luminance of LED
lights that transmit through the housing, and this gives a pebbly impression in the lightto users. Concerning this problem, (1) the definition of the pebbly impression wasambiguous and was not quantified, and it was very difficult to feed back this problem
in the lamp design; and (2) concerning the lamp structure that affects the pebbly
impression, the interval of light source devices, materials of housing (tube), distancefrom the light source device to the housing, and other elements are varied, which meansthat while there are very many parameters that may affect the pebbly impression, it wasextremely difficult to reduce the luminous flux to the minimum necessary and to control
the pebbly impression. Inventions 1 constitute a lamp comprised of an elongatedhousing having a light diffusion unit and multiple light emission devices aligned in theaforementioned housing along with its elongated direction; wherein if the half-width ofluminance distribution, which is obtained when the lights of the aforementioned
multiple light emission devices transmit at the outermost of the lamp, is set to y (mm)and the interval of the light emission center of the neighboring light emission devices
is set to x (mm), y and x fulfill the pre-determined relationship, and which has
successfully found a uniform area where the reduction in luminous flux is minimized
and the pebbly impression can be reduced effectively, and quantified th at area; andwherein the relevant value fulfills the relationship of y ≥ 1.09x.
B. Inventions 1 are inventions related to a "lamp" or "lighting device," and inventionsof a "product." In Inventions 1 that are inventions of a "product," the range of possible
values of α in a parameter related to this case, which consists of the approximation
formula y = αx, is specified.
According to the Description, it is expected that approximately 85% to 90% of theuniformity ratio of illumination is obtained in the numerical range of 1.09 ≤ y/x ≤ 1.21;
approximately 90% to 95% of the uniformity ratio of illumination is obtained in t henumerical range of 1.21 ≤ y/x ≤ 1.49; and approximately 95% of the uniformity ratio of
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illumination is obtained in the numerical range of 1.49 ≤ y/x. The target value of each
uniformity ratio of illumination does not have critical significance, such as opticaleffects related to "pebbly impression" drastically change below and above the target
value. It is understood to be sufficient if the target uniformity ratio of illumination is
expected to be almost obtained by using the parameters in question (the "Parameters").
(2) Scope of prior use right
A. A person that, without knowing the details of the invention described in a patentapplication personally makes an identical invention or that learns of such an invention
from a person that, without knowing the details of the invention described in a patentapplication, personally makes an identical invention; and that is engaging or preparing
to engage in business that involves the working of the invention in Japan at the time
when the patent application is filed, has a non-exclusive license under the patent right
relating to the patent application, but only within the extent of the invention that theperson is working or preparing to work and within the purview of the business purpose(Article 79 of the Patent Act).
As mentioned above, the prior use right holder is stipulated to have a non-exclusive
license under the patent right "within the extent of the invention that the person isworking or preparing to work and within the purview of the business purpose. " Thephrase "within the extent of the invention that the person is working or preparing towork and within the purview of the business purpose" as used here refers not only to
the working form that the prior use right holder was actually working or preparing whena patent application for the patented invention is filed (the date of the priority claim),
but also to the scope of the technical idea embodied therein, that is, the scope of theinvention. Therefore, it is reasonable to construe that the prior use right affects not only
the working form that the prior use right holder was actually working or preparing whena patent application is filed (the date of the priority claim), but also the working form
that is changed to the extent that the invention does not lose the identicalness with theembodied invention (see 1986 (O) 454, judgment of the Second Petty Bench of theSupreme Court of October 3, 1986; Minshu Vol. 40, No. 6, at 1068).
The purport of the prior use right system is mainly to treat a patentee and a prioruse right holder fairly. If it never allows a prior use right holder to change to anythingother than the working form that the prior use right holder was actually working or
preparing when a patent application is filed (the date of the priority claim), it is roughon the prior use right holder and is not reasonable, and it is considered to meet thecontext of said Article to approve the prior use right within the scope of an invention
that the prior use right holder has controlled as its own patent (see the aforementioned4

judgment of the Supreme Court). Based on the above, when finding the invention thatis embodied in the working form in this case, it is reasonable to make a decision while
taking into account not only the concrete content of technologies of the invention, butalso the concrete process to conceive of the invention, and also taking into account thetechnology level and common general technical knowledge in the relevant technology
field at the time of the patent application (as of the date of priority claim) of the Patented
Invention.
B. Invention that is embodied in Appellee's Product 403W, which is a product produced
by working a patented invention related to the prior use right(A) The y/x value of Appellee's Product 403W is found to be approximately 1.27 to
1.40.
(B) In addition, Product 403W constitutes a series with Product 402W that had been
publicly known to be worked before Priority Date 1 (April 25, 2012), and therefore, it
is a product publicly known to be worked that has an extremely high relationship with
Appellee's Product 402W. The y/x value of Product 402W delivered to one clientcompany is approximately 1.7. The y/x value of other Products 402W is found to behigher. In consideration of the above, it can be said that the scope of the part where they/x value, which is an invention embodied in Product 403W, is over 1.4 to 1.7 orexceeds 1.7 is the scope that the Appellee had embodied by appropriately adjusting thex value and that the Appellee had controlled as its own invention.
(C) Furthermore, reducing the pebbly impression of LED lights, which is a problem ofInvention 1, is a problem of LED lights that had been known by persons ordinarily
skilled in the art before the Date of Priority Claim. It can be said that persons ordinarily
skilled in the art have been manufacturing lighting equipment without pebbly
impression through trial and error concerning the aforementioned problem instead ofusing the Parameters. According to the aforementioned technical conditions, when amathematical formula is used in the matters specifying the invention of a "product," aproduct that has been worked or prepared for working before an application is filed(date of the priority claim) may be included in the technical scope that is determined bya mathematical formula identified by another invention for which an application wasfiled and that was patented subsequently. Therefore, establishment of the prior use rightshould not be denied just because the Appellee did not recognize the Parameters.
Looking at the technology level, common general technical knowledge, and othermatters at the time of Priority Date 1, the following facts are found: it was a well-known
art that the pebbly impression can be handled if the uniformity ratio of illumination
exceeds approximately 85%; a non-party company's product in which the y/x value is5

approximately 1.208 to 1.278 was publicly known to be worked before Priority Date 1;
and Product 403W is designed to reduce the number of LEDs by comparing with
Product 402W. Then, the following is considered to be an extension of the process toreach the design of Product 403W from Product 402W; increasing the x value of Product403W more than that of Product 402W within the extent that the pebbly impression canbe reduced, which is the same problem as Invention 1, thereby reducing the y/x value
approximately to 1.1 where the uniformity ratio of illumination becomes 85%. Basedon the above, designing a product that fulfills the y/x value as being from 1.27 to 1.1
should be considered to be a working form wherein a change was made within the scope
where the identicalness with the invention embodied by Product 403W is not lost.
(D) Conclusion
As mentioned above, the range the same as the y/x value that is embodied inAppellee's Product 403W is found to be from 1.27 to 1.40. The scope where theidenticalness with the invention that is embodied in Appellee's Invention 403W is not
lost is found to be the numerical range of 1.1 to 1.7 or exceeding 1.7. Therefore, thenumerical range of 1.1 to 1.7 or exceeding 1.7 is found to be the scope that Y, who isthe prior use right holder, controlled as its own invention.

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