Mock Case for JSIP 2021 (English)

International Judicial Symposium on Intellectual Property 2021
Case for Mock Trial; IP High Court of JapanI.

Mock Trial CaseOn April 16, 2006, Pony Corporation (“Pony”) filed a patent application for an invention
with the title of “Position detector” (the “Present Invention”), and on January 26, 2008, theestablishment of a patent right for the Present Invention was registered (the “Plaintiff’s Patent
Right”; the patent which Plaintiff’s Patent Right is based on is referred to as the “Present
Patent”).
On April 1, 2020, Donkey Corporation (“Donkey”) started manufacturing and selling
position detectors with the product name “D-Pointer” (the “Defendant’s Position Detector(s)”)
and replaceable styluses (model “ST-10”; the “Defendant’s Stylus(es)”) compatible with certain
models of position detectors.
On May 1, 2020, Pony sent Donkey a demand letter (the “Demand Letter”) notifying that
Pony is the patentee of the Present Patent, describing the invention claimed in Claim 1 in the
Scope of claims of the Present Patent (the “Present Invention”), claiming that the Defendant’sPosition Detector with the Defendant’s Stylus attached falls within the technical scope of the
Present Invention and that the manufacture and sale of the Defendant’s Position Detectors andof the Defendant’s Styluses respectively constitute an infringement of the Plaintiff’s Patent
Right, and demanding the cessation of manufacture and sale of the Defendant’s Position
Detectors and the Defendant’s Styluses.
In response, Donkey sent a written counterargument to Pony stating that neither
manufacture and sale of the Defendant’s Position Detectors nor those of the Defendant’s
Styluses by Donkey constitute an infringement of the Plaintiff’s Patent Right.
On August 17, 2020, Pony filed a patent infringement lawsuit against Donkey (defendant)
seeking an injunction against the manufacture and sale of the Defendant’s Position Detectors
and Defendant’s Styluses on the grounds of infringement of the Plaintiff’s Patent Right.

II.

Scope of Claims[Claim 1]
A position detector comprising:a micro-movable stylus held in a predetermined stable position in anelectrically insulated state; anda main body including a contact detection circuit connected to the stylus,
wherein contact between the stylus and a workpiece is electrically“Feature A”

detected as a result of formation of a closed circuit including the contact
detection circuit via the workpiece when a contacting portion of the stylus
contacts the workpiece, andwherein the contacting portion of the stylus is made of a non-magnetic
material containing tungsten carbide and a nickel binder.
1“Feature B”

Mock Case for JSIP 2021 (English)

III. Background Art (partly hypothetical)
1.

Machining center
A machining center is a machine tool that has an automatic tool changer enabling
automatic change of tools and is equipped with a numerical controller. With a numericalcontrol program, it can continuously perform various machining such as milling, boring,
drilling, and thread cutting, by taking out the necessary tools from the tool magazine where
various kinds of tools are stored, setting them on the main shaft of the machining center,and automatically replacing the tools.

多種類の工具がA toolmagazine storing
various格納された
types of tools is
ツールマガジンを収容
accommodated

Display
ディスプレイOperation
操作盤
panel
Tools
can be
工具を
automatically
自動で交換changed

Pallet
パレット
2.

Tool
工具

Main
主軸 shaft

Position detector
A device attached to the main shaft of a machining center and used to set theworkpiece origin (the coordinates) and determine the machining position by contacting aworkpiece before machining. It is also used for other purposes including measuring
dimensions of a workpiece after machining with an accuracy on the order of micrometers.
It is useful for realizing high-precision machining and preventing machining defects.

2

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Position
detector

StylusWorkpiece

Setting a corner of a workpiece as theworkpiece origin using a position detector toindicate the positions of the tool, workpieceand other objects in coordinate values

Creating a machining program that defines
necessary matters like the movement path ofthe cutting tool using the coordinate values
based on the workpiece origin

Measuring whether the product after
machining has the shape and dimensions as
set in the machining program by using theposition detector

Workpiece origin

3.

StylusA contact body attached to the main body of the position detector; also called a probe.
It is composed of a rod and a contacting portion. The contacting portion attached to the tipof the rod repeatedly contacts workpieces. Therefore, a material harder than the material of
the rod, such as cemented carbide or ruby, is often used for the contacting portion.

4.

Measuring methods of the position detector(1) “Energized type” position detector
When the contacting portion of the stylus contacts the workpiece subject to position
measurement, a closed circuit is formed and current flows. The position of the workpieceis measured by detecting the current directly or via electromagnetic induction. This type of
position detector cannot be used to measure the position of non-conductive workpieces. It
is also called the external contact type.

3

Mock Case for JSIP 2021 (English)Thestylus contacts the workpiece
スタイラスがワークに接触↓↓
A closed circuit is formed
閉回路を形成↓↓ on as current
The LED comes
電流が流れて，ＬＥＤが点灯
flows

Main
本体
body

Contact detection
circuit
接触検出回路

LED

Main
本体
body

Focusing on the main body of
位置検出器の本体を中心に
the position detector in a block
ブロック図で示すとdiagram

工作機械
Resistance
本体のinthe machine抵抗tool main
body

電池
Battery
Current
flow
電流の流れ

電流の流れ
Current flow

Stylusスタイラス(* Must be an electrically conductive material)（＊電気を通す材質であることが必要）

ワーク
Workpiece（＊鉄，アルミなどの電気を通す材質に限られる）(* Limited
to an electrically conductive material such as iron, aluminum)(2) “Internal contact type” position detector
When the contacting portion of the stylus, which is energized, contacts a workpiece,
the rod tilts and the energizing contact provided inside the position detector comes off andthe current is cut off. By detecting the point where the current is cut off, the position ismeasured. This type of position detector can also measure the position of a non-electricallyconductive workpiece because the stylus and the workpiece need not be energized when
the contacting portion of the stylus contacts the workpiece. On the other hand, because thestylus needs to be tilted until the energizing contact is disconnected, the exact moment
when the contacting portion of the stylus contacts the workpiece cannot be detected.

4

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マシニングセンタのControlunit of themachining制御装置
centerMain body

本体

Infraredreceiver赤外線受信部
Infraredtransmitter
赤外線発信部

Contact
接点

接点
Contact
導電性支持体Conductive
supportWorkpiece
ワーク

スタイラス
StylusControlunit of the
マシニングセンタのmachining
center
制御装置

Main
本体 body

赤外線受信部

Infrared receiver

赤外線
発信部

Infrared transmitter

Contact
接点

接点
Contact
Conductive
support
導電性支持体スタイラスがワークに接触して傾斜
The stylus contacts the workpiece and tilts↓↓
A contact
comes off the conductive support and接点が導電性支持体から外れて
the current is cut off.
通電が遮断
↓
↓
Transmission from the infraredtransmitter to the
赤外線発信部から制御装置へ伝達
control unit↓↓
Detectingthe position where the current is cut off
通電が遮断される位置を検出

Stylusスタイラス(* An electrically non-conductive material（＊電気を通さない材質でもよい）
may be used)

Workpiece(* An electrically non-conductive material may be
ワーク（＊電気を通さない材質でもよい）
detected)(3) Mechanism of position detectors
In both measuring methods of the energized type and the internal contact type, thedetection of the workpiece position is informed to the operator by such means as LED
5

Mock Case for JSIP 2021 (English)

lighting or transmission to the machine tool by infrared rays when the contacting portionof the stylus contacts the workpiece.
In the energized type, both the rod and the contacting portion must be made ofelectrically conductive material.
In both measuring methods of the energized type and the internal contact type, ameasurement error occurs when a workpiece made of a magnetic material is measured byusing a magnetized stylus because it is pulled toward the workpiece as shown in the figure.

Stylusワークが磁性体であると，
If a workpieceis made of a magnetic material,
the magnetizedstylus will be pulled toward the
磁化されたスタイラスは
workpiece
andameasurement error will occur.
寄せつけられて測定誤差が生じる

スタイラス

5.

Workpiece
ワーク

Tungsten carbide, cemented carbide
Tungsten carbide (WC) is a conductive compound composed of tungsten atoms (W)and carbon atoms (C), characterized by high rigidity and hardness.
Cemented carbide is a composite material obtained by sintering hard metal carbide
with iron-based metal. One of the typical cemented carbides is a WC-Co alloy obtained bysintering tungsten carbide and cobalt (Co) as the bonding phase, which has excellent
mechanical properties. A WC-Ni alloy is produced by sintering tungsten carbide and nickel(Ni) as the bonding phase; a WC-Ni alloy has the properties that it becomes nonferromagnetic when the solid solution amount of W exceeds a certain level and it has
improved corrosion resistance.

6.

Non-magnetic material
Substances are roughly classified as follows according to magnetic properties:
Ferromagnetic material - A substance that strongly magnetizes in the same
direction as the magnetic field that is applied from outside, and retains a strong
magnetism even when the magnetic field from the outside becomes zero),Paramagnetic material - A substance that weakly magnetizes in the same direction
as the magnetic field that is applied from outside, and loses magnetism when themagnetic field from the outside becomes zero, andDiamagnetic material - A substance that magnetizes extremely weakly in the
direction opposite to the strong magnetic field that is applied from outside, andloses magnetism when the magnetic field from the outside becomes zero.
6

Mock Case for JSIP 2021 (English)

When simply calling a substance a “magnetic material,” it generally refers to a“ferromagnetic material,” and a “non-magnetic material” refers to a substance that is not a“ferromagnetic material.”
IV. Specification of the Present Patent[Detailed description of the invention][Technical field][0001]The present invention relates to a position detector that detects the relative position
between a tool of a machine tool and a workpiece by contact with the workpiece.
[Background art]
[0002]
A known device attached to a machine tool for detecting the position of a workpiece is aposition detector that comprises a main body attached to the tool holder of a machine tool and astylus (a contact body) attached to the main body, so that the position of a workpiece may be
detected by bringing the stylus into contact with the workpiece. In this type of position detector,
the stylus is attached to a predetermined position of the main body in a micro-movable state andincludes a rod, to the tip of which a contacting portion is attached. This composition allows
replacement of a whole stylus when the contacting portion of the stylus is worn or damaged.
[0003]As a measuring method of this type of position detector, the internal contact type has been
used, which detects the position of a workpiece by the cut-off of current flow when thecontacting portion of the stylus contacts the workpiece and the tilting of the rod makes theenergizing contact portion provided inside the position detector come off.
[0004]
Another known measuring method is the energized type (external contact type) as shownin FIG. 2. In the energized type position detector shown in FIG. 2, a battery 3 is housed in aplastic case 2 housed in a main body 1, the anode of an LED 4 is connected to the cathode of
the battery 3, and the cathode of the LED 4 is connected to the main body 1. Inside the main
body 1, a disk-shaped base 6 is mounted to the main body 1, electrically insulated by an
insulator 7 and pressed against a support member 9 by a spring 8. The center hole of the base 6of the main body 1 is threaded, and the base end of the rod of a stylus 5 is attached to the center
hole. The portion of the support member 9 embedded in the main body 1 is threaded so that theposition of the stylus 5 in relation to the main body 1 can be finely adjusted. The base 6 of themain body 1 is connected to the anode of the battery 3 by the lead wire 11. When the main body
1 of this energized type position detector is attached to the tool holder 12 of the machine tooland then the stylus 5 contacts the workpiece 13, a closed circuit passing through the machine
tool is formed, so that the LED 4 is turned on and the position of the workpiece 13 is detected.
[0005]For both the internal contact type and the energized type, a stylus used for a position
detector is required to be inexpensive and to have desired hardness and abrasion resistance7

Mock Case for JSIP 2021 (English)

among other properties. Therefore, bearing steel is often used because it has good hardenability
and demonstrates excellent mechanical properties by hardening and tempering.
[0006][Problem to be solved by the invention]
In detecting the position of a magnetic workpiece by using the position detector as
described above, even slight magnetization of the stylus causes a measurement error because
the stylus in the shape of an elongated needle slightly tilts by magnetic force when it is brought
toward the side of the workpiece.
In addition, as to the energized type position detector, a stylus may gradually bemagnetized as energized and non-energized states are alternately repeated by opening andclosing of the closed circuit, which causes a measurement error described above.
[0007]The measurement error caused by such magnetic influence can be solved by making astylus of a non-magnetic metal material such as austenitic stainless steel or duralumin.
However, because non-magnetic metal materials generally have low hardness, wear anddeformation from repeated contact with workpieces cause a measurement error.
[0008]The present invention solves the problem of providing a position detector enabling
accurate position detection, equipped with a stylus which is durable and non-magnetic not tocause a measurement error.
[Means for solving the problem][0009]For the purpose of solving the above problem, a position detector according to the present
invention comprises: a micro-movable stylus held in a predetermined stable position in anelectrically insulated state; and a main body including a contact detection circuit connected tothe stylus. By the position detector according to the present invention, contact between thestylus and a workpiece is electrically detected as a result of formation of a closed circuit
including the contact detection circuit via the workpiece when a contacting portion of the stylus
contacts the workpiece and the contacting portion of the stylus is made of a non-magnetic
material containing tungsten carbide and nickel binder.
[Effect of the invention][0010]The present invention, with the contacting portion of the stylus made of a non-magnetic
material, prevents the stylus from tilting due to the magnetic force of a magnetic workpiece andprevents the stylus from being magnetized by opening and closing of the contact detection
circuit. The present invention uses a non-magnetic material containing tungsten carbide and anickel binder for the contacting portion of the stylus, which provides high hardness to thecontacting portion to prevent deterioration of position detection accuracy due to wear or
deformation of the contacting portion.
As described above, the present invention is equipped with a non-magnetic stylus that isdurable and does not cause a measurement error, making accurate position detection possible.
8

Mock Case for JSIP 2021 (English)[Brief description of the drawings][0011]
FIG. 1 is a perspective view showing a stylus according to an embodiment of the present
invention; andFIG. 2 is a side view of a position detector according to an embodiment of the present
invention showing the method to detect the position using the position detector.
[Description of embodiments][0012]
FIG. 1 and FIG. 2 are diagrams showing an embodiment of the present invention. FIG. 2
shows the overall structure of the position detector. A movable stylus 5 is mounted on a main
body 1 in an electrically insulated state and held in a predetermined stable position. The stylus 5
is connected to contact detection circuits 3 and 4. When a contacting portion of the stylus 5
contacts a workpiece 13, a closed circuit including the workpiece 13 and the contact detection
circuits 3 and 4 is formed and current flows, by which the relative position of the workpiece 13
to a tool holder 12 is detected.
The stylus 5 shown in FIG. 1 includes a spherical contacting portion 16 and a rod 17. The
rod 17 is manufactured by cutting beryllium copper into a predetermined size and agehardening it at a temperature of about 350 degrees Celsius. The contacting portion 16 is madeby adding 4-16% nickel as a binder to fine tungsten carbide powder, melting the nickel at hightemperature to mix the tungsten carbide and nickel, sintering the mixture into a sphere in amold, polishing the peripheral surface of the sphere into an almost a perfect circle, and welding
an external thread 18 of stainless steel SUS304 by electric resistance welding to one position on
the peripheral surface. Most preferably, the amount of nickel added as a binder is 6%.
[0013]SUS304 is basically non-magnetic but magnetizes during machining. Therefore, it isrestored to a non-magnetic state by applying solution heat treatment after machining. The
external thread 18 may be bonded to the rod 17 with an adhesive such as an epoxy adhesive
instead of electric resistance welding including spot welding. When bonding by an adhesive, ahole may be provided by electric discharge machining on the peripheral surface of the sphericalcontacting portion 16, and the external thread 18 may be fitted in the hole for bonding. The
contacting portion 16 is fixed to the end of the rod 17 by fitting the external thread 18 into theinternal thread hole provided at the end of the rod 17.
[0014]The rod 17 has a larger diameter at the base end, and by fitting an external thread 19
provided at the base end into an internal thread of a central hole provided at a base 6 of themain body 1, the stylus 5 is attached to the main body 1 in an electrically insulated state by
insulators 7. In addition, the stylus 5 is energized and held by the spring 8 in a movable andneutral position relative to the main body 1.
Examples of the material of the rod 17 include the above-mentioned beryllium copper,
austenitic stainless steel, duralumin, and the like. The entire rod 17 may also be made of nonmagnetized SUS304 or the like. A material obtained by age hardening beryllium copper has
9

Mock Case for JSIP 2021 (English)

high mechanical strength and is not easily deformed.
[0015]
Since the contacting portion 16 of the stylus 5 has a structure in which the external thread
18 is fitted into the internal thread hole provided at the end of the rod 17, it is replaceable andcan be supplied separately. Similarly, since the rod 17 also has a structure in which the external
thread 19 provided at the base end of the rod 17 is fitted into the internal thread of the central
hole provided at the base 6 of the main body 1, it is replaceable and can be supplied separately.
[0016]The position detector according to the present embodiment, with the stylus 5 made of a
non-magnetic material, prevents the stylus from tilting due to the magnetic force of theworkpiece 13, and prevents the stylus from being magnetized by opening and closing of thecontact detection circuits 3 and 4. In addition, a non-magnetic material containing tungsten
carbide and a nickel binder used in the contacting portion 16 of the stylus 5 provides highhardness to the contacting portion to prevent deterioration of position detection accuracy due towear or deformation of the contacting portion.
[0017]The position detector according to the present embodiment prevents even a stylus with anelongated rod from tilting by magnetic force. While elongated rods are susceptible to bending
deformation by external force, by using a hard material obtained by age hardening beryllium
copper as a material for a rod, deterioration of measurement accuracy due to bending
deformation of the rod can be prevented. By making the contacting portion spherical, accurate
position can be detected from all directions.
[Explanations of letters or numerals]
1

Main body2

Plastic case

3

Battery

4LED

5Stylus6

Base7

Insulator

8

Spring9

Support member

11

Lead wire

12

Tool holder

13

Workpiece17Rod18, 19 External threads

16 Contacting portion

10

Mock Case for JSIP 2021 (English)[FIG. 1]

[FIG. 2]
16

12

18

3
5

8
6

2
4

1
17

11
7
9

5

7
9

13
19

V.

Defendant’s Position Detector and Defendant’s Stylus
1.

Structure of Defendant’s Position Detector and explanatory diagram
D-Pointer (Model D-10)

Main
body

[Block Diagram]Contact detection circuit
LED

Battery

Main
bodyBattery

Resistance in themachine tool mainbody

Workpiece

StylusContacting portion

Spring

LED

SupportStainless steel ball

Cover

Insulating
portionContact detection circuit

Schematic diagram of“three columnar support”
in “Feature a”

Base
StylusContacting portion

The Defendant’s Position Detector is an “energized type” that measures the position
11

Mock Case for JSIP 2021 (English)of a workpiece by detecting current flow that occurs when a closed circuit is formed by thecontact of the contacting portion of the contact body with a workpiece or any other object
to be measured.
The Defendant’s Position Detector is equipped with an SUS (stainless steel) stylus as
the standard equipment (the “Standard Stylus”). The Standard Stylus can be replaced witha replacement part, the stylus model ST-10 (the Defendant’s Stylus), and the contacting
portion of the Defendant’s Stylus is made of a “non-magnetic material A” containing
tungsten carbide and a nickel binder.
Hereinafter, the Defendant’s Position Detector with the Standard Stylus attached will
be referred to as the “Defendant’s Position Detector in Form α” and the Defendant’sPosition Detector with the Defendant’s Stylus attached will be referred to as the“Defendant’s Position Detector in Form β.”

The Standard Stylus can be replaced
本件スタイラスに交換
with the Defendant’s Stylus.

[Form α]
【Ａ形態】
D-Pointer (D-10)
Ｄポインタ（Ｄ－１０）+「標準のスタイラス」+ Standard Stylus[Defendant’s
Stylus]【本件スタイラス】「ＳＴ－１０」ST-10

12[Form β]【Ｂ形態】
D-Pointer (D-10)
Ｄポインタ（Ｄ－１０）+「ＳＴ－１０」+ ST-10

Mock Case for JSIP 2021 (English)

2.

Structure of the Defendant’s Position Detector in Form β
A position detector comprising:a stylus held in a predetermined stable position in an electricallyinsulated state, wherein three columnar supports are fixed to a micromovable base via an insulating portion and extend from the center of thebase at an angle of three divisions in the circumferential direction, andthe three supports are pressed by a spring and placed between a set oftwo steel balls respectively, and the three supports are mounted to thebase between the line from a cathode of a built-in battery via a contact
detection circuit and the spring and the line from the anode of the battery
via the main body, the steel balls and the supports; and“Feature a”

the contact detection circuit including an LED electrically connectedto the stylus,
wherein contact between the stylus and a workpiece is electricallydetected by the contact detection circuit as a result of formation of aclosed line including the stylus, the workpiece, the resistance in themachine tool main body and the contact detection circuit when the sphereat the tip of the stylus contacts the workpiece; andwherein the contacting portion of the stylus is made of a nonmagnetic material containing tungsten carbide and a nickel binder.

“Feature b”

VI Fulfillment of the elements of the Present Invention
The Defendant’s Position Detector in Form α fulfills “Feature A” of the Present Invention,
but does not fulfill “Feature B”.
The Defendant’s Position Detector in Form β fulfills “Feature A” and “Feature B” of the
Present Invention.
VII Gist of Pony’s (the plaintiff’s) allegations
1.

Infringement (indirect infringement) of the Plaintiff’s Patent Right by manufacturing andselling the Defendant’s Styluses
The manufacture and sale of the Defendant’s Styluses by the defendant constitute indirect
infringement of the Plaintiff’s Patent Right (items (i) and (ii), Article 101 of the Patent
Act) as follows.

(1)

The Defendant’s Position Detector in Form β fulfills all the elements of the Present
Invention and falls within its technical scope. If a user who possesses a Defendant’sPosition Detector attaches a Defendant’s Stylus to the Defendant’s Position Detector, suchan act by the user should be considered as “the producing of the said product” regarding
the Defendant’s Position Detector in Form β that falls within the technical scope of the
Present Invention which is an invention of a product.

(2)

The Present Invention concerns using the contacting portion at the tip of the stylus
made of a non-magnetic cemented carbide to solve the problem of measurement error in a13

Mock Case for JSIP 2021 (English)

position detector that adopts the energized type measuring method, arising from the stylus
becoming magnetic, which causes the workpiece and the stylus to attract each otherthrough magnetic force. Since the need for the stylus to be a non-magnetic cemented
carbide arises only when the energized type measurement method is adopted, theDefendant’s Stylus is only supposed to be attached to the Defendant’s Position Detector,
which is an energized type position detector. Although the Defendant’s Stylus can be
attached to the internal contact type position detector, it does not have the problem of thestylus becoming magnetic due to energization. Therefore, attaching the Defendant’s Stylus
as a stylus to the internal contact type position detector is not an economical, commercial
or practical application of the Defendant’s Stylus.
Therefore, since the Defendant’s Stylus falls under an “product to be used exclusively
for the producing of the said product” pertaining to the Defendant’s Position Detector inForm β, the manufacture and sale of the Defendant’s Styluses by the defendant constituteindirect infringement of the Plaintiff’s Patent Right (item (i), Article 101 of the PatentAct).
(3)(a)

Even if the Defendant’s Stylus does not fall under a “product to be used
exclusively for the producing of” the Defendant’s Position Detector in Form β, theDefendant’s Stylus falls under a “product … to be used for the producing of” theDefendant’s Position Detector in Form β.
In addition, the Defendant’s Stylus is not a standard product or popular product,and its use is limited to attachment to the position detector manufactured by the
defendant, so it cannot be said to be a product “widely distributed within Japan.”(b)

The problem to be solved by the Present Invention is the prevention of
measurement error arising in a position detector that adopts the energized typemeasuring method in which the stylus becomes magnetic, causing the workpiece andthe stylus to attract each other through magnetic force, and measurement error due tothe wear and deformation of the stylus caused by repeated contact and separation
between the stylus and workpieces. As a means to solve this problem, the Present
Invention adopts a structure “made of a non-magnetic material containing tungsten
carbide and a nickel binder” in “Feature B”.
Therefore, the Defendant’s Stylus falls under the category of “indispensable forthe resolution of the problem” by the Present Invention since it can be said that the
Defendant’s Stylus, in which the contacting portion of the stylus is made of “nonmagnetic material A” containing tungsten carbide and a nickel binder, is acharacteristic component that directly brings about the unique structure characterizing
the characteristic technical means of the Present Invention newly disclosed in the
Present Invention.

(c)Since the Defendant’s Stylus is mainly used for the Defendant’s Position
Detector, it is highly probable that those who purchase the Defendant’s Stylus andwho are not exceptional will use the Defendant’s Stylus by attaching it to the
Defendant’s Position Detector. It should be noted that the defendant was
14

Mock Case for JSIP 2021 (English)

manufacturing and selling the Defendant’s Styluses while being aware of theexistence of the facts stated above by the time the Demand Letter was sent, at thelatest, and was aware that the Present Invention was a “patented invention” and the
Defendant’s Stylus was “used for the working of the invention.”(d)According to the above, the manufacture and sale of the Defendant’s Styluses by
the defendant constitute indirect infringement of the Plaintiff’s Patent Right (item (ii),
Article 101 of the Patent Act).

2.

Infringement (indirect infringement) of the Plaintiff’s Patent Right by manufacturing andselling the Defendant’s Position Detectors
As stated above, the act by a user possessing the Defendant’s Position Detector of
attaching the Defendant’s Stylus to the Defendant’s Position Detector falls under “theproducing of” the Defendant’s Position Detector in Form β that falls within the technicalscope of the Present Invention. Therefore, the Defendant’s Position Detector falls under a“product to be used … for the producing of the said product” pertaining to the Defendant’sPosition Detector in Form β.
In addition, to solve the problem by the Present Invention, it can be said that both
adopting the energized type measurement method of the position detector and making thestylus of a non-magnetic material are indispensable, so the Defendant’s Position Detector
is also an article that is “indispensable for the resolution of the problem” by the Present
Invention.
Furthermore, it should be noted that the defendant was manufacturing and selling the
Defendant’s Position Detectors while being aware that, by the time the Demand Letter wassent, at the latest, the Present Invention was a “patented invention” and the Defendant’sPosition Detectors were “used for the working of the invention.” Therefore, thedefendant’s manufacture and sale of the Defendant’s Position Detectors constitute indirect
infringement of the Plaintiff’s Patent Right (item (ii), Article 101 of the Patent Act).

3.

Necessity of injunction
The necessity for injunction against the manufacture and sale of the Defendant’s
Styluses and the Defendant’s Position Detectors is high given the fact that the defendant’s
manufacture and sale of them constitute indirect infringement of the Plaintiff’s Patent
Right and that the defendant has already been manufacturing and selling these products.

VIII Gist of Donkey’s (the defendant’s) arguments
1.

Regarding the allegation that the manufacture and sale of the Defendant’s Styluses infringe
the Plaintiff’s Patent Right (indirect infringement)(1)

The Defendant’s Stylus is compatible with the internal contact type position detector
manufactured by the defendant in addition to the Defendant’s Position Detector, and canbe used by attaching it to the position detector mentioned above. This point is also
explained in the catalog for the Defendant’s Stylus.
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Mock Case for JSIP 2021 (English)

In addition, since cemented carbide has excellent abrasion resistance and corrosion
resistance, there is a necessity to use a stylus made of cemented carbide even in theinternal contact type position detector because it has the advantage of preventing
measurement errors resulting from wear and deformation caused by repeated contact witha workpiece that is very hard. In fact, some of the defendant’s customers use the
Defendant’s Stylus attached to an internal contact type position detector.
Therefore, because the Defendant’s Stylus has an economical, commercial orpractical use application as a stylus for an internal contact type position detector, it does
not fall under a “product to be used exclusively for the producing of” the Defendant’sPosition Detector in Form β (item (i), Article 101 of the Patent Act).
(2)

A stylus is a tool with a tip that comes into contact with an object, and has been
widely used by attaching it to a position detector for the purpose of detecting the positionof an object. Like any other styluses, the Defendant’s Stylus is not different from theconventional ones in that it is a product that is attached to a position detector and has thefunction of contacting an object for position detection.
Therefore, it can be said that the Defendant’s Stylus is a standard product and a
popular product “widely distributed within Japan” (quotation from item (ii), Article 101 of
the Patent Act).

(3)

The defendant is selling the Defendant’s Position Detectors, with the SUS styluses(the Standard Styluses) attached as the standard equipment to the Defendant’s Position
Detectors. The Defendant’s Stylus can also be used by attaching it to an internal contact
type position detector, and in fact, there are cases where they are used by attaching them tointernal contact type position detectors. However, the defendant does not know exactly in
how many cases, or to what extent, the Defendant’s Styluses are attached to and used with
the Defendant’s Position Detectors.
Therefore, it cannot be said that the defendant manufactured and sold the Defendant’s
Styluses knowing that they were “used for the working of the invention.”(4)

Based on the above, the plaintiff’s allegation that the manufacture and sale of the
Defendant’s Styluses by the defendant constitute indirect infringement of the Plaintiff’s
Patent Right (items (i) and (ii), Article 101 of the Patent Act) is groundless.

2.

Regarding the allegation that the manufacture and sale of the Defendant’s Position
Detectors infringe the Plaintiff’s Patent Right (indirect infringement)(1)

The Present Invention solves the problem of the stylus being magnetized in theconventional energized type position detector by making the stylus of a non-magnetic
material, and the Defendant’s Stylus is the characteristic component that directly brings
about the unique structure that characterizes the characteristic technical means of the
Present Invention.
The defendant is selling the Defendant’s Position Detectors, with SUS styluses (theStandard Styluses) attached as the standard equipment to the Defendant’s Position
Detectors. As this fact shows, the Defendant’s Position Detectors do not prevent16

Mock Case for JSIP 2021 (English)measurement error caused due to the stylus wear, deformation, or magnetization caused byrepeated contact with and separation from workpieces and the like.
Moreover, energized type position detectors having the same structure as the
Defendant’s Position Detector existed before the filing of the Present Patent, and thestructure of the Defendant’s Position Detector was publicly known.
Therefore, the Defendant’s Position Detector is not an article “indispensable for the
resolution of the problem” by the Present Invention (item (ii), Article 101 of the Patent
Act).
(2)

Based on the above, the plaintiff’s allegation that the manufacture and sale of the
Defendant’s Position Detectors by the defendant constitute indirect infringement of thePlaintiff’s Patent Right (item (ii), Article 101 of the Patent Act) is groundless.

3.

Regarding the allegation of necessity of injunction
If the manufacture and sale of the Defendant’s Styluses were to be totally suspended,
the legal use of the Defendant’s Styluses attached to internal contact type position
detectors would also be restricted, which is not reasonable. Also, there is no reason to
restrict the manufacture and sale of the Defendant’s Position Detectors that merely have apublicly-known structure.
Therefore, there is no need for injunction because the plaintiff’s demand for
injunction against the manufacture and sale of the Defendant’s Styluses and the
Defendant’s Position Detectors is an excessive demand that obviously exceeds the scopenecessary “to stop or prevent such infringement” stipulated in paragraph 1, Article 100 of
the Patent Act.

IX Reference text of Japanese law(Right to seek injunction)
Article 100(1) A patentee or exclusive licensee may demand a person who infringes or is
likely to infringe the patent right or exclusive license to stop or prevent such
infringement.
(2) In making a demand under the preceding paragraph, the patentee or exclusive
licensee may demand measures necessary for the prevention of such infringement
including the disposal of products constituting such act of infringement (including,in the case of a patented invention of a process of producing products, products
produced by the act of infringement; the same shall apply in Article 102 (1)) andthe removal of facilities used for the act of infringement.
(Acts Deemed to constitute infringement)
Article 101 The following acts shall be deemed to constitute infringement of a patentright or an exclusive license:17

Mock Case for JSIP 2021 (English)(i) where a patent has been granted for an invention of a product, acts ofproducing, assigning, etc., importing or offering for assignment, etc. any product tobe used exclusively for the producing of the said product as a business;(ii) where a patent has been granted for an invention of a product, acts ofproducing, assigning, etc., importing or offering for assignment, etc. any product(excluding those widely distributed within Japan) to be used for the producing of
the said product and indispensable for the resolution of the problem by the said
invention as a business, knowing that the said invention is a patented invention andthe said product is used for the working of the invention;(*) The latest local applicable laws and regulations should be applied.

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