Judicial Symposium on Intellectual Property/TOKYO 2017
Day 1 (October 30) Case of the Mock Trial

1. Overview of the case

2. Patented invention

Pony Technology Ltd. (“Pony”, corporation

In prior art, a mobile phone selects afounded under the law of country A) owns achannel and transmits a request for permission

patent (“Patent”), for an invention of a process

to use said channel to a base station; however,in which a base station transmits signals to awhen an air interface is congested, a mobile

mobile phone to indicate a suitable channel tophone cannot select the suitable channel due tobe selected by a mobile phone when an air

the difficulty of figuring it out, and as a result,interface is congested.

the state of the communication becomes

Donkey Com Ltd. (“Donkey”, corporation

unstable.

founded under the law of country A)
manufactures devices for mobile phone

The Patented invention enables stablecommunication by means of the process in

network and distributes them to service

which a base station transmits signals to aproviders

mobile phone to indicate a suitable channel toinvariouscountries.

Yellow

Telecommunications
Ltd.
(“Yellow”,corporation founded under the law of country

be selected by a mobile phone.

A) is a service provider of mobile phone

Prior Art

network in country A.
Donkey manufactured DDX-2250 devices
for mobile phone network, and assigned themto Yellow in country A.
Pony is confident that the assignment ofDDX-2250 devices by Donkey is deemed toconstitute infringement of the Patent rightbecause the DDX-2250 device is equivalent to“a base station” described in the claims of thePatent and used exclusively for the process inwhich a base station transmits signals to a

Patented Invention

mobile phone.

1

The Patent right was registered in country A.

explained that a mobile phone itself always

In addition, the corresponding patent right wasselected a channel and requested for aalso registered in country B.

permission to use the channel to a base station,
therefore, the base station never transmitted

3. Detailed process of negotiation

any signals to indicate a channel to be selected(1) Pony conducted a test on a DDX-2250

by a mobile phone.

device that is actually installed in country B,
on

Z/Z/2016,

incollaboration

with

Pony presumes that, in country A, thean

DDX-2250 device switches the mode toindependent expert, Dr. Cheval who resides intransmit the signals to a mobile phone tocountry B. The results showed that theindicate a suitable channel to be selected by aDDX-2250 device transmitted signals to amobile phone, at least when an air interface ismobile phone to indicate a suitable channel tocongested to a preset level, because DDX-2250

be selected by a mobile phone when an air

device actually has that mode and it is difficultinterface is congested, although it did not do soall the time.

to secure stable communication under acongested air interface without using such

Pony, then, filed a patent infringementmode.

lawsuit against Donkey in country B based on(3) Pony is preparing to file a lawsuit

the allegation that the production andassignment of DDX-2250 devices by Donkey

against Donkey in country A as well, seeking
injunction and damage compensation based onin country B infringed a corresponding patent

the allegation that the assignment of thewhich Pony owns in country B. Pony is

DDX-2250 devices to Yellow is deemed topreparing to produce an expert opinion of Dr.

constitute infringement of the Patent right andCheval in the lawsuit.

constitutes a tort. At the present stage, Pony

(2) Pony obtained information that Yellow

does not plan to send a cease and desist letter

had been installing the DDX-2250 devices inor file a lawsuit against Yellow, consideringcountry A. However, Pony has not got detailed

future business relation with it.

information such as the number of installed

4. Preparations to produce evidences

devices and their locations, because DDX-2250
devices were released recently in country A(1) Expert opinionsand Pony cannot obtain the cooperation fromYellow on this issue.

Pony plans to produce an expert opinion ofDr. Cheval as evidence (witness and/or

Pony sent a cease and desist letter todocumentary evidence) in the lawsuit in

Donkey seeking a suspension in production

country A.

and assignment of DDX-2250 device inOn the other hand, anticipating a possible

country A, and also requested to disclose thelawsuit launched by Pony, Donkey conducted adocuments on sales volume of DDX-2250 etc.

test on the DDX-2250 device installed byResponding to the cease and desist

Yellow in country A, on Y/Y/2017 from 2pm toletter, Donkey asserted that the production andassignment of DDX-2250 devices did not

3pm, in cooperation with Yellow. Donkey
provided the test data to Prof. Ane, aninfringe the Patent right because DDX-2250

independent expert, and asked him to submit

devices manufactured and assigned in country

an expert opinion. Prof. Ane said that,

A stayed within the realm of prior art. Donkey

according to the test data provided by Donkey,2

it was natural to conclude that the DDX-2250

up to a preset level.

device did not transmit signals to indicate a

Furthermore, he has also stated that hechannel to be selected by a mobile phone.

possesses a copy of a manual for installation,

Donkey therefore plans to produce an expert

operation and maintenance for purchaser of

opinion of Prof. Ane as evidence (witness

DDX-2250 device in country B, without

and/or documentary evidence).

bringing back it to Donkey at the time of his(2) Inspection of DDX-2250

resignation, although it must be returned to

Pony intends to, before or after filing aDonkey when resigning or transferring to otherlawsuit, obtain an order for inspection of asection under its internal rules.

DDX-2250 device actually installed by Yellow

Pony plans to produce this declarationin country A to confirm the setting and theof Mr. Esel as evidence (witness and/oroperating system of it.

documentary evidence), and produce the copy(3) Internal documents on DDX-2250

of the manual possessed by him as evidence

Pony intends to, before or after filing alawsuit, obtain an order to disclose or present(documentary evidence); however, anticipatesthat Donkey, as the former employer of Mr.

documents related to a DDX-2250 device (aEsel, will strongly challenge them.

manual for manufacturing and setting, a copy(5) Materials on salesof a manual for installation, operation andmaintenance for Yellow, source code of thePony also needs to obtain materials
which prove the number of DDX-2250 devices

control program), which are supposed to be

and price of them assigned by Donkey inkept in Donkey’s office in country A.

country A to prove the damage.

On the other hand, Donkey opposes

5. Referencedisclosing those documents, arguing that
disclosure of them will release trade secrets(1) DDX-2250

contained in them and cause competing

Donkeyproducts to go on the market, as a result,

DDX-2250

Donkey will be hit with significant losses,

DDX-2250 device complies with international

since the sales profit of DDX-2250 devices

standards; however, in compliance with thecomprises a majority of the revenue at Donkey.

local regulations of the country where it is(4) Former employee of Donkey
Mr. Esel, currently working at Pony ininstalled in, there is a need to modify thesoftware setting, including whether to set acountry A, had engaged in sales business ofmode to use the function that transmits signals

DDX-2250 devices in country B as anfrom a base station to a mobile phone. For thisemployee of Donkey.

reason, Donkey has adopted a policy that theHe proclaims to be knowledgeable on

final

manufactures
devices

procedure ofinanddistributes

severalcountries.

manufacturing, which

setting and operating of DDX-2250 devices

includes final setting process of software, mustand has stated to the representative of Ponybe carried out at Donkey’s factory in eachthat various internal documents possessed byDonkey (containing many trade secrets), wouldcountry. A DDX-2250 device is designed to beused exclusively as a base station for mobile

show that, at least in country B, a DDX-2250

phone network and cannot be used for otherdevice switches the mode to transmit thepurpose because of the nature of this product.

signals, whenever an air interface is congested

DDX-2250 device is a product that was just3

recently put on the market, and in country B

internal rules, and manages them in accordancethewithwith the laws and regulations on trade secret

DDX-2250 devices is generally completed, but

protection in the local country located. In

the status on installation in country A is notaddition,

confirmed.

non-disclosure agreement with a purchaser

replacement

ofpriormodel

Donkeyhasconcludeda(2) Contents of internal documents

when delivering the manual for installation,

Donkey has a manual for manufacturing andoperation and maintenance for the purchaser.

setting, a copy of a manual for installation,(4) Sales contract between Donkey andoperation and maintenance for Yellow, and theYellow on DDX-2250

source code of the control program, as internal

Yellow concluded a sales contract on

documents on DDX-2250 devices.

DDX-2250 devices with Donkey on X/X/2016,

The manual for manufacturing and setting isand received delivery of them. On the same day,a common manual for DDX-2250 devices. It

Yellow received from Donkey the manual forcontains an instruction on how to use it when it
is being set to the mode to use a function toinstallation, operation and maintenance for
Yellow, and concluded a non-disclosuretransmit signals from a base station to a mobile

agreement with Donkey in which Yellow

phone; however, it does not contain theagreed to keep the manual as secret and not toinformation whether each DDX-2250 device is
set to a mode to use the said function when an

disclose the protected information to others.
Since then, Yellow has maintained the manual

air interface is congested.

as a secret pursuant to the contract.

The copy of the manual for installation,

6. Issues

operation and maintenance for Yellow contains
the information on whether each DDX-2250(1) Can Pony produce an expert opinion ofdevice assigned to Yellow is set to a mode toDr. Cheval as documentary evidence? Further,

use the function to transmit signals to a mobile

can Donkey produce an expert opinion of Prof.

phone when an air interface is congested.

Ane

as

documentary

evidence?

IfsuchIf the source code of the software control

documentary evidence is produced, is adverse

system can be decoded, it will become clear

party allowed to examine the expert at oral

whether said DDX-2250 device is set to ahearing concerning the testing of DDX-2250

mode to use a function to transmit signals to amobile phone when an air interface isdevices? If parties cannot produce expert
opinions as documentary evidence, what kindcongested. However, it is technically difficultof evidentiary means can the parties adopt?

to specify the part which describes the ability

Should the court appoint a new expert witness?

to use the said function; and hypothetically if(2) Should the court allow the inspection ofthis section is produced as evidence, many

DDX-2250 device installed by Yellow in

trade secrets will be disclosed.

country A?

(3) Document management at Donkey(3) Should the court issue an order toDonkey
designates
amanualfor
manufacturing and setting, copies of thedisclose or present documents, which includes
internal documents possessed by Donkey(amanualandmanual for manufacturing and setting, a copy

maintenance for purchaser, and the source codeof the manual for installation, operation andof the control program as trade secret under themaintenance for Yellow, and the source code offor

installation,

operation4

the control program)?
(4) What protection should the court provide
when trade secrets of the possessor arecontained in the evidentiary materials?
(5) Can Pony produce a declaration of Mr.
Esel as documentary evidence?

If suchdocumentary evidence is produced, is Donkey
allowed to examine Mr. Esel at oral hearing? If
a declaration of Mr. Esel cannot be produced as
documentary

evidence,

whatkindofevidentiary means can Pony adopt?
(6) Can Pony produce a copy of the manual
for installation, operation and maintenance forpurchaser of DDX-2250 device in country B,
which is possessed by Mr. Esel in country A?
(7) Should the court issue an order todisclose or present materials possessed byDonkey, which include theDDX-2250 devices assigned?

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