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PAC Case
Tokyo Intellectual Property High Court
Case No. H23 (Ne) 10031
January 31, 2012
(Plaintiff-appellants:(Defendant-appellees:NakataYasuda Seisakusho)
Carbo-tec
Carbo-tec Hida
Yamashita MokuzaiSeiki)

FACTS
This is an appeal from the Tokyo District Court, seeking money damages
and injunctive relief.
Plaintiff-appellants Nakata and Yasuda Seisakusho jointly own Japanese
Patent No. 3364065 issued October 25, 2012 (“the ‘065 patent”) for an invention
titled “Carbonization Method”.
The invention involves a method of manufacturing powdered activatedcarbon or powdered activated charcoal (PAC).
Nakata and Yasuda Seisakusho brought suit in Tokyo District Court,
seeking an injunction on the manufacture and marketing of the products inquestion based on Article 100(1) and (2) of the Patent Law for infringement ofthe ‘065 patent and seeking money damages based on unfair competition (CivilCode, Article 709 of the Civil Code and Article 102(2) of the Patent Law.
Specifically, the plaintiff-appellants sued Carbo-tec for indirect
infringement of the ‘065 patent by manufacturing and marketing a carbonization
device that can only be used with the patented method as well as direct
infringement of the ‘065 patent by manufacturing and marketing PAC using thepatented method. Nakata and Yasuda Seisakusho also sued Carbo-tec Hida
for infringement, charging they marketed charcoal products marketed by Carbo-1

tec knowing that these products infringed; they also sued Yamashita Mokuzai
for marketing to Seiki the products marketed by Carbo-tec Hida knowing thatthese products infringed the patent.
The Tokyo District Court found that Carbo-tec’s ceramic charcoal
production method, involving coating wood chips with bentonite, did not retard
oxidation and turn the combustible wood chips into charcoal, and thus thedefendant’s method of manufacturing did not belong to the same technical fieldas that of the patented invention.
Nakata and Yasuda Seisakusho appealed, seeking to have the district
court’s decision overturned.
ISSUE
Whether results of experiments conducted with samples obtained underconditions very different from those of an accused method can be used to prove
infringement of a claimed invention.
HOLDING AND REASONING
The invention according to the ‘065 patent has the following elements:
A
combustible material or a material containing a combustiblematerial,Bcoating the combustible material by mixing it with an inorganic
binder containing bentonite,Cfeeding the combustible material into a cylindrical oven open to
the air through an intake at one end of the oven and conveying it to a discharge
at the other end of the oven, and igniting the material from the direction
opposite the conveyance direction to dry the material at the intake side, andD
the inorganic coating retards oxidation of the combustible material
as it burns, to carbonize the material at the discharge side.
Elements A and C are not in dispute.
As to elements B and D, the Plaintiff-appellants argue that, based on theresults of experiments performed by Associate Professor A and the Nagano
Prefecture General Industrial Technology Center, there is enough coating of thecombustible material in the defendants’ method to retard oxidation and achievecarbonization, and that it can be confirmed that enough of the surface of thematerial is not coated to allow combustion of the gas component.
We disagree. The defendants’ method involves spraying with water and2

mixing 50 kg of bentonite per cubic meter of wood chips using a mixer for 5minutes, and then drying and igniting the mixture in an open rotating kiln toachieve carbonization. Associate Professor A took approximately 10 ml of woodchips having a typical length of 3-10 mm, placed them in a beaker, added 0.50
kg of bentonite, sprayed them with a mister and mixed them uniformly, took asample still wet therefrom, checked the surface using an optical microscope,placed the sample in a Petri dish, dried it at 95C for 24 hours, and then checked
the surface with an optical microscope or a scanning electron microscope (SEM).
These conditions are very different from those under which the defendant’s
method is conducted. Moreover, the method of observation is inadequate toidentify the surface properties of the material in view of the very small size of thebentonite particles (from 0.005 to 0.2 m). Associate Professor A claims to havetaken wood chips mixed with bentonite and heated them under ambient air at arate that increased by 50C per minute up to a maximum of 800C for 10minutes, leaving a black charcoal residue, whereas heating wood chips unmixed
with bentonite under the same conditions produced only ashes. But there is nophoto attached to the Professor’s opinion, and we cannot tell what sort of residue
remained, whether charcoal or ash.
The results of experiments performed by the Nagano Prefecture GeneralIndustrial Technology Center are merely observations of a small portion of asample produced under conditions very different from those of the defendants’method, and are inadequate to identify the surface properties of the material inview of the bentonite particle size described above.
Appeal denied; costs to be borne by the Plaintiff-appellants.

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