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＜第 8 回知的財産翻訳検定【第 5 回和文英訳試験】＞答案用紙★★★

ID 番 号：00008
受験番号：08IPL003
級／科目：「1 級／知財法務実務」==================================================================※以下に解答を設置問題順に記入してください。
1. INTRODUCTION
The present brief is a summary of a decision of the Intellectual Property High
Court (hereinafter referred to as "IPHC") ruled in an appeal hearing of a patent
infringement case appealed thereto from the District Court of Tokyo.
A.

Facts of the Case
Canon Inc., the right holder of Japanese patent No.3278410, manufactures ink

cartridge (hereinafter referred to as "Canon product") as claimed in claim 1 of theaforesaid patent in accordance with a manufacturing method claimed in claim 10 of said
patent and offers the same for sale.
Recycle Assist Co.,Ltd (hereinafter referred to as "RA") is engaged in a businessof importing ink cartridges (hereinafter referred to as "RA products") that are obtainedby refilling ink in the Canon products which have once been emptied by being under use.
The used ink cartridges had been sold by either Canon or its licensees in Japan or inother countries.
Canon sought injunction on the import and sale of the RA products anddestruction of said products in possession of RA.
B. Assertions by the Involved Parties
RA insisted that Canon's patent rights based on said patent have "exhausted"with respect to the RA products manufactured from the Canon products that had beensold in Japan or elsewhere, and as such Canon should not be allowed to exercise its
patent rights over RA products.
In response to this, Canon insisted that it would be unjust not to be allowed ofexercising its patent rights over the RA products, for the conduct of RA refilling ink inthe used Canon products is deemed as using the manufacturing method described inclaim 10 of said patent and manufacturing goods that fall within the technical scope ofclaim 1.
2. DECISION BY IPHC AND GROUNDS THEREFOR
A.

Doctrine of Exhaustion in Regards to Invention of a ProductIn cases where the patent holder or its licensee of a patent (for an invention of aproduct) assign the patented product in Japan, the patent rights therefor are deemedexhausted for accomplishing their purpose. Hence, the patent holder shall no longer beallowed to exercise its patent rights in seeking execution of injunction over the conduct
such as use, assigning or leasing of the aforesaid patented goods.
However, in cases where one or more of the below conditions are met, thepatent rights shall not be exhausted and as such the patent holder is guaranteed of
executing its patent rights.
(i) The patented product is reused or recycled excessing its ordinary product life
(first condition).
(ii) The third party has entirely or in part replaced or reconstructed theessential element(s) in the patented product (second condition).
B. Application of Doctrine of Exhaustion in This CaseIn the present case, the first condition was rendered not having been met.
The Canon product was able to serve again as an ink tank with ink refilled
therein, for no physical change nor reconstruction in the elements of the Canon producttook place except for that the originally filled ink had been consumed. Thus, IPHC
rendered Canon product had not exceeded its ordinary product life at the time when theoriginally filled ink had been consumed.
On the other hand, the second condition was rendered having been met.
The aim of the invention claimed in claim 1 is to solve the problem which arosein the conventional ink cartridges. The problem at issue here is, as also were in the caseof the conventional ink cartridges, to realize stable ink supply and at the same time
prevent ink leakage upon opening the ink cartridge.

In order to achieve the above aim, the invention of claim 1 comprises two
essential structural features: H and K.

The features H and K become lost at somepoint after ink had been used up and the ink cartridge had been removed from theprinter.
When RA cleanses the inside of the ink cartridge of the used Canon productand injects ink therein over a predetermined level, the aforesaid features H and K arerestored in the RA product.
Hence, the second condition is thereby met, and the patent right with respect toclaim 1 was rendered as not having been exhausted.