受験番号：14IPL003============================================================================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 aninvention titled “Carbonization Method”.
The invention involves a method of manufacturing powdered activatedcarbon or powdered activated charcoal (PAC).
Nakata and Yasuda Seisakusho sued the above appellees, asserting that the above appellees’ method
infringed upon Nakata’s 065 patent.
DISPOSITION IN THE LOWER COURTS AND ARGUMENTS ON APPEAL
Nakata requests the decision of the lower court to be vacated and sought for an injunction on themanufacture and sale of two (2) articles and monetary damages of approximately 1.6 hundred million yen.
Nakata further argues that Hida intentionally infringed on the 065 patent by buying carbon products fromCarbo-tec to manufacture and sell as ceramic pots to Yamashita Mokuzai who also intentionally infringed on
the 065 patent by buying these products from Hida.
The district court ruled that appellees’ method of the ceramic charcoal manufacturing method did
not infringe Nakata’s 065 patent and did not belong to the same technical field as the 065 patent.
Furthermore, the lower court there was no intentional infringement as Hida only grinded the ceramic
charcoal and sold it. Also that Seiki bought from Yamashita Mokuzai only and not ceramic charcoal fromHida.
Nakata filed for amendments to the claims of the 065 patent and appealed.
ISSUEThe question is whether or not the appellees’ method satisfies element B (coating the combustible
material by mixing it with an inorganic binder containing bentonite) and element D (the inorganic coating
retards oxidation of the combustible material as it burns to carbonize the material at the discharge side)of Nakata’s 065 patent. Nakata argues that the results from the experiments respectively conducted byProfessor A and Nagano Engineering Center (NEC) satisfy Element A while the process in Carbotec’s manual
satisfies Element D.
The second question is whether or not the appellees intentionally infringed upon the 065 patent.
HOLDING AND REASONING
The invention according to the ‘065 patent has the following elements:
Acombustible material or a material containing a combustible
material,B
coating 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 thematerial 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, tocarbonize the material at the discharge side.
Elements A and C are not in dispute.
In regards to Element B, the court stated the experiment conducted by Professor A did not include
photos, hence in the Professor’s experiment with with a bentonite coated wood chip and non-coated woodchip, the results after burning in a kiln could not clearly be proven to be carbides or ashes. Furthermore,
many conditions with respect to heating in the experiment largely differentiated with the appellees’
method.
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With respect to NEC’s observations via microscope of the surface of the wood chip after burning,
the court ruled this was merely an observation of a portion of an experiment sample that greatly differswith the materials produced by appellee’s method and does not put into consideration the size of thebentonite particles, etc. and cannot establish the condition of the coating.
In regards to Element D, the court stated it is not clear that the gas released from burning inside
the furnace has any relationship as to the whether the inorganic coating retards oxidation. According to
Carbotec’s website, the furnace used is a low oxygen furnace and Carbotec’s representative further states
as the deposited side has little oxygen, pyrolysis is carried out and charcoal is released, hence differingfrom the convention method. Hence, carbonization may still be carried out even if the charcoal is notcoated.
The court upheld the decision of the lower court with regard to the appellee’s alleged intentional
infringement of the 065 patent, and that there was no basis for the appellant’s appeal.

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