19 Study on Constructing a Theory Toward Solving
Diversified Indirect Infringements (*)
Research Fellow: Miyuki TSUYUKI
In the case of infringement of a patent right by two or more parties, the largest issue is whether each party
can be a responsible actor. It is true that the past has seen an indirect infringement approach (application of
Article 101 of the Patent Act), joint infringement approach, instrumental theory approach, doctrine ofequivalents approach, and control theory approach, all with regard to the issue of infringement of a patent rightin which two or more parties get involved. However, all of these approaches are solutions that still have problems
with establishing each party involved as a responsible actor. Therefore, this report suggests a solution by applying"risk aversion obligation violation approach" in addition to these conventional approaches. Risk aversion
obligation violation approach is the theory of assigning certain responsibility to someone who has committed an
act of putting integrity interest (life, health, and property) at risk (an act of putting another person's right at risk
according to the type and form of action). This theory has been matured in the world of civil law—the theory of
tort by omission (theory of violation of the obligation to avoid damage and the theory of the obligation of security)
under the Japanese Civil Code and the theory of Verkehrspflicht (obligation in social life) under the German
Civil Code—to infringement of a patent right. As each of two or more parties can be a responsible actor throughthis theory, it becomes possible to realize a remedy for a patentee in the case of infringement of a patent right by
two or more actors, which has been impossible under conventional theories.

Ⅰ Introduction
1

Background of Study

There are two forms of acts of infringementof an industrial property right: direct
infringements
andacts
inciting
directinfringement
without
committing
directinfringement. Under the current institutional
design, the former is considered to constituteinfringement of a right prescribed in Article 68 of
the Patent Act (Article 16 of the Utility Model Act,
Article 23 of the Design Act, and Article 25 of theTrademark Act) while the latter is deemed to be
identified with the former based on the listing ofcertain acts as "acts deemed to constituteinfringement" in Article 101 of the Patent Act(Article 28 of the Utility Model Act, Article 38 of
the Design Act, and Article 37 of the TrademarkAct).1 However, as infringement of an industrial
property right has come to show a wide variety ofacts, it is possible that provisions in current laws
cannot be said to respond to infringements ofrights by all forms of acts.
For example, consider a case where apatented invention consists of constituent feature
α and constituent feature β, and these constituent

features form a single patent right for thepatented invention in totality. If one actor works
constituent feature α of the patented invention
and another actor works constituent feature β ofthe patented invention, these acts do not fallunder direct infringement as they are committed
by different actors; and they do not fall underforms listed in Article 101 in some cases, even if
they fall under the patented invention in totality.
Such form of infringement by two or more actors
can be said to be a situation that is unavoidably
overlooked if it does not occur very frequently.
However, in current society, there are many
forms of business models that are basicallyestablished only after two or more actors are
involved (in particular, in software-related
businesses, realization of such a business modelwith involvement of two or more actors iscommon). Therefore, it can be said to be
somewhat problematic to leave the system of lawof responsibility for infringement of an
intellectual property right by two or more actors
as it is now. In addition, Judge Takabe states that"working of an invention by two or more actors is
by no means rare in this day and age, when theways to conduct business have becomecomplicated, including splitting up corporate(*) This is an English translation of the summary of the report published under the Industrial Property Research
Promotion Project FY2012 entrusted by the Japan Patent Office. IIP is entirely responsible for any errors in
expression or description of the translation. When any ambiguity is found in the English translation, the original
Japanese text shall be prevailing.
●

IIP Bulletin 2013 Vol.22

1 ●organizations and developing joint businesses by
two or more companies." 2 As she states, intoday’s business models, it seems that there havebeen an increasing number of ways in which
involvement of two or more parties leads toconstituting infringement against a patentee.
Therefore, such ways cannot be left as they are.
2

Study Subject and Solution to the Issue

In infringement of a patent right by two or
more parties, the largest issue is whether each of
the parties can be a responsible actor. It is truethat the past has seen the indirect infringement
approach (application of Article 101 of the Patent
Act), joint infringement approach, instrumental
theory approach, doctrine of equivalents approach,and control theory approach, all with regard to theissue of infringement of a patent right in which
two or more parties get involved. However, all ofthese approaches are solutions that still haveproblems with establishing each party involved asa responsible actor. Therefore, this report isintended to suggest a solution based on "riskaversion obligation violation approach" in addition
to these conventional approaches. Risk aversion
obligation violation approach is the theory ofgiving certain responsibility to someone who hascommitted an act of putting integrity interest at
risk (an act of putting another person's right at
risk according to the type and form of action).
From a description in statements about the
purport of Article 101 of the Patent Act, 3 "aprovision that deems certain acts with a very highprobability of inciting direct infringement out of
preliminary or accessorial acts of infringement to
be infringement of a patent right (indirect
infringement)," I understand that the base of the
purport of said Article is the "idea that intends toprovide remedy for patentees by deeming acts ofputting a patent right at risk to constituteinfringement of the patent right." In the risk
aversion obligation violation approach suggested
in this report, an act committed by an indirect
perpetrator is understood to be an act of putting apatent right at risk, and responsibility borne by
the indirect perpetrator is understood to be justthis responsibility for putting the patent right at
risk. Therefore, the approach is understood to not
be different from the purport of Article 101 of the
Patent Act in the idea.
3

Utility of the Study
In terms of infringement of an intellectual●

property right, to what extent request for
injunction is applicable as a remedy for
infringement is a large issue. However, according
to this study, infringement that exists in the gapof "indirect infringement" can also be imported as
an act of direct infringement of a patent right.
Therefore, it is possible to offer the chance ofgiving a useful suggestion as a ground for theoccurrence of the right to seek an injunction.
4

Novelty of the Study(1) Novelty—Redefinition
of
Acts
of
Infringement
Although many prior studies provide results
concerning indirect infringement, it is said that
discussions have been held without clearly
defining what “indirect infringement” is.
Consequently, this report first defines the typesof acts listed in Article 101 of the Patent Act as"deemed infringement" and the types ofinfringement in which an indirect perpetrator
gets involved as "infringement by an indirect
perpetrator's act" irrespective of whether those
types are listed in Article 101 of the Patent Act.
This report then classifies types of infringement
into “infringement of a patent right by a single
actor” and “infringement of a patent right by two
or more actors,” which is a form of infringementby an indirect perpetrator's act. Furthermore, it
divides the latter into the form of infringement inwhich an indirect perpetrator's act is an incitingor accessorial act and the form of infringementthat is done by two or more indirect perpetrators.
Based on these classifications, infringement of apatent right by a single actor is called “Type I,”
the form of infringement in which an indirect
perpetrator's act is an inciting or accessorial act iscalled “Type II,” and the form of infringementthat is done by two or more indirect perpetrators
is called “Type III.” This report conducts analysis
by dividing types of infringement into Type I to
Type III. The analysis that attempts to solve
infringement in consideration of the relationshipbetween the type of indirect perpetrator's act anddamages to a right holder after classifying typesof infringement in such a manner and redefining
acts of infringement has not been conducted verymuch in conventional studies. This study can besaid to be novel in that point.
(2) Novelty—Risk
Aversion
Obligation
Violation ApproachWith regard to cases that can be said to be
existing in the gap in the patent system, such as
2 ●IIP Bulletin 2013 Vol.22

infringement by two or more actors, this study
develops discussions after finding commonality
between types of infringement of a patent rightand types of infringement in the case of applying
the theory of tort by omission (theory of violationof the obligation to avoid damage and the theoryof the obligation of security) under the Japanese
Civil Code which can be applied as a theory forsolution as infringement by an indirect
perpetrator's
act
and
the
theoryofVerkehrspflicht (obligation in social life) under
the German Civil Code.
The theory of tort by omission is said tohave been adopted in the Supreme Court
judgment of January 22, 1987 (Minshu, Vol. 42,
No. 1, at 17) as a theory that gives certain
responsibility to a person who has committed an
act of putting integrity interest (life, health, andproperty) at risk. The theory of Verkehrspflicht(obligation in social life) in Germany arose as a
remedy for integrity interest (life, health, andproperty) in order to cover the gap in German
tort law. In Germany, the theory was adopted as
the theory of Verkehrspflicht (obligation in sociallife) in the judgment of Reichsgericht of October30, 1902 (RGH52,373) and the judgment ofReichsgericht of February 23, 1903 (RGH54,52).
In that sense, it can be said that the theory ofVerkehrspflicht (obligation in social life) has thesame trend as the theory of tort by omission(theory of violation of the obligation to avoid
damage and the theory of the obligation of
security) that appeared in the Japanese Civil Codein order to fill the gap in tort law.4
Furthermore, this theory of Verkehrspflicht(obligation in social life) has been applied tointellectual property infringements, such as apatent infringement (BGH GRUR 1961, 627) anda copyright infringement (BGHZ 17 266), in
Germany. Therefore, it can be said that it is notparadoxical to apply the theory of tort byomission (theory of violation of the obligation to
avoid damage and the theory of the obligation of
security) in Japan, which can be understood ashaving the same trend as the theory ofVerkehrspflicht,
toindustrial
property
infringement cases in Japan.
This report names a theory of assigning
responsibility to a person who works a patented
invention based on the fact that the person put
the patent right of the patentee at risk and did not
avoid damage to the patentee "risk aversion
obligation violation approach," and attempts asolution through the approach. Thereby, it seeks
the possibility of remedy for patentees in cases●

IIP Bulletin 2013 Vol.22

that exist in the gap in patent infringement for
which no remedy could be provided based onconventional theories. This is a point at issue thathas not been considered very much in theconventional academic circles of intellectual
property laws, and this study is novel in that point.

Ⅱ Infringement of Right under theIntellectual Property Law System
and Response Thereto
1

Typifying Forms of Infringement

The first type of infringement is a casewhere unauthorized third party A independently
works a patent right of patentee C. For example,
where there is patentee C who has a patent rightconsisting of constituent feature α andconstituent feature β, unauthorized third party A
works constituent feature α and constituent
feature β. In this report, unauthorized third party
A in such a case is called the "direct perpetrator."
So this infringement is considered Type I. In TypeI, unauthorized third party A assumes
responsibility for damages to patentee C, who is a
victim, as a responsible actor.
The second type of infringement is a casewhere unauthorized third party A independently
works a patent right of patentee C andunauthorized third party B gets involved in theworking. For example, where there is patentee C
who has a patent right consisting of constituent
feature α and constituent feature β, unauthorizedthird party A is working constituent feature α andconstituent feature β and third party B incites theworking by third party A. In this report, this typeis also defined as one of the problems ofinfringement of a patent right by two or more
actors, and third party A and third party B in sucha case are called "direct perpetrator" and "indirect
perpetrator," respectively. So this infringement is
considered Type II. Needless to say, in Type II,
unauthorized third party A is a responsible actor.
However, there is some question as to whether
unauthorized third party B is a victimizer.
However, whether third party B, who is anindirect perpetrator, becomes a responsible actor
depends on the case and the theory applied.
The third form of infringement is a casewhere unauthorized third party A and third party
B work a patent right of patentee C. For example,
where there is patentee C who has a patent rightconsisting of constituent feature α andconstituent feature β, unauthorized third party A
works constituent feature α, and unauthorized
3 ●third party B works constituent feature β. In thiscase, unauthorized third party A's independent
act does not constitute infringement of the rightof patentee C. In the same manner, unauthorizedthird party B's independent act does notconstitute infringement of the right of patentee C.
Therefore, both third parties can be said to beindirect perpetrators. Consequently, in this report,
both of them are called indirect perpetrators. So
this infringement is considered Type III.
In this case, do both third party A and third
party B become responsible actors? Or does justInfringement of a patentright by a single actor

Infringement ofa patent rightone of them become a responsible actor? Or areneither of them able to become a responsible
actor as their acts do not independently
constitute infringement of a right? In such a case,
it is impossible to determine whether third party
A or third party B is a direct perpetrator orindirect perpetrator. Therefore, the case isdifferent from Type II. In addition, the conclusionof the case will also depend on the theory applied.
The aforementioned forms of infringement
are summarized by type in the table below.

Type I

Type II
Infringement of a patentright by two or more
actorsType III

Among Type II cases, those in which therequirement for applying Article 719, paragraph(2) of the Civil Code is not fulfilled ((2))
constitute an issue that becomes a problem as anact of assisting infringement of an intellectual
property right. It is a type of infringement for
which a solution is attempted based on the
instrumental theory and joint direct infringement
theory described later. If this type is understood
through the risk aversion obligation violation
approach (theory of tort by omission under the
Civil Code), which is suggested in this report,
Article 709 of the Civil Code is directly applied,and both third party A and third party B canconstitute direct infringement.
Among Type III cases, those in which therequirement for applying Article 719, paragraph(1) of the Civil Code is not fulfilled ((4))
constitute an issue that is discussed as the
problem with infringement of a patent right by
two or more actors. It is a type of infringement
for which a solution is attempted based on thecontrol theory described later. If this type isunderstood through the risk aversion obligation
violation approach, which is suggested in thisreport, Article 709 of the Civil Code is directly
applied to third party B, and both third party A
and third party B can be responsible actors for
direct infringement.
In this manner, broadly viewing conventional
intellectual property precedents concerning●(1) Article 719, paragraph (2) of the Civil
Code is applicable.
(2) Article 719, paragraph (2) of the Civil
Code is not applicable.
(3) Article 719, paragraph (1) of the Civil
Code is applicable.
(4) Article 719, paragraph (1) of the Civil
Code is not applicable.

infringement of a patent right by two or more
actors as mentioned as a type in this report, asolution is sought on a case-by-case basis.
However, a unified solution has yet to be found.
This report suggests a solution through the risk
aversion obligation violation approach. Risk
aversion obligation violation approach applies atheory to infringement of an interest protected bylaw, specifically, an intellectual property right.
That theory is to have someone who hascommitted an act of putting a right at risk assume
the responsibility thereof on the grounds ofviolation of the obligation of security for integrity
interest (life, body, and property), which is aninterest protected by law under the Civil Codethat has also been recognized in Supreme Court
precedents,.
According to the risk aversion obligation
violation approach suggested in this report, theact of a person who works a patented invention isunderstood to be an act of putting the patent rightof the patentee at risk. The ground for
responsibility is then found in the fact that said
person has committed an act of putting the patentright of the patentee at risk (has committed an actof putting another person's right at risk), and said
person is directly imposed responsibility on the
ground that he/she violates Article 709 of the
Civil Code. Therefore, this approach is applicable
to both Type II and Type III, which are types ofcases in which a person who commits an act of
4 ●IIP Bulletin 2013 Vol.22

putting a right at risk exists as an indirect
perpetrator.
In addition, in the risk aversion obligation
violation approach suggested in this report, it is
not considered a problem to assist an act of
infringement, but it is considered a problem toput a right itself at risk. Consequently, theapproach is a theory by which a solution can befound in cases, like Type III cases, where there isno direct perpetrator (a person who commits
direct infringement) and all persons who work apatented invention are evaluated as indirect
perpetrators.
Incidentally, it is not that the patent law
system has not prepared at all for such acts
committed by indirect perpetrators, which aretaken up as problems in this report. There is an
overview below of preparations for acts
committed by indirect perpetrators available
under the patent law system.

with acts of putting another person's right at risk
and for promoting mutual respect between theright to freedom of activity of persons who work apatented invention and the rights of holders ofpatent rights can also be seen in the patent law
system.
With regard to the handling of infringementof a patent right by two or more actors, which is acase that exists in the gap in Article 101 of the
Patent Act, the court's determinations can beroughly divided into two types of holdings. The
first type is holdings from the perspective of how
to understand an actor. The second is holdings
from the perspective of how to understand a right(technical scope). The former is throughapplication of the instrumental theory8 and thejoint direct infringement theory9 while the latteris through application of the doctrine ofequivalents.10
3

2

Responses to Indirect Perpetrators—Article
101 of the Patent Act

Article 101 of the Patent Act, which wasestablished in the 1959 Act, has changed invarious ways through the 1994 revision, 5 the2002 revision 6 and the 2006 revision. 7 Amongthese revisions, the one in 2006 can be said to bea very important turning point when consideringacts of putting an industrial property right at risk.
This is because this revision is intended toinclude even "acts of possessing" a relevant
product as indirect infringement, in addition toaccessorial acts in the sense of active acts that
incite direct infringement. Here, "all persons who
possess the product" are not treated as infringers,
and possession is considered to be a problem inthe case of "possessing the said product for the
purpose of assigning, etc. or exporting it asbusiness" as a preceding act before infringementof a patent right.
With regard to the "obligation to act," whichbecomes a problem in the theory of tort byomission, where the obligation to act arises froma preceding act or legal obligation, a person who
has caused a critical condition that is expected tobring about damage is then obligated to prevent
results in terms of social ideas. The violation ofthis obligation to act serves as the basis forimposing responsibility. As the Patent Act is
intended to make "acts of possessing the said
product for the purpose of assigning, etc. orexporting it as business" subject to Article 101 of
the Patent Act, it can be said that ideas for coping●

IIP Bulletin 2013 Vol.22

Infringement of a Patent Right by Two orMore Actors and Predictability

This report aims at a solution with a focus ona perpetrator's act. Therefore, this part examines
not an approach for a solution based on how tointerpret the technical scope but the instrumental
theory and the joint direct infringement theory,
which are holdings from the perspective of how tounderstand an actor, as a solution for cases
involving two or more actors.
The holding on the electrodeposited image
case, which is said to be adopting the
instrumental theory, stated that "it is planned as amatter of course to be used by the
aforementioned method by a dial plate
manufacturer who has purchased the defendant's
product as of the time of manufacturing thedefendant's product." This statement shows that
this holding is the same as stating that where aperson who delivers a product to the final process
predicts infringement of a patent right, such
person's act can constitute an act of infringement.
The court questions predictability from theperspective of a person who delivers a product tothe final process. Thus, it is not impossible to saythat this holding is based on the idea that a person
should assume responsibility where he/she
predicts infringement of a patent right.
The statement in the holding on theSuchiropi-zu (expandable polystyrol) case is said
to be adopting the joint direct infringement
theory that "when a person who is supplied with amaterial works or is likely work a patented
process or a person who is supplied with an
5 ●intermediary substance manufactures or is likely
to manufacture the final substance by applying
the remaining steps involved in the patented
process, that case is the working of anotherperson's patented process without a change or an
act that can be identified with it." This statement
is understood as meaning that when a person who
has received a supply of material or anintermediary substance manufactures the final
substance by fulfilling other requirements of thepatented process, the working can be identified
with working by a single actor. This is the sameas stating that both an act of a person who has
supplied the intermediary substance and an act ofa person who has received supply of theintermediary substance can be identified withworking by a single actor in cases where theperson who has received the supply of theintermediary substance predicts infringement of apatent right. The court questions predictability
from the perspective of the person who processes
the final substance, that is, the person who hasreceived a supply of the intermediary substance.
It is not impossible to say that this holding isbased on the idea that a person should assume
responsibility where he/she predicts infringementof a patent right.
Thinking so, it is possible to understand thatboth the electrodeposited image case and theSuchiropi-zu case question the idea that "a person
should assume responsibility where he/she
predicts infringement of a patent right," in otherwords, violation of the duty of care of a person
who works an invention on the premise ofpredictability. Then, it can be understood that, asa means of explanation, the former uses the
instrumental theory while the latter uses anexpression: identifiable relationship (that is, joint
direct infringement).
If so, where an indirect perpetrator"recognizes" his/her own act that does not fallunder Article 101 of the Patent Act "as an act of
putting another person's patent right at risk"(predicts that his/her own act will constituteinfringement of a patent right), there seems to beroom for recognizing each of the two or more
actors as committing direct infringement throughdirect application of Article 709 by using thetheory of responsibility under the Civil Code to
the effect that a person who has committed an actof putting another person's right at risk should
assume certain responsibility.

●

Ⅲ Infringement of Right under the
Civil Code and Responses
Thereto1

Article 709 of the Civil Code and Tort by
Omission

The current Civil Code stipulates, "A person
who has intentionally or negligently infringed any
right of others, or legally protected interest ofothers, shall be liable to compensate any damages
resulting in consequence." This provision is said
to be based on the guarantee of the freedom ofaction, which is intended to benefit thedevelopment of industry. However, with thedevelopment of business, it has led to a situation
where various interests protected by law under
the Civil Code are infringed. Consequently, "whatinterpretation should be adopted in cases where aperson's failure to actively act caused damages toanother person" (tort by omission) became
subject to discussion.
In contemporary precedent practice, there isno objection to the idea that Article 709 of the
Civil Code can include both tort by action and tort
by omission. Here, the obligation to act has toexist in advance to recognize tort by omission. It
becomes a problem determining the ground of
this obligation to act while based on the system of
law in which the freedom of action has been
established as a fundamental principle. If
everyone assumes the general obligation to act,
the freedom of action that the provision on tort
has intended to realize is undermined.
Professor Wagatsuma states, "There is roomfor finding a person who assumes the moral
obligation to act as a member of the social
communal life, and there can also be room forrecognizing establishment of a tort in terms ofomission by a person who does not assume any
legal obligation to act if the omission unduly
violates the moral obligation."11 Thus, it can besaid that he seeks the ground of the obligation toact in terms of a tort by omission in the "moral
obligation," that is, the "obligation derived fromsocial need." I consider it possible to say theground of the obligation to act exists in the social
need to prevent a legal subject from becoming a
cause of risk. Professor Sawai further states, "If
the ground of considering violation of penal law
and violation of protection law as a breach of law
is sought in violation of 'rules for protection of
third parties established by law,' violation of 'rules
for protection of third parties established socially'should be considered a breach of law though there
6 ●IIP Bulletin 2013 Vol.22

is no specific law thereon. A person who createsor maintains a risk against another person isrecognized as assuming the obligation to takeavoidance measures that are suited to the risk
and are expected so as to prevent the risk frombecoming real." 12 He thus recognizes that the
obligation to act as the obligation to avoid riskarises from social need for preventing a legal
subject from becoming a cause of risk.
2

Responses to an Act of Infringement by
an Indirect Perpetrator That Are
Permitted under Civil Laws

In terms of civil laws, Article 719 of the Civil
Code is prepared for cases in which an indirect
perpetrator gets involved.13 However, Article 719
of the Civil Code only covers cases where an
indirect perpetrator commits an act. What
happens if an indirect perpetrator does notcommit any particular act? In other words, aperson who is an accessory to or incites aninfringement by action can be a responsible actor
pursuant to Article 719, paragraph (2) of said Act,but a person who does so by omission cannot be a
responsible actor even based on the same
paragraph. A defect in civil laws in terms of an actof infringement by an indirect perpetrator is
exposed here.
So the theory of tort by omission, that is, theobligation of security to integrity interest,
appeared as a theory to fill this gap in civil laws.
The details thereof are considered below.
3

Theory in a Precedent That Fills the Gap
in Civil Laws

In the judgment on the Keihan Electric
Railway case, which was rendered on January 22,
198714, the court found establishment of tort byomission for the first time. According to the
judgment on the Keihan Electric Railway case,the following requirements have to be fulfilled tofind a tort by an indirect perpetrator.
(1) The indirect perpetrator actually knew therelevant act at the scene of the act and could
predict the occurrence of the accident.
(2) The indirect perpetrator assumes an obligation
based on a preceding act which is related to
the relevant act.
(3) The indirect perpetrator can take a measure to
avoid the accident.
(4) The indirect perpetrator assumes theobligation to prevent the occurrence of theaccident by taking certain measures based on●

IIP Bulletin 2013 Vol.22

the obligation arising from a preceding act
that is related to the relevant act.
The obligation mentioned here includes two
types of obligation, specifically, "legal obligation"and "obligation based on a preceding act." 15
Although such obligation automatically arises
where the perpetrator and the victim are in acontractual relationship, it is also an obligation
recognized in cases where a certain social contact
is conceivable between the perpetrator and thevictim.
Applying the "obligation based on a precedingact" to patent right infringement-related cases, apossible understanding is that where two or more
actors jointly start a business, a person who
works a right pertaining to Article 68 of the
Patent Act as business assumes the obligation to
avoid infringement of the right of the patentee so
as to prevent the working from constituting
infringement of another person's patent right.
Moreover, as a "legal obligation," there is theobligation to avoid infringement of a patent rightthat exists between a licensor and a licensee whoare parties to a license agreement. Furthermore,another possible obligation is the obligation thatarises from prohibition of the listed acts
stipulated in Article 101 of the Patent Act as acompulsory provision.
In this manner, it is possible to solve theproblem of infringement of the right of a patentee
in the forms of infringement in which two or more
actors get involved by applying the theory under
the Civil Code, irrespective of whether the formof infringement is one in which a direct
perpetrator and an indirect perpetrator exist as
two or more actors or one in which indirect
perpetrators exist as two or more actors. This is atheory for solving various problems concerning
infringement, with a focus on two or more actors'
acts of putting the patent right of a patentee atrisk. Therefore, this theory for solution is named
the "risk aversion obligation violation approach."

Ⅳ Conclusion
1

Solving the Problem of Infringement of
a Patent Right by Two or More Actors
through the Risk Aversion Obligation
Violation Approach

The case above revealed that it is possible tosolve the problem of infringement of the right of apatentee for types of infringement in which two
or more actors get involved by applying a theory
7 ●called the “theory of tort by omission” (violationof the obligation to avoid damage and violation of
the obligation of security) under the Civil Code.
This can be accomplished irrespective of whether
the form of infringement is one in which a direct
perpetrator and an indirect perpetrator exist as
two or more actors or one in which indirect
perpetrators exist as two or more actors.
The patent system itself is originallyintended to grant exclusive rights to patentees.
Thus, it can be said that the system is notintended to weaken the rights of patentees byexcessively focusing on securing freedom ofaction for persons who work the patented
inventions (development of innovations). On theother hand, excessive focus on strengthening
patentees' rights can be problematic, as it may
lead to limitless expansion of the scope of
infringements; and the freedom of action of
personswho
work
patented
inventions(development of innovations) may consequently
be inhibited.
Therefore, just as the theory of tort byomission (violation of the obligation to avoid
damage and violation of the obligation of security)
imposes strict requirements for providing a
remedy for integrity interest (property, life, andbody) under the Civil Code, it is also necessary to
fulfill the same requirements when applying therisk aversion obligation violation approach toinfringement of a patent right by an indirect
perpetrator's act. So, the following four
requirements must be fulfilled in order to treat
infringement of a patent right by an indirect
perpetrator's act as a tort that is independent as adirect infringement of a right.
(1) Person B, who is one of the two or more
actors, has predicted that his/her own act isan act of putting person C's patent right at
risk.
(2) Person B, who is one of the two or more
actors, has known, in conducting businesswith person A, who is another one of the two
or more actors, that B's act would overlap
with the technical scope of patentee C’spatent right if it is combined with A's act.
(3) Person B, who is one of the two or more
actors, could take measures to avoid
infringement of patentee C’s patent right.
(4) The infringement of patentee C’s patent rightoccurred because person B, who is one of thetwo or more actors, did not take any
measures to prevent the occurrence of theinfringement of the patent right, despite●

his/her obligation.
In addition, in the risk aversion obligation
violation approach, an indirect perpetrator's act
itself is understood to be an act of putting a rightat risk, and an indirect perpetrator him/herself isseen as a responsible actor. Therefore, suchmatters as fulfillment of all the requirements forliability for tort by a direct perpetrator who is oneof the two or more actors, control by any one of
the two or more actors, and the necessity ofexistence of relevance and cooperation as
required in Article 719 of the Civil Code between
the two or more actors, do not pose a problem.
Moreover, as Supreme Court precedents do notquestion whether a direct infringer has
committed an illegal act, it is not necessary toprovide unreasonable logical compositions to theeffect that any one of the two or more actors
committed infringement of a right and an indirect
perpetrator only assisted the infringement or thatacts committed by the two or more actors
together constituted one act of infringement.
The infringement of a patent right by two or
more actors, which is currently a problem, refers
to a situation where workings of constituent
features by persons together fulfill all theconstituent features of the patent right of apatentee. Therefore, each of the perpetrators who
commit acts that constitute working of a patented
invention can also be seen as an indirect
perpetrator. Consequently, this infringement
becomes a problem as each of the perpetrators
who commit acts that constitute working of apatented invention does not commit an illegal act
that fulfills all the constituent features (an act of
infringing a right). Thus, to solve this problem, it
is necessary to consider the indirect perpetrator's
act of putting a patent right at risk as falling under
Article 709 of the Civil Code. Then, an indirect
perpetrator him/herself is considered to be a
responsible actor. Therefore, the risk aversion
obligation violation approach, which constitutes
the idea that an indirect perpetrator him/herself
directly infringes the right of a patentee, isconsidered to be most suitable as a solution to the
problem.
Based on the risk aversion obligation
violation approach suggested in this report, it ispossible to claim damages against an indirect
perpetrator who puts a patent right at risk
through direct application of Article 709 of the
Civil Code. Consequently, a relevant act can serveas grounds for the right to claim damages.
However, there remains a problem with regard to
8 ●IIP Bulletin 2013 Vol.22

a request for injunction. If the right to seek an
injunction available under the patent law system
is interpreted as being limited to the acts listed in
Article 101 of the Patent Act, it is impossible tofile a request for injunction even throughapplication of the risk aversion obligation
violation approach. However, some hold theopinion that, "In Japan, although it is possible toclaim damages for a joint tort, it is not
automatically possible to request an injunction.
However, as a patent right, which is an absoluteright, is infringed by a joint tort, a request for
injunction should also be accepted on acase-by-case basis."16 As indicated in this opinion,
where an interest protected by law, e.g., a patentright, has been directly infringed, a request for
injunction should be accepted, taking into accountthat the right to seek an injunction comes from asystem that was prepared to cope withinfringement of an interest protected by law, e.g.,a patent right.
In my view, the right to seek an injunction is
the right to seek action or omission, which isavailable for a right holder in cases where aperson infringes an interest protected by law, that
is, an industrial property right or copyright; andthere is no problem in accepting a request for
injunction as a remedy for the consequence of
application of violation of the obligation to avoid arisk. However, this point requires further thought,
including considering the relationships between
grounds for the occurrence of the right to seek an
injunction and the Civil Code.
2

What a Patentee Should Do

Even if the theory suggested in this study isapplicable to cases of infringement of a patentright by two or more actors, in order to protect
their own rights, it is vital for patentees to beproactive in immediately and positively asserting
the existence of their own rights so as to facilitatethefindingoffulfillmentoftherequirements—"(1) indirect perpetrator B had
predicted that his/her own act is an act of putting
the patent right of person C at risk" and "(2) in
conducting a business with person involved A(who can be either a direct perpetrator or an
indirect perpetrator), indirect perpetrator B had
known that B's act would overlap with thetechnical scope of the patent right of patentee C if
it is combined with A's act." This is because if aperson continues to work a patent right despite
the patentee's assertion to third parties that thepatent right is his/her own right, it is easy to find●

IIP Bulletin 2013 Vol.22

that said person has clearly committed a violationof the obligation to avoid infringement of a patentright.
3

Flexible Responses to Changing Forms
of Infringement

Just like in the expression "a law starts
eroding from the moment it is enacted," the scopeof protection can expand in a manner that is notpredetermined by law with the development oftechnology. It is especially so for interests
protected by law that develop at a high speed,
such as intellectual property rights.
Is it appropriate to maintain a style of listingtypes of acts in liability law, for which
infringement cases are assumed to expand withthe development of technology? Acts of
infringement in which an indirect perpetrator
gets involved are now expected to increase.
Therefore, isn't it time to review liability law as it
concerns indirect perpetrators? The obligation to
avoid damages to integrity interest (obligation of
security), which has been developed in the worldof the Civil Code, is considered to be one path
toward a solution.
I believe that the maximum guarantee of thefreedom of action, for which provisions on tort in
the Civil Code aim, should now be granted to theextent that integrity interest (property, life, andbody) is not infringed. This means mutual respect
between rights and is a conclusion that isnaturally drawn by looking at the trends ofprecedents in Japan. In the same manner, I think
that, not just in relation to integrity interest(property, life, and body), which is protected bylaw, the freedom of action of a person who works
an intellectual property right should also be
granted to the extent that the rights of a patentee
are not infringed.
If there is any intention to maximize thescope of rights of a patentee, then expansion of
the scope of responsible actors for indirect
infringement should be encouraged. However,even based on this idea, unnecessary expansionof the scope of indirect infringement can also be
said to be leading to loss of the speed ofoccurrence of new business models. On the other
hand, if there is any intention to maximize thescope of freedom of action of a person who works
a patented invention, then expansion of the scopeof indirect infringement should not be encouraged.
However, inhibition of the rights of a patentee on
the pretext of respect for innovation is not what ispredetermined by law. Consequently, as a future
9 ●interpretation, a solution should be sought on thebasis of the idea of mutual respect between rights
without placing a disproportionate emphasis oneither right.
1

Professor Obuchi states, "Besides the concept ofindirect infringement, there is the concept of
constructive infringement (deemed infringement).
However, these concepts essentially differ from eachother. Therefore, it is necessary to clearly distinguishthem.
Constructive
infringement(deemedinfringement) means a statutory act (not direct
infringement) in certain scope that is construed(deemed) to be infringement by law, and this is aconcept of which point exists as constructive itself.
Acts construed to be infringement are not necessarily
limited to acts that fall under indirect infringement.
Therefore, there are some cases where indirect
infringement is considered to be constructive
infringement (Article 101, items (i) and (ii) [(iv) and(v)] of the Patent Act) and other cases where an act
other than indirect infringement is also considered tobe constructive infringement (Article 113, paragraphs(1), (2), (3), (5), and (6) of the Copyright Act). In thisreport, an indirect infringement that is not considered
to be constructive infringement is called an "indirect
infringement." It is the first step to correct analysis in
discussing while exactly distinguishing three concepts:
direct infringement, indirect infringement, andconstructive
infringement."(Obuchi,
Tetsuya,"Chosakuken shingai ni taisuru kyusai (10)" (Remedy
for copyright infringement (10)), Hogaku Kyoshitsu, no.
356; 142). As he states, it seems that the concept
expressed by term "indirect infringement" can differ
depending on a person who is discussing it.
2
Takabe, Makiko. "Kokusaika to fukusuushutai ni yoru
chitekizaisanken no shingai" (Internationalization andinfringement of an intellectual property right by two or
more actors), Chitekizaisanken: sonokeisei to hogo
(Intellectual property rights: their formation andprotection) (Shinnippon-Hoki, 2002), 161.
3
The purport of Article 101 of the Patent Act is
explained as follows: "Working of a patented invention
by a third party without authority as a businessconstitutes infringement of a patent right. The
technical scope of a patented invention is to be
determined based upon the statements in the scope ofclaims (Article 70). In principle, working of all mattersto define the invention described in the claims as abusiness constitutes infringement of a patent right(direct infringement). However, even if an act is notconsidered to be constituting direct infringement of apatent right as it does not fall under working of all
matters to define a patented invention, for example, an
act of supplying dedicated parts that are used for
infringement of a patent right has a very highprobability of inciting direct infringement; and leavingsuch an act leads to eliminating the effectiveness of apatent right. This Article was established in order tocope with such a problem, and it is a provision that
deems certain acts with a very high probability ofinciting direct infringement out of preliminary oraccessorial acts of infringement to constituteinfringement of a patent right (indirect infringement)"●(JapanPatentOffice,ed.,
Kogyoshoyukenho(sangyozaisankenho) chikujokaisetsu (Article-by-article
explanation of industrial property law) (Japan Institutefor Promoting Invention and Innovation, 2012), 293.
4
For details, see Tsuyuki, Miyuki. "Fusakuifuhokoi noseisei tenkai to anzenhairyogimu—doitsuhanreihori
Verkehrspflicht
tonokyotsuchoryunotankyu"(Generation and development of tort by omission andobligation of security—quest for a common trend with aGerman precedents-based theory, Verkehrspflicht),
Senshuhokenronshu, no. 49: 1.
5
In 1994, Article 28 of the TRIPS Agreement came to
stipulate “offering for sale” as an exclusive right that is
granted by a patent. In response to this, "offering for
assignment or lease" was added to acts of working an
invention stipulated in Article 2, paragraph (3) of the
Patent Act. Consequently, "offering" was also added to
Article 101 of the Patent Act.
6
While precedents over a general-purpose product wereincreasing, the text, "product …indispensable for the
resolution of the problem by the said invention …,
knowing that the said invention is a patented invention
and the said product is used for the working of theinvention," in items (ii) and (iv) were added during the2002 revision, in addition to the text, "product to be
used exclusively for," in items (i) and (iii).
Consequently, only objective requirement is required
under Article 101, items (i) and (iii) of the Patent Act
while not only objective requirement but also
subjective requirement are required under items (ii)and (iv) of said Article.
7
Through the 2006 revision, items (iii) and (vi) wereadded to the 2002 Act, and "acts of possessing" arelevant product have also come to be deemed acts of
infringement.
8
Judgment of the Tokyo District Court, September 20,
2001 (Hanji, No. 1764, at 112).
9
Judgment of the Osaka District Court, May 4, 1961
(Hanta, No. 119, at 41).
10
Judgment of the Tokyo District Court, December 14,
2007.
11
Wagatsuma, Sakae. Jimukanri, futoritoku, fuhokoi(Office work management, unjust enrichment, tort)(Nippon Hyoron Sha, 1937), 110.
12
Sawai, Yutaka., Tekisutobukku jimukanri, futoritoku,
fuhokoi (Textbook: office work management, unjust
enrichment, tort) (Yuhikaku, 2001), 161.
13
Article 719, paragraph (1) of the Civil Code provides,"If more than one person has inflicted damages onothers by their joint tortious acts, each of them shall bejointly and severally liable to compensate for thosedamages. The same shall apply if it cannot be
ascertained which of the joint tortfeasors inflicted thedamages." This is a provision that is applicable to TypeI mentioned above. On the other hand, Article 719,
paragraph (2) of the Civil Code provides, "Theprovisions of the preceding paragraph shall apply to any
person who incited or was an accessory to theperpetrator, by deeming him/her to be one of the joint
tortfeasors." This is a provision that is applicable toType II mentioned above.
14
In Hirakata-shi, Osaka, there were the double tracks of
Keihan Electric Railway, and there is an ordinary roadnext to the premises of the rails. An about 1.2-meter high

10 ●IIP Bulletin 2013 Vol.22

wired fence is installed between the premises and theroad, and the rail closer to this road is for trains boundfor Kyoto while the rail farther from the road is for trains
bound for Osaka. On February 20, 1980, Y was standing
and talking with A, B, C, and D, who are Y's friends atjunior high school, on the ordinary road, and theytalked about their experiences while attending
elementary school, including what happened whenplacing things on the railroad. Then, C climbed overthe boundary wired fence and entered the premises of
the rails where the accident in question occurred. C
held his ear to the rail. After that, B and D entered thepremises of the rails one after another. B formed gum
into a ball and put it on the rail for trains bound for
Kyoto. D picked up fist-sized stones around thepremises of the rails and put them on the rails fortrains bound for Kyoto and Osaka one-by-one. Duringthat time, defendant Y and A, etc. kept an eye on theirsurroundings and called to those who were on theother side of the fence while standing on the road
beside the boundary wired fence, for example, by
saying "Here comes someone on a car." Y did not enter
the premises of the rails and was on the road with A,
but Y was watching C, B, and D on the premises of therails, and D put a stone on the rail for trains bound for
Osaka. Y was not aware of the placement of a stone on
the rail for trains bound for Kyoto. D was told by Y and
A to stop putting stones on the rails, but he still leftthem on the rails. Therefore, C worried about safety
when seeing a stone put on the rail for trains bound for
Osaka, and removed it. However, C was not aware of astone put on the rail for trains bound for Kyoto and did
not remove it. Immediately after that, a fast train boundfor Sanjo Station in Kyoto, which came onto this part of
the track, encountered a fist-sized stone put on the rail,
and two front-end cars were derailed and overturned.
Thereby, a private house and other property weredamaged, and 104 passengers were also injured.
Railroad company X also claimed damages against Y(and Y's parents for the reason of violation of theobligation of supervision), asserting that Y is liable forthe tort. In response to this, the Supreme Court foundY responsible, ruling as follows: "Where an act of
putting a stone on the rail, which has a very highprobability of causing such a serious accident, wascommitted, even a person who neither has common
recognition nor conspires with the perpetrator in termsof committing said act should be considered asassuming the obligation to prevent the occurrence of
the accident. As long as it is possible to do so, they are
obligated to check and confirm the existence of thestone and take measures to avoid the accident,
including removing the stone, if there is one. Thisobligation is based on the person's said preceding act
that is related to the relevant act, when it can be said
that the person not only had a conversation, whichbecame the motivation for said act, in advance with theperpetrator who is said to be the person's peer, but also
actually knew of said act at the scene of said act, which
was successively committed, and could predict theoccurrence of the accident. If an accident occurs
because of said person's failure to fulfill this obligation,
said person should be considered as being liable fordamages caused by said accident."

15

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11 ●

IIP Bulletin 2013 Vol.22

Professor Suehiro states "A person who has incited a
critical condition that can cause damages by a certain
action assumes the obligation to act to prevent theoccurrence of the damages due to the act of inciting it"(Suehiro, Izutaro. Saiken kakuron (Specifics ofreceivables) (Yuhikaku, 1919), 1061.
16
Matsumoto, Shigetoshi. Tokkyo hatsumei no hogohani(Scope of protection of a patented invention) (Yuhikaku,
2000), 252.