Date

February 25, 2015

Case number

2014 (Gyo-Ke) 10027

Court

Intellectual Property High Court,
Third Division– A case wherein, with respect to a patent granted for an invention (the "Invention")
titled "light-emitting material for organic electroluminescent device, organic
electroluminescent device using the same, and material for organic electroluminescentdevice," the court rescinded a JPO decision on the grounds that the JPO erred in
identifying the cited invention and the difference between the Invention and the citedinvention, and on making determinations on such difference.
Reference: Article 29, paragraphs (1) and (2) of the Patent Act
Number of related rights, etc.: Patent No. 4866885, Invalidation Trial No.
2013-800072
Summary of Judgment
1. BackgroundThe defendant is a patentee of the patent mentioned above. The plaintiff filed arequest for a trial for patent invalidation but the JPO rendered a trial decision (the"JPO Decision") to dismiss such request, and thus, the plaintiff filed an action seeking
rescission of the JPO Decision.
The plaintiff alleged that the JPO erred in identifying the cited invention and thedifference between the invention in question (the "Invention") and the cited invention,and in determining inventive steps.
2. Court decision
The court determined to rescind the JPO Decision on the grounds that the JPO
erred in identifying the cited invention and the difference between the Invention andthe cited invention and, as a result, erred in determining whether or not the Invention
could have been easily conceived of by a person ordinarily skilled in the art.
In the JPO Decision, with respect to the contents of the cited invention (Exhibit Ko
No. 1 Invention), the JPO found that the statements in Claim 1 contained in Exhibit Ko
No. 1, which reads "In the formula, […] B is a 2-60C heterocyclic group, which is a
1-substituted alkenyl group or arylamino group, or a substituent or non-substituent
5-60C aryl group," mean that "B is a 2-60C heterocyclic group, which is a
1-substituted alkenyl group or arylamino group, or a substituent or non-substituent
5-60C aryl group, which is a 1-substituted alkenyl group or arylamino group." In otherwords, the JPO found that the part "1-substituted alkenyl group or arylamino group"also modifies the part "substituent or non-substituent 5-60C aryl group" and identified
the difference between the Invention and the cited invention based on this finding.
However, the abovementioned identification of the cited invention is erroneous inⅰlight of the wording used in Claim 1 and the statements, etc. in the description
contained in Exhibit Ko No. 1. Instead, it is appropriate to construe that the part "a1-substituted arkenyl group or arylamino group" does not modify the part "asubstituent or non-substituent 5-60C aryl group."
In addition, based on the abovementioned construction, the Invention contains apart that is covered by Exhibit Ko No. 1 Invention. Thus, Difference 1 found between
the Invention and Exhibit Ko No. 1 Invention in the JPO Decision is also erroneous,and no substantial difference can be found between the two inventions.
When an invention pertaining to a patent is covered by another invention stated ina prior publicly known document as a subordinate conception thereof, it should beconstrued that the first-mentioned invention is not patentable unless it is specificallydisclosed in a prior publicly known document and produces a remarkable specificeffect in comparison to the invention stated in a prior publicly known document, inother words, an effect that differs in quality from that produced by the invention statedin a prior publicly known document, or a remarkably superior effect despite having thesame quality as that produced by such invention.
It remains unclear solely from the result of an experiment comparing working
example 1 shown in Exhibit Ko No. 1 submitted by the defendant and working
example 1 of the Invention as to whether or not the other working examples of theInvention produce a superior effect in comparison to the working examples shown in
Exhibit Ko No. 1. Moreover, since the Invention covers a wide range, the five working
examples stated in the description alone are insufficient to find that the Invention inwhole produces the same effect as that shown in the working examples. Furthermore,
there is no other sufficient evidence to find that the Invention produces a remarkablespecific effect in comparison to the invention stated in Exhibit Ko No. 1.

ⅱJudgment rendered on February 25, 20152014 (Gyo-Ke) 10027
Case of Seeking Rescission of JPO Decision
Date of conclusion of oral argument: February 9, 2015
Judgment
Plaintiff:

Hodogaya Chemical Co., Ltd.

Defendant:

Idemitsu Kosan Co., Ltd.
Main Text

1. The Trial Decision made on Invalidation Trial No. 2013-800072 by the Japan
Patent Office on December 17, 2013 shall be rescinded.
2. Defendant shall bear court costs.
Facts and Reasons
I. Claims
Same gist as the main text.
II.

Outline of The Case

1 Outline of procedures at the Japan Patent Office (facts that are undisputed by theparties or are found by the entire import of the oral argument)
Defendant is the patentee of Patent No. 4866885 (hereinafter, referred to as"Present Patent"; the number of claims: 14) titled "Light-emitting material for organic
electroluminescent device, organic electroluminescent device using the same, andmaterial for organic electroluminescent device," which was filed on August 21, 2008
(Patent Application No. 2008-212714, which is a new patent application based on a
portion of Patent Application No. 2008-183142 filed on December 13, 2004 (thepriority claimed from Patent Application No. 2003-423317 filed on December 19,
2003 in Japan)), and established and registered on November 18, 2011.
On April 24, 2013, Plaintiff filed a request for invalidating all of the claims ofPresent Patent to the Patent Office. Defendant filed a request for correction on Claim
2 of Present Patent on July 16, 2013 (hereinafter, referred to as "Present Correction").

1

The Patent Office examined the above requests as a case of Invalidation No. 2013800072, and as a result, made a trial decision to "allow the correction as in the requestand dismiss the request for the present trial" on December 17, 2013; and the transcript
thereof was dispatched to Plaintiff on December 27, 2013.
On January 24, 2014, Plaintiff instituted the present action for seeking rescission of
the above trial decision.
2 Description of the scope of the claims (Exhibit Ko 25)
The description of Claims 1 to 14 of Present Patent after Present Correction is asfollows (Hereinafter, the invention described in Claim 1 is referred to as "Present
Invention 1."

In addition, Present Inventions 1 to 14 are referred to collectively as"Present Invention," and the description and drawings of Present Patent after Present
Correction are referred to collectively as "Present Corrected Description.").
[Claim 1]
A light-emitting material for an organic electroluminescent device comprising an
asymmetric anthracene derivative represented by the following general formula (1):[Formula 1]

wherein:
A1 and A2 each independently represent a condensed aromatic hydrocarbon ringgroup selected from a 1-naphthyl group, a 2-naphthyl group, a 1-phenanthryl group, a2-phenanthryl group, a 3-phenanthryl group, a 4-phenanthryl group, a 9-phenanthrylgroup, a 3-methyl-2-naphthyl group, and a 4-methyl-1-naphthyl group;
Ar1 and Ar2 each independently represent an aromatic hydrocarbon ring grouphaving ring carbon atoms of 6 to 50, or one of Ar1 and Ar2 represents a hydrogen atomand the other represents an aromatic hydrocarbon ring group having ring carbon atoms2

of 6 to 50;
R1 to R8 each independently represent a hydrogen atom, an aromatic hydrocarbon
ring group having ring carbon atoms of 6 to 50, an alkyl group having carbon atoms of
1 to 50 or a cycloalkyl group having carbon atoms of 3 to 50 (wherein when A1 and/or
A2 represents a 1-naphthyl group or a 2-naphthyl group, R1 to R8 each independently
represent a hydrogen atom or an alkyl group having carbon atoms of 1 to 50);
R9 and R10 each independently represent a hydrogen atom, an aromatichydrocarbon ring group having ring carbon atoms of 6 to 50, an alkyl group havingcarbon atoms of 1 to 50, or a cycloalkyl group having carbon atoms of 3 to 50, andneither of R9 and R10 is an alkenyl group; andAr1, Ar2, R9 and R10, are optionally a plural number,
except where, in the general formula (1), groups symmetrical with respect to the xy axis on anthracene bind at 9th and 10th positions of the anthracene at the core.
[Claim 2]
The light-emitting material for an organic electroluminescent device according to
Claim 1, wherein, in the general formula (1),A1 and A2 each independently represent any of a 1-naphtyl group, a 2-naphtyl
group, and a 9-phenanthryl group;
the aromatic hydrocarbon ring groups of Ar1 and Ar2 each independently represent
any one of a phenyl group, a 1-naphthyl group, a 2-naphthyl group, a 1-anthryl group,a 2-anthryl group, a 9-anthryl group, a 1-phenanthryl group, a 2-phenanthryl group, a3-phenanthryl group, a 4-phenanthryl group, a 9-phenanthryl group, a 1-pyrenyl group,a 2-pyrenyl group, a 4-pyrenyl group, a 2-biphenylyl group, a 3-biphenylyl group, a 4biphenylyl group, a p-terphenyl-4-yl group, a p-terphenyl-3-yl group, a p-terphenyl-2yl group, an m-terphenyl-4-yl group, an m-terphenyl-3-yl group, an m-terphenyl-2-ylgroup, an o-tolyl group, an m-tolyl group, a p-tolyl group, a p-t-butylphenyl group, a p(a 2-phenylpropyl)phenyl group, a 3-methyl-2-naphthyl group, a 4-methyl-1-naphthylgroup, a 4-methyl-1-anthryl group, a 4'-methylbiphenylyl group, and a 4''-t-butyl-pterphenyl-4-yl group;
the aromatic hydrocarbon ring groups of R1 to R10 each independently represent
any one of a phenyl group, a 1-naphthyl group, a 2-naphthyl group, a 1-anthryl group,a 2-anthryl group, a 9-anthryl group, a 1-phenanthryl group, a 2-phenanthryl group, a3-phenanthryl group, a 4-phenanthryl group, a 9-phenanthryl group, a 1-pyrenyl group,a 2-pyrenyl group, a 4-pyrenyl group, a 2-biphenylyl group, a 3-biphenylyl group, a 4biphenylyl group, a p-terphenyl-4-yl group, a p-terphenyl-3-yl group, a p-terphenyl-2-

3

yl group, an m-terphenyl-4-yl group, an m-terphenyl-3-yl group, an m-terphenyl-2-ylgroup, an o-tolyl group, an m-tolyl group, a p-tolyl group, a p-t-butylphenyl group, a p(2-phenylpropyl)phenyl group, a 3-methyl-2-naphthyl group, a 4-methyl-1-naphthylgroup, a 4-methyl-1-anthryl group, a 4'-methylbiphenylyl group, and a 4''-t-butyl-pterphenyl-4-yl group;
the alkyl groups of R1 to R10 each independently represent any one of a methylgroup, an ethyl group, a propyl group, an isopropyl group, an n-butyl group, an s-butylgroup, an isobutyl group, a t-butyl group, an n-pentyl group, an n-hexyl group, an nheptyl group, and an n-octyl group; andthe cycloalkyl groups of R1 to R10 each independently represent any one of acyclopropyl group, a cyclobutyl group, a cyclopentyl group, a cyclohexyl group, a 4methylcyclohexyl group, a 1-adamanthyl group, a 2-adamanthyl group, a 1-norbornylgroup and a 2-norbornyl group.
[Claim 3]
The light-emitting material for an organic electroluminescent device according to
Claim 1, wherein, in the general formula (1),Ar1 and Ar2 each independently represents any one of a phenyl group, a 1-naphthylgroup, a 2-naphthyl group, a 1-phenanthryl group, a 2-phenanthryl group, a 3phenanthryl group, a 4-phenanthryl group, a 9-phenanthryl group, a 2-biphenylylgroup, a 3-biphenylyl group, a 4-biphenylyl group, a p-terphenyl-4-yl group, a pterphenyl-3-yl group, a p-terphenyl-2-yl group, an m-terphenyl-4-yl group, an mterphenyl-3-yl group, and an m-terphenyl-2-yl group; or one of Ar1 and Ar2 representsa hydrogen atom and the other represents any one of a phenyl group, a 1-naphthylgroup, a 2-naphthyl group, a 1-phenanthryl group, a 2-phenanthryl group, a 3phenanthryl group, a 4-phenanthryl group, a 9-phenanthryl group, a 2-biphenylylgroup, a 3-biphenylyl group, a 4-biphenylyl group, a p-terphenyl-4-yl group, a pterphenyl-3-yl group, a p-terphenyl-2-yl group, an m-terphenyl-4-yl group, an mterphenyl-3-yl group, and an m-terphenyl-2-yl group.
[Claim 4]
The light-emitting material for an organic electroluminescent device according to
Claim 1, wherein, in the general formula (1), Ar1 and Ar2 each independently represent
any one of a phenyl group, a 1-naphthyl group, a 2-naphthyl group, and a 9phenanthryl group; or one of Ar1 and Ar2 represents a hydrogen atom and the otherrepresents any one of a phenyl group, a 1-naphthyl group, a 2-naphthyl group, and a 9-4phenanthryl group.
[Claim 5]
The light-emitting material for an organic electroluminescent device according to
Claim 1, wherein the asymmetric anthracene derivative comprises a naphtalene-1-ylgroup having a substituent at the 4th position thereof and/or a condensed aromatichydrocarbon ring group having ring carbon atoms of 12 to 20.
[Claim 6]
The light-emitting material for an organic electroluminescent device according to
Claim 1, wherein R9 and R10 each represent a hydrogen atom.
[Claim 7]
The light-emitting material for an organic electroluminescent device according to
Claim 1, wherein R1 to R8 each represent a hydrogen atom, a phenyl group, a 1naphhtyl group, or a 2-naphthyl group.
[Claim 8]
The light-emitting material for an organic electroluminescent device according to
Claim 1, wherein R1 to R8 each represent a hydrogen atom.
[Claim 9]
The light-emitting material for an organic electroluminescent device according to
Claim 1, wherein at least one of A1 and A2 represents a 4-methyl-1-naphtyl group.
[Claim 10]
An organic electroluminescent device, in which an organic thin film layercomposed of one or more layers including at least a light-emitting layer is interposed
between a cathode and an anode, wherein a light-emitting zone comprises the lightemitting material for the organic electroluminescent device according to Claim 1
singly or as a component of a mixture thereof.
[Claim 11]
The organic electroluminescent device according to Claim 10, wherein the lightemitting layer comprises the light-emitting material for the organic electroluminescentdevice singly or as a component of a mixture thereof.

5

[Claim 12]
The organic electroluminescent device according to Claim 10, wherein the organic
thin film layer comprises the light-emitting material for the organic electroluminescentdevice as a host material.
[Claim 13]
The organic electroluminescent device according to any one of Claims 10 to 12,
wherein the light-emitting layer additionally comprises an arylamine compound.
[Claim 14]
The organic electroluminescent device according to any one of Claims 10 to 12,
wherein the light-emitting layer additionally comprises a styrylamine compound.
3 Reasons given in Trial Decision(1) Reasons given in the Trial Decision are as in the separate sheet of a copy of the
Trial Decision. The gist thereof is as follows.
A(a) Present Inventions 1 to 9 are not such inventions as could have been easily
conceived of by a person ordinarily skilled in the art based on the invention on a lightemitting material for an organic EL device (hereinafter, referred to as "Exhibit Ko 1
Invention 1") described in International Publication No. WO 03/087023 (Exhibit Ko 1,
which is an application of Defendant; hereinafter, referred to as "Exhibit Ko1"), andthe findings described in Publication of Unexamined Patent Application No. 2000182776 (Exhibit Ko 2; hereinafter, referred to as "Exhibit Ko 2") and the documents(Exhibits Ko 3 to 13) described below in C.
(b) Present Inventions 10 to 14 are not such inventions as could have been easily
conceived of by a person ordinarily skilled in the art based on the invention on anorganic EL device (hereinafter, referred to as "Exhibit Ko 1 Invention 2"; and referred
to as "Exhibit Ko 1 Invention" together with Exhibit Ko 1 Invention 1) described in
Exhibit Ko 1, and the findings described in Exhibit Ko 2 and the documents (Exhibits
Ko 3 to 13) described below in C.
B(a) Present Inventions 1 to 9 are not such inventions as could have been easily
conceived of by a person ordinarily skilled in the art based on the invention on a hole6

transport material for an organic multilayer EL device (hereinafter, referred to as"Exhibit Ko 2 Invention 1") and the findings described in Exhibit Ko 1 and the
documents (Exhibits Ko 3 to 13) described below in C.
(b) Present Inventions 10 to 14 are not such inventions as could have been easily
conceived of by a person ordinarily skilled in the art based on the invention on anorganic multilayer EL device (hereinafter, referred to "Exhibit Ko 2 Invention 2"; andreferred to as "Exhibit Ko 2 Invention 2" together with Exhibit Ko 2 Invention 1)
described in Exhibit Ko 2, and the findings described in Exhibit Ko 1 and the
documents (Exhibits Ko 3 to 13) described below in C.
C

Documents cited in Trial Decision are as follows.

(a) Publication of Unexamined Patent Application No. 2001-97897 (Exhibit Ko 3)(b) Patent No. 3148176 (Exhibit Ko 4)(c)International Publication No. WO 01/21729 (Exhibit Ko 5)(d) Publication of Unexamined Patent Application No. 1999-167991 (Exhibit Ko 6)(e) Publication of Unexamined Patent Application No. 1999-307255 (Exhibit Ko 7)(f) R&D Review of Toyota CRDL, Vol. 36, No. 3 (2001, 9), page 57 (Exhibit Ko 8)(g) R&D Review of Toyota Central R&D Labs., Inc., Vol. 33, No. 2 (1998, 6), pages
3 to 22 (Exhibit Ko 9)(h) Publication of Unexamined Patent Application No. 2001-284050 (Exhibit Ko 10)(i) Specification of US Patent No. 5935721 (Exhibit Ko 11)(j) Publication of Unexamined Patent Application No. 6-1973 (Exhibit Ko 12)(k) "Organic EL Material and Display" supervised by Junji Kido, February 28, 2001,
published by CMC Publishing Co., Ltd., pages 3 to 26 (Chapter 1) and pages 82 to 102(Chapter 6) (Exhibit Ko 13)(2) Trial Decision has found: the contents of Inventions 1 and 2 of Exhibit Ko 1; thecommon feature and difference between Present Invention 1 and Invention 1 of Exhibit
Ko 1; the common feature and difference between Present Invention 10 and Invention
2 of Exhibit Ko 1; and the contents of Inventions 1 and 2 of Exhibit Ko 2; the common
feature and difference between Present Invention 1 and Invention 1 of Exhibit Ko 2;
the common feature and difference between Present Invention 10 and Invention 2 of
Exhibit Ko 2, as described below.
A(a) Contents of Invention 1 of Exhibit Ko 1

7

"A light-emitting material for an organic EL device represented by the following
general formula (A)A-Ar-B(A)

wherein Ar is an unsubstituted anthracendiyl group; B represents a heterocyclic grouphaving 2 to 60 carbon atoms, which is mono-substituted with an alkenyl group or an
arylamino group, or a substituted or unsubstituted aryl group having 5 to 60 carbon
atoms, which is mono-substituted with an alkenyl group or an arylamino group; and A
represents an unsubstituted or aryl-substituted naphthyl group."(b) Contents of Invention 2 of Exhibit Ko 1
"An organic EL device comprising a light-emitting layer composed of: the lightemitting material for an organic EL device of Invention 1 of Exhibit Ko 1, or a mixtureof the light-emitting material and an arylamine compound or a styrylamine compound,
wherein the light-emitting layer is sandwiched between a cathode and an anode."
B Common features and differences between Present Invention 1 and Invention 1 of
Exhibit Ko 1(a) Common features"A light-emitting material for an organic EL device comprising a compound having
an anthracene skeleton"(b) Difference 1
Regarding "a compound having an anthracene skeleton" for "a light-emitting
material for an organic EL device," Present Invention 1 describes"an asymmetric anthracene derivative represented by the following general formula(1):[Formula 1]8wherein:
A1 and A2 each independently represent a condensed aromatic hydrocarbon ringgroup selected from a 1-naphthyl group, a 2-naphthyl group, a 1-phenanthryl group, a2-phenanthryl group, a 3-phenanthryl group, a 4-phenanthryl group, a 9-phenanthrylgroup, a 3-methyl-2-naphthyl group, and a 4-methyl-1-naphthyl group;
Ar1 and Ar2 each independently represent an aromatic hydrocarbon ring grouphaving ring carbon atoms of 6 to 50, or one of Ar1 and Ar2 represents a hydrogen atomand the other represents an aromatic hydrocarbon ring group having ring carbon atomsof 6 to 50;
R1 to R8 each independently represent a hydrogen atom, an aromatic hydrocarbon
ring group having ring carbon atoms of 6 to 50, an alkyl group having carbon atoms of
1 to 50 or a cycloalkyl group having carbon atoms of 3 to 50 (wherein when A1 and/or
A2 represent a 1-naphthyl group or a 2-naphthyl group, R1 to R8 each independently
represent a hydrogen atom or an alkyl group having carbon atoms of 1 to 50);
R9 and R10 each independently represent a hydrogen atom, an aromatichydrocarbon ring group having ring carbon atoms of 6 to 50, an alkyl group havingcarbon atoms of 1 to 50 or a cycloalkyl group having carbon atoms of 3 to 50, andneither of R9 and R10 is an alkenyl group; andAr1, Ar2, R9, and R10 are optionally a plural number,
except where, in the general formula (1), groups symmetrical with respect to the xy axis on anthracene bind at 9th and 10th positions of the anthracene at the core"
while Invention 1 of Exhibit Ko 1 describes"the following general formula (A)A-Ar-B(A)

wherein Ar is an unsubstituted anthracendiyl group; B represents a heterocyclic grouphaving 2 to 60 carbon atoms, which is mono-substituted with an alkenyl group or an
arylamino group, or a substituted or unsubstituted aryl group having 5 to 60 carbon
atoms, which is mono-substituted with an alkenyl group or an arylamino group; and A
represents an unsubstituted or aryl-substituted naphthyl group."C

Common feature and difference between Present Invention 10 and Invention 2 of

Exhibit Ko 1
Regarding "a light-emitting material for an organic EL device," Present Invention
10 specifies the material "described in Claim 1," while Invention 2 of Exhibit Ko 1
specifies the material of "Invention 1 of Exhibit Ko 1"; and in this point, they differ

9

from each other (Difference 1'), but the other points are the same.
D(a) Contents of Invention 1 of Exhibit Ko 2
"A hole transport material for an organic multilayer EL device comprising an
asymmetric anthracene-based organic compound,

wherein substituents R1, R2, R3, and R4 are each individually hydrogen, an alkyl grouphaving 1 to 24 carbon atoms, an aryl group or substituted aryl group having 5 to 20
carbon atoms, a heteroaryl group or substituted heteroaryl group having 5 to 24 carbon
atoms, fluorine, chlorine, bromine, or a cyano group."(b) Contents of Invention 2 of Exhibit Ko 2
"An organic multilayer EL device wherein a hole transport layer comprising thehole transport material for an organic multilayer EL device of Invention 1 of Exhibit
Ko 2 is sandwiched between an anode and a cathode"E Common features and differences between Present Invention 1 and Invention 1 of
Exhibit Ko 2(a) Common features"A material for an organic electroluminescent device comprising an asymmetricanthracene derivative represented by the following general formula (1):[Formula 1]10wherein:
A1 and A2 each independently represent a condensed aromatic hydrocarbon ringgroup selected from a 1-naphthyl group, a 2-naphthyl group, a 1-phenanthryl group, a2-phenanthryl group, a 3-phenanthryl group, a 4-phenanthryl group, a 9-phenanthrylgroup, a 3-methyl-2-naphthyl group, and a 4-methyl-1-naphthyl group;
Ar1 and Ar2 each independently represent an aromatic hydrocarbon ring grouphaving ring carbon atoms of 6 to 50, or one of Ar1 and Ar2 represents a hydrogen atomand the other represents an aromatic hydrocarbon ring group having ring carbon atomsof 6 to 50;
R1 to R8 each independently represent a hydrogen atom, an aromatic hydrocarbon
ring group having ring carbon atoms of 6 to 50, an alkyl group having carbon atoms of
1 to 50, or a cycloalkyl group having carbon atoms of 3 to 50 (wherein when A1 and/or
A2 represent 1-naphthyl group or 2-naphthyl group, R1 to R8 each independently
represent a hydrogen atom or an alkyl group having carbon atoms of 1 to 50);
R9 and R10 each independently represent a hydrogen atom, an aromatichydrocarbon ring group having ring carbon atoms of 6 to 50, an alkyl group havingcarbon atoms of 1 to 50 or a cycloalkyl group having carbon atoms of 3 to 50, andneither of R9 and R10 is an alkenyl group; andAr1, Ar2, R9, and R10 are optionally a plural number,
except where, in the general formula (1), groups symmetrical with respect to the xy axis on anthracene bind at the 9th and 10th positions of the anthracene at the core."(b) Difference 2
Present Invention 1 specifies "a light-emitting material for an organic
electroluminescent device" while Invention 1 of Exhibit Ko 2 specifies "a holetransport material for an organic multilayer EL device."

11

F Common features and differences between Present Invention 10 and Invention 2 of
Exhibit Ko 2
Regarding "a material for an organic EL device," Present Invention 10 specifies "alight-emitting

zone

comprises

thelight-emitting

materialfortheorganic

electroluminescent device according to Claim 1 singly or as a component of a mixture
thereof," while Invention 2 of Exhibit Ko 2 specifies "a hole transport layer comprising
the hole transport material for an organic multilayer EL device of Invention 1 of
Exhibit Ko 2"; and in this point, they differ from each other (Difference 2'), but theother points are the same.
(omitted)
V Determination of the court
The court has determined that Reason for Invalidation 1 alleged by Plaintiff isgrounded, and thus, Trial Decision has illegality and should be invalidated even
without making a determination on other points.

Reasons are as follows.

1 Regarding the finding of Invention 1 of Exhibit Ko 1 and the finding of Difference(1), Exhibit Ko 1 has the following descriptions (Exhibit Ko 1; added page numbers
are those described at the bottom of Exhibit Ko 1).
A "Claims
1. A novel aromatic compound represented by the following general formula (A),
A-Ar-B(A)

wherein Ar represents a substituted or unsubstituted anthracendiyl group; B represents
a heterocyclic group having 2 to 60 carbon atoms, which is mono-substituted with analkenyl group or an arylamino group, or a substituted or unsubstituted aryl grouphaving 5 to 60 carbon atoms; A represents a group selected from groups represented by
the following general formulae (1) to (11), which may be substituted with a substitutedor unsubstituted alkyl group having 1 to 30 carbon atoms or a substituted or
unsubstituted phenyl group, wherein A is not a phenyl group substituted with an
arylamino group when B is substituted with an arylamino group,12wherein Ar1 to Ar3 each independently represent a substituted or unsubstituted arylgroup having 6 to 30 carbon atoms, Ar4 represents a substituted or unsubstitutedarylene group having 6 to 30 carbon atoms, Ar5 represents a substituted or
unsubstituted trivalent aromatic residue group having 6 to 30 carbon atoms, R1 and R2
each independently represent a hydrogen atom, a halogen atom, a hydroxyl group, a
substituted or unsubstituted amino group, a nitro group, a cyano group, a substituted or
unsubstituted alkyl group having 1 to 30 carbon atoms, a substituted or unsubstituted
alkenyl group having 2 to 40 carbon atoms, a substituted or unsubstituted cycloalkyl
group having 5 to 40 carbon atoms, a substituted or unsubstituted alkoxyl group having
1 to 30 carbon atoms, a substituted or unsubstituted aromatic hydrocarbon grouphaving 5 to 40 carbon atoms, a substituted or unsubstituted aromatic heterocyclic
group having 2 to 40 carbon atoms, a substituted or unsubstituted aralkyl group having
7 to 40 carbon atoms, a substituted or unsubstituted aryloxyl group having 6 to 40
carbon atoms, a substituted or unsubstituted alkoxycarbonyl group having 2 to 30
carbon atoms, a substituted or unsubstituted silyl group having 3 to 40 carbon atoms ora carboxyl group, Ar1, and Ar2; and R1 and R2 may be independently and respectively
bonded to each other to form a cyclic structure.

132. (A) represents: a heterocyclic group which has 2 to 60 carbon atoms and is monosubstituted with an alkenyl group or an arylamino group; or an aryl group which has 5
to 60 carbon atoms and is mono-substituted with an alkenyl group or an arylaminogroup." (page 59, line 1 to page 61, line 13)"5. The novel aromatic compound according to any one of Claims 1 to 4, which is amaterial for organic electroluminescence devices." (page 63, lines 16 to 17)
B"heretofore known anthracene derivatives form crystals in many cases to cause

fracture of the thin film, and improvement has been desired.

For example, adinaphthylanthracene compound is disclosed in the specification of U.S. Patent No.
0593571. However, since this compound has a symmetric molecular structure in thehorizontal and vertical directions, the molecules are easily arranged to form crystals
during storage at high temperatures and driving at high temperatures. Publication of
Unexamined Patent Application No. 2000-273056 discloses an allylanthracene
compound asymmetric in the horizontal direction, but one of the groups serving as
substituents to the anthracendiyl group is a simple group such as phenyl group andbiphenyl group, and the crystallization cannot be prevented.

...

As the result ofintensive studies to overcome the above problems, the present inventors have foundthat the above problems could be overcome by using a compound which has a highglass transition temperature and an asymmetric molecular structure as the material forthe organic thin film layer of an organic EL device, and completed the present
invention." (page 2, line 10 to page 3, line 1)"B represents: a heterocyclic group having 2 to 60 carbon atoms, which is monosubstituted with an alkenyl group or an arylamino group, or a substituted or
unsubstituted aryl group having 5 to 60 carbon atoms; preferably, a heterocyclic groupwhich has 2 to 60 carbon atoms and is mono-substituted with an alkenyl group or an
arylamino group, or an aryl group which has 5 to 60 carbon atoms and is monosubstituted with an alkenyl group or an arylamino group." (page 7, line 24, to page 8,line 3)"Examples of the alkenyl group as the substituent in B include ... .
Examples of the arylamino group as the substituent in B include ... .
Examples of the substituted or unsubstituted heterocyclic group of B include ... ,and the above group includes the above substituents and has 2 to 60 carbon atoms.
Examples of the aryl group of B include ... , and the above group includes theabove substituents and has 5 to 60 carbon atoms." (page 8, line 4 to page 11, line 8)

14

"Examples of the novel aromatic compound represented by general formula (A) are
shown in the following, but are not limited to the compounds shown as these
exemplary compounds.
(A1)

15

16

" (page 30, line 25 to page 33)"Comparative Example 1... Compound (C1) shown in the following ... was used in place of Compound (A1)used in Example 1 ...

...
Comparative Example 2... Compound (C2) shown in the following ... was used in place of Compound (A1)used in Example 1 ...

...
Comparative Example 3

17

... Compound (C3) shown in the following ... was used in place of Compound (A1)used in Example 1 ...

Example 1
Example 2
Example 3
Example 4
Example 5
Example 6

Table 1
Compoun Voltag Luminanc Efficienc
d in light- e (V) e ofy of lightemitting
emittedemission
layer
light
(cd/A)(cd/m2)
(A1)
6.0
176
2.2
(A2)
6.0
200
2.3
(A3)
6.0
161
3.1
(A4)
6.0
110
2.3
(A5)
6.0
780
2.0
(A6)
6.0
180
2.8

Example 7 (A10)
Example 8 (A20)
Example 9 (B1)
Example 10 (B2)Comparativ (C1)e Example
1Comparativ (C2)e Example
2
Comparativ (C3)e Example
3

Color Tg of
Storageofcompoun test at highemitte d (°C)
temp.
d light
blue
blue
blue
blue
blue
bluish
green
blue
blue
blue
blue
bluish
green

108
120
122
115
114
112

good
good
good
good
good
good

128
124
156
152
ND

good
good
good
good
crystallize
d

6.0
6.0
6.0
6.0
6.0

250
180
260
313
120

2.9
3.1
2.2
3.1
2.1

6.0

125

2.1

blue

95

crystallize
d

6.0

153

2.5

blue

109

crystallized... As shown in Table 1, in Comparative Example 1, which used Compound (C1)having good symmetry, defects appeared on the light-emitting surface due tocrystallization, and the emitted light was bluish green and the purity of the blue color
was not excellent.

In Comparative Examples 2 and 3, Compounds (C2) and (C3) had

an asymmetric molecular structure in the horizontal direction, but crystallization took
place and this is considered to occur due to a low glass transition temperatures. Since
the compounds of the present invention were asymmetric and had relatively high glass18

transition temperatures, the results of the storage test at a high temperature wereexcellent." (page 54, line 14 to page 56, line 9)(2) Regarding the findings of Trial Decision
A(a) Trial Decision has determined that it is natural to understand that the inventionspecifying matter "B represents a heterocyclic group having 2 to 60 carbon atoms, or asubstituted or unsubstituted aryl group having 5 to 60 carbon atoms, which is monosubstituted with an alkenyl group or an arylamino group" in Claim 1 of Exhibit Ko 1 isthat "B represents a heterocyclic group having 2 to 60 carbon atoms, which is monosubstituted with an alkenyl group or an arylamino group, or a substituted or
unsubstituted aryl group having 5 to 60 carbon atoms, which is mono-substituted withan alkenyl group or an arylamino group."(b) However, in the Japanese structure of the invention-specifying matter of theabove (a), the part "a heterocyclic group having 2 to 60 carbon atoms, which is monosubstituted with an alkenyl group or an arylamino group" and the part "a substituted or
unsubstituted aryl group having 5 to 60 carbon atoms" are placed after the part "which
is mono-substituted with an alkenyl group or an arylamino group" without separation
by a particular comma, and the two portions are parallelly arranged with the word "or."Thus, it is natural to construe that the part "which is mono-substituted with an alkenylgroup or an arylamino group" does not modify the part "a substituted or unsubstituted
aryl group having 5 to 60 carbon atoms."
This is supported due to a comparison of: the description of Claim 2 "B in generalformula (A) represents: a heterocyclic group which has 2 to 60 carbon atoms and ismono-substituted with an alkenyl group or an arylamino group; or an aryl group whichhas 5 to 60 carbon atoms and is mono-substituted with an alkenyl group or an
arylamino group," which is dependent from Claim 1 of Exhibit Ko 1, is a subordinate
conception and is understood as limiting the scope of Claim 1; andthe contrastive description, in which the part a heterocyclic group which has 2 to 60
carbon atoms and is mono-substituted with an alkenyl group or an arylamino group"and the part "a substituted or unsubstituted aryl group which has 5 to 60 carbon atoms
and is mono-substituted with an alkenyl group or an arylamino group" are describedparallely with the word "or," the part "which is mono-substituted with an alkenyl groupor an arylamino group" is repeated before and after the term "or" and thereby, it isclear that the portion "which is mono-substituted with an alkenyl group or an19arylamino group" modifies the part "aryl group which has 5 to 60 carbon atoms."(c)Further, if the above should be understood as "a substituted or unsubstituted arylgroup which has 5 to 60 carbon atoms and is mono-substituted with an alkenyl groupor an arylamino group" as found in the Trial Decision, it is construed that there exist
the part "is mono-substituted with an alkenyl group or an arylamino group" and thepart "unsubstituted," and inconsistency arises.

If it is construed as "is mono-

substituted with an alkenyl group or an arylamino group, and is (further) substituted or(the other) is unsubstituted" without the inconsistency,
literally, there is no other way to construe that: only the invention-specifying matter"mono-substituted with an alkenyl group or an arylamino group" cannot restrict theother portion of the aryl group as being substituted or unsubstituted; and thus, for
restricting it, the invention-specifying matter is added.

If so, it is unnatural because

the invention-specifying matter having the same content "substituted or unsubstituted"
is repeatedly added.

In fact, regarding the part "a heterocyclic group having 2 to 60

carbon atoms, which is mono-substituted with an alkenyl group or an arylamino group"in Claim 1 of Exhibit Ko 1, the phrase "substituted or unsubstituted" is not added to"the heterocyclic group." However, the part describing examples of the heterocyclic
group in the description of Exhibit Ko 1 (page 8, line 16 and subsequent portion)
describes "Examples of the substituted or unsubstituted heterocyclic group of B
include ... ."No phrase is added to the heterocyclic group of Claim 1, and there is apremise that there is no limitation on being substituted or unsubstituted.
(d)

In view of the above, it is understood that the above invention-specifying matterof Claim 1 in Exhibit Ko 1 is found as containing both "a heterocyclic group having 2
to 60 carbon atoms, which is mono-substituted with an alkenyl group or an arylaminogroup" and "a substituted or unsubstituted aryl group having 5 to 60 carbon atoms"
from the description thereof.
(e)

In addition, as in the above (1) B, the description of Exhibit Ko 1 states "Brepresents: a heterocyclic group having 2 to 60 carbon atoms, which is monosubstituted with an alkenyl group or an arylamino group, or a substituted or
unsubstituted aryl group having 5 to 60 carbon atoms; preferably, a heterocyclic groupwhich has 2 to 60 carbon atoms and is mono-substituted with an alkenyl group or an
arylamino group, or an aryl group which has 5 to 60 carbon atoms and is monosubstituted with an alkenyl group or an arylamino group." (page 7, line 24, to page 8,20

line 3), which is in line with the construction of the above (b) to (d).
B

Then, in light of the fact that the description of Exhibit Ko 1 describes six

synthesis examples of anthracene derivatives of Claim 1, various anthracene
derivatives having a considerably complicated substituent as of the priority date ofPresent Patent were synthesized (Exhibits Ko 2 to 5, 10 and 11), it is found that all of
the anthracene derivatives covered by Claim 1 of Exhibit Ko 1 could have beensynthesized by a person ordinarily skilled in the art as of the priority date of Present
Patent.
Further, Claim 5 of Exhibit Ko 1 states that the novel aromatic compound of Claim
1 is used for organic electroluminescence devices, and furthermore, the above
compound is used for a light-emitting layer in examples thereof.

It is thus understoodthat the novel aromatic compounds (anthracene derivatives) of Claim 1 are used as alight-emitting material for an organic electroluminescent device, although they are invarying degrees in terms of the efficiency of light emission, the luminance, thelifetime, the heat resistance, the thin film forming property, and other characteristics.
C

In view of the above, the invention found from Exhibit Ko 1, which is to becompared with Present Invention 1, is as follows (hereinafter, referred to as Invention
1 of Exhibit Ko 1'").
"A light-emitting material for organic electroluminescent device represented by thefollowing general formula (A),
A-Ar-B(A)

wherein Ar represents a substituted or unsubstituted anthracendiyl group; B represents
a heterocyclic group having 2 to 60 carbon atoms, which is mono-substituted with analkenyl group or an arylamino group, or a substituted or unsubstituted aryl grouphaving 5 to 60 carbon atoms; A represents a group selected from groups represented by
the following general formulae (1) to (11), which may be substituted with a substitutedor unsubstituted alkyl group having 1 to 30 carbon atoms or a substituted or
unsubstituted phenyl group, wherein A is not a phenyl group substituted with an
arylamino group when B is substituted with an arylamino group,(Note for the judgment: the formulas (1) to (11) are as described in the above (1) A)
wherein Ar1 to Ar3 each independently represent a substituted or unsubstituted arylgroup having 6 to 30 carbon atoms, Ar4 represents a substituted or unsubstitutedarylene group having 6 to 30 carbon atoms, Ar5 represents a substituted or21

unsubstituted trivalent aromatic residue group having 6 to 30 carbon atoms, R1 and R2
each independently represent a hydrogen atom, a halogen atom, hydroxyl group, a
substituted or unsubstituted amino group, a nitro group, a cyano group, a substituted or
unsubstituted alkyl group having 1 to 30 carbon atoms, a substituted or unsubstituted
alkenyl group having 2 to 40 carbon atoms, a substituted or unsubstituted cycloalkyl
group having 5 to 40 carbon atoms, a substituted or unsubstituted alkoxyl group having
1 to 30 carbon atoms, a substituted or unsubstituted aromatic hydrocarbon grouphaving 5 to 40 carbon atoms, a substituted or unsubstituted aromatic heterocyclic
group having 2 to 40 carbon atoms, a substituted or unsubstituted aralkyl group having
7 to 40 carbon atoms, a substituted or unsubstituted aryloxyl group having 6 to 40
carbon atoms, a substituted or unsubstituted alkoxycarbonyl group having 2 to 30
carbon atoms, a substituted or unsubstituted silyl group having 3 to 40 carbon atoms ora carboxyl group, Ar1 and Ar2; and R1 and R2 may be independently and respectively
bonded to each other to form a cyclic structure."
D Then, a prima facie difference between Present Invention 1 and Invention 1 of
Exhibit Ko 1' is as follows.
"Regarding A2, Ar2 and R10 of Present Invention 1, which correspond to thesubstituent B of Invention 1 of Exhibit Ko 1', A2 is a condensed aromatic hydrocarbon
ring group selected from a 1-naphthyl group, a 2-naphthyl group, a 1-phenanthrylgroup, a 2-phenanthryl group, a 3-phenanthryl group, a 4-phenanthryl group, a 9phenanthryl group, a 3-methyl-2-naphthyl group, and a 4-methyl-1-naphthyl group,
which is substituted with an aromatic hydrocarbon ring group having ring carbon
atoms of 6 to 50, Ar2 is an aromatic hydrocarbon ring group having ring carbon atomsof 6 to 50, and R10 is a hydrogen atom, an aromatic hydrocarbon ring group having
ring carbon atoms of 6 to 50, an alkyl group having carbon atoms of 1 to 50 or a
cycloalkyl group having carbon atoms of 3 to 50 but is not an alkenyl group, except
where groups symmetrical with respect to x-y axis on anthracene bind at the 9th and10th positions of the anthracene at the core while the substituent B of Invention 1 of
Exhibit Ko 1' is "substituted or unsubstituted aryl group having carbon atoms of 5 to60."
E

It is considered that the feature pertaining to the prima facie difference of Present

Invention 1 described in the above D literally includes those covered by "substituted or
unsubstituted aryl group having 5 to 60 carbon atoms" of Invention 1 of Exhibit Ko 1'.
Then, as of the priority date of Present Invention, anthracene derivatives were22

widely used as a light-emitting material for an organic electroluminescent device, and
it is found that, with the purpose of improving the efficiency of light emission, theluminance, the lifetime, the heat resistance, the thin film forming property, and othercharacteristics, a substituent to be used has been studied (Exhibits Ko 3 to 5, 10 and
11). Thus, it would have been sufficiently possible for a person ordinarily skilled in
the art to select the substituent pertaining to Present Invention 1 from substituent
options of Invention 1 of Exhibit Ko 1', and it is not considered that the substituent
could not have been selected as the substituent of Invention 1 of Exhibit Ko 1'.
Considering the above, the feature pertaining to the prima facie difference ofPresent Invention 1 described in the above D includes those covered by "substituted or
unsubstituted aryl group having 5 to 60 carbon atoms" of Invention 1 of Exhibit Ko 1',
and it must be said that the prima facie difference is not a substantial difference.
In view of the above, Trial Decision is erroneous in identifying Invention 1 of
Exhibit Ko 1, and the finding of Difference 1 is also erroneous since it is based on thiserroneous identification of Invention 1 of Exhibit Ko 1.
(3) Regarding Defendant's allegations
A Defendant alleges that
it is obvious that "the above substituents" in the description "Examples of the arylgroup of B include ... , and the above group includes the above substituents and has 5
to 60 carbon atoms." (page 11, lines 3 to 8) in the description of Exhibit Ko 1 refer toalkenyl groups, etc., and thus, a person ordinarily skilled in the art can understand thatthe substituent B is an aryl group having 5 to 60 carbon atoms and including an alkenylgroup, etc., that is mono-substitution of an alkenyl group, etc. is essential (the above
IV. 1 (1) A).
However, the portion pointed out by Defendant is a description on the substituent B
in the invention of Claim 1 of Exhibit Ko 1 in the portion "The Most Preferred
Embodiment to Carry out The Invention" of the description of Exhibit Ko 1, and thus,
it is not construed that the feature of the substituent B is limited by the above portion.
Therefore, it is impossible to directly understand that mono-substitution of an alkenylgroup, etc. in the substituent B is essential based on the description of the above
portion as alleged by Defendant.

Also, prior to the above portion, the beginning of"The Most Preferred Embodiment to Carry out The Invention" states "B represents: aheterocyclic group having 2 to 60 carbon atoms, which is mono-substituted with analkenyl group or an arylamino group, or a substituted or unsubstituted aryl grouphaving 5 to 60 carbon atoms; preferably, a heterocyclic group which has 2 to 60 carbon

23

atoms and is mono-substituted with an alkenyl group or an arylamino group, or an arylgroup which has 5 to 60 carbon atoms and is mono-substituted with an alkenyl groupor an arylamino group." (page 7, line 24, to page 8, line 3).

In light of this statement,

it is possible to understand that "the above substituents" are not limited to an alkenylgroup or an arylamino group, but signify any group that "substitutes" for an aryl group.
Therefore, the above allegation of Defendant cannot be adopted.
Further, Defendant alleges that even when Claim 1 of Exhibit Ko 1 is construed asalleged by Defendant, Claim 2 keeps the consistency as being dependent from Claim 1(the above IV. 1 (1) G).
However, in light of the explanations made in the above (2) A (b) to (d), the above
allegation of Defendant cannot be adopted.
B Defendant alleges as follows.
(i) Specific examples and working examples in Invention 1 of Exhibit Ko 1 listed in
the description of Exhibit Ko 1 are all an aryl group or a heterocyclic group monosubstituted by an alkenyl group, etc. (the above IV, 1(1) B).
(ii) The problem to be solved by Exhibit Ko 1 Invention is to prevent crystallization,and there is a description that this problem cannot be solved when one ofanthracendiyl-substituted groups is simply a phenyl group (an aryl group having 6
carbon atoms) or a biphenyl group (a phenyl group mono-substituted by a phenylgroup). Thus, it should be construed that the substituent B does not include the abovegroups. Then, this construction is inconsistent with the construction of the above (2)C. Further, it is understood that the invention of Exhibit Ko 1 is an invention on acompound having an asymmetric molecular structure.

However, when theconstruction of the above (2) C is adopted, Invention 1 of Exhibit Ko 1 includes
compounds having a "symmetric" molecular structure and also includes symmetricdinaphthylanthracene of Comparative Example 1 (the above IV. 1(1) C).
(iii) Exhibit Ko 1 describes that the problem has been solved by a compound having
a high glass transition temperature and an asymmetric molecular structure. Then,compounds of the working examples indicating a high glass transition temperature arecommon in that they include an alkenyl group (the above IV, 1 (1) D).
(iv) The prosecution history of Patent Application No. 2002-114400, which is a basic
application claiming the priority for the PCT application of Exhibit Ko 1, indicates thata person ordinarily skilled in the art having learned Exhibit Ko 1 considers that thesubstituent B is limited to an aryl group or a heterocyclic group mono-substituted by analkenyl group or an arylamino group described in Detailed Description of The

24

Invention and cannot understand that in other cases, the compounds can be produced
and they have equal properties and functions (the above IV, 1 (1) E).
(v) A person ordinarily skilled in the art, assuming that it is common technicalknowledge that an alkenyl group is a promising substituent that improves the purity ofblue in a blue light-emitting material, the description of Exhibit Ko 1 based on the factthat Invention 1 of Exhibit Ko 1 has an object to provide a light-emitting material foran organic electroluminescent device, which emits blue light (the above IV, 1 (1) F).
Thus, Defendant alleges that, in view of the contents described in Exhibit Ko 1, it
should be understood that it is essential that "aryl group" of the substituent B in Claim
1 is "mono-substituted by an alkenyl group or an alylamino group."
However, in identifying a cited invention from publicly known documents, what
invention can be understood by a person ordinarily skilled in the art from the
documents should be studied. However, it is common to describe a wide range oftechnical matters in original claims of an application described in a publication like
Exhibit Ko 1 in the present case, and especially, in the case that substituents at several
positions are alternatively described like Claim 1 of Exhibit Ko 1, various optional
combinations are included (the same is applicable to, for example, other publications(Exhibits Ko 2 to 7, 10 and 12, and Exhibits Otsu 1 and 5) submitted in the presentcase).

On the other hand, there are many cases wherein configurations specificallydisclosed in descriptions are limited.

In these cases, it is not understood that a person

ordinarily skilled in the art construes that the technical matters disclosed in the
documents are limited to those specifically disclosed therein.
Further, usually, among various compounds included in a wide scope of a claim,
those specifically exemplified in a description are understood as being preferred.

Infact, the description of Exhibit Ko 1 describes "preferably an aryl group which has 5 to
60 carbon atoms and is mono-substituted with an alkenyl group or an arylamino group"(page 8, lines 2 to 3).

Moreover, if the construction alleged by Defendant is adopted,"aryl group" of the substituent B in Invention 1 of Exhibit Ko 1 has to be "monosubstituted with an alkenyl group or an arylamino group."

However, all of thoselisted in the above (i), (iii), and (v) are those including an alkenyl group and not thoseincluding an arylamino group; and the points mentioned in the above (iii) and (v)directly lead to the understanding that if an alkenyl group is not included, the effectcannot be produced.

In view of the above, it should be understood that the specificexamples and the working examples of Exhibit Ko 1 indicate merely preferable
examples, and the points mentioned in the above (i), (iii), and (v) does not allow theunderstanding that "aryl group" of the substituent B in Invention 1 of Exhibit Ko 1 has

25to be "mono-substituted with an alkenyl group or an arylamino group."
Further, regarding the above (ii), it is certain that when the construction of theabove (2) C is adopted, one of anthracendiyl-substituted groups include simply aphenyl group (an aryl group having 6 carbon atoms) or a biphenyl group (a phenylgroup mono-substituted by a phenyl group), and symmetric dinaphthylanthracene ofComparative Example 1 is included. These are not consistent with the problem to besolved by the invention described in Exhibit Ko 1.
However, as of the priority date of Present Patent, anthracene derivatives having
various substituents were already used widely as a light-emitting material for an
organic electroluminescent device, and it is found that, with the purpose of improving
the efficiency of light emission, the luminance, the lifetime, the heat resistance, thethin film forming property, and other characteristics, a substituent to be introduced has
been studied (Exhibits Ko 3 to 5, 10, and 11). Considering the above, it is foundunderstandable that all of the anthracene derivatives of Claim 1 of Exhibit Ko 1 can beplausibly used as a light-emitting material for an organic electroluminescent device,although they vary in degree in terms of the efficiency of light emission, theluminance, the lifetime, the heat resistance, the thin film forming property, and othercharacteristics. Then, it cannot be said that a person ordinarily skilled in the art
understands that those except the above forms cannot solve the problem of Exhibit Ko
1 due to the same reason. The point mentioned in the above (ii) does not allow aperson ordinarily skilled in the art to directly understand that "aryl group" of thesubstituent B in Invention 1 of Exhibit Ko 1 has to be limited to one "mono-substituted
with an alkenyl group or an arylamino group."
Further, regarding the above (iv), it is obvious that the technical matters understoodfrom the publicly known documents are not always limited to the configuration
satisfying the patent requirement. This is also supported, for example, based on thefact that the inventions mentioned in the numbers of Article 29, paragraph (1) of the
Patent Act are not limited to patented inventions.

Therefore, if the description of aclaim or a description lacks the support requirement or the enablement requirement andthus, may raise a reason for refusal, there is no reason to restrict the scope of thetechnical matters understood by a person ordinarily skilled in the art having read the
publicly known documents as technical documents to the scope satisfying each of theabove requirements.

In addition, as explained above, it is common that a claim

before being subjected to the examination describes a wide range of technical matters.
Even if the anthracene derivatives covered by Claim 1 of Exhibit Ko 1 vary in26performance, they are found to be usable as a light-emitting material for an organic
electroluminescent device.

In light of the above, the point of the above (iv) is not a

ground that a person ordinarily skilled in the art directly understands that thesubstituent B of Invention 1 of Exhibit Ko 1 is limited to "an aryl group or aheterocyclic group mono-substituted with an alkenyl group or an arylamino group."
In view of the foregoing, each of the above allegations of Defendant cannot be
adopted.
2 Regarding the patentability(1) Regarding the prominent effect
A When an invention pertaining to a patent is covered by another invention stated ina prior publicly known document as a subordinate conception thereof, it should beconstrued that the first-mentioned invention is not patentable unless it is specificallydisclosed in a prior publicly known document and produces a remarkable specificeffect in comparison to the invention stated in the prior publicly known document; inother words, an effect that differs in quality from that produced by the invention statedin the prior publicly known document, or a remarkably superior effect despite having
the same quality as that produced by such invention.
As explained in the above 1, Present Invention 1 includes those covered by
Invention 1 of Exhibit Ko 1'.
B

It is understood that Defendant has found that Example 1 (AN7) of Present

Invention 1 exhibited, in the comparative test with Example 1 (A1) of Exhibit Ko 1, an
improved performance of the light emission efficiency by 17.6% and an extended timeof 90%-life by 87.9%, and thus, alleges that Present Invention 1 has a remarkableeffect compared to Invention 1 of Exhibit Ko 1' (the above IV, 1 (2) B (c) a) and
Present Invention 1 has a remarkable superior effect despite having the same quality incomparison with Invention 1 of Exhibit Ko 1'.
Then, the written statement (Exhibit Ko 21) prepared by Defendant, Electronic
Materials Department, Electronic Materials Development Center A includes astatement that is in line with the above.

Further, the above written statement

describes that Example 5 in Present Corrected Description is excellent in current
efficiency and 90%-life compared to Example 1 of Exhibit Ko 1.
Hereafter, whether Present Invention 1 has a remarkable and specific effectcompared to Invention 1 of Exhibit Ko 1' will be studied.

27

Example 1

Table 1
Compound in Efficiency oflight-emitting light emission
layer(cd/A)
AN7/D1
10.9

Half-life(hours)
4,200

Example 2

AN8/D1

10.8

4,200

Reference Example 1

AN11/D1

11.0

5,800

Example 3
Reference Example 2

AN13/D1
AN44/D1

10.8
10.0

3,700
3,000

Example 4

AN6/D1

10.1

3,300

Example 5

AN12/D1

10.8

4,900

Reference Example 3

AN11/D1

10.3

3,700

Comparative Example 1

an-1/D1

9.0

2,200

C
(a)

In accordance with Table 1 (Note of the judgment: Table 1 shown at the righthand) of [0097] of Present Corrected Description, it is found that Examples 1 and 5 areequal to or more excellent than other Examples 2, 3, and 4 in terms of the lightemission efficiency and the half-life.
On the other hand, the light emission efficiency in each Example of Exhibit Ko 1 isshown in Table 1 in the above 1 (1) B (no description on the lifetime), and Examples 2
to 4, 6 to 8, and 10 exhibit a higher light emission efficiency than Example 1.
In view of the above, there is no other way to state that it is inapparent whether
Examples described in Present Corrected Description have an excellent effect in termsof the light emission efficiency even when other Examples of Present Corrected
Description (not described in the written statement (Exhibit Ko 21)) are compared toother Examples of Exhibit Ko 1 in terms of the operational effect; and rather, it isinferred that no difference in the light emission efficiency from examples described in
the written statement is found. Further, it is inapparent whether the other Examplesof Present Corrected Description not described in the written statement are excellent inlifetime compared to the other Examples of Exhibit Ko 1.
(b) Moreover, Examples 1 to 5 in Table 1 in [0097] of Present Corrected Description
merely show the operational effect of a small portion of compounds, which are similar
to one another, among a much broader range of compounds of Present Invention 1.
That is, as in the above II, 2, in the general formula (1) of Present Invention 1, nine28

options are present for A1 while only two of them (2-naphthyl group and 9phenanthryl) are used in Examples; nine options are present for A2 while only two ofthem (1-naphthyl group and 2-naphthyl group) are used in Examples; a considerablylarge number of options are present for Ar1 while only one of them (hydrogen atom) isused in Examples; a considerably large number of options are present for Ar2 while
only three of them (phenyl group, 2-naphthyl group and 2-biphenylyl group) are usedin Examples; and a considerably large number of options are present for R 1 to R10
while only one of them (hydrogen atom) is used in Examples.
Meanwhile, it is common technical knowledge that during the usage as a lightemitting material, properties such as light emission efficiency or lifetime are varied
depending on the combination of the above substituents (Exhibits Ko 3 to 5, 10 and
11).
Considering the above, it is impossible to recognize that the entirety of Present
Invention 1 has the same effect from the description of Examples 1 to 5 in Present
Corrected Description.
(c)

In view of the above, the description of the written statement in the above B is not

sufficient to find that Present Invention 1 has a remarkable and specific effectcompared to Invention 1 of Exhibit Ko 1', and no other evidence to find so is found.
Therefore, it cannot be said that Present Invention 1 has a remarkable and specificeffect compared to Invention 1 of Exhibit Ko 1'.
(2) Regarding the allegations of DefendantA

Defendant makes various allegations (the above IV, 1 (2) B (c) a to c) for

evaluating Present Invention 1 as having a prominent effect based on the results of thecomparative tests described in the statement (Exhibit Ko 21) in the above (1) B.
However, in light of the explanation in the above (1), all of the above allegations
cannot be adopted.
B

Defendant alleges that Present Invention 1 should be evaluated as having aprominent effect based on the fact that Present Invention has improved performances
for the half-life and the light emission efficiency in comparison with the symmetricdinaphthylanthracene of a comparative example described in Present Corrected
Description (the above IV, 1 (2) B (c) d).
However, since no prominent effect is found in comparison with Invention 1 of
Exhibit Ko 1', the above allegation cannot be adopted.

29

C

Defendant alleges thatwhen the scope of a patented invention as a generic conception is extremely broad (andthe construction thereof is even doubted), the requirement for a prominent operational
effect allows only an inventor holding the generic conception to acquire a patent with awide scope and this prevents competitors from making an invention, thereby impeding
fair competition and constituting a hindrance to industrial development; and thus, thenovelty or the inventive step should be granted to an invention with a subordinate
conception even without the need of requiring a remarkable operational effect (theabove IV, 1 (2) B (c) e).
Regarding the above allegation, it is essentially doubtful to determine whether or
not the requirement for a remarkable specific effect is needed only in accordance with
an ambiguous standard that "the scope of a patented invention as a generic conception
is extremely broad."

Aside from that point, it is construed that the purport that, inallowing the patentability when an invention of patent application is covered byanother invention stated in a prior publicly known document as a subordinate
conception thereof, the invention should satisfy the requirements that the invention is
not specifically disclosed in a prior publicly known document and produces aremarkable specific effect in comparison to the another invention stated in the priorpublicly known document, resides in the point that the invention as a subordinate
conception is already publicly disclosed, makes no novel contribution to industrial
development, and should not be patented essentially; however, when the above
requirements are satisfied, it agrees with the spirit of the Patent Act with the object of
encouraging an invention contributing to the industrial development.

Considering theabove, each of the above requirements is essential when a patent is exceptionallygranted to an invention as a subordinate conception.
Accordingly, the allegation of Defendant, which is opposite to the purport, cannot
be adopted.
3 Summary
In view of the foregoing, the determination of the Trial Decision that Present
Invention 1 could not have been easily made by a person ordinarily skilled in the art
based on Invention 1 of Exhibit Ko 1, etc. is erroneous.
In addition, the determination of Trial Decision on Present Inventions 2 to 14 isalso erroneous due to the same reason.

30

VI. Conclusion
Accordingly, the claim of Plaintiff is grounded and thus allowed, and the judgment
is made as in the main text.
Intellectual Property High Court, 3rd Division
Presiding judge:

ISHII Tadao

Judge:NISHI Rika

Judge:KAMIYA Kouki

31