Patent
Right

Date
Case number

October 10, 20192019 (Ne) 10031

Court

Intellectual
Property
High Court, Second
Division- A case in which, with regard to the so-called sub combination invention titled"DRUG DISPENSING ROLL PAPER”, the description in the scope of claims of
the invention of an article should be interpreted to specify the structure,
characteristics, and the like of the article, and the description of "used" expresses
that the roll paper can be used in the drug dispensing device specified by theconstituent feature.
- A case in which the first court defendants selling the defendant's product reusing
the component of the genuine product made by the first court plaintiff to which thetrademark is affixed alleged that all the purchasers purchased the defendant's
product to which the trademark of the first court plaintiff is affixed by recognizingthat it is a non-genuine product and thus, trademark right infringement is notestablished, but it is not found that all the purchasers accurately recognized that thedefendant's product is not the product of the first court plaintiff, and Article 26,
paragraph (1), item (vi) of the Trademark Act is not applied or substantial illegality
is not lacking.
Case type: Injunction, etc.
Result: Appeal dismissed
References: Article 70 of the Patent Act, Article 26, paragraph (1), item (vi) of theTrademark Act
Summary of the Judgment
1. This case is a case in which the first court plaintiff having the two trademark
rights (each of the present trademark rights) and having the patent right (present
patent right) of the invention titled "DRUG DISPENSING ROLL PAPER" alleged
to the first court defendants who manufactured/sold the defendant's productreusing the used hollow core tube (to which the trademark according to each of theaforementioned trademark rights is affixed) of the roll paper made by the firstcourt plaintiff for drug dispensing used for the drug dispensing device made by the
first court plaintiff that the product manufactured/sold by the first court defendants
infringed the present patent right and each of the present trademark rights , andclaimed [i] injunction of sales and the like and disposal of manufacturing facilities
and the like under Article 36, paragraphs (1) and (2) of the Trademark Act; [ii]compensation for damage under Articles 709 and 719, paragraph (2) of the Civil
Code as well as Article 102, paragraph (2) of the Patent Act or Article 38,
paragraph (2) of the Trademark Act; and [iii] as the alternative claim for each of
the aforementioned claims for compensation for damage, return of unjustⅰenrichment value and payment of the delay damages thereto as the claim for returnof the unjust enrichment under Articles 703 and 704 of the Civil Code.
2. The judgment in prior instance (Osaka District Court, 2016 (Wa) 7536/Judgment
on March 5, 2019) found the infringement of the present patent right and each of
the trademark rights by the first court defendants and approved the claims to thelimit of the payment of compensation for damage of 4,156,644 yen and the delay
damages thereto from the first court defendant A, the joint payment of thecompensation for damage of 716,378 yen and the delay damages thereto from thefirst court defendants, the payment of unjust enrichment value of 827,818 yen andthe delay damages thereto from the first court defendant A, and the payment of theunjust enrichment value of 474,242 yen and the delay interest thereto from thefirst court defendant B and dismissed all the remaining principal claims andalternative claims.
The first court plaintiff instituted an appeal against the portion in which the
injunction of sales and the like was dismissed, while first court defendants
instituted an appeal against the portion in which each of the first court defendantslost.
3. This judgment approved infringement of the present patent right and each of thepresent trademark rights and did not approve the need for injunction and dismissed
all the appeals by the first court plaintiff and the first court defendants.

The

issues of this case are varied, but the gist of reasons related to infringement of thepresent patent right and each of the present trademark rights is as follows.
(1) In the invention according to the present patent right (present invention),
Constituent Feature A specifies mainly the configuration of the drug dispensing
device and the other Constituent Features B to E specify mainly the configurationof the roll paper used for the drug dispensing device, and the roll paper is
described to be "used" for the drug dispensing device in Constituent Feature A.
The present invention is found to be the invention of an article which is the "drugdispensing roll paper", and since the description in the scope of claims of theinvention of the article should be interpreted to specify the structure,
characteristics, and the like of the article, and the term "used" is described as"used for the drug dispensing device ..." in Constituent Feature A, the term "used"in Constituent Feature A is interpreted to express that the roll paper is usable forthe drug dispensing device specified by Constituent Feature A.
Since it is found that the defendant's product (that in which the drug
dispensing paper is wound again on the used hollow core tube of the roll paperⅱmade by the plaintiff) fulfills the specifying matters according to each of theconstituent features and can be used for the drug dispensing device spe cified byConstituent Feature A, the defendant's product can be considered to belong to thetechnical scope of the present invention, and whether the defendant's product is
actually used for the drug dispensing device specified by Constituent Feature A
does not influence the judgment on fulfillment of the constituent features.
(2) The first court defendants allege that, since the defendant's product was
sold by explicitly indicating that it is a non-genuine product and the purchasers are
dispensing pharmacies, the purchasers accurately recognize that the defendant's
product is a non-genuine product, and since a source indicating function or aquality assurance function is not harmed, Article 26, paragraph (1), item (vi) of theTrademark Act is applied or substantial illegality is lacking and thus, thetrademark right infringement is not established.

However, in view of the form ofadvertisement/sales of the defendant's product, it is not found that the fact of beinga non-genuine product is not always indicated explicitly, and even though they aredispensing pharmacies, their attention is not necessarily higher than that of general
consumers and the like.

Therefore, it is not found that all the purchasers

accurately recognized that the defendant's product was a non-genuine product; thatis, it is not the product of the first court plaintiff, and the aforementioned
allegation by the first court defendants lacks the premise and cannot be employed.

ⅲ

Judgment rendered on October 10, 20192019 (Ne) 10031, Appeal case of seeking injunction against patent infringement, etc.
(Court of Prior Instance: Osaka District Court 2016 (Wa) 7536)
Date of conclusion of oral argument: July 4, 2019
Judgment
Appellant and appellee: YUYAMA Co. Ltd. (hereinafter referred to as "first court
plaintiff")
Appellant and appellee: NEXT INC. (hereinafter referred to as "first court defendantNEXT")
Appellant and appellee: Yoshiya Interior Co., Ltd. (hereinafter referred to as "firstcourt defendant Yoshiya")
Main text
1. All the appeals of this case shall be dismissed.
2. The first court plaintiff shall bear the cost of the appeal incurred in the first court
plaintiff, and the first court defendant NEXT and the first court defendant Yoshiya
shall bear the cost of the appeal incurred in themselves.
Facts and reasons
The abbreviations of the terms and the meanings of the abbreviations below shallfollow those in the judgment in prior instance, other than those added in this judgment,
and the "plaintiff" in the judgment in prior instance shall read the "first court
plaintiff", the "defendant NEXT" shall read the "first court defendant NEXT", the"defendant Yoshiya" shall read the "first court defendant Yoshiya", and the"defendants" shall read the "first court defendants" as appropriate.

Moreover, the"attachment" in the cited portion in the judgment in prior instance are all revised to"attachment in the judgment in prior instance".
No. 1

Gist of the appeal

1. First court plaintiff(1) The portion related to the claim for injunction on the ground of the trademark
right in the judgment in prior instance shall be reversed.
1(2) The first court defendant NEXT shall not affix the mark described in the listof marks in the attachment in the judgment in prior instance to the articles
described in the list of defendant NEXT's products in the attachment in the
judgment in prior instance, or sell or display for sales the articles described in
the list of defendant NEXT's products in the attachment in the judgment inprior instance with the mark affixed.
(3) The first court defendant Yoshiya shall not affix the mark described in the listof marks in the attachment in the judgment in prior instance to the articles
described in the list of defendant Yoshiya's products in the attachment in the
judgment in prior instance, or sell or display for sales the articles described in
the list of defendant Yoshiya's products in the attachment in the judgment inprior instance with the mark affixed.
2. First court defendants(1) The portion in which the first court defendants lost in the judgment in priorinstance shall be reversed.
(2) With regard to the aforementioned portion, all the claims by the first court
plaintiff are dismissed.
No. 2

Outline of the case
1. This case is a case in which the first court plaintiff having each of the
trademark rights described in the lists I and II of the trademark rights in theattachment in the judgment in prior instance (each of the present trademark
rights) and having the patent right related to the invention titled "drugdispensing roll paper" (Patent No. 4194737, the present patent right) allegedthat the products manufactured/sold by the first court defendants infringed thepresent patent right and each of the present trademark rights, and claimed [i]injunction of sales and the like and disposal of manufacturing facilities and thelike under Article 36, paragraphs (1) and (2) of the Trademark Act; [ii]principal payment of damages under Articles 709 and 719, paragraph (2) of the
Civil Code as well as Article 102, paragraph (2) of the Patent Act or Article 38,
paragraph (2) of the Trademark Act of (i) 50 million yen which is a part of thedamages in the amount of 56.76 million yen and delay damages thereto at a
rate of 5% per annum from the day following the date of service of thecomplaint (September 5, 2016) until completion of the payment in relation to
the defendant NEXT's product sold by the first court defendant NEXT from thefirst court defendant NEXT; and (ii) 50 million yen which is a part of t hedamages in the amount of 113.52 million yen and delay damages thereto at the2rate of 5% per annum prescribed in the Civil Code from the day following thedate of service of the complaint (September 5, 2016 for the first court
defendant NEXT and 2nd day of the same month for the first court defendant
Yoshiya) until completion of the payment in relation with the defendant
Yoshiya's product sold by the first court defendant Yoshiya from the first court
defendant Yoshiya (joint payment for the overlapped portion); and [iii] as thealternative claim for each of the aforementioned claims for damages, paymentof return of unjust enrichment value 11,793,600 yen from the first court
defendant NEXT and 3,356,640 yen from the first court defendant Yoshiya andthe delay damages thereto at the rate of 5% per annum prescribed in the Civil
Code from the day following the date of service of the change petition as ofAugust 28, 2018 (October 5 of the same year) to each of them until completionof the payment as the claim for return of the unjust enrichment under Articles
703 and 704 of the Civil Code.
2. The judgment in prior instance found the infringement of the present patentright and each of the present trademark rights by the first court defendants andapproved the claims by the first court plaintiff to the limit of the payment ofdamages of 4,156,644 yen and the delay damages thereto from the first court
defendant NEXT, the joint payment of the damages of 716,378 yen and thedelay damages thereto from the first court defendant Yoshiya and the firstcourt defendant NEXT, the payment of unjust enrichment value of 827,818 yen
and the delay damages thereto from the first court defendant NEXT, and thepayment of the unjust enrichment value of 474,242 yen and the delay interest
thereto from the first court defendant Yoshiya and dismissed all the remaining
principal claims and alternative claims.
The first court plaintiff instituted an appeal against the portion in the
judgment in prior instance in which the injunction of sales and the like under
Article 36, paragraphs (1) and (2) of the Trademark Act was dismissed, while
first court defendants instituted an appeal against the portion in which the firstcourt defendants lost.
In the judgment in prior instance, the portion in which the claim fordisposalofthedefendant's

products,

semi-finishedproducts,

andmanufacturing facilities thereof was dismissed is not a target of proceeding inthis court.
3. Other than the amendment below, the basic facts (undisputable facts
between the parties or facts found by each evidence posted later and the entire3

import of oral argument) are as described on page 4, line 11 to page 7, line 24
in the judgment in prior instance and cited herein.
(1) The portion "(hereinafter, a processed sheet wound around a hollow core tube
and used for dispensing of a drug will be referred to as 'drug dispensing sheet','sheet', 'drug dispensing paper', 'dispensing paper' and the like.)" shall be added
after the "drug dispensing sheet" on page 4, line 20 in the judgment in priorinstance.
(2) The portion from page 4, line 22 to page 6, line 14 in the judgment in priorinstance shall be revised as follows.
"(2) Patent right held by the first court plaintiff
A. Filing procedures and the like of the present patent(A) The first court plaintiff filed the patent application (Patent Application 2000 166273, hereinafter, referred to as the 'present application') on June 2, 2000 (Exhibits
Ko 2, 54, Exhibits Otsu 6, 11 to 13) by further dividing a part of the patent application(Patent Application No. 2000-33185, date of filing: February 10, 2000) filed by
dividing a part of the patent application (Patent Application No. 1998 -340008. Date offiling: November 30, 1998) filed by dividing a part of the patent application (Patent
Application No. 1997-257175, priority date: September 20, 1996 and September 19,
1997, Priority country: Japan, hereinafter, referred to as the "original application";
Moreover, the Description and the drawings at the filing of the original application
are collectively referred to as the "original Description at filing", and the contents
thereof are as in "Attachment 1" of the patent gazette attached to this judgment) filed
on September 22, 1997.
Since the first court plaintiff received the notice of reasons of refusal (Exhibit
Otsu 7) as of July 26, 2007 for the present application, the first court plaintiff madeproceeding amendment (hereinafter, referred to as the "present amendment", Exhibit
Otsu 8) for the scope of claims on October 1 of the same year and received theregistration of establishment of the patent (number of claims: 2, Exhibits Ko 1, 2) of
the present patent on October 3, 2008.

The description on the Description and thedrawings (present Description) according to the present patent is as in the patentgazette attached to the judgment in prior instance.
(B) The first court plaintiff made a request for correction trial requestingcorrection of Claim 2 in the scope of claims of the present patent on September 7 ,2010 (Correction No. 2010-390095), the decision that the request is admitted wasmade on November 9 of the same year, and the decision was finalized on 18th day ofthe same month (Exhibit Ko 3).
4(C) NISSIN MEDICAL INSTRUMENT CO., LTD. made a request for aninvalidation trial for the present patent on July 10, 2017 (Invalidation Trial No. 2017800089, hereinafter, referred to as "the other invalidation trial", Exhibit Ko 55), andthe first court plaintiff made a request for correction requesting correction of Claims 1
and 2 in the scope of claims of the present patent on October 6 of the same year
(hereinafter, referred to as the "present correction", Exhibits Ko 25, 26).
Regarding the other invalidation trial, the Japan Patent Office approved thepresent correction and rendered the trial decision that "the claim for the present trial is
not established." on June 26, 2018, and after that, the JPO decision was finalized(Exhibit Ko 55).
(D) The duration of the present patent right ended on September 21, 2017 (ExhibitKo 1).
B. Description of the scope of claims first attached to the application of thepresent application
The description of Claim 1 in the scope of claims first attached to theapplication of the present application is as follows (Exhibit Otsu 6).
[Claim 1]
A drug dispensing roll paper used for a drug dispensing device including: a sheet
feeding portion in which a hollow shaft is provided rotatably around a non-rotatably
supported support shaft, a motor brake is engaged with the hollow shaft, and a sheetof the roll paper detachably attached to the hollow shaft is fed out by a feeding roller;
and a dispensing portion for folding the sheet in half, inputting the drug between thehalves from a hopper, and having a heating roller for heat-sealing the sheet into which
the drug was input into a band shape in a width direction and both side edge portions
at a predetermined interval, wherein
an angular sensor is provided on the support shaft in order to detect a rotation angle of
the roll paper; a length measuring sensor for measuring a sheet feeding length along asheet feeding path to the dispensing portion is provided; means for joining the roll
paper to the hollow shaft, capable of joining/rotation, is provided on an end where theroll paper and the hollow shaft are in contact with each other; and the drug isdispensed while a sheet tension is adjusted in accordance with a roll paper diameteron the basis of signals of the two sensors, comprising:a hollow core tube and the roll paper in which the drug dispensing sheet is wound
thereon in a roll state; whereina magnet is disposed at a position where a winding amount of the sheet can bedetected by the angular sensor provided on the support shaft in order to give the sheet5tension according to the sheet winding amount of the roll paper to the hollow shaft ;andthe magnet is disposed so as to be rotated with the roll paper.
C. Description in the scope of claims after the present amendment
The description of Claim 1 in the scope of claims after the present amendment is
as follows (the underlined portions are portions amended by the present amendment ,Exhibit Otsu 8).
[Claim 1]
A drug dispensing roll paper used for a drug dispensing device including:a sheet feeding portion in which a hollow shaft is provided rotatably around a non rotatably supported support shaft, a motor brake is engaged with the hollow shaft, anda sheet of the roll paper detachably attached to the hollow shaft is fed out by a feedingroller; and a dispensing portion for inputting the drug between a sheet folded in halffrom a hopper, and having a heating roller for heat-sealing the sheet into which thedrug was input into a band shape in a width direction and both side edge portions at apredetermined interval, wherein
an angular sensor is provided on the support shaft in order to detect a rotation angle of
the roll paper;a shift detection sensor for detecting a shift of the hollow shaft is provided between
the hollow shaft and a fixed support plate of the support shaft;a length measuring sensor for measuring a sheet feeding length along a sheet feeding
path to the dispensing portion is provided;means for joining the roll paper to the hollow shaft, capable of joining/rotation, is
provided on an end where the roll paper and the hollow shaft are in contact with eachother;
the drug is dispensed while a sheet tension is adjusted in accordance with a roll paper
diameter on the basis of signals of the angular sensor and the length measuring sensor:
andthe shift between the roll paper detachably attached to the hollow shaft and the hollow
shaft is detected by discordance between the signal of the angular sensor and thesignal of the shift detection sensor, comprising:a hollow core tube and the roll paper in which the drug dispensing sheet is wound
thereon in a roll state; whereina magnet is disposed at a position where a winding amount of the sheet calculated
from a detection signal of the rotation angle by the angular sensor provided on the
support shaft and the detection signal of the length measuring sensor can be detected6

in order to give the sheet tension according to the winding amount of the sheet of theroll paper to the hollow shaft; andthe magnet is disposed so as to be rotated with the roll paper.
D. Description in the scope of claims after the present correction
The description of Claim 1 in the scope of claims after the present correction is asfollows (the underlined portions are corrected portions by the present correction;
hereinafter, the invention according to claim 1 after the present correction is referred
to as the "present corrected invention", Exhibits Ko 25, 26).
[Claim 1]
A drug dispensing roll paper used for a drug dispensing device including:a sheet feeding portion in which a hollow shaft is provided rotatably around a non rotatably supported support shaft, a motor brake is engaged with the hollow shaft, anda sheet of the roll paper detachably attached to the hollow shaft is fed out by a feedingroller; and a dispensing portion for inputting the drug between a sheet folded in halffrom a hopper, and having a heating roller for heat-sealing the sheet into which thedrug was input into a band shape in a width direction and both side edge portions at apredetermined interval, wherein
an angular sensor is provided on one end of the support shaft in order to detect arotation angle of the roll paper;a shift detection sensor for detecting a shift of the hollow shaft is provided between
the hollow shaft and a fixed support plate of the support shaft;a length measuring sensor for measuring a sheet feeding length on a sheet feeding
path to the dispensing portion is provided;means for detachably fixing the roll paper to the hollow shaft and integrally rotating
both at the fixation is provided on an end where the roll paper and the hollow shaft arein contact with each other;
the drug is dispensed while a sheet tension is adjusted in accordance with a roll paper
diameter on the basis of signals of the angular sensor and the length measuring sensor:
andthe shift between the roll paper detachably attached to the hollow shaft and the hollow
shaft is detected by discordance between the signal of the angular sensor an d thesignal of the shift detection sensor, comprising:a hollow core tube and the roll paper on which the drug dispensing sheet is wound in aroll state; whereina plurality of magnets are disposed at positions where a winding amount of the sheet
can be calculated from a detection signal of the rotation angle by the angular sensor
7

provided on the support shaft and the detection signal of the length measuring sensor,
and the detection by the angular sensor can be executed in order to give the sheet
tension according to the winding amount of the sheet of the roll paper to the hollow
shaft; andthe magnets are disposed so as to be rotated with the roll paper.
(3) Separate description of the constituent features of the present corrected
invention
The constituent features of the present corrected invention are separately
described as follows.
E. A drug dispensing roll paper
A. used for a drug dispensing device including:a sheet feeding portion in which a hollow shaft is provided rotatably around a non rotatably supported support shaft, a motor brake is engaged with the hollow shaft, anda sheet of the roll paper detachably attached to the hollow shaft is fed out by a feedingroller; anda dispensing portion inputting the drug between a sheet folded in half from a hopper,and having a heating roller for heat-sealing the sheet into which the drug was input
into a band shape in a width direction and both side edge portions at a predeterminedinterval, wherein
an angular sensor is provided on one end of the support shaft in order to detect arotation angle of the roll paper;a shift detection sensor for detecting a shift of the hollow shaft is provided between
the hollow shaft and a fixed support plate of the support shaft;a length measuring sensor for measuring a sheet feeding length along a sheet feeding
path to the dispensing portion is provided;means for detachably fixing the roll paper to the hollow shaft and integrally rotating
both at the fixation is provided on an end where the roll paper and the hol low shaft arein contact with each other;
the drug is dispensed while a sheet tension is adjusted in accordance with a roll paper
diameter on the basis of signals of the angular sensor and the length measuring sensor:
andthe shift between the roll paper detachably attached to the hollow shaft and the hollow
shaft is detected by discordance between the signal of the angular sensor and thesignal of the shift detection sensor,
B. comprising a hollow core tube and the roll paper on which the drug dispensing
sheet is wound in a roll state;8

C. wherein a plurality of magnets are disposed at positions where a winding
amount of the sheet can be calculated from a detection signal of the rotation angle by
the angular sensor provided on the support shaft and the detection signal of the length
measuring sensor, and the detection by the angular sensor can be executed in order togive the sheet tension according to the winding amount of the sheet of the roll paper
to the hollow shaft; andD. the magnets are disposed so as to be rotated with the roll paper."(3) The term "described" shall be added after "list I" and the "same II" on page 6,line 16 in the judgment in prior instance, respectively.
(4) The portion "(Exhibits Ko 9, 10, 15, Exhibits Otsu 22, 40)" on page 6, line 20
in the judgment in prior instance shall be revised to "(Exhibits Ko 9, 10, 15, Exhibits
Otsu 22, 23, Exhibit Otsu 24-1/2, Exhibits Otsu 40, 50 to 52, 79, 80, Exhibit Otsu 881/2, Exhibits Otsu 89, 113)".
(5) The term "through" on page 6, line 24, page 7, line 2 in the judgment in priorinstance shall be revised to "through and the like", respectively.
(6) The portion on page 7, lines 3 to 6 in the judgment in prior instance shall berevised as follows.
"C. The first court defendant NEXT entrusted production of the defendant NEXT's
product and the defendant Yoshiya's product (hereinafter, both are collectively
referred to as the "defendants' products") with non-party Best Co., Ltd. (hereinafterreferred to as "Best") at the first and then, with Hakuba-Sanyo Co., Ltd. and Seiey Co.,
Ltd. (hereinafter referred to as "Seiey"), and Hakuba-Sanyo performed the process ofwinding the single-type drug dispensing sheet around the hollow core tube andentrusted the process of winding the double-type drug dispensing sheet around thehollow core tube with Kudo Shiko Co., Ltd."(7) The portion on page 7, lines 7 to 21 in the judgment in prior instance shall berevised as follows.
"(6) The defendant NEXT's product and the defendant Yoshiya's product (Exhibit
Ko 19, Exhibits Otsu 15, 16, 20, entire import of oral argument).
The configurations of the defendant NEXT's product and the defendant Yoshiya's
product are as in the defendant NEXT's product instruction manual and the defendant
Yoshiya's product instruction manual in the attachment in the judgment in priorinstance, and they are organized along the description of the constituent features ofthe present corrected invention as follows.
a. The defendant's product is constituted by a hollow core tube (used core tube
made by the plaintiff) and roll paper on which a drug dispensing sheet is9wound in a roll state (Fig. 1 in the defendant NEXT's product instruction
manual and Fig. 1 in the defendant Yoshiya's product instruction manual),b. on the hollow core tube (Fig. 2 in the defendant NEXT's product instruction
manual and Fig. 2 in the defendant Yoshiya's product instruction manual),
three magnets are disposed on a circumference inside an end portion plastic
opposite to an insertion direction into the hollow shaft provided in the drug
dispensing device made by the plaintiff (Fig. 3, reference numeral 9 in the
defendant NEXT's product instruction manual and Fig. 3, reference numeral 9in the defendant Yoshiya's product instruction manual), and a steel ring of aferromagnetic body having a thickness of 1.5 mm is fitted with the end portionin the insertion direction of the hollow shaft (Fig. 3, reference numeral 7 in the
defendant NEXT's product instruction manual and Fig. 3, reference numeral 7
in the defendant Yoshiya's product instruction manual)c. the magnets are disposed inside the plastic configuring the hollow core tube
(Fig. 3, reference numeral 9 in the defendant NEXT's product instruction
manual and Fig. 3, reference numeral 9 in the defendant Yoshiya's productinstruction manual) and are rotated with the wound roll paper.
d. The drug dispensing roll paper.
(8) The description on page 7, lines 22 to 24 in the judgment in prior instanceshall be revised as follows.
"B. Since the defendant's product was produced by using the used core tube madeby the first court plaintiff as it is to which the present trademark 1 or the present
trademark 1 and the present trademark 2 are attached by the first court plaintiff, andthe present trademark 1 was marked by embossing on the plastic ring on an outer end
surface of the hollow core tube in the defendant's product for the present trademark 1
on October 3, 2008 and after at the latest and the present trademark 2 on April 27,
2012 which is the date of registration thereof and after."
4. Issues(1) Whether the defendant's product belongs to the technical scope of the present
corrected invention (Issue (1)).
(2) Whether the present patent should be invalidated through a trial for patent
invalidation (Issue (2)).
A. Whether it is applicable to addition of new matter at the amendment (Issue(2)A).
B. Whether it is applicable to violation of the support requirement (Issue (2)B).
C. Whether it lacks clarity (Issue (2)C).
10

D. Whether it is applicable to violation of division requirement (Issue (2)D).
(3) Whether exercise of the present patent right is applicable to abuse of rights(Issue (3)).
(4) Whether infringement of each of the present trademark rights is established(Issue (4)).
A. Whether it has visibility (Issue (4)A).
B. Identicality of designated goods (Issue (4)B).
C. Applicability of Article 26, paragraph (1), item (vi) of the Trademark Act(Issue (4)C).
D. Substantial illegality (Issue (4)D).
(5) Whether exercise of each of the present trademark rights is applicable to abuseof rights (Issue (5)).
(6) Necessity of injunction on the ground of each of the present trademark rights(Issue (6)).
(7) Damages of the first court plaintiff (Issue (7))
A. Presumption of the amount of damages under Article 102, paragraph (2) ofthe Patent Act or Article 38, paragraph (2) of the Trademark Act (Issue(7)A)
B. Establishment of extinctive prescription (Issue (7)B)
C. Rebuttal of presumption (Issue (7)C)(8) Establishment of joint tort of the first court defendants (Issue (8))(9) Presence/absence of unjust enrichment and the amount thereof (Issue (9))(omitted)
No. 4

Judgment of this court

This court judges that each of the claims of the first court plaintiff is grounded to
the limit that payment of the damages in the amount of 4,156,644 yen from the firstcourt defendant NEXT, the damages in the amount of 716,378 yen jointly from thefirst court defendants, unjust enrichment value of 827,834 yen from the first court
defendant NEXT, and unjust enrichment value of 474,242 yen from the first court
defendant Yoshiya and the delay damages to them, while none of the remaining
claims is grounded.

The reasons are as follows.

Note that the first court plaintiff alleges that each of the aforementioned
allegations made in the present brief submitted by the first court defendants on May
29, 2019 should be dismissed as belated allegations and defenses, but that is not found11

to delay completion of the lawsuit in view of the history of this lawsuit and thus, it
shall not be dismissed as the belated allegations and defenses.
1.

Issue (1) (Whether the defendant's product belongs to the technical scope of

the present corrected invention.)(1)

It is found that the present Description has the disclosure as below.
A.

In the drug dispensing device in which a sheet of the roll paper inwhich a sheet of thermally fusible dispensing paper is wound in a roll stateis taken out of the sheet supply portion (sheet feeding portion) and folded
in half and the drug is supplied between them and then, the sheet isheated/fused into a band shape in the width direction and both side edge
portions by the sealing device, when the sheet fuses the peripheral edges
and the like, it is preferable that the sheet is taken out with a constanttension at all times so as to avoid such a state that the sheet is not folded
accurately in half and sealed in a slightly shifted state, but actually, the rolldiameter is changed in accordance with a taken-out amount of the sheet,and the taking-out tension fluctuates little by little, which is a problem(paragraphs [0001] to [0003]).

Thus, such a sheet tension adjusting

device has been conventionally proposed that a change in the winding
amount by use of the sheet is detected in steps by a winding-diameter
detection sensor, and an electromagnetic force of an electromagnetic brakeis adjusted by a signal of this winding-diameter detection sensor and thebrake force is weakened in steps as the roll diameter is made smaller sothat the tension becomes substantially constant even if the roll diameter ischanged (paragraph [0004]).

However, since such a method that thechange in the winding amount by use of the sheet is detected in steps by thewinding-diameter detection sensor is employed in the conventional sheet
tension adjusting device, when the diameter reaches such a diameter atwhich a rank of the detection sensor is switched, a vibration phenomenon
occurs in which the brake force of the electromagnetic brake fluctuates
vertically at each rotation due to causes such as eccentricity of a core tube
axis, a weight of the sheet, a winding distortion, and the like, and the edge
portions of the sheet are not accurately overlapped due to the tension
fluctuation when the sheet is folded in half in the dispensing portion; that is,
so-called an edge shift occurs, and a defective packaged portion is
generated, or rapid fluctuation in the brake force rank causes a tear in the12width direction in some cases (paragraphs [0005], [0006]).
B.

The present corrected invention pays attention to the conventional

problem in the drug dispensing device and has an object to provide thedrug dispensing roll paper used for a drug dispensing device capable ofaccurately setting a brake force at each step without generating level
fluctuation in the brake force selected in steps which should be controlled
in accordance with an influence of slight fluctuation in the roll paper
diameter by the winding state of the roll paper in which an extremely thinsheet is wound, stably giving a proper tension according to the diameter ofthe roll paper to the sheet feeding portion, and capable of dispensing the
drug with a dispensing sheet without causing an edge shift or a tear in the
sheet and capable of giving rotation angle data to an angular sensor in the
sheet feeding portion of the dispensing device, and as means for solving the
problem, the configuration of a drug dispensing roll paper used for a drug
dispensing device is employed, including:a sheet feeding portion in which a hollow shaft is provided rotatably arounda non-rotatably supported support shaft, a motor brake is engaged with thehollow shaft, and a sheet of the roll paper detachably attached to the hollow
shaft is fed out by a feeding roller; and a dispensing portion for folding the
sheet in half, inputting the drug between the halves from a hopper, andhaving a heating roller for heat-sealing the sheet into which the drug was
input into a band shape in a width direction and both side edge portions at apredetermined interval, wherein
an angular sensor is provided on the support shaft in order to detect arotation angle of the roll paper;a length measuring sensor for measuring a sheet feeding length on a sheet
feeding path to the dispensing portion is provided;means for detachably fixing the roll paper to the hollow shaft and integrally
rotating both at the fixation is provided on an end where the roll paper andthe hollow shaft are in contact with each other; andthe drug is dispensed while a sheet tension is adjusted in accordance with aroll paper diameter on the basis of signals of the two sensors, comprisinga hollow core tube and the roll paper on which the drug dispensing sheet iswound in a roll state;a magnet is disposed at a position where a winding amount of the sheet canbe calculated from by a detection signal of the rotation angle by the angular13

sensor provided on the support shaft and the detection signal of the length
measuring sensor in order to give a sheet tension according to the winding
amount of the sheet of the roll paper to the hollow shaft, and the detection
can be made by the angular sensor (paragraphs [0011], [0012]).
The drug dispensing roll paper of the present corrected invention is theroll paper with simple configuration comprising the hollow core tube andthe roll paper wound therearound and capable of adjustment of the sheet
tension by detecting the magnet disposed at the position capable ofdetecting the sheet winding amount by the angular sensor on the support
shaft and exerts the effect that the dispensing action without the edge shiftor tear can be realized by using this for the drug dispensing device(paragraph [0068]).
(2)

Meaning of "used" in the constituent feature A
The present corrected invention is an invention relating to the "drugdispensing roll paper" comprising the constituent features A to D(constituent feature E), and the matter related to the drug dispensing device
is described in the constituent feature A, the matter related to the roll paper
as well as the hollow core tube thereof and the plurality of magnets
disposed on the roll paper (hereinafter collectively referred to as the"present roll paper and the like") in the constituent features B and D, andthe matter related to the drug dispensing device and the roll paper in theconstituent feature C, respectively, and in the constituent feature A, therelationship between the roll paper and the drug dispensing device is
described such that the former is "used" for the latter.
The present corrected invention is found to be the invention of anarticle which is the "drug dispensing roll paper", and since the description
in the scope of the claims of the invention of the article should beinterpreted to specify the structure, characteristics, and the like of thearticle, and the term "used" is described such as "used for the drug
dispensing device configured such that ..." in the constituent feature A, theterm "used" is interpreted to express that the present roll paper and the likeare usable in the drug dispensing device specified by the constituent featureA.

(3)

Fulfillment of constituent feature of the defendant's productA. By examining the aforementioned (2) on the premise, the descriptionthat "the angular sensor is provided on one end of the support shaft in14

order to detect the rotation angle of the roll paper" in the constituent
feature A can be understood to specify that the "plurality of magnets" ofthe present roll paper and the like are disposed at positions wheredetection can be executed by the angular sensor provided on the one end of
the support shaft, and the description that "the roll paper is detachably
fixed to the hollow shaft and means for integrally rotating the both at the
fixation is provided at an end where the roll paper and the hollow shaft arein contact with each other" in the constituent feature A can be understoodto specify that, by providing the means for detachably fixing the presentroll paper and the like to the support shaft on the end of the hollow coretube in contact with the hollow shaft of the drug dispensing device, thepresent roll paper and the like are rotated in such a form.
Then, since the technical scope of the drug dispensing roll paper
according to the present corrected invention is defined by the matteraccording to the aforementioned specification by the constituent features B
to E and the constituent feature A, the defendant's product including theconfiguration as the present roll paper and the like specified by theconstituent features A to E and usable for the drug dispensing device
specified by the constituent feature A is found to belong to the technicalscope of the present corrected invention, and it is interpreted that whether
or not the defendant's product is actually used for the drug dispensing
device specified by the constituent feature A does not influence thejudgment on fulfillment of the aforementioned constituent features.
B(A) The defendant's product has the configuration as in the basic
facts (6), and according to the entire import of oral argument, theconfigurations a, b, c, and d of the defendant's product are found to fulfill
the constituent features B, C, D, and E of the present corrected invention,
respectively.
(B) According to the entire import of oral argument, the three magnets
disposed inside the hollow core tube of the defendant's product aredisposed at positions where the detection of the signal by the angularsensor installed at the one end of the support shaft is possible, and thedefendant's product is detachably attached to the hollow shaft of the drug
dispensing device and can be rotated integrally with the hollow shaft at the
fixation, and the means is found to be provided on the end where the roll
paper and the hollow shaft are in contact with each other.
15(C) Therefore, the defendant's product is found to fulfill the matteraccording to the specification in the aforementioned A by the constituent
features B to E and the constituent feature A and can be used for the drug
dispensing device specified by the constituent feature A.
C. Thus, the defendant's product is found to belong to the technicalscope of the present corrected invention.
(4) Allegation by the first court defendants
A. The first court defendants allege that the present corrected invention is a use
invention, and the feature portion which should be protected in the present
corrected invention is the configuration or function on the drug dispensing
device side and thus, infringement on the present patent right is not establisheduntil the defendant's product is used for the drug dispensing device fulfillingthe constituent feature A.
However, as examined in the aforementioned (2), the present corrected
invention is not a use invention.

Moreover, the technical meaning of thepresent corrected invention is as found in the aforementioned (1) and thefeature portion of the present corrected invention is not only in the drug
dispensing device.
Therefore, the aforementioned allegation by the first court defendants
cannot be employed.
The JPO's examination guidelines (Exhibit Ko 22) are not interpreted,either, to require interpretation of a sub-combination invention similarly to theuse invention.
B. The first court defendants allege that the first court plaintiff alleged at thepresent amendment that the technical feature of the present corrected invention
resides in the constituent feature A.
Although the first court plaintiff alleged in the written opinion (Exhibit
Otsu 9) at the present amendment on the art described in the cited document in
the notice of reasons of refusal prior to the present amendment that "theinvention of the present application is an invention on the roll paper, having
the configuration of the 'magnet disposed at the position where the winding
amount of the roll paper can be detected by detecting the rotation angle and thedetection signal of the length measuring sensor' and is based on the use for the
drug dispensing device 'configured to detect a shift between the roll paper
detachably attached to the hollow shaft and the hollow shaft by discordance
between the signal of the angular sensor and the signal of the shift detection
16

sensor', and all the configurations of the entire invention of the present
application should not be denied only for the reason that abstract and generalconfiguration of the partial constituent member is publicly known or wellknown.", it is not immediately interpreted from the fact that the first court
plaintiff even alleged that use for the drug dispensing device fulfilling theconstituent feature A is needed and thus, the aforementioned allegation by the
first court defendants cannot be employed.
C. Although the first court defendants have allegation on provisional finding by
the court of prior instance, it is obvious that the judgment of this court is not
influenced by the provisional finding by the court of prior instance.
2. Issue (2) (Whether the present patent should be invalidated through a trial forpatent invalidation.)(1) Issue (2)A (Whether addition of new matter at the amendment is applicable.)A. The first court defendants allege that the amendment of Claim 1 at the filing in
the present amendment from the "sheet is folded in half" to the "two-folded sheet" isintroduction of a new technical matter of the sheet folded in advance outside the drug
dispensing device and cannot be considered to be made within a range of the matterdescribed in the Description first attached to the application at filing (Exhibit Otsu 6,
hereinafter referred to as the "Description at the filing") and thus, there is aninvalidation reason of violation of amendment requirement (Article 123, paragraph (1),item (i) of the Patent Act).
By examining that, paragraph [0018] in the Description at the filing has thedescription that "the dispensing portion is provided for heat-sealing the width
direction and both side edge portions into a band shape at a predetermined interval bya heating roller 6 having a perforating cutter after input of a drug in a predeterminedamount from the hopper 5 when being folded in half by a triangular plate 4. ", but thedescription is not immediately interpreted to be based only on a single type sheet andmoreover, it cannot be read from the Description at the filing that the present patent isbased only on the single type sheet or that a double type sheet is particularly excluded.
Moreover, according to the evidences (Exhibits Ko 42-1 to 12, Exhibits Ko 43 to48) and the entire import of oral argument, it is found that presence of the double typesheet folded in half in advance as the roll paper used for the drug dispensing device
was a common general technical knowledge at the time of the date of original filing(September 22, 1997, hereinafter, referred to as the "date of original filing").
By considering both of the above, the description in paragraph [0018] in the17Description at the filing that "the dispensing portion ... after input of a drug in apredetermined amount from the hopper 5 when being folded in half by a triangularplate 4" refers to a state where the drug dispensing sheet is folded into a V -shape sothat the drug can be input, and it can be understood that the description assumes not
only the case in which the single type sheet is folded by the triangular plate 4 of thedispensing portion into the V-shape and the drug is input between the halves but also
the case in which the double type sheet folded in half in advance before being
conveyed to the dispensing portion is opened to the V-shape, and the drug is input
into an opening portion therebetween,
Then, the amendment of Claim 1 at the filing from the "sheet is folded in half" tothe "two-folded sheet" is not introduction of new technical matter but the amendment
is found to be within the range of the matter described in the Description at the filingand thus, the aforementioned allegation by the first court defendants ha s no ground.
B. The first court defendants allege that the present corrected invention was
created in order to solve the technical problem of the "edge shift", but the problem canoccur only in the single type roll paper and paragraph [0018] in the Description at thefiling should be interpreted to be based on the single type sheet.
However, as in the aforementioned 1(1), the problem of the present corrected
invention is to enable dispensing of the drug without generating the edge shift or tearin the sheet by supplying the sheet to the dispensing portion by stably giving theproper tension according to the diameter of the roll paper to the sheet feeding portion,and it is found in this problem that there is no difference between the double type inwhich the sheet fed from the sheet feeding portion to the dispensing portion is folded
in half in advance and the single type without folding.
Therefore, the aforementioned allegation by the first court defendants does not
influence the finding judgment in the aforementioned A.
(2) Issue (2)B (Whether it is applicable to violation of the support requirement)
and Issue (2)C (whether it lacks clarity.)
A. As examined in the aforementioned (1), the configuration of the "two-folded
sheet" in the present corrected invention does not refer to the folding of the sheet but
is understood to refer to the state where the drug dispensing sheet is folded into the V shape so that the drug can be input whether or not the sheet was folded in half inadvance outside the device (double type) (single type), and a person ordinarily skilledin the art can clearly understand that the "two-folded sheet" in constituent feature A
has the above meaning from the wording of the "two-folded sheet" and also from thedescription in the present Description discussed in the aforementioned (1) and the18common general technical knowledge at the date of original filing, and this is
described in the detailed description of the invention in the present Description.
Therefore, the "two-folded sheet" in the present corrected invention is notapplicable to violation of the support requirement or does not lack clarity.
B. The first court defendants allege that the paragraphs [0012], [0018] in thepresent Description are on the single type drug dispensing sheet and moreover, the"timing of folding in half" makes the problem in this case.
However, as described in A above, the present Description cannot be considered
to describe only the single type drug dispensing sheet, and the "timing of folding inhalf" has nothing to do with whether the sheet was folded in half in advance outside
the device.
(3) Issue (2)D (Whether it is applicable to violation of division requirement.)
A. Embodiments
Since the first court defendants allege that the embodiment in the present Description
has the first embodiment and the second embodiment mixed and is not within therange of the original Description at the filing, it is examined in the following.
(A) The embodiment described in the original Description at the filing
In the original application, [i] a sheet tension adjusting method using a length
measuring sensor (Claims 1, 2, the first embodiment) and [ii] a sheet tension adjusting
method using a length measuring sensor and an angular sensor (Claims 3 to 5, thesecond embodiment) are the scope of claims, and the first embodiment has detailed
description in paragraphs [0028] to [0042] in the original Description at the filing andthe second embodiment in paragraphs [0043] to [0081] thereof.
According to these descriptions, the two embodiments are in common in a pointthat both are a method in which "the diameter of the roll paper is simply(mechanically) divided into four stages, and at a point of time when this diameterreaches each stage, the motor brake is changed so as to adjust the tension." But withregard to the measurement at the point of time when the diameter reaches each of thestages, the measurement is made only by the length measuring sensor in the first
embodiment, while the measurement is made by the length measuring sensor and theangular sensor in the second embodiment, and the configurations of the two
embodiments cannot be mixed.
(B) Embodiments described in the present Description
The present patent is a divisional application from the original application(Exhibit Otsu 11), but paragraphs [0024] to [0031] in the present Description ha ve
description of the form that "a fed-out amount of a packaging sheet S of the roll paper
19

R is accurately calculated from the signal of the length measuring sensor and thesignal of the rotation angle sensor so as to adjust the brake force in accordance withthe change in the winding diameter of the roll paper R and to perform proper tension
adjustment" (paragraph [0024] thereof), and this is identical to the tension adjusting
method in the second embodiment of the original application.
Subsequently to that, the present Description has the description of the form inparagraphs [0032] to [0038] (prior to "In Fig. 8,") that the diameter of the roll paper isdivided into four stages, and only the length measuring sensor is used to detect thatthe diameter has reached each of the stages, and this corresponds to the first
embodiment of the original application.

Then, it can be understood that thisdescription is on the configuration of reference measurement which is different fromthe configuration in the aforementioned present Description [0024] to [0031] (second
embodiment in the original application).

And it can be understood that the present

Description [0038] ("In Fig. 8" and after) to [0067] is the description conforming to
the second embodiment in the original application (original Description at the filing[0043] to [0081]), and the example described in the present Description is the second
embodiment of the original application as a whole.
Therefore, with regard to the embodiment described in the present Description, a
new technical matter is not found to be introduced in view of the original Description
at the filing.
B. "Field of the Invention"
Paragraph [0001] in the original Description at the filing has the description that"the sheet tension is adjusted in steps in accordance with the change in the diameter ofthe roll paper", and paragraph [0001] in the present Description has the descriptionthat "the sheet is fed from the sheet feeding portion while the tension of the sheet isadjusted, and the drug is dispensed in the dispensing portion".

The first court

defendants allege that the portion that "in accordance with the change in the diameterof the roll paper" is deleted from the present Description, which eliminates thelimitation of the adjusting method of the sheet tension, and the target of the invention
was widened.
However, in view of the description in paragraph [0004] in the present Descriptionthat "the tension is adjusted so as to be substantially constant even if the diameter ofthe sheet roll is changed" and the description in paragraph [0011] that "the propertension according to the diameter of the roll paper is given to the sheet feeding
portion", it is found that the invention is also for adjusting the sheet tension in steps inaccordance with the change in the diameter of the roll paper, and a new technical20

matter is not introduced in view of the original Description at the filing, and theallegation by the first court defendants cannot be employed.
C "Problems to be Solved by the Invention"
The first court defendants allege that the description not in the original
Description at the filing is added to paragraphs [0008] to [0011] in the present
Description.
(A) In this point, with regard to paragraph [0008] in the present Description that"on the other hand, the roll paper used for the drug dispensing device is formed bywinding an extremely thin sheet of approximately 30 μm of the aforementioned
glassine paper or laminated paper around an outer periphery of the hollow core tube,
and the length thereof is considerably as lengthy as 300 to 500 m in general.

As amethod for detecting the change in the winding diameter of such roll paper other thanthe method by the aforementioned winding diameter detection sensor, a method of
attaching a sensor for detecting a rotation number of the support shaft on the rotating
support shaft to which the roll paper is attached or a method of providing a projecting
portion on an end of the hollow core tube of the roll paper and of reading a markprovided on the projecting portion by a photosensor and the like can be considered. ",paragraphs [0007], [0030], and [0033] in the original Description at the filing havedescription that the materials of the roll paper include glassine paper and laminatedpaper, some of them have a thickness of approximately 30 μm, the core tube of theroll paper is the hollow core tube, and the length of the roll paper is 300 m to 500 m.
Moreover, a person ordinarily skilled in the art who came to know the description
in paragraph [0054] in the original Description at the filing that "as illustrated, when
the fed-out amount 1 of the packaging sheet is fed out, if the winding amount radius islarge as in (a), the number of pulses of the angular sensor is small, while if thewinding amount radius is small as in (b), the number of pulses becomes larger. ..." canunderstand that the winding diameter of the roll paper can be grasped by detecting therotation number of the roll paper, and various methods can be considered for detecting
the rotation number, and it is found that a person ordinarily skilled in the art would
understand that one of them can be the method of attaching the sensor for detecting
the rotation number of the support shaft on the rotating support shaft.
Moreover, paragraphs [0048], [0049] in the original Description at the filing has
the description on the "method of providing the projecting portion on an end of thehollow core tube of the roll paper and of reading the mark provided on the projecting
portion by the photosensor".
From the above, paragraph [0008] in the present Description does not introduce a21

new technical matter in view of the original Description at the filing.
(B) Subsequently, regarding paragraph [0009] in the present Description that
"however, a rotation shift can occur between the rotating support shaft and the hollow
core tube with the sensor on the rotating support shaft depending on the degree oftension when the sheet of the roll paper is fed out, and in order to accurately detect
the rotation of the roll paper, the rotation of the roll paper itself needs to be accurately
detected, and the method by the sensor on the rotating support shaft is not necessary(note in the judgment: found to be a clerical error of necessarily) appropriate. ", aperson ordinarily skilled in the art who came to know the description in paragraph[0071] in the original Description at the filing that "however, if the rotation resistanceof the motor brake 20 by each of the aforementioned DC voltages is not appropriate,
and the tension is slightly too strong at a tension level N = 2, for example, the roll
paper R and the core tube P are integrally rotated strongly, and if an attract ion fixed
position to the ferromagnetic body 17 by the magnet 16 is shifted, for exam ple, asignal by a Hall element sensor 25 issues pulse signals at an angle of 22.5° each, but
two pulse signals by the proximity switch 26 are overlapped at the same position by
the aforementioned shift, and the pulse signal is not issued at the subsequent angular
position in some cases." is found to understand that, since the hollow core tube andthe rotating support shaft can be shifted by the tension, providing a sensor for
accurately detecting the rotation of the roll paper on the rotating support shaft is notnecessarily appropriate.

Therefore, paragraph [0008] in the present Description is

not considered to introduce a new technical matter in view of the original Description
at the filing.
(C) Then, regarding the paragraph [0010] in the present Description that
"moreover, in the method of providing the projecting portion on the end of the hollow
core tube, since the lengthy roll paper as above has a considerable weight as a whole,an operation such as attachment to the rotating support shaft is difficult, and there is aconcern that the projecting portion can hit and damage the peripheral devices during
the operation and thus, the method of providing the projecting portion is notpreferable.", since the roll paper is as considerably lengthy as 300 to 500 m in general
as described in the aforementioned (A), it can be easily presumed that the roll paper
must be of a considerable weight and moreover, according to the evidences (Exhibits
Ko 42-1 to 12, Exhibits Ko 43 to 48) and the entire import of oral argument, a large
number of roll papers had been already sold at the time of the date of original filing,
and it is found that a person ordinarily skilled in the art should have naturally known
the weight of general roll paper.

Then, the aforementioned description that, since the22roll paper is heavy and difficult to handle and the projecting portion can cause damage
easily and should not be provided, which is newly added in paragraph [0010] in thepresent Description, is found to be a portion which is obvious for a person ordinarily
skilled in the art and is not introduction of a new technical matter in the relationshipwith the original Description at the filing.
(D) Lastly, with regard to paragraph [0011] in the present Description, it is foundthat such description is added that "the drug dispensing roll paper used for the drug
dispensing device capable of dispensing the drug with the dispensing sheet withoutcausing an edge shift or a tear in the sheet and of giving rotation angle data to the
angular sensor in the sheet feeding portion of the dispensing device" as comparedwith paragraph [0009] in the original Description at the filing.

However, in view ofparagraphs [0004] to [0006], [0020], [0022], [0044], [0046], and [0052] in theoriginal Description at the filing, the original Description at the filing is found to havethe description that "the roll paper R used for the drug dispensing device withoutcausing a shift of an edge portion or a tear in the sheet, supported by the sheet feeding
portion of the dispensing device, and having the magnet 24 provided in the core tube
P, capable of giving the angle data to the Hall element sensor 25 which is an angularsensor in the support shaft 1 of the sheet feeding portion", and the aforementioned
description newly added to paragraph [0009] in the present Description is not the
introduction of a new technical matter in the relationship with the original Description
at the filing.
D. "Function and Effect of the Invention"
With regard to paragraph [0015] in the present Description that "in this case, even
if the brake force is changed in steps, since it is configured such that each rank of thebrake force is switched sequentially from large to small so that the brake force ischanged within a range not causing an edge shift or a tear by the change in the tension
by the switching, such nonconformity that each rank of the brake force rapidly
fluctuates up and down in the vicinity of the rank switching diameter of the brakeforce due to uneven winding of the winding diameter as in the conventional method of
directly detecting the winding diameter of the roll paper does not occur because of adifference in the control method.", the first court defendants allege that thedescription related to the function and effect of the invention not in the original
Description at the filing is added.
However, it is found that a person ordinarily skilled in the art who came to know
the descriptions in paragraphs [0005], [0006], [0033], and [0017] in the original
Description at the filing recognizes that there is described the invention in which23

occurrence of rapid tension fluctuation by the vibration phenomenon caused by aslight change in the diameter of the unevenly wound roll paper as in the past isprevented and a shift or a tear in the sheet is prevented from occurring, and sinceparagraph [0015] in the present Description is not introduction of a new technicalmatter in view of the original Description at the filing, the allegati on by the first court
defendants cannot be employed.
E. Supplementary allegation by the first court defendants in this court
The first court defendants allege that [i] the judgment in prior instance found thatthe present patent was division application on the basis of Claims 3 to 5 in the original
application, but when Claims 3 to 5 in the original application are compared with thepresent corrected invention, the control of the brake force is not specifically specified
in the present corrected invention, unlike the original application, and the scope ofright is wider; [ii] unlike paragraph [0051] in the original Description at the filing, thepresent corrected invention does not have limitation on the method of detecting
discordance between the signal of the angular sensor and the signal of the shiftdetection sensor, and the detected "shift" is a shift between the roll paper and thehollow shaft; and [iii] there is no evidence sufficient to find that paragraphs [0008] to[0011] in the present Description are the background art as found by the judgment inprior instance.
However, with regard to the aforementioned [i], the present patent was divided
from the entire original application, not divided on the basis of Claims 3 to 5 in theoriginal application and thus, the aforementioned allegation by the first court
defendants cannot be employed on the premise thereof.

Moreover, with regard to thepresent corrected invention, from the description that "while the sheet tension isadjusted in accordance with the roll paper diameter on the basis of the signals of theangular sensor and the length measuring sensor", it can be understood that the angularsensor and the length measuring sensor are for adjusting the tension by measuring theroll paper diameter, and it is found that a person ordinarily skilled in the art who cameto know the description in paragraph [0108] in the original Description at the filingthat "in the third invention, a current winding amount length is acquired by a signal
change of the other sensor with a predetermined amount of either one of the sensors asa reference on the basis of detection signals of the length measuring sensor and theangular sensor, and the tension is adjusted by selecting the brake force according to
the diameter of the winding amount and thus, the tension can be adjusted by selecting
the brake force from the diameter corresponding to the winding amount by obtaining
the current winding amount from the measurement data even without knowing the24data of the total winding amount length in this method and therefore, such a merit canbe obtained that the tension can be smoothly adjusted without rapid tension
fluctuation similarly to the first invention." is found to understand that the length
measuring sensor and the angular sensor are both provided for grasping the winding
amount and for measuring the roll paper diameter through that and there can bevarious use states and processing methods of the signals other than those disclosed in
the examples in the original Description at the filing, and the aforementioned
allegation by the first court defendants cannot be employed.
Moreover, with regard to the aforementioned [ii], paragraph [0051] in the original
Description at the filing is only description of the example, and [Claim 5] in theoriginal application describes that "... characterized in that a shift between the roll
paper detachably attached to a roll support cylinder and the roll support cylinder isdetected by discordance between a signal of an angular sensor for detecting a rotation
angle of the roll paper between the roll paper and the support shaft and a signal of theangular sensor for detecting a rotation angle of the roll support cylinder between theroll support cylinder and a fixed support plate ...", and a method for detecting thediscordance between the signal of the angular sensor and the signal of the shiftdetection sensor is not particularly limited.

Moreover, according to paragraphs[0071] to [0073], [0081] in the original Description at the filing, a person ordinarily
skilled in the art is found to understand that a major cause of the "fed-out shift" inparagraph [0051] in the original Description at the filing is a shift between the roll
paper and the hollow shaft.

Therefore, the aforementioned allegation by the firstcourt defendants cannot be employed.
With regard to the aforementioned [iii], the matter added in paragraphs [0008] to[0011] in the present Description is not violation of the division requirement as
examined in the aforementioned C.
F. Summary
As described above, none of the allegations by the first court defendants on theviolation of the division requirement and violation of novelty based on that can be
employed.
3. Issue (3) (Whether it is applicable to abuse of rights)
Article 21 of the Antimonopoly Act stipulates that "the provisions of this Act do
not apply to acts found to constitute an exercise of rights under the Copyright Act,
Patent Act, Utility Model Act, Design Act, or Trademark Act." and the first court
plaintiff's claim for damages under the infringement of the present patent right from25

the first court defendants is applicable to the aforementioned "exercise of rights".

Inthis point, the first court defendants allege the application of Article 2 1 of the
Antimonopoly Act is excluded, and abuse of the rights is applicable since [i] as
expressed in documents titled operation manuals (Exhibit Otsu 119) and "Request on
dispensing paper" (Exhibit Otsu 120), the exercise of the rights by the first court
plaintiff is unreasonable and made with an intention of monopolizing the market byexcluding non-genuine products from the drug dispensing device made by the firstcourt plaintiff; [ii] injunction was claimed without license negotiation or the like; [iii]the first court plaintiff's infringement allegation is to abstract the feature portion of
the present corrected invention; and [iv] since the recycling operation using the usedcore tube of dispensing paper manufactured by the first court plaintiff is made totally
impossible by the exercise of the present patent right, the application of Article 21 of
the Antimonopoly Act is excluded, and the abuse of rights is applicable.
(1) However, with regard to the aforementioned [i] and [iv], the first court
defendants alleged that favorable dispensing can be realized even if the roll
paper without the hollow core tube is used or the signal of the angular sensor
cannot be obtained for the drug dispensing device made by the first court
plaintiff and submitted evidences (Exhibit Otsu 32, Exhibits Otsu 33-1 to 3,
Exhibit Otsu 34, Exhibits Otsu 35-1 to 3, Exhibit Otsu 39-1/2) supporting theallegation.

If the aforementioned allegation by the first court defendants arecorrect, even though the reuse of the hollow core tube made by the first court
plaintiff or production or sales of the non-genuine product in a form not
infringing the present patent right was possible, it is not found that theoperation related to the non-genuine product is rendered totally impossible by
the exercise of the present patent right, the degree of restriction on thecompetition by the exercise of the present patent right is not found to be large.
Moreover, the descriptions on the operation manuals (Exhibit Otsu 119)
and"Requestondispensing

paper"(Exhibit

Otsu

120)

are

only

recommendation of use of the dispensing paper of the genuine product andcannot be found to immediately restrict the competition unfairly.
As described above, allegations [i] and [iv] by the first court defendants do
not constitute grounds for the abuse of the rights by exercise of the present
patent right.
(2) With regard to the aforementioned [ii], non-licensing is also applicable to"exercise of rights" in general and thus, claims for injunction and for damages
without the license negotiation do not immediately make the exercise of the26

rights unreasonable.
(3) The aforementioned [iii] is based on the allegation by the first court
defendants that the defendant's product needs to be actually used for the drug
dispensing device specified by the constituent feature A in order for the
infringement of the present patent right to be established, but the allegation is
not grounded as examined in the aforementioned 1.
(4) Summary
As described above, the aforementioned allegations by the first court
defendants cannot be employed, and the exercise of the present patent right is
not abuse of rights.
4. Issue (4) (Whether infringement of each of the present trademark rights isestablished)(1) Factual relations
According to the evidences and the entire import of oral argument, thefollowing facts are found.
A. The first court plaintiff sells the drug dispensing device made by the firstcourt plaintiff to customers such as dispensing pharmacies and also sells to
the customers the roll paper compatible to it made by the first court
plaintiff, and the first court plaintiff holds ownership of the hollow coretube of the roll paper and when the customer uses up the drug dispensing
sheet wound on the roll paper, the first court plaintiff recovers the hollow
core tube from the customer, and sells new roll paper to the customer(Exhibits Ko 11, 12, Exhibit Ko 13-1, Exhibit Otsu 106, Exhibits Otsu 1091 to 3, Exhibit Otsu 110).
B. The form of the sales was such that the first court defendants were
advertising the defendant's product by methods such as a website, a direct
mail, FAX, and the like, and in response to an inquiry from a customer who
saw it, an employee working at the first court defendants (on the side of thefirst court defendants, the same employee handled both the operation of thefirst court defendant NEXT and the operation of the first court defendant
Yoshiya in some cases) explained purchase procedures to the customer by
telephone or e-mail, the customer wrote the name of company/pharmacy,
name of staff in charge, address, and telephone number in the "order/use
permission" sent from the first court defendants, and sent it back (theemployee of the first court defendants filled in the "order/use permission"
27

for the customer in some cases) and sent the used hollow core tube madeby the first court plaintiff and ordered the defendant's product, and the firstcourt defendants delivered the defendant's product with the bill of delivery(Exhibits Ko 9, 10, 18, Exhibits Otsu 4, 22, 23, Exhibit Otsu 24-1/2,
Exhibit Otsu 25-1/2, Exhibit Otsu 26, Exhibit Otsu 77-1/2, Exhibit Otsu
113, the entire import of oral argument).
However, the aforementioned form of sales was not followed strictly,
and the first court defendants sold the defendant's product without
receiving the delivery of the hollow core tube from the customer andmoreover, resale of the defendant's product was not particularly prohibited(Exhibit Ko 18, Exhibit Otsu 22, the entire import of oral argument).
C (A) The top page of the defendant NEXT's website at the time of February in2013 is as in Attachment 2, and the sentences that "We sell non-genuine
dispensing paper for dispenser manufacturers in common.

We receive theused 'core tube for dispensing paper' held by the customer, have the coretube wound with the common dispensing paper and delivery it." aredisplayed as the "Guidance of common non-genuine dispensing paper" in alower part of the page and moreover, by clicking the "non-genuine
dispensing paper" on upper left of the top page, the web page for sellingthe non-genuine product (hereinafter, referred to as the "non-genuine
product web page 1") is displayed.

The description on the non-genuine

product web page 1 is as in the attachment 3 and has the description that"genuine Yuyama dispensing paper is here →" on the upper right part anddisplayed various types of products subsequent to the description of"compatible with Yuyama dispenser", but on the same web page, the factthat it is a non-genuine product is not explicitly shown, and the price of the
non-genuine product was lower than that of the genuine product (Exhibit
Ko 9, Exhibit Otsu 23, entire import of oral argument).
(B) The defendant Yoshiya's website at the time of June in 2014 had thedescription of "*various types of dispensing paper (non-genuine product)"on the top page thereof, and it is configured such that, by clicking thebanner named "net shop ... yoshisya" on the left side of the same page, thetop page of the net shop as in Attachment 4 was displayed, and by further
clicking the "non-genuine dispensing paper" in the "product category"column on the left of the same page, the web page for selling the non genuine dispensing sheets as in Attachment 5 (hereinafter referred to as the28

"non-genuine product web page 2") was displayed, and on the non-genuine
product web page 2, various types of products were displayed together withthe description of "dispensing paper compatible with Yuyama dispenser"
with the wording such as "product category", "non-genuine dispensing
paper", "dispensing paper for Yuyama dispenser", and the like on the left
side (Exhibit Ko 10, Exhibit Otsu 24-1/2).
D. The first court defendant NEXT entrusted production of the defendant's
product with Best at first and then, with Hakuba-Sanyo and Seiey.
Hakuba-Sanyo and Kudo Shiko who was entrusted by Hakuba-Sanyowound the drug dispensing sheet around the used hollow core tube made by
the first court plaintiff sent from the first court defendant NEXT, HakubaSanyo applied plastic packaging to it and sent it to the first court defendantNEXT, and it was sold by the first court defendants to customers.

The

used hollow core tubes included discolored or rusted ones, but thosehollow core tubes were used for producing the defendant's product in somecases. (Exhibits Ko 15, 52, 53, Exhibits Otsu 22, 40, 50 to 52, 79, 80)
E. Since the defendant's product was produced by using the used hollow coretube made by the first court plaintiff as it was, the present trademark 1 wasindicated three-dimensionally on the surface of the end portion plastic ringof the hollow core tube of the defendant's product by embossing at one spot
and the present trademark 2 was indicated at two spots along thecircumference, and some of them are sufficiently visible.

At the stage

where Hakuba-Sanyo applied packaging on the defendant's product, it is
not always easy to visually recognize them, but since the packaging istransparent, these trademarks are not substantially invisible, and when
unpackaged, they are brought into a visible state. (Exhibit Ko 19, Exhibits
Ko 21-1 to 3, Exhibits Otsu 5, 16, 20)
F. In November 2014, search and seizure were executed for the first court
defendant NEXT on the alleged facts of violation of the Trademark Act,and the first court defendant NEXT and the representative thereof ceased
production and sales of the defendant's product in about the same month.
The first court defendant NEXT and the representative thereof were foundguilty of violation of the Trademark Act on March 18, 2016 in Iwakuni
branch, Yamaguchi District Court (imposed a fine of 1 million yen andconfiscation of 352 rolls of roll paper for the first court defendant NEXTand imprisonment for one year and six months and suspension of execution
29

for three years for the representative of the first court defendant NEXT),and after the appeal was dismissed and the final appeal was dismissed, thesentence was confirmed on October 15, 2017.

Moreover, Hakuba-Sanyoand the representative thereof were also imposed a fine by the summaryorder at Iwakuni Summary Court on June 9, 2015. (Exhibit Ko 18, Exhibit
Ko 27-1/2, Exhibits Otsu 17, 121, the entire import of oral argument)(2) Issue (4)A (Whether it is visible or not)A. Each of the present trademarks is marked on the hollow core tube made by
the first court plaintiff and configuring the defendant's product as in the
aforementioned (1)E (present mark) and is found to be sufficiently visible.
B. The first court defendants allege that [i] the present mark is extremely
small and indistinct and moreover, the hollow core tube and the present
mark are both in deep blue and visual recognition thereof is difficult or
impossible; [ii] the first court plaintiff's product and the defendant's
product were packaged with plastic at shipment, and the present mark is
not likely to be visible; [iii] the defendant's product is heavy and could not
be lifted up to be stared; [iv] there is no evidence that the defendant's
product was visually recognized during the transaction process; and [v]even if it is physically visible, it is difficult to be visually recognized andcannot be normatively evaluated to be a trademark or use thereof.
However, the present mark is sufficiently visible as described above.
As in the aforementioned (1)E, it is not necessarily easy to visually
recognize the present mark attached to the defendant's product in a state
packaged with plastic but it is not substantially invisible at all and isbrought into a visible state when unpackaged and thus, the present mark islikely to be visually recognized in the process of distribution.

Whetherthe defendant's product is heavy and could be lifted up to be stared does
not influence the aforementioned finding.
Therefore, the present mark is considered to have a function as atrademark.
(3) Issue (4)B (Identicality of designated goods)
Other than the amendment as follows, the description from page 44, line 22 topage 45, line 8 in the judgment in prior instance shall be cited as it is herein.
A. The term "(A)" is added to the beginning on page 44, line 22 in the
judgment in prior instance.
B. The phrase "designated goods of each of the aforementioned present
30

trademarks" on page 45, lines 7 to 8 in the judgment in prior instance shallbe revised to the "aforementioned designated goods of each of the present
trademarks".
C. The following portion is added at the end of page 45, line 8 in the judgmentin prior instance as a new paragraph.
"(B) The first court defendants allege that the first court plaintiff made theallegation distinguishing the 'core tube' from the 'sheet' in another lawsuit so as
to escape exhaustion of the patent right, while the allegation on integrity of the'core tube' and the 'sheet' in the scene of the trademark right infringement inthis lawsuit contradicts estoppel.
However, the problem in each of the present trademark right infringement s
is whether the core tube and the drug dispensing sheet are integral from aviewpoint of the consumer and whether or not each of the present trademarks
functions as indication of source of the drug dispensing roll paper, and theargument of the exhaustion in another lawsuit is totally different including its
requirements and thus, the allegation by the first court plaintiff in this lawsuit
does not contradict the estoppel."(4) Issues (4)C, D (Applicability of Article 26, paragraph (1), item (vi) of theTrademark Act and substantial illegality)
A. According to the found facts in the aforementioned (1) and theexaminations in the aforementioned (2) and (3), since the first court
defendants attached each of the present trademarks to the "drug dispensingroll paper" (defendant's product) included in the designated goods in such aform that the function as the trademark is exerted, the act of the first court
defendants is applicable to the trademark right infringement, and Article 26,
paragraph (1), item (vi) of the Trade mark Act is not applied, and thesubstantial illegality has no lack.
B. The first court defendants allege that, since the first court defendants soldthe goods by explicitly indicating that the goods are non-genuine products
and the purchasers are dispensing pharmacies, the purchasers accurately
recognize that the defendant's product is a non-genuine product; that is, it
is not the first court plaintiff's product, and since a source indicating
function or a quality assurance function is not harmed, Article 26,
paragraph (1), item (vi) of the Trademark Act is applied or the substantial
illegality is lacking and thus, the trademark right infringement is notestablished.
31However, by considering each of the circumstances in (A) to (E) below,
it is not found that all the purchasers accurately recognized that thedefendant's product was a non-genuine product; that is, it is not the productof the first court plaintiff, and the aforementioned allegation by the firstcourt defendants lacks the premise and cannot be employed.
(A) First, as in the aforementioned (1)B, the defendant's product is advertised
not only on the website but by direct mails, FAX, and the like, and it isfound that the customers purchase the defendant's product not via thewebsite of the first court defendants in some cases, but in what form theadvertisement was made in the direct mails or FAX is not necessarily
obvious in the evidences.
(B) The first court defendants allege that they explained to the customers thatthe products are non-genuine, but the employee operating under the firstcourt defendants made obscure statement in the open court of the criminalcase that "when I made oral explanation on the phone, I explained 'it isdifferent from genuine paper'.", "I think I also explained that the productwas not genuine in the e-mail to the customers as in the explanation on thephone but I don't remember well." (Exhibit Otsu 4) and moreover, noevidence such as service manuals to the customers or e-mails sent to thecustomers which support the statement were submitted and thus, it is notfound that the explanation as alleged by the first court defendants wasmade to the customers at all times.
(C) With regard to the "order/use permission" sent by the customer to the firstcourt defendants in order to propose purchase of the defendant's product,
the word "non-genuine" (Exhibit Otsu 25-1/2) is described later and it is
not obvious on the evidence that it is described at all times, and the word of"non-genuine" is not displayed particularly largely or with emphasis andthus, even if it is described, the customer might not notice it.

And as in

the aforementioned (1)B, since there is a case in which the defendant 's
product was sold without receiving the used core tube sent by the customer,
the aforementioned "order/user permission" is not found to be used at all
times.
The delivery bill (Exhibit Otsu 26) only describes that "the dispensing
paper was made of the core received from the customer." and does not
explicitly indicate that it is a non-genuine product.
(D) As in the aforementioned (1)C, the website of the first court defendants32

had the description of the "non-genuine dispensing paper" but on the nongenuine product web page 1 on the defendant NEXT's website, only
various types of products are displayed with the description of "compatible
with Yuyama dispenser" and the fact that they are not non-genuine
products is not explicitly described and moreover, on the non-genuine
product web page 2 on the defendant Yoshiya's website, also, various typesof products are displayed with the description of "compatible with Yuyama
dispenser" and the description of the "non-genuine dispensing paper" isonly described in small type on the left column and thus, it is not foundthat all the purchasers who came to the website of the first court defendants
accurately recognize that the defendant's product is the non-genuine
product.
(E) Even though the purchasers are dispensing pharmacies, their attention is
not necessarily higher than general consumers at all times, and even though
one of the purchasers recognized that the defendant's product is a nongenuine product (Exhibits Otsu 19, 113), it does not mean that all thepurchasers have the same recognition.
The first court defendants allege that the pharmacists in the dispensing
pharmacies share the information on the supplier or contacts of the drug
dispensing roll paper used at the dispensing pharmacies but from theexamination in the aforementioned (A) to (E), the dispensing pharmacies
do not necessarily purchase the defendant's product as the non-genuine
product (product not by the first court plaintiff) and thus, whether the
information on the supplier or contacts are shared or not does not influence
the conclusion of the present case.
(5) Summary
As described above, the act of the first court defendants does not infringe the right
related to each of the present trademarks.
5. Issue (5) (Whether exercise of each of the present trademark rights is
applicable to abuse of rights)(1) The first court plaintiff's claim for damages from the first court defendants on
the ground of each of the present trademark rights is applicable to the"exercise of rights" under Article 21 of the Antimonopoly Act.
(2) The first court defendants allege that the source indication function or thequality assurance function of each of the present trademarks is hardly harmed
33

by the sales of the defendant's product, while if the exercise of the trademark
right in the form as this case is admitted, the non-genuine product businessreusing the hollow core tube made by the first court plaintiff is madeimpossible, the consumers are deprived of a chance to purchase more
inexpensive "non-genuine dispensing paper" and moreover, since the firstcourt plaintiff's object of restricting competition and monopolizing the market
is obvious from the operation manuals and the document titled "Request on
dispensing paper", Article 21 of the Antimonopoly Act is not applied to theexercise of each of the trademark rights, and it is applicable to abuse of therights.
However, the function of each the present trademarks was harmed as
described in the aforementioned 4, and the degree cannot be considered to beslight.
Moreover, as examined in the aforementioned 3(1), it is not impossible toproceed with production or sales of the non-genuine product without using thehollow core tube made by the first court plaintiff to which each of the present
trademarks is attached and thus, it is not found that the competition is largely
restricted by the exercise of each of the present trademark rights.
Furthermore, the operation manuals (Exhibit Otsu 119) and the document
titled "Request on dispensing paper" (Exhibit Otsu 120) do not immediately
and unfairly restrict the competition as examined in the aforementioned 3(1).
(3) As described above, the aforementioned allegation by the first court
defendants cannot be employed, and it is not found that the exercise of each of
the present trademark rights is applicable to abuse of the rights.
6. Issue (6) (Necessity of injunction on the ground of each of the present
trademark rights)
The judgment in prior instance from page 46, line 13 to page 47, line 1 iscited herein other than the amendment as follows.
(1) The term "(1)" shall be added to the beginning on page 46, line 13 in the
judgment in prior instance.
(2) The portion "aforementioned 1(6)" on page 46, lines 13 and 24 in the
judgment in prior instance shall be revised to "aforementioned 4(1)F",
respectively.
(3) The portion on page 46, lines 18 to 21 in the judgment in prior instance shallbe revised as follows.
34

"by comprehensively considering that four years or more have passed since
the sales of the defendant's product were ceased and the roll paper was
confiscated by the judgment to the first court defendant NEXT as in the
aforementioned 4(1)F together with the entire import of oral argument, it isfound that the first court defendants do not hold the inventory of t hedefendant's product and semi-finished product at the present."(4) The portion "is thought" on page 46, line 23 in the judgment in prior instanceshall be revised to "what is thought".
(5) The portion "and thus," on page 46, line 25 in the judgment in prior instanceshall be revised to "and in view of the fact that more strict criminal penalty islikely to be imposed on the first court defendant NEXT and the representative
thereof sentenced guilty above if they infringe each of the present trademark
rights again in the near future, and Hakuba-Sanyo was liable for criminal
responsibility as in the aforementioned 4(1)F, by comprehensively consideringthat it is not necessarily easy for the first court defendants to find suchoperators as Best, Hakuba-Sanyo, and Seiey who would cooperate with thefirst court defendants,".
(6) The portion "(object of requests 1 to 6)" on page 46, line 26 in the judgmentin prior instance shall be deleted.
(7) The following portion shall be added at the end on page 47, line 1 in the
judgment in prior instance as a new paragraph.
"(2) The first court plaintiff alleges that injunction is needed since the firstcourt defendants do not admit infringement of the trademark right andconsistently dispute over it and resumption of production, sales, and thewebsite is easy.
However, even on the basis of the aforementioned allegation by the firstcourt plaintiff, the judgment in the aforementioned (1) is not influenced."
7. Issue (7) (Damages of the first court plaintiff)
The portion from page 47 line 3 to page 50, line 18 in the judgment in priorinstance is cited herein other than the amendment as follows.
(1) The portion "defendant NEXT's product" on page 47, line 11 in the judgmentin prior instance shall be revised to "defendant's product".
(2) The portion "Extinctive prescription (Issue (5)B)" on page 47, line 13 in the
judgment in prior instance shall be revised to "Issue (7)B (Establishment of
extinctive prescription)"35

(3) The portion "(Exhibits Ko 16, 17)" on page 47, line 17 in the judgment inprior instance shall be revised to "(Exhibit Ko 16-1, Exhibit Ko 17-1)".
(4) The portion "damage and perpetrator related to the infringement of the present
patent right and the infringement of each of the present trademark rights" frompage 47 lines 20 to 21 in the judgment in prior instance shall be revised to"damage and perpetrator related to the infringement of the present patent rightand each of the present trademark rights".
(5) The portion "Presumption of the amount of damages under Article 102,
paragraph (2) of the Patent Act, Article 38, paragraph (2) of the Trademark
Act (Issue (5)A)" on page 47, line 25 of the judgment in prior instance shall berevised to "Issue (7)A (Presumption of the amount of damages under Article
102, paragraph (2) of the Patent Act or Article 38, paragraph (2) of theTrademark Act)".
(6) The portion "(Exhibits Otsu 71, 75, 94)" on page 48, line 1 in the judgment inprior instance shall be revised to "(Exhibits Otsu 71-1 to 3, Exhibit Otsu 75-1,
Exhibits Otsu 75-2-1 to 133, Exhibits Otsu 75-3-1 to 104, Exhibit Otsu 94)".
(7) The portion "(Exhibits Otsu 66, 72, 73, 76, 88, 95)" on page 48, line 6 in the
judgment in prior instance shall be revised to "(Exhibit Otsu 66, Exhibits Otsu
71-1 to 3, Exhibit Otsu 72, Exhibit Otsu 73-1/2, Exhibit Otsu 76-1/2, Exhibit
Otsu 88-1/2, Exhibit Otsu 95)".
(8) The term "defendant" on page 48, line 10 in the judgment in prior instanceshall be revised to "first court defendants".
(9) The portion "(Exhibit Otsu 74)" on page 48, line 11 in the judgment in priorinstance shall be revised to "(Exhibit Otsu 74-1/2)".
(10) The portion "(Exhibit Otsu 77)" on page 48, line 12 in the judgment in priorinstance shall be revised to "(Exhibits Otsu 77-1 to 3)".
(11) The portion from page 49, line 9 to page 50, line 2 in the judgment in priorinstance shall be revised as follows.
"(3) Issue (7)C (Rebuttal of presumption)
A. The drug dispensing paper is indispensable for using the drug dispensing
device for operation and thus, a user of the device shall regularly purchase roll
paper compatible with the drug dispensing device held by the user.

Since thedefendant's product was made by winding the dispensing paper again on thehollow core tube made by the first court plaintiff and was sold as capable ofbeing used in the drug dispensing device made by the first court plaintiff, theconsumer is considered to purchase the defendant's product as a substitute for36the roll paper made by the first court plaintiff.
With regard to the presumption of the amount of damages under Article
102, paragraph (2) of the Patent Act, the first court defendants allege that salesof non-genuine products are generally carried out in the drug dispensing paper
business, and even if the defendant's product was not sold, most of the demandshould have been directed toward other inexpensive non-genuine products, butthere is no evidence sufficient to admit that the roll paper that can be used in
the drug dispensing device made by the first court plaintiff was present otherthan the roll paper made by the first court plaintiff or the defendant 's product.
Therefore, if the defendant's product was not present in the market, it isassumed that the consumer would purchase the roll paper made by the firstcourt plaintiff regardless of the price and thus, the advantage of the price of the
defendant's product over the genuine product does not rebut the presumption in
the aforementioned (2) under Article 102, paragraph (2) of the Patent Act.
B. In this case, the claim for damages on the ground of infringement of thepatent right and the claim for damages on the ground of infringement of the
trademark right are selective merging and as described in the aforementioned
A, the allegation by the first court defendants on the rebuttal of presumption
related to Article 102, paragraph (2) of the Patent act is not grounded, and thepresumption of the damages under the same clause reaches the total amount of
the profits found in the aforementioned (2) that the first court defendants
obtained through the sales of the defendant's product.

Therefore, in this case,

it is no longer necessary to judge the claim for damages on the ground theinfringement of the trademark right including the rebuttal of presumption.
(4) Summary
Therefore, under Article 102, paragraph (2) of the Patent Act, it is found that thefirst court plaintiff suffered damages of 4,156,644 yen for the defendant NEXT's
product and 716,378 yen for the defendant Yoshiya's product."
8. Issue (8) (Establishment of joint tort of the first court defendants)(1) As described in the aforementioned 4(1), the first court defendant NEXT and
the first court defendant Yoshiya both performed the operation in the form ofrecovering the used hollow core tubes of the drug dispensing roll paper madeby the first court defendant, winding the drug dispensing sheet corresponding
to the respective hollow core tubes again, and selling them and moreover, thesame employee handled the sales operations of both the first court defendantNEXT and the first court defendant Yoshiya in some cases.
37

In addition to the above, the first court defendant Yoshiya purchased thedefendant Yoshiya's product only from the first court defendant NEXT
(Exhibits Otsu 90-1 to 6, entire import of oral argument) and together with thefact that the representatives of the first court defendants were in common until
April 1, 2015 (obvious fact to the court), it is found that the first court
defendants performed the sales operation of the defendant Yoshiya's productaltogether and thus, it is reasonable to admit the establishment of the joint tort
to the first court plaintiff with regard to the sales of the defendant Yoshiya's
product, and the first court defendants take joint and several liability of thetotal amount of damages suffered by the first court plaintiff in relation to thedefendant Yoshiya's product.
(2) Therefore, the first court defendant NEXT shall take liability of damages of
4,156,644 yen for the defendant NEXT's product and the first court defendants
shall jointly take liability of damages for 716,378 yen for the defendant
Yoshiya's product.
9. Issue (9) (Presence/absence of unjust enrichment and the amount thereof)
The description on page 50, line 20 to page 55, line 3 in the judgment in priorinstance is cited herein other than the revision as follows.
(1) The portion "(Exhibits Otsu 72, 87, 90)" on page 50, line 26 in the judgmentin prior instance shall be revised to "(Exhibits Otsu 72, 90-1 to 6)".
(2) The portion "and thus" on page 50, line 22 and after and line 23 in the
judgment in prior instance shall be revised to ".".
(3) The portion from page 51, lines 4 to 5 in the judgment in prior instance shallbe revised as follows.
"The sales from October 3, 2008 to December 31 of the same year: 1,300,500 yen(in that amount, sales to the first court defendant Yoshiya was 1,185,300 yen, thesales throughout the year of 2008 is 4,121,700 yen.)"(4) The description on page 51, line 9 in the judgment in prior instance shall berevised as follows.
"2012: 11,788,150 yen (the same 5,341,000 yen)(in that amount, sales from January 1 to April 26 in 2012: 2,451,666 yen)"(5) The portion from page 51, line 13 to page 52, line 2 in the judgment in priorinstance shall be revised as follows.
"(A) The sales of the defendant Yoshiya's product in the period from 2010 toAugust 1, 2013 are 11,200,185 yen in total (Exhibits Otsu 91-1 to 5).

Here, the sales

situation of the first court defendant NEXT in 2008 and 2009 has no large difference
38

from the sales situation in 2010 and thus, it is reasonable to assume that the first court
defendant Yoshiya also had the sales in 2008 and 2009 to the same degree as that in2010, and it is found that the sales in 2009 is 1,124,796 yen, and the sales from
October 3, 2008 to the end of December of the same year is also found to be 303,695
yen from the entire import of oral argument.

Therefore, the sale of the defendant

Yoshiya's product in the period from October 3, 2008 to August 1, 2013 is 12,628,676
yen in total, in which the sales in each year are as follows.
October 3, 2008 to December 31 of the same year: 303,695 yen
2009: 1,124,796 yen
2010: 1,1247,96 yen
2011: 2,517,945 yen
2012: 4,893,614 yen(Sales from January 1 to April 26 in 2012: 1,109,581 yen)
January 1, 2013 to August 1 of the same year: 2,663,830 yen"(6) Each "Exhibit Otsu 91" on page 52, lines 3, 7 in the judgment in prior instanceshall be revised to "Exhibits Otsu 92-1 to 5", respectively.
(7) The portion "2008 to 12" on page 52, line 10 in the judgment in prior instanceshall be revised to "2008 to 2012".
(8) The portion "present invention" on page 52, line 14 in the judgment in priorinstance shall be revised to the "present corrected invention".
(9) The portion "see the aforementioned 5(2)" on page 52, line 15 in the judgmentin prior instance shall be revised to "see the applicable portion in the judgment inprior instance cited in the aforementioned 7".
(10) The portion "aforementioned 4(3) on page 52, line 25 in the judgement inprior instance shall be revised to "aforementioned 4(2)".
(11) The portion "function of indicating source" on page 52, line 26 in the
judgment in prior instance shall be revised to "function as a trademark".
(12) The portion from page 54, lines 6 to 10 in the judgment in prior instance shallbe revised as follows.
"B. Amount of unjust enrichment of the first court defendant NEXT"(A) In each period, the amount corresponding to the use fee calculated from thesales of the first court defendant NEXT is as follows, and the total is
1,302,076 yen.
October 3, 2008 to December 31 of the same year: 1,300,500 yen × 3.5% =45,518 yen(13) The portion "(1,302,060 yen)" on page 54, line 23 in the judgment in prior39

instance shall be revised to "(1,302,076 yen)".
(14) The portion "827,818 yen" on page 54, lines 24 to 25 in the judgment in priorinstance shall be revised to "827,834 yen".
(15) The portion from page 54, line 26 to page 55, line 3 in the judgment in priorinstance shall be revised as follows.
"C. Therefore, the first court defendant NEXT is obliged to return the unjust
enrichment of 827,834 yen, and the defendant Yoshiya is obliged to return the unjust
enrichment of 474,242 yen.
The first court plaintiff alleges that the first court defendants should return theunjust enrichment with the consumption tax added, but the ground for that is not
obvious, and the allegation cannot be employed.
Moreover, although the first court defendants allege that, since no loss wasincurred on the first court plaintiff side, the right to claim return of the unjust
enrichment cannot be allowed, but as examined in the aforementioned 4, the functionof each of the trademarks as the trademark is harmed, and even if the appeal of themark to the customers was considered not to be strong, it is not found that no loss wasincurred on the first court plaintiff side and thus, the aforementioned allegation by the
first court defendants cannot be employed".
10. Conclusion
According to the above, the first court plaintiff's claims are grounded to the limit
the payment of damages of 4,156,644 yen and the delay damages thereto at the rate of
5% per annum prescribed in the Civil Code from September 6, 2016 which is the day
following the date of tort until completion of the payment from the first court
defendant NEXT, joint payment of the damages of 716,378 yen and the delay
damages thereto at the rate of 5% per annum prescribed in the Civil Code from
September 3, 2016 (to the limit from the 6th day of the same month for the first court
defendant NEXT) which is the day following the date of tort until completion of thepayment from the first court defendant Yoshiya and the first court defendant NEXT as
damages under Articles 709 and 719, paragraph (2) of the Civil Code and Article 102,
paragraph (2) of the Patent Act and payment of unjust enrichment value of 827,834
yen and the delay damages thereto at the rate of 5% per annum prescribed in the Civil
Code from October 6, 2018 which is the day following the date of claim to completionof the payment from the first court defendant NEXT and payment of the unjust
enrichment value of 474,242 yen and the delay interest thereto and the delay damages
thereto at the rate of 5% per annum prescribed in the Civil Code from October 6, 201840

which is the day following the date of claim until completion of the payment from thefirst court defendant Yoshiya as claim for return of unjust enrichment under Articles
703 and 704 of the Civil Code, and they are approved while none of the remaining isgrounded and they should be dismissed.

It is not reasonable that the judgment inprior instance decides that the unjust enrichment value which should be paid by the
first court defendant NEXT was 827,818 yen, but since the first court plaintiff does
not appeal against the claim for return of the unjust enrichment from the first court
defendant NEXT, the amount of the unjust enrichment which should be paid by the
first court defendant NEXT cannot be increased, under the principle of prohibition ofadverse changes (Article 304 of Code of Civil Procedure).

Therefore, the appeals by

the first court plaintiff and the first court defendant NEXT as well as the first court
defendant Yoshiya were all dismissed and the judgment is rendered as in the main text.
Intellectual Property High Court, Second Division
Presiding Judge: MORI Yoshiyuki
Judge: MANABE Mihoko
Judge KUMAGAI Daisuke

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