12 Reconsidering International Jurisdiction inIntellectual Property Rights Litigation- Ensuring Predictability Under New Interpretations of
Judicial Precedents - (*)
Research Fellow: Yuko KUSAMA
This study uses the analysis of precedents to examine the issue of international jurisdiction – that iswhether Japanese courts can hear the increasingly diverse lawsuits concerning the infringement of intellectual
property rights and in particular litigation in Japan concerning the infringement of corresponding foreign
patent rights. Regarding the analysis of judicial precedents, this study first points out that trends in both
intellectual property rights litigation and litigation concerning other forms of property, and then examines thereasons for this. Second, it considers how the application of foreign law affects legal predictability for parties
involved in dispute resolution using approaches from comparative law and focusing on the relationship between
judgments on international jurisdiction and the applicable law,. Moreover, regarding the application of foreignlaw, it also investigates systems for conducting foreign legal research in Japan, the design of institutionalarrangements in other countries and the techniques used by courts when conducting foreign legal research.

I

Introduction

1

Background to the Study and its Focus(1) The nature of corresponding foreign
patent right infringement litigation
Based on Japanese patent rights for a certain
invention,
Japanese
CompanyX
heldcorresponding patent rights in several othercountries and regions, including the USA,
Germany, and Europe. If another JapaneseCompany Y infringed Company X’s patent in the
manufacture of its own products, it would likely
be simultaneously infringing Company X’s
corresponding foreign patent rights. Would aJapanese court be able to hear the relevant
infringement lawsuits?
Due to the internationalization of businessactivities and the territorial nature of the efficacy
of patent rights, it is not unusual for mostJapanese companies to acquire corresponding
foreign patent rights based on a single invention.
However, if, having acquired such rights, acompany faced a situation in which its patentrights have been infringed, there was a tendency
to harbor the belief that they would need to seek
redress from a US court in the case of US

corresponding patent rights, and from a German
court in the case of German corresponding patentrights. This tendency seems to be greater amonglarge corporations that have overseas offices andhave accumulated considerable know-how about
litigation in other countries.
However, if, as in the example above,
Company Y is Japanese and is located in Japan, it
would be possible for the case to be heard inJapan, even if the subject of the lawsuit were
foreign patent rights.
Despite this fact, Japan currently has nostockpile of judicial precedents concerning such
infringements of corresponding foreign patentrights, and this may well have been due in nosmall part to the belief that patent rights holders
have to institute proceedings overseas in theevent of an infringement of foreign patent rights.
However, at the same time, courts are
granted discretionary power in judgments
regarding what is called international jurisdiction,
which is the question of whether or not a
Japanese court can hear lawsuits with aninternational element, and there are cases inwhich actions filed in Japanese courts have been
dismissed, even though the court in question
could, in law, hear the action based on theexercise of its discretionary power. This meansthat it is difficult for litigants to predict in every(*) This is an English translation of the summary of the report published under the Industrial Property Research
Promotion Project FY2013 entrusted by the Japan Patent Office. IIP is entirely responsible for any errors in
expression or description of the translation. When any ambiguity is found in the English translation, the original
Japanese text shall be prevailing.

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instance whether or not it will be possible for
their lawsuit to be heard in a Japanese court and,as a result, this would seem to have motivatedJapanese companies to refrain from instituting
any potential proceedings.
So do Japanese courts have discretionary
power in every case concerning judgments on
international
jurisdiction?
The
provision“Dismissal of Action without Prejudice due toSpecial Circumstances” in Article 3-9 of the Codeof Civil Procedure as revised by the Act for
Partial Revision to the Code of Civil Procedureand the Civil Provisional Remedies Act 1(hereinafter referred to as the "revised Code ofCivil Procedure") is applicable. More specifically,
when judging whether or not there isinternational jurisdiction, even where a court ofJapan is to have jurisdiction over an action, a
court may dismiss that action without prejudicewhen it finds that there are special circumstanceswhere if a court of Japan conducts a trial andmakes a judicial decision on the action, it would
harm equity between the parties or impede thewell-organized progress of court proceedings,
while taking into consideration the nature of thecase, the degree of burden that the defendant is tobear by making an appearance, the location ofevidence, and other circumstances. This doctrine
clearly states what had previously been indicatedin case law theory until the revision of the Codeof Civil Procedure.2
However, while it would initially appear that
this discretionary power held by courts is
exercised under specific conditions, clear criteria
defines what would harm equity between theparties or impede the well-organized progress ofcourt proceedings.
(2) International jurisdiction in cases
concerning general property
So how was discretionary power traditionallyexercised in actual judicial precedents? This canbe ascertained by looking at the characteristics ofcases in which the action was dismissed due to“special circumstances,” where the application of
was viewed as a “special circumstance impeding
the well-organized progress of court proceedings”
and the court “avoid[ed] inconvenience arisingfrom the application of foreign law.”
These characteristics are deeply interesting,but they also entail a couple of problems. First ofall, in private international law, judgments on
jurisdiction and decisions on the choice of law(applicable law) are considered as separate issues,
so the choice of substantive law not be consideredat the stage of making a judgment oninternational jurisdiction; rather, the fact thatJapan has international jurisdiction should berecognized, before interpreting and applying theapplicable foreign law to the case. However, it
does not operate this way in practice. Secondly,
whereas the interpretation and application of theapplicable foreign law should, under the revised
Code of Civil Procedure, be carried out on thebasis of ex officio research by judges, they tend to
adupt a passive attitude and accept the evidence
presented by the parties to substantiate their
allegations.
Consequently, this section focuses on thephenomenon of courts deny their jurisdiction
over a case on the grounds of avoiding“inconvenience arising from the application offoreign law,” without following the proper
sequence wherein they must only consider theapplicable law in the case after they have made a
judgment on jurisdiction.
In doing so, it is possible to identify
something that is both a distinctive feature and aconcern: if courts are given a form of
discretionary power, would not them use it totheir own advantage?
(3) International jurisdiction in intellectual
property rights litigation
So can this phenomenon concerning generalproperty be detected in litigation concerning
intellectual property rights, particularly in cases
involving infringement of foreign patent rights?
In a case such as the example above, if thegrounds for the jurisdiction prescribed in Articles
3-2 and 3-3 of the revised Code of Civil Procedure
are in Japan, or if the defendant is not a Japanesecompany, for example, it is actually possible tohear the case once a joint action is brought inaccordance with Article 3-6 .3 However, disputes
over foreign patent rights involve the applicationof relevant foreign patent law, and the researchand interpretation of such laws can sometimes bedifficult. Thus, one cannot deny the possibility
that courts may use their discretion to denyinternational jurisdiction (dismiss the action due
to special circumstances), or to judge a case insuch a way as to avoid the application of foreignlaw.
Under these circumstances, if courts
exercise their interests on the basis of theirdiscretionary power by “avoiding inconvenience
arising from the application of foreign law,” what
would happened to the interests of litigants ?
In general, reducing the cost of litigation via

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infringements of patent rights with the samecontent would be in the interests of litigants. To
be sureunder Japan’s current provisions
regarding international jurisdiction, one would
have to say that it is difficult to predict whether
courts will exercise their discretionary power,
even if infringement lawsuits concerning foreign
rights is theoretically possible. Nevertheless, thefact remains that in the example given in the
introduction, if everything could be heard in Japan,
it would be possible to cut the cost of litigation
substantially.
Thus, in the examination below, this study
confines itself to the perspective of how tocompensate for the fact that the interests of thecourts run counter to those of litigants in
infringement lawsuits concerning foreign patentrights, focusing on situations in which theinterests of the courts run counter to theinterests of litigants. More specifically, thefollowing section references examples ofinfringement lawsuits in Japan concerning foreign
patent rights, it also makes reference to examples
from the USA. Where courts have the same kindof discretion in judgments on international
jurisdiction

Ⅱ Examples of Foreign
Rights Infringements4
1

PatentJapanese Regulations on International
Jurisdiction and Judicial Precedents

Doctrinally, there was formerly a view thatinternational jurisdiction should be denied in
infringements of foreign patent rights. But
currently, patent infringement litigation are
regarded as being governed by the rules ofinternational jurisdiction similar to litigation
concerning property, apart from in exceptional
cases.
Among recent judicial precedents
thisstudy focuses on the Card Reader case, which theSupreme Court First Petty Bench ruled on
September 26, 2002, and the Coral Sand case,which the Tokyo District Court ruled on October
16, 2003. These two cases are as examples ofinfringements of foreign patent rights that werebrought to and tried at Japanese courts. 5
6(1) The Card Reader case
The Card Reader case, involved theinterpretation and application of US patent law.
Therefore one might think that international

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discretionary power due to special circumstances.”
However, discretionary power was not exercisedon the grounds of special circumstances. As forthe choice of law question, US law was initiallyselected as the law applicable to the demand for
an injunction, on the grounds that the patent was
registered in the USA. However the judges ended
up applying Japanese law, after rejecting theapplication of US law for violating public order.
Similarly, with regard to the law applicable tocompensation for damages, although the court
held US patent law applicable, as the law of theland in which the facts that caused the case arose,
it cumulatively applied the Japanese Patent Act.
In other words, although the court foundinternational jurisdiction in Japan, it ultimately
avoided the application of foreign law.
More specifically, it should be noted that inthis case, while the court did not specificallymention “special circumstances” impeding thewell-organized progress of court proceedings as
grounds for exercising its discretionary power, it
did actually “avoid the interpretation andapplication of foreign law.” Moreover, one mustbear in mind that if the court had interpreted andapplied US patent law, which was the applicablelaw, there would have been a possibility that theplaintiff ’s claim would have been upheld. One
cannot say that the application of Japanese law tohearings necessarily leads to redress from theperspective of plaintiffs who are rights holders.
Considering the matter in this way, theultimate effect for the plaintiff was the same as ifinternational jurisdiction had been denied, so
doubts remain from the perspective of redress forthe patent rights holder.
(2) The Coral Sand case7
In the Coral Sand Case, there was also a
possibility of international jurisdiction being
denied through the exercise of discretionary
power due to special circumstances, as it involved
the interpretation and application of US patent law.
But as a result of the interpretation of US patentclaims in accordance with US patent law anddeliberations concerning the issue of the doctrineof equivalents, it was ruled that the plaintiff was
not infringing the defendant’s US patent rights. In
other words, is a rare case in which US patent law
was applied after finding international jurisdiction
on the grounds that the defendant had domicile inJapan.
At first glance, it would appear that the court“interpreted and applied foreign law” without

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referring to “special circumstances” for denying
international jurisdiction that impedes thewell-organized progress of court proceedings.
However, the method of judgment concerning
infringement under actual US patent law involved
deliberations regarding literal infringements andinfringements under the doctrine of equivalents,
in accordance with the plaintiff’s argument, anddid not touch upon interpretation under US patentlaw advanced by the defendant. The judgment
applyed foreign law based solely on the argument
advanced by the plaintiff. If the court had
independently applied and interpreted US patentlaw as the applicable law, it might have achieved
redress for the defendant, who was the rights
holder; from this standpoint, it had the same
effect as if the court had denied international
jurisdiction, so doubts still remain from theperspective of redress for the patentee.
Consequently, if one considers the portion of
the Coral Sand case to which foreign law wasapplied, although the court affirmed international
jurisdiction in this case in which the litigants
were both Japanese companies and applied US
patent law, the scope of deliberations under US
patent law went no further than that based on thearguments of the alleged infringer, so ultimately,
this case can be classed as one that did notachieve redress for the patent rights holder.
2

Features of Japanese Judicial Precedents

In summary, there are no cases at this stagein Japan in which international jurisdiction was
denied through court discretion on the grounds of“difficulty in the interpretation and application offoreign patent law.” However, avoiding hearing
cases involving foreign law has in effect (forexample, by changing the interpretation of thelaw applying to the hearing) ultimately failed toprovide redress for patent rights holders althoughjurisdiction itself has not been denied.
This characteristic gives rise to concern thatJapanese courts might not provide to theinfringement of corresponding foreign patentrights such as those in the example in the
introduction remedy .
So why has this situation occurred?
According to the aforementioned feature of cases
involving general property, “inconvenience ofhearing the case under foreign law” is cited as the
special circumstance when denying international
jurisdiction. The number of judicial precedents
that state this directly has been increasing inrecent years. Given the inconvenience of foreign

legal research involved in interpreting andapplying foreign law in cases involving
infringements of foreign patent rights, what cameinto play was efforts by courts to coordinate theirinterests by cutting out as much of the work
involved in such research as possible.
In this regard, legal scholars positively view
the availability of international jurisdiction in
relation to infringements of foreign patent rights
in Japan. In the case presented in the introduction,
it is possible that Japanese courts will examine
whether the courts have international jurisdiction
over the joinder of claims for corresponding
foreign patent rights. Nevertheless, the inability
to hear cases in accordance with the law isbecause the interests of the courts to reduce theburden that hearings involve. It runs counter tothe interests of litigants, who wish to cut costs
and achieve one-time resolution of disputes.
3

US Statutes on International Jurisdiction
and Judicial Precedents

This section examines cases showing how
this discretionary power functions in US
infringement lawsuits concerning foreign patents,
in accordance with the perspective applied in theforegoing analysis.
In the USA, there are federal courts, which
deal with federal issues, and state courts, which
deal with all other issues. Cases concerning
patent rights are included among federal issues8,
but this is mainly interpreted as being confined tocases in which there is a dispute over patentrights held in the USA. Consequently, litigation
based on infringements of foreign intellectual
property rights is not deemed to be a federal
issue, so jurisdiction is not found, as a general
rule. However, if a case satisfies the“supplemental jurisdiction” requirements in
Article 1367 of the Judiciary Act, it is regarded asa case that can be dealt with in a federal court.
Within the confine of this provision the key
inquiry in the context of this study becomes
whether federal courts would have jurisdiction“in the event that a claim based on corresponding
foreign patent rights were added to a claim basedon US patent rights.”9
Incidentally, in terms of the relationshipbetween US federal courts and the courts offoreigncountries
that
have
granted(corresponding) foreign patents, an action might
be dismissed at the court’s discretion for theconvenience of the parties or to achieve justice,even if the federal court at which the action has

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jurisdiction. This is called dismissal of an action
on the grounds of forum non conveniens.
Nevertheless, in discussions concerning theconventional situation within the USA, opinions
are divided regarding the handling of foreign
patent rights by US federal courts. It has been
pointed out that the application of foreign patentlaws prolongs proceedings could become
prolonged if foreign patent laws are applied, as
there are differences in their scope of protection
and techniques for their interpretation. In
addition, if claims based on corresponding foreign
patent rights were joined under supplemental
jurisdiction, courts would need to apply the lawsof multiple countries when assessing theinfringement of the foreign patent laws inquestion.
In such discussions, the following US judicial
precedents referring to the exercise of
discretionary power in foreign patent rights
infringement lawsuits are often cited. The
following section refers to judicial precedents inchronological order and examines the reasons
why jurisdiction was found or denied. It attempts
to draw observations by focusing on the issue of“how to compensate for the fact that the interestsof the courts run counter to those of litigants in
infringement lawsuits concerning foreign patentrights.
(1) The Ortman case10
Firstly, in the Ortman case, both litigants
were American corporations; the plaintiff, acorporation from Illinois, transferred to thedefendant, a corporation from Delaware, thepatent rights that it held in the USA, along withthe corresponding patent rights that it held in
Canada, Brazil, and Mexico. The plaintiff
subsequently requested an injunction on the
grounds of infringement of the US patent rights,
by a product that the defendant had manufactured
within the USA and overseas; this disputeinvolved a concomitant action concerning aproblem over the interpretation of the transfer
contract (payment of the license fee and illegal
termination of the contract, etc.)
The federal court found supplemental
jurisdiction and heard all of the claims together,having found that the issues concerning the US
patent rights and the infringement overseas of
the foreign patent rights were “substantiallyrelated to each other”. Jurisdiction was bases on
the finding that the basis of the claim was “theresult of the defendant doing similar acts both in

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(2) The Mars case11
On the other hand, the Mars case was a
dispute between a US corporation and a Japanese
corporation, focused on products manufactured by
the defendant that infringed the plaintiff’s US andJapanese patent rights. With respect to theinfringement of the plaintiff’s Japanese patentrights, the plaintiff argued that the case satisfied
the requirements for supplemental jurisdiction,
but the Court of Appeals denied jurisdiction, on
the grounds of the legal principle of forum nonconveniens.
Although a number of reasons for denying
jurisdiction were cited, the Court of Appeals
found that the content of the claim for
infringement of US patent rights differed fromthat of the claim for infringement of Japanese
patent rights. Because the applicable law relating
to the Japanese patent rights infringement
differed from that relating to the US patent rights
infringement “the Japanese patent rights
infringement would be more appropriately
resolved by a Japanese court,”. Moreover,judgments on the exercise of supplemental
jurisdiction also involve a judgment regardingwhether joining the claims can be expected tolead to one-time resolution of the dispute, which
was not likely the case have.
As a result of this ruling, examples ofsupplemental jurisdiction being denied at thediscretion of the courts emerged in cases
concerning the infringement of corresponding
foreign patent rights. At this stage, the stance ofthe federal courts toward judgments on
jurisdiction over corresponding foreign patentrights appears divided into two groups.
(3) The Voda case12
The Voda case emerged against thisbackground. This case involved a dispute
between two US corporations. The key issue waswhether or not an action concerning infringementof the plaintiff’s US patent rights and actions
concerning infringement of the corresponding
European, British, French, German, and Canadianpatent rights could be heard together.
In its judgment on judicial economy and theconvenience of the parties, the federal court
denied jurisdiction citing difficulties concerning“the application of foreign law” and referring to

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forum non conveniens, even thought it could haveexercised supplemental jurisdiction.
The reasons the USA was not a convenientforum included the fact that each country
provided diffluent scope of patent protection andtheir interpretation, the fact that exercising
supplemental
jurisdiction
would
involvedifficulties application foreign patent laws to the
judgment of infringements, and the fact that theapplication of the laws of several countries could
prolong litigation.
(4) The Fairchild case13
Furthermore, in the subsequent Fairchildcase, a dispute between two US corporations led
to a declaratory judgment lawsuit for rejecting theobligation to pay under a license agreement
concerning US and Chinese patents held by the
defendant. US jurisdiction was based on theforum selection provision in the contract.
Supplemental jurisdiction was ultimately found inregard to the claim concerning the Chinese patent,on the grounds that judging whether or not theplaintiff’s product infringed the defendant’s
Chinese patent would not constitute abuse of thecourt’s discretion. The reason given for this wasthat the primary claim related to matters in thecontract regarding non-payment of royalties, andthe infringement of the foreign patent wasdeemed to relate to part of that dispute.
4

Features Demonstrated by US Judicial
Precedents

The distinctive features seen from thejudicial precedents outlined above reveal several
features. First jurisdiction over issues concerning
foreign patent rights was only found in contract
disputes. (There include cases in which thecontract also covered foreign patent rights, so theclaim of infringement arose concurrently with thecontract dispute , or cases in which although the
infringement of foreign patent rights was includedin part of the dispute, the contract included
jurisdiction clause over the main claim).
Conversely jurisdiction is currently denied inlawsuits that relate purely to infringements
without any contract dispute.
As for exercising the discretionary power todeny jurisdiction, the Voda case demonstrates
that US courts recognize their lack of institutional
capability to make judgments on foreign patentlaws and harbor concerns that hearing suchlawsuits could entail higher litigation costs than if
the suit were heard by a court in the country that

granted the patent. Thus, such cases arecharacterized the tendency for the costs involved
in research by experts on foreign patent laws to
tip the balance toward denying the exercise of
supplemental jurisdiction. This is particularly
true if the court determines that the cost ofgathering and translating evidence would impede
the smooth process of court proceedings.
Nevertheless, there are always voices
opposed to the denial of federal court jurisdiction
over infringement lawsuits based on foreign
patent rights. Although no judicial precedents
have departed from Voda since , there remains
scope for debate.14
It is clear that the application of foreign law
is presently one of the grounds that courts
employ when exercising their discretionary
power to deny federal court jurisdiction. In otherwords, when exercising their discretionary power
to deny international jurisdiction, courts cite theapplication of foreign law as a consideration.
Consequently, the situation in the USA has
been similar to that in Japan, in that the effort
required of courts in researching foreign law is at
odds with the interests of litigants seeking a
one-time resolution of their dispute. In light of
this, US courts seek to reduce the burden thathearings involve, which may run counter to theinterests of litigants, who wish to cut costs andachieve one-time resolution of disputes.

Ⅲ Court Discretion and Foreign
Legal Research
1

The Exercise of Discretion by Courts inJapan and the USA

Now turn to issues of judicial discretion andforeign legal research.
First, to briefly summarize judicial precedentand various of the revised Code of Civil Procedurethat clearly document these precedents suggestthat courts in Japan can hear cases involving
foreign patent rights. Nevertheless, an uncertain
situation has arisen, in which courts can exercise
their discretionary power to deny international
jurisdiction in proceedings involving theapplication of foreign law ; even when jurisdiction
is affirmed, the result does not always contributeto protect the rights holder.
On the other hand, in the USA, although in
law it is possible for courts to hear cases involving
foreign patent rights, international jurisdiction isdenied via the exercise of judicial discretion, otherthan in lawsuits related to contracts.

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2

Foreign Legal Research in Japan andthe USAHow is the content of foreign laws
researched in Japan, and what efforts have been
made to understand foreign laws, interpretationsof laws, and legal precedents? Japanese courts arecharged with the responsibility of verifying thecontent of foreign laws in proceedings. They are
expected to conduct ex officio detection, taking
the initiative in researching the content of foreign
laws. With respect to the issue of “proving
foreign law” in private international law, therequisite degree of proof has been interpretedloosely such that the application of foreign law bycourts does not become an excessive burden.
Nevertheless, judicial precedents occasionally
emerge in which the court has exercised
discretionary power and denied international
jurisdiction, after stating that the application offoreign law based on independent research into
the content of foreign law is difficult. 15 Thissituation create the practical risk that foreigncompanies will regard the forum of Japan as
having a tendency to apply Japanese law at all
times, and a difficult venue for dispute resolution.
On the other hand, in the USA, the litigants
have the responsibility for substantiating theirarguments about foreign law.16 Consequently, inlitigation, courts are not obliged to independently
research the content of foreign law. The fact thatcourts nonetheless exercise their discretionary
power based on the same reasoning as Japanesecourts is deeply interesting. Even though if theparties concerned have the responsibility to
substantiate their arguments, the fact remainsthat legal proceedings based on the content offoreign laws necessarily impose a substantial
burden on courts in both Japan and the USA, notleast because of the cost of translating theevidence.
However, it is important that, thedetermination of international jurisdiction occurs
before the judgment on the merits of the case.
Tdetermination of applicable foreign law is part ofthe substance of the case and must not be
included as a ground for the exercise of discretionin denying international jurisdiction. If difficultyin the independent research and application offoreign laws by courts causes the denial ofinternational jurisdiction, putting a foreign legal
research system were put in place may alleviate
this situation.

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3

The Development of a Foreign Legal
Research System

If one country’s court is dealing with an
infringement of foreign patent rights and ademand for an injunction or demand forcompensation for damages is filed on the basis of
this infringement, the regulations stipulated in
the relevant country’s patent laws and other civil
laws are applied. However, courts view suchresearch and application of the content of foreignlaws as something that “impedes thewell-organized progress of court proceedings.”
So what kind of means exist for eliminating
the inconvenience to courts associated with theapplication of foreign law? In particular, what kindof system would ensure the appropriate
application of foreign law in proceedings?
(1) The Max Planck Institute for Comparativeand International Private Law
There is an initiative in Germany that is ofgreat interest when looking at this kind ofproblem. In Germany, courts have international
jurisdiction over infringements of foreign patentrights but they do not have discretion to decide
whether
they
have
such
jurisdiction.
Consequently, if the application of foreign law inproceedings is required, the court independently
researches the content of the relevant foreign law
and reaches a judgment. 17 However, courts do
not have an internal body that conducts foreign
legal research. Instead, and the characteristicfeature is that they submit requests to external
research institutes and other bodies as needed,
commissioning them to carry out the relevant
research.
For example, the Max Planck Institute forComparative and International Private Law
researches and reports the content of foreign law
in response to requests from courts, and thecourts issue judgments with reference to theInstitute’s reports.18(2) Challenges in the formulation of aninternational convention19
At the Hague Conference on Private
International Law, expert meetings have been
held to formulating a new convention on thetreatment of foreign law. Expert meetings
between 2007 and 2009. In addition many anumber of rounds of discussions concerning
methods of handling foreign law took place at
joint meetings of the various countries between
2010 and 2012.

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At these meetings, participants considereddesignedtoeliminatetheinitiatives
inconvenience involved in the application offoreign law in court proceedings as well as
accommodating the interests of the litigants. This
likely helped to reconcile the institutional
differences between civil law countries which
adhere to ex officio detection at the responsibilityof the court in the application of foreign law inproceedings, and common law countries which
expect the litigants to carry out this research. In
any event, there is considerable interest among
countries in the necessity of building a networkthat would make foreign laws more easily
accessible than at present. The problem is how tomake such a system a reality.
The Development of a Foreign Legal
Research System and its Impact on
Court Discretion
As described above, there is growinginternational acknowledgment of the need for a
foreign legal research system. This trend reduce
thedenialofinternational
jurisdiction,
particularly in relation to the exercise of
discretionary power by Japanese courts. Morespecifically, by reducing the inconvenience
involved in research into the content of laws thatarises from the application of foreign law, it would
accommodate one-time resolution in Japan, evenin the type of dispute exemplified in the
introduction. This would also ensure that theinterests of courts and litigants would coincide.

place internationally, litigants could be more
exposed to international litigation. Japanesecompanies would be forced to deal withproceedings overseas if a foreign company
instituted proceedings in the relevant country
concerning an infringement of corresponding
foreign patent rights that included a Japanese
patent. For example, the potential that
supplemental jurisdiction in the USA would be
affirmed would increase, causing Japanesecompanies to answer proceedings in which the
USA was the forum. Consequently, this would
increase forum options, including Japan. Thus
companies must bear in mind the possibility oflitigation overseas when carrying out businessexpansion.

4

Ⅳ Conclusion
The foregoing observations highlight anumber of perspectives on lawsuits concerning
the infringement of corresponding foreign
patents.
This study has examined the potential forthe one-time resolution in Japan of infringementsof corresponding foreign patent rights in Japan.
The cumently even where both parties are
Japanese companies, there is always a possibility
that the proceedings will be dismissed if the court
notices grounds that could harm “thewell-organized progress of court proceedings.”
These grounds could include “researching andapplying foreign law” that impede “thewell-organized progress of court proceedings.” Assuch, there is a need to put in place a system forresearching foreign law in order to reduce factors
encouraging courts to dismiss proceedings.
If a foreign legal research system were put in

1

Act for Partial Revision to the Code of Civil Procedureand the Civil Provisional Remedies Act [Act No. 36 of
2011, entered into force April 12, 2012]. hereinafter the
Code of Civil Procedure as revised by this Act shall bereferred to as the "revised Code of Civil Procedure."
2
The Supreme Court ruling dated October 16, 1981
(Minshu Vol.35, No.7, at 1224) and the Supreme Court
ruling dated November 11, 1997 (Minshu Vol.51, No.10,
at 4055) establish a means of denying international
jurisdiction by Japan due to “special circumstances.”
These set out the framework that “As a general rule, it
is reasonable to submit a defendant to Japanesejurisdiction over an action brought in a Japanese court
when one of the venues prescribed in the Code of Civil
Procedure of Japan is located within Japan.” “However,
the international jurisdiction of Japan should be denied
when there are found to be special circumstances thatwould make the adjudication of Japan run counter to theprinciples of securing fairness between the parties, andthe just and prompt administration of justice.” Since
then, judicial precedents have come to judge thequestion of whether or not there is international
jurisdiction based on this two-step theory.
3
The revised Code of Civil Procedure’s sections
concerning intellectual property rights litigation withan overseas element have no special provisions
regarding the infringement of foreign patent rights, sojurisdiction by Japanese courts arises through thefulfillment of the conditions prescribed in Article 3-2(Jurisdiction Based on the Defendant’s Domicile, etc.),
Article 3-3 (Jurisdiction over Action Relating toContractual Obligation, etc.), and Article 3-6(Jurisdiction over Joint Claim).
4
In lawsuits involving infringements of foreign patentrights, the defense that a patent is invalid is regarded as
an issue concerning the “effect of patent right,” so suchactions are dismissed on the grounds of breach of
exclusive jurisdiction (Article 3-5 (2) and (3)). Accordingly,
such actions fall outside the scope of this paper.
5
Until that point, almost all cases in which Japan wasdeemed to have international jurisdiction were disputes
over patent rights held in Japan, which fall outside thescope of this study. Moreover, among older
infringement lawsuits concerning foreign patent rights,● 97 ●IIP Bulletin 2014 Vol.23

infringement lawsuits concerning foreign patent rights,
the ruling of the Tokyo District Court dated June 12,1953 (Kaminshu Vol.4, No.6, at 847) reflected a strict
approach to the territorial principle. Under this ruling,
the case was pending in a Japanese court as a dispute
over the infringement of foreign patent rights. In thiscase, the plaintiff, who held patent rights in Japan andManchukuo, sought compensation for damages over the
infringement of patent rights by the defendant inManchukuo. Having found jurisdiction without firstconsidering international jurisdiction (something that
also occurred in the Card Reader case), the court
dismissed the plaintiff’s claim.
6
Ruling of the Supreme Court First Petty Bench dated
September 26, 2002 (Minshu Vol.56, No.7, at 1551)
Claim for damages, etc. [The Card Reader case].
7
Ruling of the Tokyo District Court dated October 16,
2003 (Hanrei Times No.1152, at 109) Claim for an
injunction against commercial defamation, etc. [TheCoral Sand case].
8
Under Article 1338 (a) of the Judiciary Act.
9
In a situation in which a plaintiff institutes proceedings
based on multiple joint claims, when there is a groundfor jurisdiction in one of the claims, and the otherclaims are derived from the same case, and they aresubstantially related to each other, then the court
concerned has jurisdiction over all of the claims. This iscalled supplemental jurisdiction. In other words, if
there are no grounds for jurisdiction by a federal courtin one particular single claim, but there is another claim
derived from the same case and the two claims aresubstantially related to each other, it is still possible fora federal court to hear the case involving both claims.
However, in this situation, it is recognized that “inregard to the question of whether or not the court
accepts the joining of the multiple claims and exercises
jurisdiction, Article 1367 (c) depends on the court’s
discretion.” Accordingly, in this regard, when
examining judicial precedents, it is necessary toconsider whether or not discretionary power is
exercised on the basis of all of the facts.
10
Ortman v. Stanray Corp., 371 F.2d 154 (7th Cir.1967).
11
Mars Inc. v. Kabushiki-Kaisha Nippon Conlux, 24 F. 3d1368, 1374 (Fed. Cir. 1994).
12
Voda v. Cordis., 476 F. 3d 887 (Fed. Cir. 2007).
13
Fairchild Semiconductor Corp. v. Third Dimension(3D) Semiconductor, 589 F. Supp. 2d. (2008).
14
Dissenting opinion filed by Judge Newman. Commentsthat judicial precedents negate the exercise of
supplemental jurisdiction can also be seen here andthere. Hamai at 23, Tomoko Date, International
Jurisdiction and Patent Disputes: Ruling of the UnitedStates Court of Appeals for the Federal Circuit in
VODA v. CORDIS, Journal of the Japanese Institute ofInternational Business Law Vol.36 No.3 (2008), at
392-395, and others.
15
Yoshimasa Furuta, Next Agenda for Lawmaking in the
Arena of International Private Law and International
Civil Litigation, Japanese Yearbook of Private
International Law No.13, at 106-116 (2011).
For the status of judicial precedents and doctrine, see
Akira Takakuwa and Masato Dogauchi (eds.), New
System of Practice of Litigation III: International Civil
Procedure (Property Law), (Seirin-Shoin 2002) at 282

IIP
Bulletin2014
2014
Vol.23
IIP Bulletin
Vol.23[written by Hiroshi Matsuoka]; and Masahito
Monguchi et al. (eds.), The Civil Evidence System
Vol.2 Introduction II, (Seirin-Shoin 2004) at 23 [written
by Takahiro Nishida]. Also, Tetsuya Obuchi, Featuresof the Copyright Act from the Perspective of the Legal
Protection System: Contrasts with the Patent Act andOther Laws, Copyright Vol.46, No.541, at 2 (2006).
16
In Japan, based on the principle that “the judge knows
the law,” research concerning such matters as theprovisions of foreign laws and the interpretation oflegal precedents is generally deemed to be a matter for
ex officio detection by judges. Nevertheless, courts
are only required to achieve a certain degree of
accuracy when it comes to the content of any foreignlaws at issue, and are not expected to apply foreignlaws to the same standard as courts in the country inquestion. On the other hand, some countries merely
regard foreign law as one of the facts presented in aparty’s argument, and believe that it is sufficient forthe judge to apply the content within the scope
substantiated/argued by the party concerned. In suchcountries, the arguments of parties tend to be centeredon legal content that is beneficial to their case and thedegree of accuracy depends on the party.
17
Examples of foreign patent infringement lawsuits inGermany that involved the application of foreign law
include the following. British patent law was applied in
Kunststofflacke OLG Dusseldorf GRUR 1968,
100/OLG Dusseldorf, IPRax 2001, 336/, Tetsuyuki
Iwata, British Patent Infringement Cases: Cases inWhich German Courts Were Found to Have
Jurisdiction, AIPPI Vol.42, No.5 (1997), at 372-382.
18
The information in this chapter is an edited summarycompiled by the author from an interview with Prof. Dr.
Jürgen Basedow, who has 45 years of experience inproviding expert opinions. The activity reportpublished by the Max Planck Institute for Comparativeand International Private Law states that it carried out
foreign legal research in response to 74 requests in2012. (Tätigkeitsbericht 2012 pp.152-157. Max
Planck-Institut für ausländisches und internationales
Privatrecht Hamburg). The specific details of theseexpert opinions are due to be published in Gutachten
zum internationalen und ausländischen Privatrecht(Expert Opinions on Private International andComparative Law).
19
The information herein is from Philippe Lortie; Maja
Groff “Missing Link Between Determining the Law
Applicable and the Application of Foreign Law:
Building on the Results of the Joint Conference on
Access to Foreign Law in Civil and Commercial
Matters (Brussels,15-17 February 2012)”. In addition,
for comprehensive information in Japanese covering
the period up to 2007, see Koji Takahashi, Expert
Meeting on the Feasibility of a New Convention on theTreatment of Foreign Law, The Doshisha Law Review,
Vol.59, No.1 (2007), Feasibility study on the treatmentof foreign law – Report on the meeting of 23-24
February 2007 (General Affairs and Policy, Prel. Doc.
No 21 A of March 2007).

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