Japanese Intellectual Property, Patent and Trademark Law Firm in Japan

Cross-Border Patent Litigation in Japan- DJ action

1. Global situation

US and EU recently show reluctant attitude on the Cross-Border Patent Enforcement as shown below.

(1) US – CAFC rejected the cross border enforcement in 2007

Voda sued Cordis for infringement of three U.S. patents on an interventional cardiology catheter. Later, Voda tried to add claims that Cordis also infringed Voda’s corresponding foreign patents including British, Canadian, French and German patents. The District Court found it had jurisdiction to rule on these foreign patents.

However, the Federal Circuit held that the district court abused its discretion by allowing the patentee to add infringement claims based on foreign patents in 2007.

(2) EU – ECJ rejected the cross border injunction and the cross border DJ action in 2006

Brussels Convention, Lugano Convention and Council Reg (EC) 44/2001 rule “Jurisdiction and the recognition and enforcement of judgments in civil and commercial matters” for Cross-Border Litigations.

European court of Justice (ECJ) clarified the interpretation of Article 6(1) of Brussels Convention and rejected the cross border injunction in Roche v Primus case.

ECJ clarified the interpretation of Article 16(4) of Brussels Convention and rejected the cross border Declaratory Judgment action (DJ action) in GAT v. LUK.

“Article 16 (4) of the Brussels Convention is to be interpreted as meaning that the rule of exclusive jurisdiction laid down therein concerns all proceedings relating to the registration or validity of a patent, irrespective of whether the issue is raised by way of an action or a plea in objection”.

2. Japanese recent case - Comparative analysis

Tokyo District Court resolved disputes related on the U.S. patent between Japanese parties in Oct. 2003. The U.S. Patent Act was applied by the Japanese Court in this Coral Powder Case. This case was the cross border Declaratory Judgment action. Plaintiff is a Japanese company, Kabushiki-kaisha Coral Corp. Defendant is also a Japanese company, Marine Bio Kabushiki-kaisha who owns the U.S. patent.

(1) Cross-Border Jurisdiction

There is no law about the cross-border jurisdiction. Therefore, it is reasonable to determine according to the principles of equity between parties, and fair and speedy trial under the Code of Civil Procedure for domestic cases, if there is no extraordinary circumstance inconsistent with the above principles. See, Malaysia Airline Case, 135 MINSHU 7, 1224 (S.Ct. 1981) and Card-reader Case, 56 Minshu 7, 1551 (S.Ct. 2002).

(2) Choice of Law

Tokyo District Court determined that the U.S. law should be applied because there is no provision directly regulates the Choice of Law, therefore it is reasonable to conclude a country that has the closest nexus to the US patent at issue.

(3) Infringement analysis

Literal Infringement - No

Claim has the limitation of “a particle size passing about 150 to 500 mesh”. However, the particle size of the Plaitiff’s product is around 5,000 mesh. Therefore, the Plaitiff’s product is out of the literal scope.

Doctrine of Equivalents(DOE) - No

The limitation of “a particle size passing about 150 to 500 mesh” was added during the prosecution. The scope of a patent right should not be extended to an equivalent if a patentee narrows the claims through amendment during the of prosecution to an element related to patentability (Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 62 U.S.P.Q. 2d 1705, 1713, 122 S.Ct. 1831 (2002))

(4) Comparative analysis

The Tokyo District case is a DJ action as GAT v. LUK case. ECJ rejected the jurisdiction of DJ action in GAT v. LUK due to the exclusive jurisdiction on proceedings relating to the registration or validity of a patent, and the Tokyo District case made no decision on the registration or validity. Therefore, no conflict is found between them.

End of Report