Japanese Intellectual Property, Patent and Trademark Law Firm in Japan

                                                                                               Teva Gogyszergyar vs. Kyowa Hakko Kirin Co.,Ltd  
                                                                                                                             Date : January 27, 2012 
                                                                                                                             Case number: 2010 (Ne) 10043    
                                                                                                               

Overview

The grand panel at the IP high court in Japan clarified that, in principle, the scope of a "Product-by-Process Claim" ( hereinafter referred to as "PbPC" ) in an infringement case should be based on the process recited in the PbPC, not solely on the end product .  The IP high court also made it clear that the gist of an invention in a PbPC should be found in the same way in a trial for patent invalidation (an examination procedure) as that in the infringement case.   
 

Background

 
(1) Traditionally, there have been two lines of the interpretation of a PbPC in Japan: one has it that a PbPC is limited solely by the end product in the PbPC; the other has it that a PbPC is limited and defined by the process recited in the PbPC.
(2) In numerous infringement cases, courts adopted, in principle, the idea that the scope of a PbPC was solely based on the end product in the PbPC.  And then, in the light of file wrapper estoppel, courts eventually determined the scope of the PbPC as limited by the process recited in the PbPC,  In an examination procedure, the JPO has also adopted the interpretation of a gist of an invention in a PbPC as is the case in an infringement case.
(3) However, some courts have recently advocated the idea that, in principle, the interpretation of a PbPC should be based on the process recited in the PbPC.
(4) Under these circumstances, plaintiff (appellant), an owner of patent right of PbPC, sought an injunction against the infringement by defendant (appellee).  On the other hand, the defendant filed a trial for invalidation of the subject patent as an adverse action. 

Conclusion

The Grand Panel held as follows:
(1) In principle, the scope of a PbPC is limited to an identical product manufactured by the process recited in the PbPc.  In other words, an interpretation of a PbPC in an infringement case should be based on the process recited in the PbPC.
  The scope of a PbPC can be determined solely by the end process under the exceptional circumstance in which, at the timing of filing of an application, specification of the product directly by its structure or feature was difficult or impossible.  However, the burden of proof of this exceptional circumstance shall be on the patent owner.
(2) The finding of the gist of an invention of a PbPC in a trial for patent invalidation (an examination procedure) should be the same way as the determination of the scope of the PbPC in an infringement case, which is different from what the JPO has adopted ever. 

Note

This case is important in that the IP high court in Japan clarified an interpretation of a PbPC should be based on the process recited in the PbPc both in an infringement phase and in an examination phase.  It is of interest that this decision demonstrated a similarity with the decision of Abbott Laboratories v. Sandoz, Inc (Fed. Cir. May 18, 2009) in that the process recited in a PbPC should be considered in an interpretation of the PbPC in an infringement phase. 

Detail information is provided on website of the IP high court in Japan:
http://www.ip.courts.go.jp/eng/documents/pdf/g_panel/decision_summary_10043.pdf


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