Japan Update: Summary of IP High Court decision revoking the JPO’s decision invalidating a patent directed to a self-checkout system.”

Introduction

This article touches on a case in which the Intellectual Property High Court (“IP High Court”) rendered a decision (2020 (Gyo-Ke) 10102) on May 20, 2021 against a trial decision by the Board (“Board Decision”) for an invalidation trial (Invalidation Trial No. 2019-800041), filed by Fast Retailing Co., LTD (“Defendant”), against Patent No. 6469758 (“’758 Patent”) titled “Reading device and information providing system”. While the JPO Board found the ’758 Patent for the invention according to claim 1, the invention according to claim 2, and the invention according to claim 4 (“Invention 1”, “Invention 2”, and “Invention 4” respectively) as corrected invalid, the IP High Court vacated the Board Decision on the ground that the invention described in a cited reference was erroneously identified by the Board. It should be noted that the IP High Court also rendered decisions on related cases for the ’758 Patent, and yet this article focuses on the decision in the IP High Court to vacate the Board Decision (“Court Decision”).

’758 Patent

A reading device used for self-checkout has been conventionally proposed. The conventional reading device is configured to read information on a RF tag attached to an article placed in a casing on which an opening is formed, upon closure of the opening by a lid. The problem thereof to be solved is that the article is hidden due to the presence of the lid while the information is read and that the removal of the lid to retrieve the article placed in the casing is sort of irritating task for a user. To this end, the ’758 Patent is directed to a reading device to prevent radio waves emitted from an antenna from spreading to mitigate the impact on radio waves toward other device(s), thereby allowing to eliminate the conventional lid.

Claim 1 of the ’758 Patent as corrected reads as follows:

A stationary reading device for reading information from an RF tag attached to an article, the reading device comprising:

an antenna which emits radio waves to communicate with the RF tag; and

a shield unit provided in a casing on which an upward-opening is formed, the shield unit storing the antenna, surrounding the article, and being provided with an upward opening wider than the article, characterized in that the reading device reads information from the RF tag in a state where the casing and the shield unit are upwardly open (emphasis added for corrected portions).

The correction made to claim 1 allows to specify a casing and an upward opening thereof and to specify a state of the casing’s opening while information from the RF tag is read.

Comparing the Invention 1 with the Ko 1 Invention 2, the Board identified two differences as follows:

• “reading portion” for the Invention 1 is “stationary” reading “device” while “reading portion” for the Ko 1 Invention 2 is “reading/writing module 200”.
•  “enclosure” for the Invention 1 is “casing” while “enclosure” for the Ko 1 Invention 2 is “an outer side wall 212 surrounding four vertical side walls 204 – 210 and a depositing cavity 202”.

The Board concluded that such differences are not substantial differences and that ’758 Patent was therefore invalid due to the fact that the Invention 1 could have been easily made by a person skilled in the art based upon the Ko 1 Invention 2.

Court Decision

The IP High Court, however, concluded as follows:

“… reading/writing module 200” in the invention according to the Exhibit Ko No. 1 is, in use, incorporated by “reading/writing device 102”. To be more specific, “reading/writing device 102” comprises in the bottom a depositing cavity comprising an aperture 106 for inserting object(s) into said depositing cavity and the insertion aperture 106 is surrounded by “protective wall(s)”. The “protective wall(s)” form a screen for protection principally against the tag activation waves originating from the depositing cavity and directed towards the outside and optionally, in the case where these activation waves have succeeded in leaving the cavity, against the waves emitted in response originating from the outside and directed towards the depositing cavity, and consists of an inner panel made of plastic material, an absorbent foam for absorbing the waves, and an outer panel made of metal for reflecting the waves. … It was common general knowledge as of the filing date of the patent application for the ’758 Patent that a shield unit to absorb electromagnetic waves comprises an absorbent foam and a reflector (metal) to reflect electromagnetic waves at rear side of the absorbent foam. … Assuming that metal is provided (at a position of an outer wall 212) outside “absorbent foam” which is provided outside “side wall” made of metal, both “side wall” made of metal and “outer wall” serve as wave reflectors to reflect radio waves, thus rendering the presence of “absorbent foam” provided therebetween meaningless. Thus, a person skilled in the art would understand that the “outer wall 212” is not required to be made of metal in the invention according to the Exhibit Ko No. 1. … in which case, it is not assumed that “reading/writing module 200” in the invention according to the Exhibit Ko No. 1 can be used alone in a state where “protective wall(s)” are not present, that is, it is not assumed that “reading/writing module 200” alone can prevent leakage of radio waves or prevent radio waves interference. … Thus, it is essential for “reading device” to be compared with the present invention to have a function to prevent leakage of radio waves towards outside or to prevent radio waves interference.            Therefore, “reading/writing module 200” alone in the invention according to the Exhibit Ko No. 1 is not a “reading device” to be compared with the present invention. … The Ko 1 Invention 2 cannot be identified as in the Board Decision and cannot be compared with the present invention (emphasis added).

That is, the IP High Court concluded that the outer wall 212 with which the reading/writing device 200 described in the Exhibit Ko No. 1 is provided is not required to be made of metal, contrary to what was alleged by the Defendant in the IP High Court.   It is thus not assumed that the reading/writing device 200 described in the Exhibit Ko No. 1 has a function required for a reading device to be compared to the present invention, thereby failing to identify the Ko 1 Invention 2 as in the Board Decision.

The IP High Court concluded as follows:

“… The Ko 1 Invention 2 cannot be identified, as a result of which none of the Inventions 1, 3, and 4 are identical to the Ko 1 Invention 2 and none of the Inventions 1 to 4 could have been easily made by a person skilled in the art based upon the Ko 1 Invention 2, without a judgement on the comparison between the Inventions 1, 3 and the Ko 1 Invention 2…”.

Remarks

As stated above, the IP High Court vacated the Board Decision on the ground that the Ko 1 Invention 2 was erroneously identified by the Board. It should be noted that the patent proprietor (i.e., the Plaintiff in the case) also alleged that the decision rendered by the Board as being lack of inventive step for the Invention 1 based upon the Ko 1 Invention 2 considering the rebuttal submitted by the Defendant to add remarks on lack of inventive step for the Invention 1 which was not included in the petition for the invalidation trial as filed was a procedural violation. In response, the IP High Court concluded as follows:

“…The Plaintiff alleged that the present invention involves inventive step even though the invention described in the Exhibit Ko No. 1 was regarded as primary cited prior art and the judgment on lack of inventive step alleged by the Defendant was made by the Japan Patent Office in the Notice of the Board Decision followed by the conclusion of the trial, and the like.   Given the history as above, the judgment on lack of inventive step for the Invention 1 based upon the Ko 1 Invention 2 does not constitute a procedural violation which renders the Board Decision illegal…”.

It should be noted that related invalidation trials (Invalidation Trial No. 2019-800078 and Invalidation Trial No. 2021-800068) against the ’758 Patent are pending before the Japan Patent Office as of this writing. Other related invalidation trials (Invalidation Trial No. 2019- 800087 against Patent No. 6518848, Invalidation Trial No. 2021-800056 against Patent No. 6518848, Invalidation Trial No. 2019-800089 against Patent No. 6541143, and Invalidation Trial No. 2021-800069 against Patent No. 6541143) are likewise pending before the Japan Patent Office as of this writing, where each of Patent No. 6518848 and Patent No. 6541143 is a patent for a divisional application based upon an original patent application for the ’758 Patent. On the other hand, no appeal has been filed against a decision rendered for an invalidation trial (Invalidation No. 2019-800088) against Patent No. 6532075 for a divisional application based upon an original patent application for the ’758 Patent and the decision was subsequently finalized. 

It should be also noted that the patent proprietor filed on September 24, 2019 a provisional disposition for injunction against an act of patent infringement in the Tokyo District Court based upon the ’758 Patent.  As stated above, the invalidation trials (Invalidation Trial No. 2019- 800078 and Invalidation Trial No. 2021-800068) against the ’758 Patent are pending before the Japan Patent Office as of this writing, resulting in that it would take a lot of time for the Tokyo District Court to render a decision.

By Anderson Mori Tomotsune, Japan, a Transatlantic Law International Affiliated Firm. 

For further information or for any assistance please contact japan@transatlanticlaw.com

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