I. Point at Issue 1 (as to whether or not the accused device is read on the technical scope of the alleged patented invention):

1 It is evident that constituent elements a, b and i of the accused device conform to constituent elements A, B and H, respectively of the alleged patented invention.

2 As to Constituent Element C

(1) In the publication of the alleged patent (Exhibit A1), the following description can be seen in an embodiment of the card game toy of the alleged patented invention:
 "At the left side P1 of the display 4, there are provided an attacking key (battle key) 5a and a power-up key 6a.  At the right side P2 thereof, there are provided an attacking key 5b and a power-up key 6b.
 Further, at the bottom edge side (front side) of the display 4, there is an array of midget lamps (LED) L1 to L5 indicative of an instruction as to an offender or a defender, or indicative of attack ....."  (column 3, lines 34 to 40)

(2) In the publication (Exhibit A1) of the alleged patent, subsequent to the aforementioned explanation (1) in connection with the constitution of the card game, it is explained how to play with the card game toy, wherein:
 1)  A player of P1 side inputs a holding card to cause the card data to be displayed, and thereafter a player of P2 side inputs a holding card to cause the card data to be displayed;
 2)  After completing the procedure 1), an attack-fist judging means judges which player, P1 side or P2 side, will be a first attacker and, if P1 side is judged to be the first attacker, P1 side player presses an attacking key;
 3)  Then, there occurs attack by P1 side against P2 side, and then based upon its result, a damage value will be subtracted from a holding power value of P2 side to obtain the holding power value of P2 side after the subtraction;
 4)  The holding power value is judged as to whether the holding power value is zero or not, and if the value is zero, P1 side is judged as having won the game, but if the value is greater than zero, P2 side player will press the attacking key next; and
 5)  According to the procedure 4), there occurs the attack by P2 side against P1 side and the aforementioned procedures 3) and 4) are repeated.
 In the publication of the alleged patent, subsequent to the above description, there is disclosed that "Further, the above-mentioned flow chart illustrates only a battle wherein an "attack" takes place between P1 and P2 sides, and also, a battle wherein the opponent*s (defender*s) holding power is reduced to zero.  Power-up keys 6a and 6b may be also used instead of "offense right", or other weapons cards, protector cards and item cards and the like may be also used."  (column 6, lines 37 to 42)

(3) Interpreting the "attacker" and the "defender" of constituent element C based on the aforementioned embodiment, it is possible to say that the "attacker" means "a player capable of selecting attacking or using the power-up key" whereas the "defender" means "a player incapable of selecting attacking or using the power-up key".  It is possible to say that "attack-first judging means" is provided for judging which side becomes the "attacker" in the above sense, and subsequently, making the opponent side as the "defender" in the above sense.

(4) In the constitution c of the accused device, what is judged by selection priority judging means is which player will first select offense or defense.  The defense means "to attempt to raise a holding power, a defending power and an accuracy power without attacking", which is construed to be synonymous with using the power-up key of the alleged patented invention.
 In the light of the above, the selection priority judging means of the constitution c is means for judging which player to be the "offender" and the other player to be the "defender" as defined as in the (3) above.  Thus, the selection priority judging means of the accused device can be regarded as the "attack-first judging means" of the alleged patented invention.

(5) According to evidences (Inspection Exhibits A1 and A2) and the gist of the entire pleadings, the above-mentioned judgment by the accused device can be considered to be done in connection with battle data stored by storage means of the constitution b.  Thus, the accused device conforms to constituent element C of the alleged patented invention.

(6) The Defendant insists, in the alleged patented invention, that a result obtained from a damage calculation has been logically established at the time the attacker is determined by the "attack-first judging means".  On the assumption of the aforementioned, the Defendant further insists that the selection priority judging means of the accused device differs from the "attack-first judging means" of the alleged patented invention.  (Refer to II, III 2 (1) (i) hereinabove.)  However, if the "attacker" and the "defender" of constituent element C of the alleged patented invention are construed as defined in the preceding (3), at the time attacker is determined by the "attack-first judging means", no selection has not been made as to attacking or using the power-up key, so that it is apparent that a result of the damage calculation has not been logically obtained.  As a consequence thereof, the aforementioned Defendant*s insistence cannot be accepted because it is based upon the presumption that the result of the damage calculation is logically obtained.
 According to the Defendant, assuming that:
 where it is construed that constituent elements A and C among constituent elements of the alleged patented invention is included in the Card Baseball which had been sold prior to filing an application for the alleged patented invention, and that the "attacker" of constituent element C is a player capable of attacking first and that the "attack-first judging means" is means for judging which player is to be the first attacker,
 constituent elements B to H are considered to be included in the SD Gundom; and
 combining the above-stated constituent elements could be easily reached by one skilled in the art, (then, based on the above assumption,) the "attacker" of constituent element C is construed as a player capable of attacking first while the "attack-first judging means" therein is construed as means for judging which player can be the first attacker.  In such case, it follows that the alleged patent should be invalidated.  Thus, the Defendant insists that the aforementioned interpretation is impossible.  (Refer to II III 2 (1) (i) hereinabove.)  However, according to the evidences (Exhibits B19-1, B21, B31, Inspection Exhibits B1 and B2) and the gist of the entire pleadings, there are the following findings, that is,:
 the Card Baseball is a baseball game such that a player*s data is stored after it is read from a card indicating the data in bar-code representation, a team is organized to play a game in accordance with the stored data, and
 the SD Gundom is a game in which two players participate in making the Allied Force and the Gion Force battle each other in a manner such that the each player places own pieces in an array on a map and moves them to attack each other so as to defeat the pieces placed in the opponent*s capital and the one who has defeated the capital wins the game; and, in SD Gundom,
 there are further findings as described below:
 one side (the Allied Force) is always the first attacker, the attacker changes after the first attacker moves five times and makes offenses;
 when setting one*s own pieces and the opponent*s pieces to judging means, the judging means reads a pin-like protrusion (dot) at the back side of a piece and subsequently when the attacker presses an attack button, attacking is performed to thereafter display a battle outcome, whereby a power-gauge decreases according to the damage each player suffers due to the battle, and
 as a result, if the piece power becomes zero, the piece has to be removed from the map.
 In the light of the above findings, the Card Baseball and the SD Gundom partially include some portions of constituent elements of alleged patented invention.  Hence, by replacing the pieces of the SD Gundom with a card of which data is indicated in bar-code representation, a game closely similar to the alleged patented invention may be made, but this is not saying that this replacement could be easily made (Exhibit B31).  Therefore, even if the Card Baseball and the SD Gundom were put on the market at the time of filing the application of the alleged patented invention, the alleged patent is not deemed to be invalidated immediately for such reason.  Thus, the Defendant*s aforementioned insistence based on such premises can not be accepted.
 The Defendant further insists that:
 in the accused device, even if a player having a selection priority selects offense, a player who later selects also selects an attack, then the attack is performed simultaneously, so that neither of the players can be a first attacker.  (Refer to the preceding II III 2 (1) (ii) hereinunder.)  However, as determined  at the preceding (3), the "attacker" of constituent element C does not mean a player who attacks but means "a player who have an opportunity to select attacking or using a power-up key".  In the accused device, even if there is a case that the attack is performed at the same time, as has been stated above, selection between an attack and a defense is performed in sequence.  The "attack-first judging means" is means for judging which player will make such selection first.  Hence, there is no change to the aforementioned determination that the accused device comprises the "attack-first judging means" and thus conforms to constituent element C.

(7) The Defendant also insists that constituent element C must be construed as an "attack-first judging means for judging one side as an attacker and the other side as a defender in accordance with a battle data".  However, constituent element C does not literally include a limitation that judgment of deciding a first attacker is made in accordance with battle data.  Furthermore, as will be opined in II 1 hereinunder, it is not the case that if otherwise interpreted, the amendment would be considered as the change of gist, and thus, would not be entered.  Thus, constituent element C should not be construed as limiting the claimed scope as alleged by the Defendant.

3 As to Constituent Element D:
 An "attacking key" of constituent element D is pressed by an attacker, i.e. a "player who can select attacking or using a power-up key" after battle data is inputted and judgment is made by attack-first judging means for judging one player as an attacker and the other player as a defender.  It is possible to say that the attacking key is means for transmitting the attacker*s attacking intention to a game machine.  The "offense selecting key" of the accused device (constituent element d) can be regarded as corresponding to the "attacking key" in the above sense.  Thus, the accused device conforms to constituent element D.
 Meantime, in the accused device, a battle will not start by pressing only the "offense selecting key" but will start by pressing the "battle starting key" (constituent element d).  On the other hand, in the embodiment described in the publication of the alleged patent, there is described that a battle starts as soon as the "attacking key" is pressed as admitted at 2 (2) hereinabove.  The alleged patent differs from the accused device in this regard.  However, there is no recitation in the claims that a battle must start immediately after the "attacking key" is pressed (constituent element E will be discussed below).  There is no necessity to construe the alleged patented invention in such a limited manner as stated above in the light of advantageous results of the alleged patented invention, or there is no circumstance which requires to construe in such a manner.  Therefore, even if it is the case, in the accused device, that a battle will not start by pressing only the "offense selecting key" but will start by pressing the "battle starting key", such fact will not influence the above decision as to whether or not the accused device conforms to constituent element D of the alleged patented invention.

4 As to Constituent Element E:
 As admitted at the preceding 2 (2), in the embodiment described in the publication of the alleged patent, a battle starts immediately after the "attacking key" is pressed, and a damage is computed.  However, the phrase of "when the attacker presses the attacking key" in constituent element E can be literally construed as "in the case an attacking key is pressed".  Also, in the light of advantageous results of the alleged patented invention, there is no necessity to construe the language of "when the attacker presses the attacking key" as limiting to "as soon as the attacking key is pressed", nor there is any other circumstance which necessitates to so construe it.  Therefore, the language of "when an attacking key is pressed" in constituent element E can be construed as meaning "in the case an attacking key is pressed".
 The accused device has computing means (constituent element e) for computing card damages of the respective players attacked when both players press the offense selecting key, or computing a card damage of a player selecting a defense (a player attacked) when one player presses the offense selecting key and the other presses the defense selecting key.  As admitted at 2 (3) hereinabove, the "attacker" of constituent element C means "a player who can selects attacking or using a power-up key" and the "defender" means an opponent relative to the attacker.  In the accused device, in this regard, it can be said that each player is placed on either position of the "attacker" or the "defender" at the time the battle starts.  There is no room for the "defender" to select an "attack".  When an opponent selects "offense" and "presses the attacking key", the defender may be damaged, and a computing means for computing the damage (constituent element e) is provided.  Thus, the accused device conforms to constituent element E of the alleged patented invention.

5 As to Constituent Element F:
 The accused device has survival judgment means (constituent element f) for judging survival by making computation based upon the damage thus computed by the computing means of the above-mentioned item 4 as well as card data of either of the players attacked when both players have selected offense or otherwise, card data of the player who has selected defense (attacked) when if one player has selected offense and the other player has selected defense.  As the aforementioned steps are also performed by the "defender" as has been described in the above-mentioned item 4 above, the accused device conforms to constituent element F.

6 As to Constituent Element G:
 The accused device includes outcome display means (constituent element g) for, when a judgment result that denies at least one player*s survival is obtained from the survival judgment means as mentioned in the preceding item 5, the game is finalized and the judgment result is displayed.  Thus, the accused device conforms to constituent element G.
 In this regard, the Defendant insists that the alleged patented invention is directed to a game wherein only one battle is fought, and a battle outcome is always obtained in accordance with the judgment of survival, and displayed.  (Refer to II III 2 (4) of these papers.)  However, in the claim, there is no recitation which necessitates to so construe it.  Besides, in the embodiment referred to at 2(2) above, there is a description stating that attack (or defense) is repeated until one of the player*s holding power value becomes zero.  Therefore, it is impossible to construe the alleged patented invention as argued above by the Defendant.  Consequently, it is impossible to accept the Defendant*s insistence (at II III 2(4) hereinabove), that the accused device does not conform to constituent element G because the accused device repeats the battles on the assumption of the above argument.

7 As stated in 2 (6) above, one skilled in the art could not have found it obvious to reach the alleged patented invention from the Card Baseball and the SD Gundom.  The Defendant*s insistence (at II III 2 (5) hereinabove), stating that the accused device is not encompassed within the technical scope of the alleged patented invention on the assumption above, lacks a significant premise, thus failing to be accepted.

8 Such being the case, it is concluded that the accused device is read on the technical scope of the alleged patented invention.

II. Point at Issue 2 (as to whether or not the enforcement of the alleged patent right is deemed to be the abuse of the right on the ground that the alleged patent involves cause for invalidation):

1(1)  Considering the evidences (Exhibits B1-1 and B2) together with the findings stated in II I 6 hereinabove, the following facts are admitted:
 There is no recitation of attack-first judging means in the claims of the application of the alleged patent as originally filed;
 In the specification as of filing the application of the alleged patent, there is disclosed that "... being read by bar-code reading means and, according to card data stored in memory means, it is judged which battle card is to attack first" as one embodiment; and
 Other than the above description in the embodiment, no description of the attack-first judging means can be found in the specification and the drawings of the application of the alleged patent.
 However, since the above description in the embodiment is considered to be a mere example, it can be construed that commonly used attack-first judging means which does not depend upon or is independent of the card data was included therein.  Constituent element C added by the amendment includes a language of "having attack-first judging means for judging one player as an attacker and the other player as a defender from the battle data stored by the memory means" encompasses "attack-first judging means for judging one player as an attacker and the other player as a defender in accordance with the battle data" as well as "attack-first judging means for judging one party as an attacker and the other party as a defender regardless of the battle data".  However, as those wordings have been included in the specification and the drawings as of filing the application of the alleged patent, the amendment in question should not be deemed as a change of gist (Exhibit A5).

(2) According to the findings in II I 6 hereinabove, it is considered that the Plaintiff added a constituent element of "displaying a battle outcome obtained by survival judging means" by the amendment in question.  The Defendant insists that this constituent element means that the battle outcome can be always obtained by the judgment of the survival judging means.  However, as has been judged in item I 6 of these papers, such insistence cannot be accepted.  Thus, the Defendant*s insistence, which is led from the above-stated insistence, is that the amendment in question should be deemed to be a change of gist because the aforementioned point was not included in the specification as of filing the application of the alleged patent, but such Defendant*s insistence is not acceptable.  According to the evidences (Exhibit B1-1 and B2), the specification as of filing the application of the alleged patent included the embodiment in the above-mentioned I 2 (2).  Therefore, it can be deemed that the outcome display means for displaying the judgment result produced by the survival judging means was included in the specification as of filing the application of the alleged patent.  In the light of the above, the amendment in question should not be deemed to be a change of gist.

(3) The Defendant insists, on the assumption that the amendment in question falls under the change of gist and thus is not permitted, that the alleged patent should be invalidated.  (Refer to II IV 1 (1) of these papers.)  However, the amendment in question is not deemed to be the change of gist as stated above.  Thus, the above-stated Defendant*s insistence is not acceptable.

2 As has been described in the preceding I 2 (6), it is not deemed that the alleged patented invention could have been readily reached on the basis of the Card Baseball and the SD Gundom.  The Defendant insists on invalidation of the alleged patent based on the aforementioned ground of reason.  However, this Defendant's insistence (in the preceding II IV 1 (2)) cannot be accepted.

III.  Point at Issue 3 (as to whether or not the Defendant is entitled to own the prior use right):

1 The Defendant insists that the application of the alleged patent should be deemed as having been filed as of submitting the amendment because the amendment in question falls under the change of gist and should not be entered; and that the Defendant owns the prior use right (as set forth at II V 1 (1)) because the Defendant had been manufacturing and selling the accused device prior to the date of the amendment.  However, as the amendment in question does not fall under the change of gist as stated in the preceding item II 1, the Defendant*s insistence is not acceptable.

2 In consideration of the contents of the games, the Card Baseball and SD Gundom, as admitted in the preceding I 2 (6), it is apparent that those contents differ from those of the accused device.  Therefore, even if the Defendant had been manufacturing and selling the Card Baseball and SD Gundom prior to the filing date of the application of the alleged patent, it is not possible to say that the Defendant is entitled to the prior use on the above basis.

VI. Point at Issue 4 (as to validity of the warning in this case):

1 In the case:
 where the applicant for patent gave a warning to the third party by presenting a document which describes the contents of the invention of the patent application after the application had been laid-opened, and the third party came to know the contents of the aforementioned invention by such warning, and thereafter the claim was amended by an amendment; and
 where the amendment results in reduction to the scope of the claim before amended within the scope of matters described in the specification or the drawings originally attached to the application for patent; and
 further a device to be worked by the third party falls under the technical scope of the patented invention through before and after the amendment in question was made,
 it is proper to construe that no further warning or the like for making the third party know the scope of the claim is necessary after such amendment.  (Decision was made at the third petty court of the Supreme Court on July 19, 1988.  Refer to Vol. 42, No. 6, page 489 of Collection of Decisions.)

2 According to the findings stated in the preceding item II I 6, the amendment in question is made to restrict the scope of the claims as of filing the application, and thus it is apparent that the accused device, which is encompassed within the technical scope of the invention after amendment, is also encompassed within the technical scope of the invention as of filing the application of the alleged patent.  Besides, the amendment in question was made, as described in the preceding item II 1, within the scope of the matters included in the specification and the drawings as of filing the application of the alleged patent.  Therefore, the Plaintiff should be permitted to demand the compensation of the Defendant without a further warning.
 Meantime, as stated in the preceding item I 2 (6), it is difficult to say definitely to an extent such that it could have been easily reached to replace the pieces of the SD Gundom with the cards in which data is displayed with bar-code representation.  In the light of the above, the claimed invention before amended could have been easily arrived at on the basis of the SD Gundom and the art of reading requisite data with bar-code representation.  Therefore, the Defendant insists that the invention before amended should be unpatentable (as set forth in the preceding item II VI 2), but the Defendant's insistence cannot be accepted.

V. Point at Issue 5 (as to a sum of compensation):

1 In view of the evidence (Exhibit B24) and a gist of the entire pleadings, the following findings can be admitted:
 The Defendant had been manufacturing the accused device in a total amount of 335,824 during a period from July 1992 and January 1993, and the Defendant had been selling the accused device in a total amount of 328, 140 during a period from August 1992 and March 1993;
 A retail price of the accused device is 6,800 yen apiece.

2 According to the evidence (Exhibit A7) and a gist of the entire pleadings, it is considered that the Plaintiff's company and the Defendant's company are in a competing relationship with each other, and thus generally a grant of licensing would be impossible between those companies.  On the other hand, according to the gist of the entire pleadings, it is known that the Defendant had been selling the accused device to wholesale merchants and others at a lower price than the retail price but had not been selling directly to the consumers at the above retail price.  With the various circumstances found in this suit in addition to those findings taken into consideration, 5 (five) % of the above-mentioned retail price is deemed to be appropriate as a royalty rate.  The appropriate total amount of the compensation is 114,180,160 yen as computed by multiplication as follows:
 a total number of manufactured accused device x 6,800 x 0.05.

6 Thus, there is a proper rationale for demanding the compensation in this suit to the extent limiting to payment of 114,180,160 yen as well as payment of money accruing therefrom at an annual interest rate of 5 % within a period starting from June 15, 1994 to a date of completion of the payment.  Thus, the demand for the compensation is admitted to the extent stated above.

Section 29 of Civil Case of The Tokyo District Court

   Judge-in-Chief  Yoshiyuki MORI
    Judge   Michinari ENOTO
    Judge   Ken NAKAHIRA

Lists of The Accused Device List:

Trade Name:  Super Bar-code Wars

i A card game toy comprising:

a bar-code reading means for reading cards indicating requisite data in bar-code representation;

b storage means for storing battle data read by the reading means;

c selection priority judging means for judging which player is to be given a selection priority to freely select offense or defense out of each player*s own will as each player is permitted to do so; (the defense herein means to raise life power, a defensive rate, and a hitting rate without making an attack.  The same applies hereinunder.)

d an offense selecting key and a defense selecting key to be sequentially selected by the players in accordance with the selection priority decided by the selection priority judging means in playing a game between the cards in accordance with the data, and
a battle starting key to be pressed by one of the players in the case that both of the players select offense or alternatively, in the case that one of the players selects offense and the other player selects defense.  (In the case that both of the players select defense, it is not necessary to press the battle starting key, and the game procedure reverts to step c.);

e computing means for, upon pressing the battle starting key, computing card damage of either of the players attacked if both players have selected offense, or card damage of the player who has selected defense (attacked) if one player has selected offense and the other has selected defense;

f survival judgment means for judging survival by making computation based upon the card damage thus computed by the computing means as well as card data of either of the players attacked when both of the players have selected offense, or card data of the player who has selected defense (attacked) if one player has selected offense and the other has selected defense;

g outcome display means for, when a judgment result that denies at least one player's survival is obtained from the survival judgment means, finalizing the game and displaying the judgment result; and

h repeating means for reverting to the step c when either player's survival is affirmed by the survival judgment means, and repeating the subsequent steps therefrom until at least one player's survival is denied by the survival judgment means.