Case No. (O)-364 of 1998
Appellant:
Texas Instruments Incorporated
13500 Express Way, North Central, Dallas,
Texas, USA
Representative of the Appellant:
Richard J. Agnitch
Attorneys-at-Law
acting in the above suit:
Minoru Nakamura
Sadao Kumakura
Kouichi Tsujii
Shinichiro Tanaka
Tadahito Orita
Kazuhiko Yoshida
Patent
Attorneys assisting the above-named Attorneys-at-Law:
Fumiaki Otsuka
Hideto Takeuchi
Koichi Oishi
Ken Deshimaru
Appellee:
FUJITSU LTD.
Kami-Odanaka 4-1-1, Nakahara-ku,
Kawasaki-shi
Representative
of the Appellee:
Naoyuki Akikusa, Representative
Director
Attorneys-at-Law
acting in this suit:
Harumi Kojo
Naoki Mizutani
Patent
Attorneys assisting the above-named Attorneys-at-Law:
Sadakazu Igeta
Tadanori Hayashi
The Appellant appealed against the decision rendered by
the Tokyo High Court on September 10, 1997 with respect to the Tokyo High Court
Case No. (Ne)-3790 of 1994 between the above-named parties seeking the affirmation
of non-existence of liabilities.
Thus, the Supreme Court holds as follows.
The appeal shall be dismissed.
Cost for the appeal shall be borne
by the Appellant.
Re: The first, second, and fourth points of reasons for the
appeal by Minoru Nakamura, Sadao Kumakura, Koichi Tsujii, Shinicihro Tanaka,
Tadahito Orita and Kazuhiko Yoshida who are acting for the Appellant; and
Fumiaki Otsuka, Hideto Takeuchi, Koichi Oishi and Ken Deshimaru who are
assisting them in the appeal:
I. The Appellee manufactures and sells semiconductor
devices which are described in the accused device lists A and B attached to the
Decision of the first instance. The
Appellant insists that the Appellee's such acts constitute infringement of the
patent right identified below.
Thus, in this suit, the Appellee sues the Appellant for the affirmation
of non-existence of the right to claim compensatory damages for infringement of
the same patent.
Facts established by the original court
are as outlined below. The finding
of facts can be affirmed as valid in the light of the evidence shown in the
original decision. There is not the
alleged illegalities in the process.
1. The
Appellant owns the patent right to the invention entitled “a semiconductor
device” (Patent No. 320275). (The
above patent right is referred to as “the subject patent right”, hereinafter;
and the above invention is referred to as “the subject invention”, hereinafter).
2. A
patent application of the subject invention was filed on December 21, 1971 as a
divisional application from Patent Application No. 4689/1964 (which is hereinafter
referred to as “the original application”, and an invention therein is hereinafter
referred to as “the original invention”).
The original application was filed
on January 30, 1964 as a divisional application from a patent application which
was filed on February 6, 1960 (Patent Application No. 3745/1960).
3. With
respect to the original application, the final decision for rejection became
conclusive for the reason that the original invention could have been obvious
over the well known inventions.
4. The
subject invention and the original invention are substantially the same.
5. The
Appellee is manufacturing and selling as its business the semiconductor devices
described in the accused device lists A and B attached to the decision of the
first instance.
II. Based on the above-mentioned facts, the
original decision holds as follows:
1. If
the subject application were a legitimate divisional application from the original
application, the subject application would be deemed to have been filed at the
time of filing the original application under Section 9, Paragraph 1 of the old
Patent Law (the Law before abolished under the 1959 Law, No. 122). The subject application, however, is
illegitimate as the divisional application. Hence, the subject patent is very likely to be invalidated because
the subject application is a later filed application which is directed to the
same invention as that of the original invention so that the subject patent is based
on the application that should be rejected under Section 39, Paragraph 1 of the
Patent Law.
2. Further, the subject invention is substantially the same
as the original invention of the original application for which the final
rejection became conclusive on the ground that it could have been obvious over
the well known inventions. Thus, it
is inevitable that a reason for invalidation inheres in the subject patent in
this respect also.
3. It
should not be permitted, as the abuse of the right, to exercise the right
against the third party based on the subject patent right that is very likely
to be invalidated as set forth above.
III. The Appellant alleges as follows:
Each of the original judgments of
the original court as stated in II, 1 and 2 above is illegal. Further, with respect to the judgment stated
in II, 3, in the infringement suit of the subject patent right, it should be
judged as to whether or not the accused device falls within the technical
scope, assuming that the patent right is valid, but the original decision determined
the invalidation of the subject patent right substantially. Thus, the original decision violates the
law, being illegal by reason of insufficient examination and deficient reason.
IV. Each of the judgements rendered by the
original court as stated in II, 1 and 2 can be affirmed. The final rejection became conclusive in
connection with the original application that is a prior application. Even if the final rejection became
conclusive in connection with the patent application as the prior application,
the patent application does not lose the status of the prior application (see
the 1998 Law, Rule 51, supplementary provision No. 2-4, and Section 39,
Paragraph 5 of the Patent Law before Amended by the above law). Therefore, the subject application
should be rejected under Section 39, Paragraph 1 of the Patent Law (see a court
decision rendered by the Second Petty Bench at the Supreme Court in connection
with Case No. Heisei 3 (Gyo-tsu) 139 on February 24, 1995, Minshu Vol. 49, No.
2, page 460). Since the subject invention
is substantially the same as the original invention of the original application
for which the final rejection became conclusive on the ground that the original
invention could have been obvious over the well known inventions, the subject patent
was granted in violation of Section 29, Paragraph 2 of the Patent Law. Therefore, it is evident that the reason
for invalidation as required in Section 123, Paragraph 1, Item 2 of the Patent
Law exists in the subject patent. It
is definitely predicted that the subject patent will be invalidated because there
is no special circumstance such that an appeal for correction was filed (the
record shows that a trial decision for invalidation of the subject patent was
rendered on November 19, 1997 after the original judgment was rendered, and
revocation of the trial decision is now at suit).
V. Now, we will study the judgment of the
original court stated in the preceding II, 3.
It is true that the Patent Law provides
that adjudgment of a trial examiner of the Patent Office having expertise may
be demanded in order to invalidate a patent where there exists a reason for
invalidation in the patent (Section 123, Paragraph 1 and Section 178, Paragraph
6 of the Patent Law). Further, the
patent right shall be deemed never to have existed from the beginning when the
trial decision for invalidation becomes final and conclusive (Section 125 of
the Patent Law). Therefore, the
patent right continues to exist effectively, lawfully, and it is not invalidated
in rem, until the trial decision that the patent is to be invalidated has
become final and conclusive.
Where it is evident that there
exists a reason for invalidation in a patent, and where it is definitely
predicted that such patent will be invalidated when a trial decision that the
patent is to be invalidated has become final and conclusive in the case that an
invalidation trial is demanded as with the subject patent, to construe that injunction
and compensatory damages based on the patent right may be demanded in the above
case also is unreasonable in view of the following points:
(1) If
the demand for the injunction of working of the invention and compensatory
damages based on the patent right in such case is to be approved, a patentee will
be given an undue profit, and a party working the invention will suffer an unreasonable
disadvantage from the substantial point of view. This contradicts with the doctrine of equity as a result; and
further,
(2) It is desirable to settle a dispute
by one procedure in as short a period as possible. However, in the infringement suit based upon the patent right
like the above case, unless a trial decision for invalidation has become final
and conclusive in the due course of the invalidation trial of the Patent Office,
it is not permitted to resort to the way of preventing against exercise of the
patent right by insisting that there exists a reason for invalidation in the
patent. In such case, the party concerned
who has no intention to pursue as to invalidation in rem of the patent, will be
forced to follow an invalidation procedure. This is also against the economy of lawsuits; and further,
(3) Section 168, Paragraph 2 of the Patent Law cannot be
construed as requiring that proceedings of the suit should be suspended, even in
the case that it is evident that there exists a reason for invalidation in the
patent and thus, it is definitely predicted that the patent will be invalidated
as described above.
Therefore, it should be proper to
construe that the court which examines a case of infringement of a patent right
may judge whether or not it is evident that there exists a reason for
invalidation, before a trial decision for invalidation of the patent becomes
final and conclusive. When it is
clear that there exists a reason for invalidation in the patent as a result of
examination, it is reasonable to construe that demand for injunction,
compensatory damages, etc. based on the patent right should not be permitted by
reason of the abuse of rights, unless there is any special circumstance. This interpretation does not contradict
the purpose of the patent system. The precedents rendered by the Daishinin, including the
Daishinin's decisions under Case No. Meiji-36 (Re) No. 2662 on September 15,
1903, recorded in the Criminal Cases Decision Report Vol. 10, page 1679, and of
Taisho-5 (O) No. 1033 on April 23, 1917 recorded in the Civil Cases Decision
Report Vol. 23, page 654, having views different from the aforementioned view
of this court, shall be altered to the extent that interferes with the
foregoing.
6. In view of the foregoing, it is
possible to affirm the validity of the original court's judgment which holds
that the Appellee's demand should be accepted because demand for injunction,
compensatory damages, etc. based on the patent right should not be permitted by
reason of the abuse of rights on the ground that it is evident that there
exists a reason for invalidation in the subject patent, and there is not a
special circumstance such that an appeal for correction was filed.
The above judgment does not
interfere with the precedents cited in the Appellant's assertions. The illegalities alleged in the
assertions are not found in the original decision. The Appellant's assertions cannot be accepted because these
assertions merely censure the judgment in selecting proofs or the fact findings
which should be within the sole purview of the original court, or merely denounce
the original decision from an independent viewpoint.
Other reasons for appeal:
The fact finding and the actions of
the original court concerning the points of the Appellant'S assertions can be
affirmed in the light of evidence and records as shown in the original decision. The alleged illegalities are not found
in the process. The assertions
cannot be accepted because these assertions merely censure the judgment in
selecting proofs and the finding of facts which are within the sole purview of
the original court, or merely censure the original decision from an independent
point of view, or only denounce unjustness in actions taken in the examination
which are within the discretion of the original court. Thus, the assertions cannot be accepted.
Thus, this Court holds as stated in
the main text as unanimously agreed upon by all the Justices.
The Third Petty Bench of
the Supreme Court
Presiding
Justice Toshihiro
Kanaya
Justice Hideo Chigusa
Justice Toshifumi
Motohara
Justice Masamichi Okuda