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Case contesting the applicability of equivalent infringement (The "Maxacalcitol Case", March 25, 2016, IP High Court Decision (2015 (Ne) 10014))

Nov. 22, 2016

Background

The "Ball Spline bearing" case of 1998 (Supreme Court Decision, 1994 (Wo) 1083) ruled that the following five conditions must be met for equivalent infringement.
 

Even if, within the structure recited in the patent claims, there is a part which is different from the subject product or the like, if:
(a) (Non-Essential Part) this part is not an essential part of the patented invention;
(b) (Replaceability) the purpose of the patented invention can be achieved by replacing this part with a part from the subject product and an identical function and effect can be obtained;
(c) (Easiness of Replacement) a practitioner of the art could easily conceive of this kind of replacement at the time, for example, of producing the subject product;
(d) the subject product is not identical to technology that was in the public domain at the time of filing of the patent application for the patented invention or could not have been easily conceived of at that time by a practitioner of the art; and
(e) (Intentional Exclusion) there were no special circumstances such as the fact that the subject product had been intentionally excluded from the scope of the patent claims during the patent application process,
the subject product should be regarded as equivalent to the structure recited in the patent claims and as falling within the technical scope of the patented invention.

 
In the present case, the fulfillment of the first and fifth conditions was principally at issue.

The Case

The plaintiff in the court of first instance manufactures and sells a pharmaceutical product that is a therapeutic agent for keratosis having maxacalcitol as an active ingredient, and is the owner of the subject patent.
The plaintiff brought an infringement suit against the defendants based on the subject patent right. Equivalent infringement was recognized in the court of first instance, and the defendants took the case to the IP High Court.
 
The claim at issue in the present case was the following corrected claim (abbreviated).
 

Claim 13
A method of producing a compound having the following structure:
 

(in the formula, ... Z is ... or the formula:

of a vitamin D structure ...)
the method including:
(a) reacting a compound having the following structure:

with a compound having the following structure:
 
 
 or 

in the presence of a base ... and producing an epoxide compound having the following structure:

(b) producing a compound by treating the epoxide compound with a reducing agent; and
(c) recovering the compound produced in this manner.
 
The production method for the defendants' product used, as a starting material, a substance in which the vitamin D structure corresponding to Z was trans-form rather than cis-form, and the question at issue was whether or not the defendants' actions constituted equivalent infringement.
 

 

IP High Court Decision

The Decision ruled, as below, that the appellants' method satisfied the first through fifth conditions for equivalent infringement and, therefore, constituted equivalent infringement.
 
First Condition (Non-Essential Part): Satisfied
"The essential part should be identified by, based on the description of the claims and the specification, and on an understanding of the problem of the invention, the means of solving the problem, and the effect of the invention, determining, from among the recitation of the patent claims of the patented invention, the distinguishing portion that is not found in the conventional art and that constitutes a unique technical concept."

"For the evaluation of the first condition―that is, when evaluating whether or not a part that is different from the subject product is a non-essential part―it is not appropriate to first divide the respective component elements recited in the claims into essential parts and non-essential parts and then to interpret that the doctrine of equivalents is not applicable for component elements corresponding to essential parts; rather, it is necessary to first determine whether or not the subject product is commonly equipped with the essential part of the patented invention, which has been determined as described above, and upon recognizing that it is equipped with such, a dissimilar part should be determined not to be the essential part, and even if there is a dissimilar part other than a distinguishing portion that is not found in the conventional art and that constitutes a unique technical concept, this itself is not a reason for denying the fulfillment of the first condition" (the foregoing is partially abbreviated).

Applying the foregoing to the present case, the essential part of the present corrected invention was determined as "finding that a side chain having an epoxy group by an ether bond can be introduced through one step by reacting an alcohol compound at position 20 of a vitamin D structure or steroid ring structure with an epoxy hydrocarbon compound of Component Element B-2 that has an eliminating group at its terminal, and making it possible to introduce a maxacalcitol side chain into an alcohol compound at position 20 of a vitamin D structure or steroid ring structure through a new route of first going through an intermediate that is a vitamin D structure or steroid ring structure into which a side chain having an epoxy group by an ether bond is introduced through one such step and then opening the ring of the epoxy group of the side chain"; that is, it was determined that the fact of the vitamin D structure of the starting material being cis-form was not an essential part in a new method of introducing a side chain via an intermediate including an epoxy group.

Second to Fourth Conditions: Satisfied

Fifth Condition (Intentional Exclusion): Satisfied
While the appellants asserted that the fact that a trans-form vitamin D structure was not recited in the patent claims at the time of filing of the application amounted to intentional exclusion, it was determined that the fact that the trans-form was not described in the specification does not amount to intentional exclusion, since "regardless of whether or not the structure of the subject product could have been easily conceived of in view of known techniques at the time of filing of the patent application, it cannot be said that the structure of the subject product was intentionally excluded from the scope of the patent claims simply because this kind of structure was not included in the patent claims".

However, the comment was made that "if the applicant is objectively and externally recognized as having recognized another structure that is outside the scope of the claims as a replacement for a different part in the structure recited in the patent claims (for example, where the applicant can be considered to have described the invention based on said another structure in the specification, or where the applicant described the invention based on another structure that is outside the scope of the claims in a paper or the like that had been published as of the filing date), the applicant's failure to describe said another structure in the scope of the patent claims is considered to fall under the "special circumstances" in the fifth condition.

Summary

In the present Decision, the basis for applying the first and fifth conditions among the five conditions for the doctrine of equivalents, was established.

First Condition: The essential part should be identified by, based on the description of the claims and the specification, and on an understanding of the problem of the invention, the means of solving the problem, and the effect of the invention, determining, from among the recitation of the patent claims of the patented invention, the distinguishing portion that is not found in the conventional art and that constitutes a unique technical concept. (In other words, it should not be identified by separating the component elements of the claims and dividing the respective component elements into an essential part and a non-essential part, but by determining whether or not it is within the scope of the technical concept of the patented invention based on an understanding of the problem, the means for solving the problem, and the effects, of the invention.)

Fifth Condition: The simple fact of not including, in the scope of the patent claims, a structure that could have been easily conceived of at the time of filing does not amount to intentional exclusion. However, when it is objectively recognized that the applicant was aware of another structure at the time of filing, such as by having described the invention according to another structure, that is outside the scope of the claims, in the specification or in a paper, for example, this amounts to intentional exclusion.


 
Summary prepared by International Information Group
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