On March 24, 2017, the Supreme Court of Japan handed down a Decision regarding the IP High Court Decision in the "Maxacalcitol Case" (2015 (Ne) 10014). The parties involved in this case have disputed whether or not use of a manufacturing method by the alleged infringer constituted equivalent infringement of the plaintiff's patent. The Supreme Court Decision principally addressed the applicability of the fifth condition for equivalent infringement (intentional exclusion).

The five conditions 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 this case, claim 13 of the patent recites the use of a vitamin D in cis-form as a starting material, while the defendants' products were manufactured using a trans-form vitamin D as a starting material. The Supreme Court ruled on whether or not the fact that the patent applicant could easily have conceived of using a trans-form vitamin D as a starting material at the time of filing of the patent application, but did not recite this in the patent claims, amounted to intentional exclusion.
 

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Supreme Court Decision
The Supreme Court Decision included the following opinions.

Even in a case in which Applicant, at the time of filing of a patent application, could easily have conceived of the structure of the subject product as regards a part that is different from the structure recited in the patent claims, but did not recite this in the claims, it should be said that, from this fact alone, it cannot be said that special circumstances existed such as the fact that the subject product had been intentionally excluded from the scope of the patent claims during the patent application process.

In a case in which Applicant, at the time of filing of a patent application, could easily have conceived of the structure of the subject product as regards a part that is different from the structure recited in the patent claims, but did not recite this in the claims, it should be said that special circumstances existed such as the fact that the subject product had been intentionally excluded from the scope of the patent claims during the patent application process when it can be said, viewed objectively, that it is apparent that Applicant, while being aware that the structure of the subject product could be substituted for the structure recited in the claims, deliberately did not recite this in the claims.

 
On the basis of such deliberations, the Supreme Court ruled that it was not readily apparent, viewed objectively, that the applicant, while being aware that the structure of the alleged infringers' manufacturing method could be substituted for the structure recited in the claims, deliberately did not recite this in the claims, and dismissed the suit. As a result, the ruling held that use of the alleged infringers' manufacturing method constituted equivalent infringement.

Comments
In essence, the Supreme Court decision clarified the following issues.
(1) The simple fact that a structure, of which a practitioner of the art could easily have conceived, is not recited in the claims cannot be said to indicate that "special circumstances existed such as the fact that the subject product had been intentionally excluded from the scope of the patent claims".
 
(2) However, when it is apparent, viewed objectively, that said structure was deliberately not recited in the claims despite knowledge of its existence, the above-described "special circumstances" apply.

While the Supreme Court decision did not specify any examples of cases in which it would be apparent, viewed objectively, that such a structure was deliberately not recited in the claims despite knowledge of its existence, an IP High Court decision, which is endorsed by the Supreme Court decision, provides the following examples.
 
(1) A structure that is described in the specification but is not recited in the claims.
(2) A structure that the applicant has published in a paper or the like prior to filing the application, but which is not recited in the claims.

The decision provides more specific criteria for determining the scope of application of the fifth condition for equivalent infringement, and can be considered as a guideline for the scope of equivalent infringement.

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Summary prepared by International Information Group
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