IP High Court Decision, June 8, 2017 (2017 (gyo-ke) No. 10147)
Suit against Trial Decision
 
This case was a suit against a Trial Decision that dismissed a request for invalidation. One of the key issues in the case concerned the support requirement as applied to an invention defined by parameters (a "parameter invention").
 
Article 36(6)(i) of the Patent Law of Japan stipulates the support requirement for a patent application as follows.
 

• The recitations of the claims... should meet the following requirements:
  (i) the invention for which a patent is sought is that which is described in the detailed description of the invention.

 
According to the Examination Guidelines, compliance with the support requirement is examined by comparing the claims and the detailed description of the invention, and determining whether or not the claimed invention exceeds the scope of the invention that is described in the detailed description of the invention in such a way that those having ordinary skill in the art can recognize that the problem of the invention can be solved.
 
A summary of the decision follows.

Subject Patent
The subject patent (Japanese Patent No. 5189667) is directed to a tomato-containing beverage, in which the sugar content, the sugar-to-acid ratio, and the content of glutamic acid and aspartic acid are defined by parameters, as follows.
 

• 1.  A tomato-containing beverage, characterized in that:
•      sugar concentration is from 7.0 to 13.0;
•      a sugar-to-acid ratio is from 19.0 to 30.0; and
•      a total content of glutamic acid and aspartic acid is from 0.25 to 0.60% by weight.

 
The subject patent further contains claims directed to a method for producing a tomato-containing beverage having the same parameters, and a method for reducing an acidic taste.
 
The specification of the subject patent describes that a tomato-containing beverage having a rich taste, a similar sweetness to a fruit tomato, and a reduced acidic taste, and which is easily drinkable, is provided. Specifically, the specification describes that by adjusting the sugar concentration and sugar-to-acid ratio, an increase in the viscosity of the tomato-containing beverage can be suppressed as compared to a case in which only the sugar concentration is increased, that an acidic taste is obscured by the sweetness of the tomato itself by adjusting the sugar-to-acid ratio, and that the acidic taste of a tomato is suppressed without overly impairing richness of taste by adjusting the content of glutamic acid and aspartic acid, enabling the sweetness inherent in the tomato to become prominent.
 
The examples described in the subject specification indicate that evaluations of the various taste components of the tomato-containing beverage, including "acidic taste", "sweetness" and "rich taste", were conducted by twelve panels.

	Example 1	Example 2	Example 3	Comparative  Example 1	Comparative  Example 2
Brix	9.4	10.0	9.5	9.0	9.4
Sugar-to-acid ratio	27.3	22.3	21.3	17.6	16.4
Total amino acid	0.42	0.37	0.36	0.53	0.33
Glutamic acid	0.268	0.242	0.235	0.367	0.231
Aspartic acid	0.149	0.125	0.123	0.159	0.100
Taste
Acidic taste	-0.7	-0.3	-0.6	-0.1	0.1
Sweetness	0.8	1.4	1.5	0.9	0.3
Rich taste	1.0	1.5	1.8	1.2	1.8
Total	2.5	3.2	3.9	2.2	2.0
Overall assessment	Favorable	Favorable	Favorable	Very Poor (Excess viscosity)	Poor

Brix: Sugar concentration

Judgement by the Court
The IP High Court ruled that the recitation of the claims of the subject patent does not satisfy the support requirement, and that the patent is invalid.

Reasons for the Judgement by the Court
First, the Court defined the criteria for assessing compliance with the support requirement of a parameter invention based on the ruling of a Grand Panel Judgement in the "Polarizing Film Case" (2005 (gyo-ke) No. 10042, November 11, 2005, IP High Court), as follows.
 

• For the claims to meet the support requirement of the specification, the detailed description of the invention should be described in such a way that those having ordinary skill in the art could understand, at the time of filing the patent application, the technical meaning of the relationship between the range specified by the variables and its effect (or property), without disclosures of specific examples, or in such a way that those having ordinary skill in the art could recognize that the desired effect (or property) can be obtained throughout the range specified by the variables in view of the general knowledge in the art at the time of filing the patent application, with specific examples.

 
Next, the Court applied the foregoing criteria to the present case, holding that the subject patent does not satisfy the support requirement, mainly for the following three reasons.
 
1) Establishment of the conditions of the taste assessment
 

• In general, various factors such as saltiness, bitterness, richness, spiciness, astringency, fullness, flavor, in addition to sweetness and acidic taste, affect the taste of a foodstuff, and physical sensations such as viscosity also affect the taste (Exhibit Nos. 3, 4, 62).... Accordingly, when assessing "sweetness", "acidic taste" and "rich taste", and determining the relationship between numerical ranges for three factors (the "sugar concentration", "sugar-to-acid ratio" and "the content of glutamic acid etc.") and "taste" by varying these factors, either of the following methods should be taken.

 

• a. In a case in which only these three factors affect the taste as measured by "sweetness", "acidic taste" and "rich taste", or in a case in which there are other factors that affect the taste but adjustment of such factors is not necessary, the assessment of taste should be conducted by varying these three factors together with technical explanation to this effect.

 

• b. In a case in which there are other factors that affect the taste as measured by
• "sweetness", "acidic taste" and "rich taste" in addition to the foregoing three factors, and in which the adjustment of such conditions cannot be deemed unnecessary, the assessment of taste should be conducted by varying the amount of the three factors together with adjustment of the other factors.

 

•    ...in the detailed description of the invention in the present specification, while it is described that, by defining the sugar concentration and sugar-to-acid ratio, a rich taste, a similar sweetness to a fruit tomato and a reduced acidic taste of a tomato can be obtained, details of the working mechanism by which this effect can be obtained are unclear. Further, while it is described that by specifying the content of glutamic acid etc., the acidic taste of a tomato can be suppressed without overly impairing the rich taste of the tomato-containing beverage, thereby enabling the sweetness inheren

 
2)  Method of taste assessment
 

• The detailed description of the invention in the present specification...does not describe that steps were taken to share criteria regarding to what degree the specific tastes such as "sweetness", "acidic taste" and "rich taste" should be strengthened in order to increase the score of the taste by one point, nor does it describe the individual scores by the respective panels.  Accordingly, it is possible that there were panels that increased or decreased the scores largely in response to subtle changes in taste, as well as panels that increased or decreased the scores only slightly in response to significant changes in taste.  Therefore, it is difficult to view the average scores for the taste of each beverage obtained by the respective panels as objective and accurate assessments.  Furthermore, while each of "sweetness", "acidic taste", and "rich taste" is an independent taste, and therefore, certain criteria for assessment should be provided in order to assess the extent of addition/reduction of the scores for all the tastes equally, there is no description to the effect that such measures were taken.  As such, it cannot be said that those having ordinary skill in the art would have inferred that the approach for assessing the taste...was reasonable, with the assessment being based on a simple sum of the average scores of respective panels on each taste, on the assumption that the degrees of contribution to solving the problem are equal for each of "sweetness", "acid taste" and "rich taste".  From these observations, it cannot be said that those having ordinary skill in the art would understand that a taste including a rich taste, a similar sweetness to a fruit tomato and a reduced acidic taste of a tomato, could actually be obtained in the tomato-containing beverages of Examples 1 to 3 from this taste assessment.

 
3) Relationships between the parameters and the assessment results of the examples
 

• Assuming that the sugar concentration and the content of glutamic acid is "9.4" and "0.42", similarly to Example 1 (Table 1, paragraph [0090] of the specification), and that the sugar-to-acid ratio is "19.0", which is the lower limit of the claimed range, the degree of acidity would become "approximately 0.49", indicating a high likelihood of the assessment of acidic taste being lower than that of Example 1 (the acidic taste of Example 1 being 0.34).  Assuming that the score for the acidic taste is "-0.6", since the score for "sweetness" is "0.8" and the score for "rich taste" is "1.0" (assessment of Example 1), the total score would be "2.4".  Assuming that the score for acidic taste is "-0.5", the total score would be "2.3", and assuming that the score for acidic taste is "-0.4", the total score would be "2.2".  However, it is not clear whether these total scores can be interpreted as having the effect intended by the present invention.  (In the Reference Example 1 described in Table 1, paragraph [0090] of the detailed description of the invention, the score of "2.4" is categorized as "poor" in the overall assessment.)

Comments
When drafting the specification of a patent application directed to a parameter invention, attention should be paid to the following matters, in view of the criteria established by the present case.
 
1) Consider including description of working mechanisms for achieving the effect of the invention throughout any range defined by parameters, such that the technical meaning of the relationship between the range defined by the parameters and the effect thereof can be understood. As long as this technical meaning is clearly described, specific examples are not necessarily required.
 
2) Include specific examples such that it can be understood that the effect can be achieved throughout the range defined by the parameters. In doing so, care should be taken as follows in connection with the relationship between the examples and the parameters defined in the claims.
 
A. All factors that affect the effect should be defined in the claims, OR
B. If not all factors that affect the effect are defined in the claims,

• - examples should be included in which assessment was made together with adjustment of other factors not recited in the claims, or
• - technical explanation should be provided to the effect that the adjustment of the conditions of other factors not defined in the claims is not necessary.

 
However, in practice, it is likely to be rather difficult to identify all the factors that would affect the taste in addition to those recited in the claims (e.g., "sugar concentration", "sugar-to-acid ratio" and "the content of glutamic acid etc."), and to adjust the levels of these other factors to a certain level, or to explain that adjustment is not necessary, when the indicators of taste are limited to "sweetness", "acidic taste" and "rich taste". In particular, in the fields of chemistry and food as related to natural products, the bar for meeting the support requirement may become rather high if this requirement is examined based on the approach defined in the present case.
 
Incidentally, an appeal to the Supreme Court filed by the defendant in the present case was dismissed, and consequently, the IP High Court Decision was finalized on June 27, 2018.

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Summary prepared by Yuko Miyazawa, International Information Group
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