On September 28, 2016, the Intellectual Property High Court issued a judgment in a patent infringement action involving facial care machines. In the judgment, the Court found that the patented invention lacked either novelty or inventive step due to the way a prior art device was actually displayed by the patent owner himself at an event held prior to the priority date of the patent, and held the patent invalid (IP High Court Case No. 2015 (ne) 10017).
The Plaintiff (Yuuki Club Inc.) owned a patent for a facial care machine under patent no. 5,329,608 (the "Patent"). The Plaintiff brought a patent infringement action against the Defendant (MTG. Co. Ltd.) before the Tokyo District Court, alleging that the products produced and sold by the Defendant fell within the technical scope of the invention claimed in the Patent (the "Invention"). The Plaintiff sought an injunction and damages, as well as a compensation for pre-grant use of the Invention under Article 65(1) of the Patent Act.
In the first instance judgment, the Tokyo District Court held that the Invention lacked inventive step and thus that there was a ground for invalidating the Patent. Therefore, the Tokyo District Court denied the Plaintiff's claim. The Plaintiff appealed to the Intellectual Property High Court (the "IP High Court").
On appeal, the IP High Court found that there was a ground for invalidating the Patent for either lack of novelty or inventive step, and rejected the Plaintiff's appeal.
One of the prior art asserted by the Defendant was a facial care machine (the "Device") that the Plaintiff exhibited at an event JUST CUT '08 STYLYING FORUM FROM YOKOHAMA (the "Event"), a competition for barbers and hair dressers. The event was held on August 5, 2008, which was before the priority date of the Patent (August 31, 2008). The Plaintiff ran a booth at the Event, and displayed the Device at the booth along with another product (a larger device) of the Plaintiff. The Defendant argued that the Invention lacked either novelty or inventive steps in light of the Device.
On the other hand, the Plaintiff argued that, while the Device was displayed at the Plaintiff's booth at the Event, the Plaintiff did not demonstrate to visitors how to use the Device or explain the internal structure of the Device, because it was aware that the invention should not be disclosed to others prior to filing of a patent application. The Plaintiff argued that the purpose of running the booth was to exhibit the larger device, and the purpose of displaying the Device was to merely create an atmosphere of a hair salon.
The IP High Court sided with the Defendant. The court found that the internal structure of the Device (namely, that there is a tank inside the Device, that carbon dioxide in the tank is mixed with skin lotion filled into a cup accompanying a spray gun, and that the lotion is sprayed onto a person's face by operating a lever of the spray gun) was easily identifiable based on the manner how the Device and the larger device were displayed, demonstrated and explained at the Plaintiff's booth.
The court found the Plaintiff's argument unpersuasive, pointing out that if the Plaintiff were truly aware that the invention should not be disclosed prior to filing of the patent application, the Plaintiff would not have displayed the Device in such a manner in the first place. Also, the court held that, since the Plaintiff displayed the Device in a manner that would enable the Plaintiff to immediately demonstrate how to use the Device (namely, the cup was filled with liquid), it was difficult to think that the Plaintiff refused to answer questions from visitors or to demonstrate how to use the Device.
The court also pointed to the fact that the Plaintiff's employee who was in charge of IP was not informed about the display of the Device in advance, and that it was not until after the Event that the Plaintiff decided to file an application for the Patent. Based on these facts, the court found that the Plaintiff displayed the Device without knowing that the invention should not be disclosed to the public prior to filing of the application, and that the Plaintiff demonstrated and explained about the Device to visitors at the booth.
Accordingly, the court found that the internal structure of the Device became public at the Event. Further, the court concluded that the Invention lacked either novelty or inventive step in light of the Device.
This case shows us that it is crucial for the IP department to collect information of activities of other divisions and to control the flow of information.
It is usually the case that the marketing department of a company wishes to push forward the release of new products created to the world as much as possible. However, from the viewpoint of obtaining a patent, in order to avoid loss of novelty of the invention, it is very important to avoid the disclosure before filing of a patent application.
For this purpose, the IP department and the marketing department should work closely to keep the new invention from being published or disclosed prior to filing of the patent application. It is therefore something that companies should try hard to keep up the level of awareness of IP issues in all departments, and to keep the important trade "secrets" as secrets until such "secrets" obtain legal protection.
Written by: Mr. Kazuki Ishihara (Attorney at Law)