On 28 September 2006, the Intellectual Property High Court dismissed an appeal against Nintendo Co., Ltd. (the defendant). The plaintiff owned a Japanese patent #2877779 entitled "Graphic Display Device And Graphic Display Method", and the defendant was accused of infringing the patent by manufacturing and selling their game machines, "GAME BOY ADVANCE".

The decision made by the court demonstrated how to construe the claim of a patented invention, and included an issue similar to that in the Lipase case judged by the Supreme Court in 1991, which is one of the most famous cases concerning the construction of claim terms in a patent before grant. In the Lipase case, the Supreme Court ruled that, in construing a disputed claim term, the description of the invention should be referred to only in special cases where the claim term isn't unambiguously defined or an obvious typographical error is present in the claim.

The Lipase case caused confusion among practitioners since they were unsure whether the approach they had used would be allowed or not: that is, the description of an invention was considered in construing the claim terms of the invention. Therefore, Article 70(2) of the Japanese Patent Law was established, which provides a legal basis for the consideration of the description of an invention in order to correctly construe the claim terms of the invention.

The original court in the present case construed the claim referring to the statements of the invention. Then the plaintiff alleged that the original judgment was wrong in narrowing the claim construction by reference to the description of the invention and that the claim should be construed without the reference because the claim of the invention was unambiguously clear to a person of ordinary skill in the art.

Regarding the allegation by the plaintiff, the Intellectual Property High Court ruled that the meaning of a claim term should be construed based on the description and drawings of the invention regardless of whether the term was unambiguously clear or not.

The Intellectual Property High Court, admitting that the claim terms of the plaintiff's patent were not unambiguous, stated the reasons for judgment as follows: Firstly, the terms in a description are not always used as academic terms and do not always carry its ordinary meaning. Secondly, the patented invention is valid because it satisfied the requirements provided in Article 36 of the Japanese Patent Law, which prescribes written description requirement and enablement requirement. Therefore, in the decision whether the accused product falls within the scope of the claim or not, it's inevitable to construe the description and drawings of the invention.

On 26th August 2008, the Intellectual Property High Court affirmed the plaintiff's request to cancel the JPO appeal decision.
      Like "Method for Generating Compacted Representation of Group of Bits" invention (see our article on 1st September, "Law of Software Patent"), the subject invention was rejected as unpatentable as it does not satisfy the requirements set forth by article 2 paragraph 1 and article 29 paragraph 1 of the Patent Law on statutory definition of invention and industrial applicability respectively.
      However, the "laws of nature" in question this time is not as clear as a mathematical algorithm used in the former case; it is much more subtle as it concerns the acoustic perception of non-native learner of English.

The application is about a bilingual dictionary with phoneme index having columns that displays various elements such as consonant, accents of consonant and vowel, English spelling and meaning of a word (Japanese Application Publication #2004-355496, having three claims). It involves a technique of selecting consonant phoneme of English words shown in International Phonetic Alphabet and re-ordering them in the order of Roman alphabets, so that a hardware such as a computer can process the retrieving of data quickly.
      In the appeal, only Claim 3 that describes an usage of this dictionary was considered, and the JPO decision rejected the claim as unpatentable since it merely describes a method for using a bilingual dictionary which is an artificial rule and such a method cannot be regarded as utilising the laws of nature. Also, against the plaintiff’s accusation that all three claims should have been taken into consideration, the JPO answered that finding one claim for the ground of final refusal should be enough because any application would be refused even if only one claim is judged unpatentable.
      As for the industrial applicability, the JPO viewed the method for using a bilingual dictionary in Claim 3 is not information processing by software that is concretely realised by hardware resources despite the applicant's amendment.

However, unlike the "Group of Bits" case, the Intellectual Property High Court was not impressed with the JPO's arguments. As a proof of the court's discontent with the JPO decision, judges this time dismissed the JPO's answer, in particular its consideration of the applicant's claims, saying that the refusal of a patent in view of the Patent Law article 2 is inappropriate if the application was not examined in its entirety just because the invention involved mental activities of human being.
      As for the definition of the method for using dictionary being deemed as an artificial rule, the court held that the JPO did not provide sufficient reasons why it held such a view:

"Not only the decision arbitrarily asserted that 'a method for using a dictionary' is an artificial rule that specifies an action by human being, but the JPO also did not provide any explanation as to why an act of using a dictionary applies to 'nothing but an artificial rule'; the JPO thus has not displayed a rational ground for why it has regarded the invention as not utilising the laws of nature."

At the same time, since the court has found the appeal decision groundless, it refused to discuss the issue regarding article 29 paragraph 1 and the subject invention's applicability as a software invention.

As reported by Nikkei on 5th January 2009, revision of the Patent Law may include revision of statutory subject matter to cover computer software, and recent High Court rulings including this one could be the reflection of this positive mood towards what has been examined with strict criteria.
      Nevertheless, what is most important in this case may be the interpretation of article 2 paragraph 1 by the court, which clearly stated that any inventions with a solution to a problem cannot be irrelevant with human mental activities, decision making or behaviour.

In March 2008, the Intellectual Property High Court refuted the JPO's decision in an Appeal against the Examiner's Decision for Refusal requested by the plaintiff (also the applicant) and cancelled the appeal decision.
      The JPO, despite arguing their grounds for dismissing the plaintiff's amendment, was accused of two illegal practices: firstly, for wrongly dismissing an unamended claim in view of Patent Law Article 126(5) and secondly, for dismissing the amended application without issuing the Reasons for Refusal.
      The former particularly was subject to an interpretation of Patent Law Article 126(5) regarding a limitative restriction made in amendment being "independently patentable". Although there is a past ruling by the Intellectual Property High Court that all claims must be taken into account and viewed as a whole when re-examining the scope of the invention (Gyo-Ke #10266, 2005, cited by the JPO), this time the court expressed to have a different point of view.

The court's opinion regarding the latter accusation is more detailed in its discussion of why the JPO's negligence is deemed to have deprived the applicant of its right to comment and argue for its application stipulated in Patent Law Article 50.
      The application in question is a divisional application of a patent application #2000-30900 entitled "Air Cleaner" having six claims. For the Decision of Refusal, the examiner rejected the application as not having an inventive step over Patent Publication 1997-508065 (Reference 1) in view of Unexamined Patent Application Publication 1998-152307 (Reference 2). However, in the appeal, these references were used in the reversed order to reject the amended application.
      It was held by the court that for the JPO to not issue the Reasons for Refusal there must have been special reasons. Indeed, the JPO did come up with few reasons to justify their practice--- only to see them refuted in turn.
      First of all, the court rejected the JPO's argument that it should have been easy for the plaintiff to examine these references as they belonged to the same technical field, saying that the change of primary reference would automatically make comparative study of new reference and the amended invention difficult, particularly when the reference pertains to the same technical field.
The JPO’s another argument that the contents of Reference 2 must have been very clear to the plaintiff because it was an application by the plaintiff himself, was also rejected, because knowing the contents does not automatically entitle the applicant to the view point of the examiner.
      Moreover, although the plaintiff did argue the differences between Reference 2 and Claim 4 in its Appeal Brief, the court regarded the change of primary reference as the main reason why the plaintiff should have been given an opportunity to comment and argue for its invention:

"However, as seen in the evidences, it is obvious that the plaintiff's examination is based on the comparative study of Reference 1 and Claim 4 in all occasions and that its remark on Reference 2 is only subordinate. Also, when dealing with a combination of primary reference and a well known art, there is a possibility that the applicant may address the well known art in its response. In view of these facts, the plaintiff's address of the difference between Reference 2 and Claim 4 in its Appeal Brief cannot be regarded as what might have been argued when Reference 2 was the primary reference."

The JPO again quoted the past ruling of the Intellectual Property High Court (Gyo-Ke #29, 1993) as an example of an appeal procedure not depriving the applicant of its right to defend its application even if there was negligence in issuing the Reasons for Refusal. The court did not challenge the validity of this past ruling either; but held that whether such a procedure actually robs the applicant of its right to defend its application needs to be examined for each individual case and the past ruling should not be regarded as an official permission for disrespecting Patent Law Article 50.