September 2016


DOCTRINE OF EQUIVALENTS – Grand Panel Decision of IP High Court (Maxacalcitol Case)

Shimako Kato, Abe, Ikubo & Katayama (Japan)

1. Overview
On March 25, 2016 the Grand Panel of the IP High Court rendered a decision in which infringement under the doctrine of equivalents was found. As described in paragraph 2 (below), for finding infringement under the doctrine of equivalents, there are five requirements to be satisfied. In the present decision, the IP High Court took rather generous position with regard to the satisfaction of 1st and 5th requirements and presented clearer definition and meaning of those requirements.

2. Test for finding infringement under the doctrine of equivalents (The Supreme Court decision rendered on February 24, 1998, 1994 (O) 1083)
In Japan, infringement under the doctrine of equivalents can be found, even if a claimed invention of the present patent has different features from those of the allegedly infringing product. However, five requirements must be satisfied: (i) a feature omitted by the allegedly infringing product must not be an essential feature of the patented invention, (ii) the same purpose must be achieved, and the same function and effect realizable, by replacing that feature with a feature of the allegedly infringing product, (iii) a person of ordinary skill in the art must easily be able to conceive of the replacement at the time of the production of the product, (iv) at the filing date of the patent, the product must not be identical to the prior art or could not have been easily conceived by a person of ordinary skilled in the art based on the prior art, and (v) there were no special circumstances such as that the products had been intentionally excluded from the scope of the patent claim in the file history.

3. Facts
The invention at issue is directed to a process for preparing “Maxacalcitol”, which is used as an active ingredient of a pharmaceutical composition. The process includes steps of reacting a starting material with a certain compound, obtaining an intermediate compound with an epoxy side chain, and finally obtaining Maxacalcitol. For clarify, a simplified illustration of the invention is given below. The claim clearly defines that compounds of the starting material and the intermediate compound have the “cis” structure of Vitamin D.

On the other hand, the Defendant’s (Appellant’s) process is as follows:

The Tokyo District Court found infringement under the doctrine of equivalents and granted an injunction against the Defendant’s product. The Defendant Appealed.

4. Finding by the IP High Court
(1) The 1st requirement
The court clarified the definition of “essential features” of the invention and established standards for determining them. The court said that the “essential features” form the characterizing part of the claim and form a unique technical idea that is not seen in the prior art. An “essential feature” should be identified based on the claims and description, in particular, through taking the description of the prior art into account. Also, the court said that for determining an “essential feature”, the contribution of the patented invention should be taken into consideration. In general, it should be understood that, where the contribution is large, the “essential features” may be generalization of the claimed elements but, where the contribution is not especially large, the “essential features” are essentially the same as the claimed elements. Further, the court held that if the description of the problem to be solved in the specification is objectively unclear, prior art that is not described in the specification should be taken into account.

In this case, the court found that the 1st requirement was satisfied. The court held that, in this case, the problem to be solved is the provision of a new process for manufacturing a vitamin D structure having a Maxacalcitol side chain and the contribution of the present invention large. This is because the present invention made it possible to industrially produce Maxacalcitol for the first time. In that sense, the court found that an “essential feature” of the present invention resides in making it possible to introduce a Maxacalcitol side chain into an alcohol compound having vitamin D structure through the new route. This means that the form of the vitamin D structure of the starting material and the intermediate compound, that is the cis structure of vitamin D, is not the essential part of the invention

(2) The 5th requirement
Firstly the court observed that, if an applicant would have conceived an alternative means that is substantially identical to the claimed one and that would have been easily conceived by a person of ordinary skill in the art, the applicant’s act omitting to describe the alternative means in the claim should not of itself be regarded as a “special circumstance”. This is because: (a) accepting the ability of an applicant to conceive the alternative means as a reason for denying infringement under the doctrine of equivalents would contradict the concept behind the doctrine of equivalents (i.e. to permit a technique that would have been conceived by a person of ordinary skilled in the art to fall within the scope of the claim); and (b) under the first-to-file system, there is a time limit for preparing a patent application and it would be a heavy burden on an applicant to prepare patent claims and specification, if he/she were required to include all alternative means taking all possible infringements into account.
The court further held that the “special circumstances” (intentional exclusion) can be found in a case where (a) an applicant has described an invention with the alternative means in the specification; and (b) an applicant has described an invention with the alternative means in a paper, etc. published at the filing date.

In this case the court found that the 5th requirement was satisfied. This was because the specification contained no description of a trans-form vitamin D structure as the starting material and there was no evidence objectively showing that the applicant had recognized that the trans-form vitamin D structure was an alternative of the cis-form vitamin D structure.

(Shimako Kato, Abe, Ikubo & Katayama)


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