RECENT DEVELOPMENTS IN INTELLECTUAL PROPERTY LAW & POLICY IN ASIA 2006 ©
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Kilby decision (Texas Instruments v. Fujitsu, Supreme Court Third Petty Bench Decision
of April 11, 2000, Minshu 54-4, 1368), patent infringement cases have been arguing the
existence of the reason for invalidating a patent, and with the increase of the district court
making decisions on the “defense of abuse due to obvious invalidity”, the appeal trials on
infringement have become more and more complicated and difficult to render a decision.
While maintaining the framework of the invalidation appeal/trial before JPO but still
extending the legal theory depending on the above precedents, the provision of Article
104-3 of the amended Patent Law of 2004 came into effect. The provision set forth that
the enforcement by courts of a patent, which should be invalidated by an invalidation
appeal/trial before JPO, should be restricted.
Accordingly, it is expected that the courts will face more and more opportunities where
the court is required to confront the issue and make decision on the invalidity of the
patent. Actually, we have already several cases that a defendant asserted the defense of
invalidation of a patent according to Article 104-3 for the first time at the IP High Court.
5. The Grand Panel
Intellectual property disputes often involve important legal issues, and in many cases,
court decisions have a critical impact on corporate activities and Japanese industry and
economy.
As mentioned above, the Federal Circuit of the U.S.A, which was established to unify the
legal interpretation concerning intellectual property rights, conducts trials on the matter
of law and substantially functions as the last court of appeals. Especially the “en banc”
panel which is consisted of all judges of the Federal Circuit is deemed to play an
important role.
On the other hand, the IP High Court is a court originally conducting fact-finding
proceedings and it is the Supreme Court of Japan that plays the role of unifying the legal
interpretation as the court conducting trials on the matter of law. However, since the court
decisions sometimes have the effect of setting up new rules and frameworks for business,
the industrial circle had desired the formation of satisfactorily reliable rules and
consistency of judicial decisions prior to the final judgment made by the Supreme Court
in order to set up these business rules at an early stage.
To meet such need, the Grand Panel system was introduced in April 2004 in which a five-
judge panel hears suits against appeal/trial decision on patents or utility models made by
JPO and appeals from district courts based on claims concerning patents and others
(Article 182-2 of the Amended Patent Law; Article 47.2 of the Amended Utility Model
Law; Article 310-2 of the Amended Code of Civil Procedure, of 2003).
The IP High Court has four divisions and a special division for the Grand Panel, to which
all the judges are assigned. Actually, it is arranged that Chief Judge of the IP High Court