PATENT PRACTICE and LTIGATION IN JAPAN OHNO & PARTNERS Attorney-at-law admitted in JAPAN and N.Y.

KEA PATENT SEMINAR PATENT PRACTICE and LTIGATION IN JAPAN OHNO & PARTNERS Attorney-at-law admitted in JAPAN and N.Y. Seiji OHNO

OHNO & PARTNERS How to form a Litigation Team Bengoshi-- Lawyers, No technical background, Litigator Benrishi -- Patent prosecutors, Technical background, Assistant Importance of a First Chair Bengoshi

OHNO & PARTNERS Two Types of Litigation Honso (a main lawsuit) and Karishobun (a preliminary injunction) Honso Fromal procedure, Injunctive relief and damages, 14 months Karisyobun Tentative Procedure, Injunctive relief only, 10months

OHNO & PARTNERS Hoso and Karisyobun Filing Honso Filing Karishobun Instruction by Judge

OHNO & PARTNERS Jurisdiction For First Instance Tokyo and Osaka Only Special IP Division Chousakan (Technical Assistant) Tokyo District Court and Osaka District Court

OHNO & PARTNERS Jurisdiction Appellate Procedure for IP High Court Exclusive Jurisdiction over Appellate Cases - Patent, Utility Model, IC Chip, Computer Program Copyright

OHNO & PARTNERS

HIGH Court En Banc System was introduced from 2005 Ichitaro Case(Sep.30, 2005) Parameter Patent Case(Nov.11, 2005) Inc Cartridge Case (Jan. 31, 2006)

OHNO & PARTNERS Procedure Filing a complaint with a district court Complaint and Summons are served on the defendant by the court Courts set a first hearing date At the first hearing, the complaint and the answer are submitted At the hearing, the presiding judge asks questions of both sides to clarify their allegation and schedule a next hearing Judgment

OHNO & PARTNERS Validity Defense Before Kilby Supreme Court Case(2000) - No Validity Defense in infringement Case Kilby Supreme Court Case -Not Enforceable due to Abuse of Patent Right -Clear and Convincing Evidence (Invalidity )

OHNO & PARTNERS Validity Defense Art of Patent Law(2005) -Validity Defense -No Clear and Convincing Evidence

OHNO & PARTNERS Validity Defense Validity Defense in Court Invalidation Trial in JPO No Double Chance

OHNO & PARTNERS

Validity Defense No Judgment Invalid Valid April, 2000 December, 2004

OHNO & PARTNERS Validity Strategy Complex Technology; Double Patent Issue etc. both Validity Defense and Invaldation Trial Others Validity Defense only

OHNO & PARTNERS Doctrine of Equivalents (Ball Spline Case, 1998) Non Essential Element: elements of the claim to which the doctrine of equivalents is applicable are not essential for the invention Chikan Kanousei: a claimed element can be interchanged with a corresponding element of an accused product or method because the corresponding element produces substantially the same result in substantially the same way Chikan Youisei: an ordinary person skilled in the art could have known of the interchangeability between the claimed element and the corresponding element at the time of manufacturing the accused products, etc.

OHNO & PARTNERS Doctrine of Prosecution History Estoppel Traditional Test -Deliberate Exclusion and Limitation Theory (Ishikiteki Gentei Jogai Setsu) This rule states that the doctrine of equivalents cannot apply to a particular "limitation X" in a claim which has been deliberately limited by the applicant. In other words, when products or processes which do not meet "limitation X" are deliberately excluded by an applicant during the prosecution history, application of the doctrine of equivalents to "limitation X" is prohibited.

OHNO & PARTNERS Doctrine of Prosecution History Estoppel Osaka High Court Approach in Genentech Case - Only amendments or remarks made in order to overcome prior art rejections trigger prosecution history estoppel

OHNO & PARTNERS Doctrine of Prosecution History Estoppel Supreme Court Approach in Ball Spline Case Deliberate Exclusion and Limitation Theory (Ishikiteki Gentei Jogai Setsu)

OHNO & PARTNERS Damages (Lost Profit) Arze v. Summy (2002) Damages: 84 Million U.S. Dollars Lost Profit Rate: 56 % Toshiba v. Familia (2003) Damages: 15 Million U.S. Dollars Lost Profit Rate: 33 %

OHNO & PARTNERS Lost Profit 102 §1 of Patent amounts of infringement products sold by an infringer profits per one product which the patent owner earns by selling patented products Lost Profit = (1) (2)

OHNO & PARTNERS Lost Profit Denial of Market Share Theory - Patent Owner Share 20% 20% Lost Profit 80% Reasonable Royalty Incremental Income Approach - Gross Profit – Incremental Costs

OHNO & PARTNERS Lost Partial Win Win

OHNO & PARTNERS April 2004 Filing Preliminary Injunction against Samsung Japan before Tokyo District Court Filing a Law Suit against Samsung America and Samsung Korea before U.S. court Filing Motion to bar Imported Products by Samsung with Tokyo Customs

OHNO & PARTNERS November, 2004 Filing Preliminary Injunction against LG Japan before Tokyo District Court Filing Motion to bar Imported Products by LG with Tokyo Customs

OHNO & PARTNERS REVISION OF CUSOTM LAW From April, 2003, Revised Custom Law in effective Strong Weapons to Owners of Patents, Utility Model Rights and Design Patents

OHNO & PARTNERS MAJOR POINTS OF NEW LAW Before New Law, only Third Party Observations are granted for owners of Patents, Utility Model Rights and Design Patents New Law gives Rights to bar importations of good accused of Patent infringement

OHNO & PARTNERS SUPREME COURT DECISION in CARD READER CASE Extraterritorial Application of Patent violates Territorialism Seeking injunction, claiming damages against foreign companies is not admitted

OHNO & PARTNERS US vs JAPAN Fujitsu Litigation in US Defendant: Samsung U.S. and Samsung Korea Fujitsu Litigation in Japan Defendant: Only Samsung Japan

OHNO & PARTNERS CUTSOMS PROCEDURE Filing Complaint with Customs Office Check of Custom Office

OHNO & PARTNERS CHECK LIST Ownership Registration Certificate Fact of Infringement Evidence to show infringement (attorney s opinion etc.) Custom office can identify infringement goods Acceptance

OHNO & PARTNERS Effect of Acceptance Custom Office Suspends Importation Goods at least 20 Days Until Importer Files Application to Release Suspended Goods with Bond Money

OHNO & PARTNERS Judgment Procedure in Customs Office Only Infringement Issue No Validity Issue

OHNO & PARTNERS Inquiry to JPO 1.Customs Office may inquire of JPO 2.JPO prepare Opinion within 30 Days 3.Importer may provide Opinion and Evidence to JPO 4.After 10 Days from the Opinion from JPO, Importer can Release Importation Goods