Overview of Intellectual Property High Court Case 2022 (Administrative Case) No. 10118
Case Overview
- Case: Intellectual Property High Court, 2022 (Administrative Case) No. 10118
- Parties Involved:
Plaintiff / Patent Holder: Ｘ
Defendants: Japan Patent Office
- Key Issue: Whether the “excluding claim” (excluding televisions from speaker-equipped devices) affects the assessment of inventive step
Summarization of the case
The present application included a so-called “excluding claim,” which specified that the claimed invention applies to speaker-equipped devices excluding televisions. The invention concerned a control device, such as a mobile device with a touch panel display, that controls the state of a speaker-equipped device other than a television. The invention ensured that if communication between the control device and the target device was not possible, the display on the touch panel would not update, thereby preventing discrepancies between the displayed and actual state of the device.
The court compared the claimed invention with prior art (JP 2007-158409, referred to as Document 4). Document 4 disclosed a technology in which a digital camera, when attempting wireless communication with a high-definition television, disables operations that cannot be executed due to communication failure. The court held that the prior art should not be narrowly limited to specific devices such as a digital camera or television because the technical significance does not change depending on the specific devices used. Therefore, the disclosed technology was considered applicable to a broader range of control and target devices.
As a result, the court determined that the claimed invention’s “excluding claim” does not confer inventive step. Excluding televisions from the claim did not differentiate the invention meaningfully from Document 4, because the technical problem and solution could apply to a wide range of devices beyond televisions. Consequently, the claimed invention was deemed lacking in inventive step over the prior art.
Significance of the Case
This case illustrates that “excluding claims,” which attempt to achieve inventive step by excluding specific embodiments in the prior art, may not be sufficient to establish inventiveness. Courts may consider the underlying technical problem and solution rather than the specific devices mentioned, limiting the effectiveness of such claim strategies.
Practical Implications
Patent applicants should recognize that simply drafting “excluding claims” to avoid known prior art may not secure inventive step. To strengthen the likelihood of patentability, it is crucial to demonstrate a technical advancement or problem-solving effect that is not obvious over the prior art, regardless of whether certain embodiments are explicitly excluded. Claim drafting should focus on the novelty and non-obviousness of the technical solution rather than merely excluding prior art examples.
