January, 2017｜News Letter

1. Is it Acceptable that Winning Party Before the JPO Argue Against the JPO’s Critical Interpretation of Term in Claims Before the IPHC?

JFE Steel Corporation v. ArcelorMittal, Case No. 2015 (Gyo-Ke) 10010 (Decision rendered on January 23, 2017)

The Patentee, ArcelorMittal, obtained a patent relating to a process for manufacturing a part formed by stamping a coated steel sheet in 2005. Against the ArcelorMittal’s patent, JFE filed an invalidation trial with the JPO in 2013. During the trial proceedings, ArcelorMittal demanded a correction of claims, and the JPO admitted the correction and dismissed the JFE’s demand in 2014. JFE filed an appeal against the JPO's decision to the IPHC in 2015.

Corrected Claim 1 of the ArcelorMittal's patent at issue claims as follows:
A process for the manufacture of a part, said part formed by stamping of a strip of rolled steel sheet for the heat treatment coated with zinc or a zinc-based alloy …, said process comprising the steps of:
cutting the steel sheet for heat treatment to obtain a steel sheet blank for heat treatment,
hot stamping the steel sheet blank for heat treatment to obtain the part,
generating an alloyed compound selected from the group consisting of a zinc-iron based compound or a zinc-iron-aluminum based compound on a surface of the steel sheet blank for heat treatment by a heat treatment,
wherein the heat treatment is carried out …, said alloyed compound ensuring protection against corrosion and steel decarburization, and providing a lubrication function,
further comprising … .

One of the main issues in this case related to whether it was acceptable that the winning party before the JPO argue against the JPO’s critical interpretation of a term in the claims before the IPHC. The IPHC answered to the issue as follows:

In the JPO’s decision, the JPO interpreted the meaning of the term “alloy” of a “zinc-based alloy” in the claim at issue as not including an intermetallic compound although it generally included not only a solid solution but also an intermetallic compound, on the grounds that the “alloy” coating before the heat treatment was reacted with iron in the steel sheet to form an “alloyed compound”, which was an intermetallic compound, by the heat treatment, thus an “alloy” should be technically distinguishable from an “alloyed compound” obtained after the heat treatment.
On the basis of the above interpretation, the JPO decided that the meaning of an “alloy” before the heat treatment was clear.

However, during the court procedure before the IPHC, ArcelorMittal, who was the winning party of the trial before the JPO, argued that the term “alloy” included both a solid solution and an intermetallic compound, contrary to the JPO’s interpretation.

Having reviewed the claim of the patent at issue, the specification thereof, and common technical knowledge in detail, the IPHC interpreted the term “alloy” before the heat treatment as including both a solid solution and an intermetallic compound for the following reasons:

(1) The IPHC first confirmed that the term “alloy” generally included both a solid solution and an intermetallic compound on the basis of common technical knowledge, as both parties admitted, and judged that an “alloy” in the claim should also be interpreted as including an intermetallic compound in accordance with the above general meaning unless any special circumstance arose.

(2) Then, the IPHC considered if there was any such special circumstance, and decided as below:
(i)The term “zinc-based alloy” was just defined in the claims, and no specific recitation showing that an intermetallic compound was excluded was found therein.
(ii) Even though an “alloy” before the heat treatment should be technically distinguishable from an “alloyed compound” obtained after the heat treatment, it did not directly lead an interpretation that an “alloy” before the heat treatment excluded an intermetallic compound. Specifically, (a) it was common technical knowledge that an intermetallic compound coated on a steel sheet possibly changed to a different intermetallic compound by diffusion of iron in the steel sheet during a heat treatment, thus on the basis of the above common technical knowledge, it was possible to distinguish between an intermetallic compound before the heat treatment and that after the heat treatment; and (b) the term “zinc-based alloy” before the heat treatment was not specified with any physical property or the like in the claims, while the term “alloyed compound” after the heat treatment was specified by the properties of “ensuring protection against corrosion and steel decarburization, and providing a lubrication function”, thus, from this point of view as well, it was possible to distinguish between the “alloy” before the heat treatment and the “alloyed compound” after the heat treatment.
(iii) Further, no other description showing that an intermetallic compound was excluded was found in the specification.
(iv) Therefore, no special circumstance where the term “alloy” of a “zinc-based alloy” in the claims should be interpreted to exclude an intermetallic compound was found, thus it was reasonable to interpret the term “alloy” in the claims in accordance with the general meaning.

Conclusively, the IPHC dismissed the JFE’s appeal and upheld the conclusion of the JPO’s decision.

An appeal to the Supreme Court was NOT filed against this decision, and thus the decision is final and binding.

ArcelorMittal's in this case was represented by us, KAWAGUTI & PARTNERS.

K&P’s Comments As seen from the above IPHC decision, even the winning party before the JPO may make an exact opposite argument against the JPO’s critical interpretation of a term in the claims before the IPHC, and it is acceptable to the IPHC if the IPHC acknowledges (i) that the JPO’s interpretation is incorrect and (ii) that the correct interpretation does not affect the conclusion of the JPO’s decision, i.e. the conclusion is maintained in that the reason(s) for the invalidation is (are) not acceptable, and accordingly, the demand for the invalidation trial should be dismissed.

In January 2017, the IPHC handed down 16 decisions including the above case on patent, and overturned the previous decisions in 6 cases.

In January 2017, the IPHC handed down 2 decisions on trademark, and maintained all of the previous decisions.

In January 2017, the IPHC handed down 6 decisions on industrial design, and overturned the previous decisions in 4 cases.