March, 2017｜News Letter

1. Can Common Technical Knowledge based on which Motivation is Considered be Newly Shown during Court Proceedings? Sumitomo Seika Chemicals Co., Ltd. v. Nippon Shokubai Co., Ltd., Case No. 2015 (Gyo-Ke) 10247 (Decision rendered on March 16, 2017)

The Patentee, Nippon Shokubai (NS), obtained a patent relating to use of a water-absorbing agent in paper diapers in 2012. Against the NS’s patent, Sumitomo filed an invalidation trial with the JPO in 2014. During the trial proceedings, NS demanded a correction of claims, and the JPO admitted the correction, and dismissed the Sumitomo’s demand in 2015. Sumitomo filed an appeal against the JPO's decision to the IPHC in 2015.

Corrected Claim 1 of the NS’s patent at issue claims as follows:
Use of a water-absorbing agent in paper diapers using the following water-absorbing agent …, wherein the agent comprises a water-absorbent resin comprising a crosslinked product of partially neutralized polyacrylic acid sodium salt obtained by copolymerizing or reacting an internal-crosslinking agent having two or more polymerizable unsaturated groups or reactive groups, a neighborhood of the surface of the water-absorbent resin is further subjected to a crosslinking treatment with a surface-crosslinking agent …, and an ion blocking agent … is compounded in ….

One of the main issues in this case related to whether common technical knowledge based on which a motivation, which was one of the major factors for destroying inventive step, was considered, could be newly shown during the court proceedings. The IPHC answered to the issue as follows:

In the JPO’s decision, the JPO first found that one of the differences between the invention at issue and the invention disclosed in prior art reference (p.a.r) 1 (Difference 1) was as follows:
The former invention specified “a product of a partially neutralized polyacrylic acid sodium salt” before the crosslinking treatment with a surface-crosslinking agent, as “a crosslinked product” and “a product obtained by copolymerizing or reacting an internal-crosslinking agent having two or more polymerizable unsaturated groups or reactive groups”. Whereas, the latter invention specified the above mentioned product as “a produced polymer” “obtained by polymerizing water-soluble vinyl monomers, such as acrylic acids or acrylic acid alkali metal salts, using 0.03 to 0.4% by weight of a persulfate, such as potassium persulfate and ammonium per sulfate, as a polymeric initiator.
The JPO made the decision on Difference 1 as follows:
It is common technical knowledge that there are two types of means for internal-crosslinking, i.e. (i) a self-crosslinking type not using an internal-crosslinking agent but using a polymeric initiator, such as a peroxide or a persulfate, and (ii) an internal-crosslinking agent type using an internal-crosslinking agent.
However, there is a difference in molecular structure between an absorbent obtained by internal-crosslinking with self-crosslinking and that obtained by internal-crosslinking using an internal crosslinking agent, and the difference affects properties required for absorbents used in disposable diapers, and thus the properties as an absorbent of the former invention and those of the latter invention are different from each other.
Accordingly, those skilled in the art would not have applied an internal-crosslinking agent type internal-crosslinking in place of or in addition to a self-crosslinking type internal-crosslinking in p.a.r. 1.

However, the IPHC overturned the above JPO’s decision for reasons stated below.
First, the IPHC slightly modified the findings regarding Difference 1, namely, that the invention at issue specifies “a product of a partially neutralized polyacrylic acid sodium salt” before the crosslinking treatment with a surface-crosslinking agent, as a crosslinked product having an internal-crosslinking agent type internal crosslinking, while the invention disclosed in p.a.r 1 specifies the above product as a crosslinked product having a self-crosslinking type internal crosslinking (Difference 1’). Further, having reviewed some newly submitted publications during the court proceedings, the IPHC found that it is common technical knowledge (i) that those skilled in the art can arbitrarily select producing an absorbent used for paper diapers as a self-crosslinking type or as an internal-crosslinking agent type, and (ii) that an internal-crosslinking agent type internal crosslinking has advantages of being able to control a crosslinking density of an absorbent to maintain water-absorbing properties in a balanced manner and the like, compared to a self-crosslinking type internal-crosslinking.
On the basis of the above findings, the IPHC decided that those skilled in the art had a motivation to adopt an internal-crosslinking agent type internal-crosslinking in place of a self-crosslinking type internal-crosslinking for solving a problem to control a crosslinking density of an absorbent to maintain water-absorbing properties in a balanced manner, which was generally required for high water-absorption resins used for absorbent articles such as disposable diapers and sanitary napkins.
In this connection, during the court proceedings, NS asserted that there were generally differences in molecular structure and the like between a self-crosslinking type crosslinking structure and an internal-crosslinking agent type crosslinking structure as the JPO’s decision correctly found, and thus it was unreasonable to equate the former with the latter. However, the IPHC rejected the NS's assertion by pointing out that the replacement of a self-crosslinking type with an internal-crosslinking agent type was easy insofar as both types were interchangeable means with each other even though there might be some differences in water-absorbing properties as a result of the differences in molecular structure between them.

Conclusively, the IPHC upheld the Sumitomo’s appeal and cancelled the JPO’s decision.

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

K&P’s Comments Under the Japanese practice, the presence or absence of “motivation” is a very important and major factor for examining inventive step, and the “motivation” may be based not only on a disclosure of a specific prior art reference but also on common technical knowledge. As seen from the above decision, the IPHC first found common technical knowledge referring to some publications which were newly submitted during the court proceedings, then acknowledged the motivation to replace a self-crosslinking type with an internal-crosslinking agent type. Namely, the IPHC acknowledges a motivation on the basis of common technical knowledge founded by referring to newly submitted publications during the court proceedings.

In March 2017, the IPHC handed down 20 decisions including the above case on patent and utility model, and overturned the previous decisions in 4 cases.

In March 2017, the IPHC handed down 1 decision on trademark, and maintained the previous decision.

In March 2017, the IPHC handed down no decision on industrial design.

Additionally, we have now confirmed that an appeal to the Supreme Court against each of the decisions on Case No. 2014 (Gyo-Ke) 10202 (Osaka Gas Chemicals Co., Ltd. v. Taoka Chemicals Co., Ltd.), which we introduced in the K&P’s IPHC Decision Report in January 2016, and on Case No. 2015 (Gyo-Ke) 10033 (Merck Sharp & Dohme Corp. v. Mylan Pharmaceutical and Teva Pharmaceutical Industries Ltd.), which we introduced in the K&P’s IPHC Decision Report in April 2016, was dismissed on January 20, 2017, and on March 28, 2017, respectively.