Case decision of the IP High Court of Japan (Interlocutory decision) |
Yukihide Umeda Masashi Shinkai |
| Case: A hollow golf club head case Case number: Heisei 21 (Ne) 10006 Decided on: June 29, 2009 Court: Third section of IP High Court |
| 1 Introduction In the case, the IP High Court applied the doctrine of equivalents as the technical essence of the feature of the claimed invention differed from the defendant’s product. The technical essence did not reside in the feature itself but in the principle for solving the problem. 2 Doctrine of equivalents In BALL SPLINE BEARING CASE (Japanese Supreme Court Case No. Heisei 6 (O) 1083 decided in Third Small Courtroom on February 24, 1998), the doctrine of equivalents in Japan was provided as follows. The following conditions must be satisfied in order to apply the doctrine of equivalents: (1) in a case where there exists a portion in the claim which is different from the accused device, that portion is an insubstantial part of the patented invention; (2) even if that portion is interchanged with a part of the accused device, the object of the invention is achieved by the accused device, and the same operation and effect as those of the invention are attained (interchangeability); (3) the above interchange could have been easily conceived by a person skilled in the art at the time of manufacture of the accused device (ease of interchangeability); (4) the accused device cannot be the same as art publicly known at the time of the filing of the application, or could not have been easily conceived by a person skilled in the art based on the publicly known art at the time of filing; and (5) there are no special circumstances, such as where the accused device was intentionally excluded from the claim by the patentee during the prosecution of the patent application. Reference: Yoshikazu TANI, “THK Co. v. Tsubakimoto Seiko Co.-Infringement Case for Ball Spline Bearing”, The Journal of World Intellectual Property, Vol. 1, No. 6, November 1998 3 Present patent (Japanese patent No. 3,725,481) [Claim 1] (a) A hollow golf club head, comprising a head body having a hollow structure and formed by bonding together an outer shell member made of metal and an outer shell member of fiber reinforced plastic, wherein (b) the bonded portion of said outer shell member made of metal being bonded to the bonded portion of said outer shell member of fiber reinforced plastic, (c) the bonded portion of said outer shell member made of metal being provided with a through hole, and (d) a fiber reinforced plastic stitching member being passed through said through hole from an adhered interface side of said outer shell member made of metal bonded to said outer shell member of fiber reinforced plastic to an opposite surface side of said outer shell member made of metal, so that coupling said outer shell member made of metal and said outer shell member of fiber reinforced plastic |
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| 4 Summary of the decision (interlocutory decision) 4.1 Conclusion The feature of the defendant product does not literally satisfy the feature (d) of claim 1, but is equivalent to it under the doctrine of equivalents. Accordingly, the defendant product resides in the technical scope of the present invention. 4.2 Grounds for the decision 4.2.1 Meaning of the term “stitching member” of the feature (d) of claim 1 According to the specification, it is clear that the term “stitching member” of the feature (d) of claim 1 is used apart from the usual meaning, i.e. a bonding member used to penetrate through all of a plurality of objects to be bonded. Therefore it seems unreasonable to interpret in a limited way the meaning of the term “stitching member” of the feature (d) of claim 1 according to only the usual meaning of the term. As the term “stitching member” is selected instead of using a simple term, e.g. “member”, the contents of the term “stitching member” should be interpreted with some limitation which is different from mere “member”. When the limitation is interpreted from a technical standpoint, it is suitable to interpret the meaning of the term “stitching member” as “a member being passed through multiple (more than one) through holes of an outer shell member made of metal and bonded (adhered) to an outer shell member made of fiber reinforced plastic on at least two portions”. 4.2.2 Feature The defendant product comprises an outer shell member 1 made of metal and upper and under outer shell members 10 and 9 made of FRP which are bonded to the outer shell member 1 respectively, the outer shell member 1 having through holes 7, each of short strips 8 made of carbon fiber passing through the through holes 7 respectively from an upper bonded interface side to an opposite under bonded interface side of the outer shell member 1, both end portions of each of short strips 8 being bonded on one portion to the upper and under outer shell members 10 and 9 respectively. Accordingly, in the dependant product, the upper outer shell member 10 made of FRP is bonded to the outer shell member 1 made of metal. |
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| 4.2.3 Whether “stitching member” of the feature (d) is literally satisfied or not The feature “short strips 8 made of carbon fiber” in the feature 4.2.4 Whether the doctrine of equivalents is applied or not 4.2.4.1 Interchangeability According to the specification, it is understood that the object, the effect (and the principle to solve the problem) of the present invention of claim 1 of using “a (fiber reinforced plastic) stitching member” is to upgrade the bond strength between the outer shell member made of metal and the outer shell member made of fiber reinforced plastic. On the other hand, the under outer shell member 9 made of FRP of the defendant product is adhered integrally to the under surface of the under end portion of the short strip 8 at a front flange portion 5a, and the upper outer shell member 10 made of FRP which forms a crown portion is adhered integrally to the upper surface of the upper end portion of the short strip 8 at a front flange portion 5a, so that the upper outer shell member 10 made of FRP and the under outer shell member 9 made of FRP are adhered to the outer shell member 1 made of metal as both outer shell members 9 and 10 nip an upper flange portion 5 of the outer shell member 1. At the front flange portion 5a, the short strip 8 made of carbon fiber is passed through one through hole, and adhered to each of the upper outer shell member 10 made of FRP located in upper side of the outer shell member 1 and the under outer shell member 9 made of FRP located in under side of the outer shell member 1, respectively at one portion. Therefore the short strip 8 effects to upgrade the joint strength between the outer shell member made of metal (the outer shell member 1) and the outer shell member of fiber reinforced plastic (the upper outer shell member 10 made of FRP). The above effect is the same as the object or the effect of the present invention of claim 1 using “a (fiber reinforced plastic) stitching member”. That is to say, in the defendant product, as the under outer shell member 9 made of FRP is applied to the outer shell member made of metal on the opposite side of the bonded interface of the outer shell member made of metal and then heated and pressed to form, the short strip 8 also adheres integrally to the outer shell member made of fiber reinforced plastic (the upper outer shell member 9 made of FRP) on the opposite side of the bonded interface of the outer shell member made of metal. Therefore it is not necessary to pass the short strip 8 more than once through the through holes so as to assure strength. As mentioned above, the feature “a (fiber reinforced plastic) stitching member” of the present invention of claim 1 is the same as the feature “the short strip 8 (made of carbon fiber)” in the feature 4.2.4.2 Ease of interchangeability It is common that the present invention of claim 1 and the defendant product have the feature “the member made of fiber reinforced plastic passing through the through hole formed in the outer shell member made of metal”. Accordingly, at the time of manufacturing the defendant product, it is easy to replace “the member which passes through the multiple through holes of the outer shell member made of metal more than once, and bonds (adhere) the outer shell member made of metal to the outer shell member made of fiber reinforced plastic at least two portions” with “the members which pass through one through hole only once, and bond the outer shell member made of metal to the upper and under outer shell members made of fiber reinforced plastic at one portion respectively”. 4.2.4.3 Whether the different portion is insubstantial or not According to the claim and the specification, the invention is for solving the problem by passing the member made of fiber reinforced plastic through the through holes which are formed in the bonding portion of the outer shell member made of metal, so it is recognized that the important parts of the means for solving the problem of the present invention are the features “through the through hole(s)” and “passing from an adhered interface side of said outer shell member made of metal bonded to said outer shell member of fiber reinforced plastic to an opposite surface side of said outer shell member made of metal, so that coupling said outer shell member made of metal and said outer shell member of fiber reinforced plastic”. Considered from a technical standpoint, it should be understood that the meaning of the term “a stitching member” is “the member which passes through the multiple (more than one) through holes in the outer shell made of metal, and bonds (adhered) to the outer shell member made of fiber reinforced plastic on at least two portions”. However, among the above feature, it can not be said that the feature “through the multiple (more than one) through holes” differing from one hole, and the feature “bonds (adhered) on at least two portions” are important parts to characterize the invention. The feature “being a stitching member” of claim 1 is not found as a core or distinctive part of technical idea which forms the foundation of means for solving the problems of the present invention. Accordingly, it is not understandable that the feature “the member which passes through the through hole is a stitching member” in the present invention is the substantial part of the present invention. 4.2.4.4 Whether the defendant product could have been easily conceived or not (Omitted) 4.2.4.5 Intentional exclusion (Omitted) |
| 5 Comments Tokyo District Court did not apply the doctrine of equivalents, whilst IP High Court did. The difference in decision between both courts is based on the difference of interpretation of foundation of means for solving the problems of the present invention. First, with regard to interpretation of the feature “stitching member” which is a different element from the defendant product, there is a different interpretation between the Tokyo District Court and the IP High Court. Though both courts referred to the specification, the Tokyo District Court interpreted the feature “stitching member” as “a member passing successively in a zigzag manner through multiple through holes formed in an outer shell member made of metal from a side (bonded interface side) to the other side (opposite side of bonded interface side) of the outer shell member made of metal”, whilst the IP High Court interpreted it as “the member passing through the multiple (more than one) through holes in the outer shell made of metal, and bonds (adhered) to the outer shell member made of fiber reinforced plastic on at least two portions”. The Tokyo District Court interpretation was based on the description in the claim as to what feature is meant by the term “stitching” to upgrade the bond strength, whilst the IP High Court focused on the claim description as to what is meant by the term “stitching member” for solving the problem of upgrading the bond strength. So, the difference in interpretation of the term “stitching member” was due to the different viewpoints of the courts. With regard to the substantial part of the invention, the Tokyo District Court held, based on the above interpretation of the term “a stitching member”, that the characteristic feature to solve the problem of the present invention was bonding together the outer shell member made of metal and the outer shell member of fiber reinforced plastic by “stitching member”, accordingly such “stitching member” is the substantial part of the present invention. On the other hand, the IP High Court held, in the above interpretation, that the feature “through the multiple (more than one) through holes, instead of through one through hole”, and the feature “bonds (adhered) on at least two portions” were not important to characterize the invention. The IP High Court held that the features “through the through hole(s)” and “passing from an adhered interface side of said outer shell member made of metal bonded to said outer shell member of fiber reinforced plastic to an opposite surface side of said outer shell member made of metal, so that coupling said outer shell member of fiber reinforced plastic and said outer shell member made of metal” were important to solve the problem of the present invention. It seems that the Tokyo District Court considered the required feature to solve the problem to upgrade bond strength, i.e. “a stitching member” itself, as the substantial part of the invention, whilst the IP High Court considered the important element of the required feature, i.e. the core feature of “a stitching member” which corresponds to the principle for solving the problem as the substantial part of the invention. The decision is worthy of special mention as the theory for applying the doctrine of equivalents since it bases the substantial part of the invention on the principle for solving the problem by looking beyond the claim description. Accordingly, it seems that from now on, this decision impacts on interpretation of the technical scope of the invention. |
