2022.09.30

CASE OF REQUEST FOR REVOCATION OF TRIAL DECISION REGARDING “READING DEVICE AND INFORMATION PROVIDING SYSTEM”

PATENT

CASE OF REQUEST FOR REVOCATION OF TRIAL DECISION REGARDING “READING DEVICE AND INFORMATION PROVIDING SYSTEM”

1. Outline
  The subject case is a litigation for revocation of a trial decision made on a request for patent invalidation trial in which the request on inventions according to corrected Claims 1, 2, and 4 was accepted (the patent was found invalid) and the request on an invention according to corrected Claim 3 was not accepted (the patent was found valid). Against the litigation, Asterisk Inc. (hereinafter, referred to as "Plaintiff") requested the revocation of the part related to the inventions according to corrected Claims 1, 2 and 4 (2020 (Gyo-Ke) No. 10102), and Fast Retailing Co., Ltd. (hereinafter, referred to as "Defendant") requested the revocation of the part related to the invention according to corrected Claim 3 (2020 (Gyo-ke) No.10103).
  Issues of the subject case were whether the inventions according to corrected Claims 1 to 4 lacked novelty and inventive step, etc.
  The Intellectual Property High Court determined that, while Reason for Revocation A-2 alleged by the Plaintiff (Invention 2 of Exhibit Ko No. 1 is erroneously identified) has grounds, all the reasons for revocation alleged by the Defendant are groundless, and concluded: "A part of the trial decision made on Invalidation Trial No. 2019-800041 by the Japan Patent Office on August 6, 2020, stating that 'The patent for the inventions according to Claims 1, 2 and 4 in JP6469758B2 is invalidated.' is revoked."
  In this article, the Reason for Revocation A-2 which the IP High Court determined to have grounds will be discussed.

2. Scope of Corrected Claims
  The scope of corrected claims is explained as follows (underlines indicate corrected sections, and Claims 2-4 which refer to Claim 1 are also similarly corrected).

[Claim 1] (Present Invention 1)
  A stationary reading device that reads information from an RF tag attached to a commodity, comprising:
  an antenna configured to radiate a radio wave for communicating with the RF tag; and
  a shield part that is provided inside a housing opening upwardly, houses the antenna, surrounds the commodity, and is formed to have an upward opening wider than the commodity,
  wherein the reading device reads the information from the RF tag in a state where the housing and the shield part open upwardly.

[Claim 2] (Present Invention 2)
  The reading device of Claim 1, comprising a placing part disposed on the opening side with respect to the antenna and where the commodity is deposited.

[Claim 3] (Present Invention 3)
  The reading device of Claim 1 or 2, wherein the shied part includes:
  a radio wave absorbing layer absorbing the radio wave; and
  a radio wave reflecting layer formed outside the radio wave absorbing layer and reflecting the radio wave.

[Claim 4] (Present Invention 4)
 An information providing system, comprising:
 the reading device of any one of Claims 1 to 3; and
 an information providing device communicable with the reading device,
 wherein the information providing device includes:
  a memory configured to store commodity information related to the commodity in association with the information of the RF tag;
  an acquiring unit configured to acquire the information of the RF tag from the reading device;
  an information generating unit configured to extract the commodity information corresponding to the acquired information of the RF tag from the memory and generate information to be provided; and
  an output unit configured to output the generated information to be provided.

<< [Fig. 1], Part (a) of Subject Case>>  << Fig. 3 of Subject Case>> 
Fig. 1 Fig. 3

12: RF tag, 20: Reading device, 24: Housing, 38: Radio wave reflecting layer, 40: Radio wave absorbing layer, 44: Shield part, 60: Antenna, P: Commodity

3. Regarding Ko 1 Invention 2
 Ko 1 Invention 2 (an invention related to "reading/writing module 200" (Fig. 2) described in the specification of US9245162B2) is explained as follows.

 A reading/writing module 200, comprising:
 an insertion aperture 106 formed in a top surface and allowing objects carrying an RFID tag to be placed in a depositing cavity 202, the depositing cavity 202 being delimited by four vertical side walls 204-210 that are made of metal, each of the vertical side walls 204-210 also being provided with antennas connected to a reading means that makes it possible to read data from the RFID tag;
 an outer wall 212 surrounding the four vertical side walls 204-210 and the depositing cavity 202;
 an absorbent foam 214 arranged between the outer wall 212 and the four vertical side walls 204-210 and provided in order to absorb a radio wave used for reading/writing of the RFID tag; and
 a scale, a plate of which forms a bottom wall of the depositing cavity 202.
<< Fig. 1 of Ko 1 Invention 2>>  << Fig. 2 of Ko 1 Invention 2>> 
Fig. 1 Fig. 2
 
4. JPO's Judgment in Invalidation Trial
 The JPO identified differences between Present Invention 1 and Ko 1 Invention 2 as follows.

<Difference 1-1 (1-2)>
 "Reading part" is "stationary" reading "device" in Present Invention 1, while it is "reading/writing module 200" in Ko 1 Invention 2.
<Difference 1-2 (1-2)>
(Omitted)

 Further, the JPO judged on Difference 1-1 (1-2) as follows.

(C) Judgment
 a. Regarding Difference 1-1 (1-2)
 (a) "Reading/writing module 200" of Ko 1 Invention 2 comprises "antenna" and "reading means" and is capable of "reading" by itself, and by further comprising "vertical side walls 204-210 that are made of metal," a unique operation and effect of being particularly useful for reading a tag affixed to an object containing liquid (column 3, line 31 to column 4, line 7 of Ko 1) is exerted. Therefore, it can be said to have an operation mode of a reading device.

 Further, according to Kojien 6th edition, "to make stationary" means "to set, install, keep as it is untouched; 'keep the list price as it is'," and "install" means "place at a certain location in a usable state, provide; 'install a TV in a classroom'." According to the description of Ko1, the "reading/writing module 200" of Ko 1 Invention 2 is supposed to be used in an inserted state in a housing, i.e., in the stationary state in the housing (column 4, lines 23-25; column 5, lines 24-33; and column 8, line 62 to column 9, line 35 of Ko 1), and it not supposed to be used while being moved. This clearly shows that the "reading/writing module 200" of Ko 1 Invention 2 is a stationary device.

 Similarly, it is clear that the "reading/writing module 200" of Ko1 Invention 2 is a stationary device also when incorporated in other device or used alone.
 Therefore, it cannot be said that Difference 1-1 (1-2) is a substantial difference.

 (b) Even if Difference 1-1 (1-2) is substantial, it could have been easily achieved by a person skilled in the art to adopt to Ko 1 Invention 2 the configuration of Present Invention 1 related to Difference 1-1 (1-2), by using the "reading/writing module 200" of Ko 1 Invention 2 alone, for example, and placing it stationary.

5. IP High Court's Decision on This Litigation
 In this litigation, the IP High Court judged on Reason for Revocation A-2 as follows.

(4) Regarding Ko 1 Invention 2
 A. According to the above (1), the "reading/writing module 200" of Ko1 Invention 2 is comprised of "side walls 204-210" made of metal, the "absorbent foam 214" provided outside the "side walls 204-210" for absorbing a radio wave, and the "outer wall 212" provided outside the "absorbent foam 214" and comprising no sharp edge (above (1), D(d)).

 Further, the "reading/writing module 200" of Ko 1 Invention 2 is used incorporated in the "reading/writing device 102." Specifically, the "reading/writing device 102" comprises, in a bottom part thereof, the depositing cavity formed with the aperture 106 for inserting the object in the depositing cavity, and the insertion aperture 106 is surrounded by "protective wall(s)" (above (1), D(a)). The "protective wall" forms a screen for protection principally against a tag activation wave originating from the depositing cavity and directed towards the outside and optionally, in a case where the activation wave has succeeded in leaving the cavity, against a wave emitted in response originating from the outside and directed towards the depositing cavity (above (1), C(a)), and is comprised of an inner panel made of plastic material, an absorbent foam for absorbing a radio wave, and an outer panel made of metal for reflecting the radio wave (above (1), D(a)).

 B. Here, whether the "reading/writing module 200" can be identified alone according to Ko 1 Invention 2 is determined.

 (a) Regarding designing a shield part for a reading device to have a double layer structure by providing a reflecting layer outside a radio wave absorbing layer in order to improve reading performance, the following articles existed as of the filing date of the present application.
(Omitted)
 (b) According to each of the articles in the above (a), it can be said that it was common technical knowledge as of the filing date of the present application to provide an absorbent body and a reflective body (metal) at a rear side thereof for reflecting an electromagnetic wave, in a shield part for absorbing the electromagnetic wave.

(Omitted)
 C. (a) While the "reading/writing module 200" of Ko 1 Invention is comprised of the "side walls 204-210" made of metal, the "absorbent foam 214" provided outside the "side walls 204-210" for absorbing the radio wave, and the "outer wall 212" provided further outside the "absorbent foam 214" and comprising no sharp edge, considering that the reason why the "side walls 204-210" are made of metal is for achieving a significant reflection of a transmissive radio wave used in the depositing cavity (above (1), C(e)), that the "side walls 204-210" are also provided with the antenna (above (1), D(d)), and that the antenna reads/writes at least one RFID tag carried by the object deposited in the depositing cavity (above (1), C(a)), it is recognized that a person skilled in the art would understand that the "reading/writing module 200" is for reading/writing the RFID tag carried by the object deposited in the depositing cavity.
(Omitted)

 (b) Meanwhile, even if the reason why the "reading/writing module 200" of Ko 1 Invention 2 comprises the "absorbent foam 214" which can absorb the radio wave and the "outer wall 212" comprises no sharp edge is for preventing a release of radio wave transmitted from the reading device (above (1), D(d)), considering that the "protective wall" of the "reading/writing device 102" into which the "reading/writing module 200" is inserted comprises the absorbent foam for absorbing the radio wave and the metal outer panel for reflecting the radio wave, and these components are recognized to have a function of preventing the release/entrance of the radio wave to/from the outside, as described above in (1), D(a), it is recognized that a person skilled in the art would understand that, in Ko 1 Invention 2, the "protective wall" of the "reading/writing device 102" prevents a leakage to the outside or interference of the radio wave.

 (c) Although Ko 1 Invention 2 does not specify the material of the "outer wall 212" provided outside the "absorbent foam 214," in addition to the above (a) and (b), the "side walls" are made of metal and, if another metal is provided further outside (where the outer wall 212 is located) of the "absorbent foam" which is provided outside the "side walls," the metal "side walls" and "outer wall" act as radio wave reflective plates and reflect the radio wave, and therefore, providing the "absorbent foam" therebetween becomes meaningless. Considering this together, it is recognized that a person skilled in the art would understand that the "outer wall 212" of Ko 1 Invention 2 is not required to be made of metal.

 (d) According to the above, it is recognized that the "reading/writing module 200" of Ko 1 Invention 2 is not supposed to be used alone without the "protective wall" (i.e., it is not assumed that the leakage to the outside or interference of the radio wave is prevented by the "reading/writing module 200" alone). Since this function of preventing the leakage to the outside or interference of the radio wave is essential for "reading device" to be compared to the present invention, the "reading/writing module 200" alone in Ko 1 Invention cannot be recognized as a "reading device" to be compared with the present invention.

 D. As a result, Ko 1 Invention 2 cannot be identified as in the Trial Decision and cannot be compared to the present invention.
(Omitted)
 (5) Thus, Reason for Revocation A-2 has grounds.

6. Our Comments
 In this litigation, the IP High Court determined that the "reading/writing module 200" of Ko 1 Invention 2 does not have the essential function for "reading device" to be compared to the present invention and thus the "reading/writing module 200" alone of Ko 1 Invention 2 cannot be recognized as the "reading device" to be compared with the present invention, which makes Ko 1 Invention 2 not eligible for a patent. The IP High Court therefore acknowledged novelty and inventive step of Present Inventions 1-4 without requiring the comparison between Ko 1 Invention 2 and the present invention.

 The above train of thought expressed by the IP High Court is considered effective also in an examination stage.

 For example, in a case where the inventive step of a subject invention X relating to a device A is denied based on a main cited invention Y relating to a device B, if the device B of the main cited invention Y does not comprise an essential component of the device A of the subject invention X, a counterargument can be made by stating that the device B of the main cited invention Y does not comprise the essential component of the device A of the subject invention X and thus cannot be recognized as a comparable device to the subject invention X.

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