1. Outline
  The subject case is a patent right infringement lawsuit filed by JTEKT Corporation, the patentee (hereinafter, referred to as "the Plaintiff"), against Mitsubishi Electric Corporation (hereinafter, referred to as "the Defendant"), arguing that a display etc. for displaying a ladder circuit in a PLC (programmable logic controller) device manufactured and sold by the Defendant infringes Japanese Patent No. 3700528 etc.
  Although there are some issues in the subject case, in this newsletter we explain about whether an act of manufacturing, selling, etc. the Defendant's product constitutes indirect infringement of the patent right of Japanese Patent No. 3700528 (Issue 1-2).
  The case is summarized in time series as follows:

2. Regarding Claim of Japanese Patent No. 3700528
  Japanese Patent No. 3700528 includes only Claim 1. This claim was corrected for the first time based on the trial for correction (Correction Trial No. 2016-390101) and for the second time based on the request for correction in the trial for patent invalidation (Invalidation Trial No. 2018-800131).
  The claim after the first correction is as follows (corrected portions are indicated by underlines and strike-out lines).

  The claim after the second correction is as follows (corrected portions are indicated by underlines).

 
Fig. 8 of the subject patent

3. Regarding Defendant's Product
(1) Defendant's Display A
  The Defendant's display A is a display for a PLC (GOT1000 series etc.), and is an operating device for displaying a state of a PLC etc. which controls a machine in a facility such as a plant, and transmits instruction signal to the PLC etc.

(2) Defendant's Product 3
  The Defendant's product 3 is an integrated software for screen creation exclusively for the Defendant's display A. A user installs the Defendant's product 3 on a PC, and using software "GT Designer 3" contained therein, creates project data for the Defendant's display A with the PC. The Defendant's product 3 includes OSs (basic function OS and extended/optional function OS) for the Defendant's display A, and other software.
  The Plaintiff argued that the act of manufacturing, selling, etc. of the Defendant's display A and the Defendant's product 3 constitutes direct infringement and indirect infringement of the patent right based on Japanese Patent No. 3700528.

4. Regarding Court's Judgment
  In the first-instance decision the court denied the direct infringement by the Defendant's display A and the Defendant's product 3, because each of the Defendant's display A and the Defendant's product 3 would not work at all unless the user installs the OSs on the Defendant's display A using the Defendant's product 3.
  On the other hand, regarding the Defendant's product 3, a function named "one-touch ladder jump function" exists, and the court recognized that such a function corresponds to the configuration of the last paragraph of Corrected Invention 1:

The court further recognized that, when a part of the Defendant's product 3, such as a ladder monitor function, is installed on the Defendant's display A, the Defendant's display A becomes capable of providing the ladder monitor function etc., and thus pertains to the technical scope of Corrected Invention 1 as described above. Therefore, the court recognized that the Defendant's product 3 is "what is essential for solving the problem" for above-described Corrected Invention 1.
  Tokyo District Court Case No. 2011(wa) 19435 (decision made on August 28, 2013) presents the following interpretation: "it is reasonable to understand that a feature component etc. which constitutes a unique configuration etc. characterizing a characteristic technical means newly disclosed by the invention as a method for solving the problem of conventional techniques falls under 'what is essential for solving the problem by the invention.'" Regarding the Defendant's product 3, however, the Defendant argued that "the one-touch ladder jump function is a function for a general purpose" based on the grounds that "the one-touch ladder jump function is available also in a state where the ladder circuit is displayed without passing through the alarm list function."
  The court did not accept this argument, and recognized that the Defendant's product 3 falls under an indirectly-infringing product under Article 101, paragraph (2) of the Patent Act, while recognizing that other requirements are satisfied. In the first-instance decision, however, the reason why the Defendant's product 3 does not fall under a general-purpose product is not mentioned.

  The second-instance case was disputed based on Corrected Invention 2 after the second correction. Corrected Invention 2 limits the configuration of the "program" of Corrected Invention 1, and the configuration of the last paragraph of Corrected Invention 1 is maintained also in Corrected Invention 2. Thus, also in the second-instance case, the court recognized, like in the first-instance case, that the Defendant's product 3 is "what is essential for solving the problem" for above-described Corrected Invention 2 and that the Defendant's product 3 falls under an indirectly-infringing product under Article 101, paragraph (2) of the Patent Act.
  The second-instance court presented a reason why the Defendant's product 3 does not fall under a general-purpose product in more details than in the first-instance case.

  The reason presented by the second-instance court is as follows.

5. Discussion
  The second-instance decision adheres fundamentally to the judgment in the first-instance case, but is an interesting court precedent presenting the scope of indirect infringement for excluding an indirectly-infringing act before it happens, in that the second-instance court recognized that even a combination of general components or functions corresponds to "what is essential for solving the problem."

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