1. Outline
　The Patent Act stipulates in Article 102 a method of calculating damages in a case of infringement of a patent right. Among Article 102 of the Patent Act, Paragraph (2) stipulates that an amount of profit received by an infringer through an infringement is presumed to be an amount of damage, and Paragraph (3) stipulates that an infringed party may claim compensation which is equivalent to an amount of license fee for working a patented invention.
　Here, even if the presumption under Article 102, Paragraph (2) of the Patent Act is partly rebutted, when it is recognized that the patentee could have licensed the patent as for the rebutted portion of the presumption, Article 102, Paragraph (3) of the Patent Act is applied.
　Grounds for the rebuttal of the presumption under Article 102, Paragraph (2) of the Patent Act include (a) grounds for rebuttal due to exceeding the patentee’s ability to sell or otherwise work the patented invention, and (b) grounds for rebuttal due to circumstances under which the patentee could not sell or otherwise work the patented invention for any other reason. Regarding the rebutted portion of the presumption related to (a) the grounds for rebuttal due to exceeding the patentee’s ability to sell or otherwise work the patented invention, Article 102, Paragraph (3) of the Patent Act is applicable. On the other hand, regarding the rebutted portion of the presumption related to (b) the grounds for rebuttal due to circumstances under which the patentee could not sell or otherwise work the patented invention, it is individually determined whether or not Article 102, Paragraph (3) of the Patent Act is applicable, based on the facts of the circumstances.
　In this regard, in the following lawsuit, the court indicates an individual determination on the rebutted portion of the presumption related to (b) the grounds for rebuttal due to circumstances under which the patentee could not sell or otherwise work the patented invention. The individual determination is summarized as follows.

2. Summary of Lawsuit
(1) Case No.: Intellectual Property High Court Case No. Reiwa-2(ne) 10024
(2) Type of Case: Injunction etc. against Patent Right Infringement
(3) Relevant Right Nos.: Patent No. 4504690 and Patent No. 4866978
(4) Summary of Case:
　The subject case is an appeal filed by a patentee (Appellant) against a first-instance decision that Defendant’s products do not belong to the technical scope of the inventions of the subject patents. The issues of the subject case are whether or not the Defendant’s products belong to the technical scope of the inventions of the subject patents, whether or not the rebuttal against invalidation of the inventions of the subject patents is reasonable, an amount of damages incurred by the Appellant, etc.

3. Determination on Article 102, Paragraph (3) of Patent Act in Lawsuit
(1) Application of Article 102, Paragraph (2) of Patent Act
　The Appellant is found to have exported the Appellant’s product to the same destination countries as those of the Defendant’s product in the same period as when the Defendant’s product was exported. The Appellant’s product is the same type of product as the Defendant’s product targeting the same consumers and having the same function. The Appellant’s product is found to be a product in a competitive relationship (a competing product) in the respective markets of the common destination countries mentioned above, which could have been exported if the Defendant’s product had not been exported. Thus, it is found that, regarding the Appellant’s product, there are circumstances suggesting that the Appellant could have gained profits if no infringement of the subject patent right had been made by the Appellee (the infringer). Therefore, Article 102, Paragraph (2) of the Patent Act is applied to the calculation of the amount of the damage incurred by the Appellant in relation to the export of the Defendant’s product.

(2) Grounds for Rebuttal of Presumption under Article 102, Paragraph (2) of Patent Act
　(i) The fact that the patented invention is worked only in a part of the Defendant’s product and (ii) the non-identity of the markets are found to constitute grounds for rebuttal.
　When comprehensively considering the contents of the grounds for rebuttal referred to in (i) and (ii) above, the technical significance of the invention of the subject patent, etc., the contribution rate of the invention of the subject patent to formation of motivation to purchase the Defendant’s product is found to be a specific rate, and as for the portion exceeding this rate, it is found that there is no reasonable causal relationship between the amount of marginal profit of the Defendant’s product and the amount of the damage incurred by the Appellant.
　Thus, the presumption under Article 102, Paragraph (2) of the Patent Act is rebutted to the above-described extent, and therefore, the amount of the damage under Article 102, Paragraph (2) of the Patent Act incurred by the Appellant is found to be the amount of marginal profit of the Defendant’s product which is equivalent to the above-described rate.

(3) Relationship between Paragraphs (2) and (3) of Article 102 of Patent Act
　Article 102, Paragraph (3) of the Patent Act allows the patentee to claim compensation for damages against the infringer by deeming the amount equivalent to the license fee for the patented invention as the minimum value of damage incurred by the patentee, regardless of whether or not the patentee is working or is capable of working the patented invention. The amount of the damage referred to in that paragraph is regarded to be equivalent to the lost profit as the minimum guarantee for the loss of a licensing opportunity . 　On the other hand, in view of the fact that the amount of “profit” (the amount of marginal profit) gained by the infringer from the infringement referred to in Article 102, Paragraph (2) of the Patent Act is calculated by multiplying the price of the infringing product by the quantity sold or otherwise worked so as to obtain the sales amount, and then deducting expenses from that amount, the amount of the damage incurred by the patentee as presumed pursuant to the provisions of that paragraph is regarded to be equivalent to the lost profit resulting from a decrease in the sales of the product working the invention or the competing product which the patentee could have sold or otherwise worked if no patent infringement had been made by the infringer.
　The patentee can gain profits not only by directly working the patented invention, but also by granting a license for the patented invention to a third party. In view of this, it is regarded that the damage incurred by the patentee due to the infringement by the infringer can be considered to be the lost profit resulting from the decrease in the sales of the product working the invention or the competing product which the patentee could have sold or otherwise worked if no patent infringement had been made by the infringer, and the lost profit resulting from the loss of a licensing opportunity.
　It follows that, even where the presumption under Article 102, Paragraph (2) of the Patent Act is partially rebutted, if the patentee is found to have been able to grant a license for the rebutted portion of the presumption, it should be regarded that application of Article 102, Paragraph (3) of the Patent Act would be allowed.

(4) Determination on Application of Article 102, Paragraph (3) of Patent Act to Rebutted Portion of Presumption under Article 102, Paragraph (3) of Patent Act
　The grounds for the rebuttal of the presumption under Article 102, Paragraph (2) of the Patent Act include (a) the grounds for rebuttal due to exceeding the patentee’s ability to sell or otherwise work the patented invention, and (b) the grounds for rebuttal due to circumstances under which the patentee could not sell or otherwise work the patented invention for any other reason. Regarding the rebutted portion of the presumption related to the grounds for rebuttal (a), Article 102, Paragraph (3) of the Patent Act is applicable. On the other hand, regarding the rebutted portion of the presumption related to the grounds for rebuttal (b), it is individually determined whether or not Article 102, Paragraph (3) of the Patent Act is applicable, based on the facts of the circumstances.
　In the subject case, the grounds for rebuttal of the presumption are (i) the fact that the patented invention is worked only in a part of the Defendant’s product and (ii) the non-identity of the markets. Both of these grounds are not (a) the grounds due to exceeding the patentee’s ability to work the invention, but (b) the grounds due to circumstances under which the patentee could not sell or otherwise work the patented invention.
　The rebutted portion of the presumption relating to the grounds for rebuttal due to the (ii) non-identity of the markets is based on the finding that, in the period when the Appellee (infringer) exported the Defendant’s product to the respective destination countries, the Appellant’s (patentee’s) product was not exported to those destination countries, and therefore, the Appellant’s product is not found to be in such a competitive relationship in the respective markets of those destination countries that it could have been exported if the Defendant’s product had not been exported. Thus, although it can be said that the Appellant had circumstances under which it could not directly export the number of machines exported relating to that rebutted portion of the presumption, there are no circumstances under which the Appellant is found to have been unable to grant a license for such export .
　On the other hand, with regard to the rebutted portion of the presumption relating to the grounds for rebuttal due to (i) the fact that the invention of the subject patent is only worked in a part of the infringing product, the presumption is rebutted because the invention of the subject patent do not contribute to each individual Defendant’s product for the entire number of machines exported relating to the rebutted portion of the presumption. It cannot be found that the Appellant could have granted a license for such a part to which the invention of the subject patent has not contributed.
　Then, in this case, it is reasonable to allow application of Article 102, Paragraph (3) of the Patent Act only for the rebutted portion of the presumption related to the grounds for rebuttal due to (ii) the non-identity of the markets.

4. Conclusion
　The grounds for the rebuttal of the presumption under Article 102, Paragraph (2) of the Patent Act include (a) the grounds for rebuttal due to exceeding the patentee’s ability to sell or otherwise work the patented invention, and (b) the grounds for rebuttal due to circumstances under which the patentee could not sell or otherwise work the patented invention for any other reason. Regarding the rebutted portion of the presumption related to the grounds for rebuttal (a), Article 102, Paragraph (3) of the Patent Act is applicable. On the other hand, regarding the rebutted portion of the presumption related to the grounds for rebuttal (b), it is individually determined whether or not Article 102, Paragraph (3) of the Patent Act is applicable, based on the facts of the circumstances.
　Regarding the rebutted portion of the presumption related to (b) the grounds for rebuttal due to circumstances under which the patentee could not sell or otherwise work the patented invention, if the grounds for rebuttal is that the patentee and the infringer are not in a competitive relationship (e.g., the patentee worked the invention at a different time from the infringer), and if there are no circumstances under which it is found that the patentee could not have licensed the patented invention, Article 102, Paragraph (3) of the Patent Act is applicable.
　On the other hand, regarding the rebutted portion of the presumption related to (b) the grounds for rebuttal due to circumstances under which the patentee could not sell or otherwise work the patented invention, if the grounds for rebuttal is that the patented invention is worked only in a part of the infringing product, and if it is found that the patentee could not have licensed the patented invention, Article 102, Paragraph (3) of the Patent Act is not applicable.

End of article