Recent Court Decisions on Patent Infringement in Japan

本文就日本近三年的專利侵權訴訟事件判決中，值得特別關注的三件判決予以介紹分析。此三件判決，皆為自二○○五年起設立的日本「知的財產高等裁判所」所作成之大合議判決。

第一，關於標準必要專利之權利行使的判決，探討曾作成FRAND宣言之標準必要專利權人，其專利權行使（請求損害賠償或訴請排除侵害），是否應受到限制？若然，應受到何種限制？第二，關於專利權侵害之損害賠償的判決，探討日本專利法將侵權所得利益推定為損害額之規定，是否以權利人自己有實施系爭專利為適用前提？第三，關於方法界定產物請求項解釋的判決，探討於專利有效性以及專利侵權認定的局面，此種請求項之權利範圍應如何界定的問題。

This paper introduces and analyzes three important court deci-sions in patent infringement cases rendered in the past three years in Japan. All of these decisions were by the Grand Panel of Japanese “Intellectual Property High Court” which was established in 2005.

The first case is related to the enforcement of standard essential patents (SEPs). The main issue in this case is as follows. If a SEPs holder has made a commitment to license its SEPs on FRAND (fair, reasonable, and non-discriminatory) terms, should there be any re-striction on the SEPs holder’s right to seek an injunction and damag-es based on such SEPs? 

The second case is related to the calculation of damages. It deals with the issue regarding whether the provision, which pre-sumes that the amount of profits earned by the infringer is the amount of damages sustained by the patentee, is applicable in the case where a patentee itself has not worked a patented invention.

The third case is concerning so-called product-by-process claims. It deals with the issue regarding how to define the technical scope of such claims in the context of finding patent infringement as well as judging the validity of the patent.