Characteristics of Modern Patent Litigation from the Perspective of a Judge and Scholar Returning to Practice (Ryu TAKABAYASHI)
1 Judge's Perspective
My first involvement as a judge was in April 1983, six years after I was appointed as a judge, when I was assigned to the Tokyo District Court's Civil Division 29 (Industrial Property Division). Judgment in the Space Invaders Part II case, which recognized computer programs as subject to copyright protection was handed down in December 1982, just before I was assigned, and it was a long time ago, as was reported in the news the other day, 40 years have passed since the verdict. At that time, patent infringement litigation took many years to identify the defendant's property, and then it took many years to reach a judgment, and the court reached a judgment about one year after the lawsuit was filed, and the lawsuit was operated in an idyllic manner that was about different from the present (although it is not a patent, the lawsuit over the editing copyright of the famous Chieko extract was filed in 1966 and the Tokyo District Court ruledwas issued in 1988, and it took 22 years for the first trial alone. ）。 A typical example of this was the procedure for identifying the defendant's property. At that time, I was a young assistant judge, but at that time there were not many lawyers who could handle patent litigation, and there were many cases where prominent people who had retired from the specialized division of the Tokyo High Court and became lawyers were represented in litigation. In a case in which one of the well-known former presiding judges of the High Court was represented by the defendant, I was in charge of the pleadings preparation procedure by myself, but every time the plaintiff submitted a document specifying the defendant's property, the defendant's attorney pointed out the details of the plaintiff's identification and denied it, and the defendant did not claim the composition of his property at all. I would like you to actively argue how they differ," but the attorney who was a former chief judge of the prestigious High Court dismissed the case, saying, "The judge is young and does not seem to know the principles of the Code of Civil Procedure, but the identification of the subject matter of the suit is something that the plaintiff should prove as a claim, and there is no need for the defendant to actively reveal this." I became disillusioned that a former judge who might have had trouble managing such a case would wield principles in this way when he became a lawyer, and I began to think that I could not trust even the many articles written by this eminent former chief justice of the High Court. Subsequently, with the establishment of Article 79, Paragraph 3 of the Rules of Civil Procedure in accordance with the revision of the Code of Civil Procedure in 1996, the establishment of Article 104-2 (obligation to specify specific aspects) by the amendment of the Patent Law in 1999, and the improvement of litigation management, it became a matter of course that when the defendant denies the plaintiff's claim in respect of the defendant's property, it is natural to clarify the specific aspect of the property. It is well known that there is no longer any difficulty in identifying the target property.
After that, he took a break from IP litigation for a while, but from 1990 to 1995 he became involved in IP litigation as a Supreme Court investigator. Investigators are in charge of appellate cases of infringement lawsuits and appeals of appeals for revocation of trial decisions under the exclusive jurisdiction of the Tokyo High Court, but most of the hearings were conducted only in writing, and there were only a limited number of occasions such as when oral arguments were held. After that, it was a big opportunity for me to change my career as a researcher and educator.
2 Perspectives from academics
Over 28 years as a scholar, from 1995 until 2023, I engaged in intellectual property litigation research, a journey that cannot be easily summarized. It is difficult to briefly describe the long years of study, but the biggest difference between a judge and a scholar is that scholars can choose their own subjects and choose their own fields of study. Furthermore, scholars are not only engaged in research and education, but also have the character of public figures, so to speak, who are required to contribute to society as scholars. Social contributions should not interfere with research and education but must always have a synergistic effect on research and education, and on top of that, they must contribute to the development of industry and society.
The most significant change in IP litigation over the past 28 years has been the increasing number of situations in which large companies in Japan and abroad are competing for cutting-edge technologies in IP litigation, especially patent-related litigation. The aforementioned 40-year-old decision in the Space Invaders Part II case was the first copyright case to make the front page of a general newspaper at the time, but there were few cases of patent litigation attracting public attention before and for a while. However, in recent years, there has been a remarkable tendency for patent litigation to be used as part of the intellectual property strategy between large companies in Japan and overseas such as Japan Steel and Toyota Motor Corporation, or advanced technologies related to antibodies, such as the Amgen vs. Sanofi case.
3 Characteristics of Modern Patent Infringement Litigation from the Perspective of Lawyers Experienced by Judges and Academics
From April 2023, I will be involved in intellectual property litigation as a lawyer. In December of this year (2023), the eighth edition of the Standard Patent Law, which I have been revising every three years since I was issued by Yuhikaku in 2002, was published. He wrote, "The eighth edition with the perspective of a judge and a scholar who returned to practice." It is an unusual belt for a solid legal book, but it is also a guideline for my revision of this book. Although I have been involved in intellectual property as a researcher and educator for 28 years, and have been in a position far from practice, my standard patent law has always aimed to construct and explain theories that can be adopted in practice, and for this reason, I have continued to hold study meetings with judges, lawyers, and patent attorneys who are currently in charge of intellectual property litigation. However, it has been 28 years since he resigned as a judge, and it can be said that he has never had the opportunity to face the front lines of a vivid lawsuit.
Now that I am on the front lines of vivid patent litigation, I would like to point out the characteristics of modern patent infringement litigation, which have changed dramatically from the past.
First, as mentioned above, there is a remarkable tendency for patent litigation to be used as part of the intellectual property strategy of large companies in Japan and overseas, and the progress and strategy of litigation are becoming more sophisticated. One of them is the planned proceeding of patent litigation. The use of the Internet-based pleadings preparation procedure has made it possible to proceed quickly, and after the hearing of the infringement theory, including the invalidity theory, a technical briefing session is held as a delimitation to proactively disclose the evidence of the mind by the court, and then proceeds to the trial of the theory of damages according to the disclosed evidence. In particular, at the technical briefing, the attorneys for both the plaintiffs and defendants succinctly made their arguments regarding the technical content and the infringement theory, as if they were pleading in the U.S. Federal Court of Appeals and the U.S. Supreme Court, and what surprised me was that the judge actively disclosed the evidence afterwards. In general civil litigation, although the judge's testimony may be disclosed individually at the time of the settlement solicitation, it is not usually assumed that the judge will give a winning or losing opinion in the presence of both the plaintiff and the defendant, and it can be said that it is unique to IP litigation. This may be due to the fact that intellectual property litigation, especially patent litigation, often has attorneys representing both parties who are familiar with patent litigation, and in the process of proceeding in accordance with the trial plan, a cooperative and trusting relationship is fostered between the plaintiff and the court in a good sense. In the past, even if the court disclosed the testimony, there were cases where the attorney who was not satisfied with the contents of the testimony rehashed the same claim, and in such cases, there were cases where an interim judgment was made after the pleadings were concluded in the sense of delimiting the trial, but in recent years, such cases have been extremely rare, and I feel that both sides have not raised any objection to the court's disclosure of the evidence, and the subsequent proceedings are proceeding solemnly.
In other words, it is necessary to develop factual findings and logic that can persuade the judge before the court discloses the evidence. When I was a judge, when I wrote the judgment of the first instance, I tried to make fact-finding and logical developments that would be acceptable to the judge in charge of the appellate hearing, and even when I was a researcher, I always aimed to construct a theory that would be adopted in practice, that is, a theory that would be acceptable to the judge who might hear the case. Now, even when dealing with cases as a lawyer, I realize that fact-finding and logical construction that can persuade the judge in charge of the trial are life. However, it can be said that what facts are determined from the case and what kind of logic is constructed from those facts varies widely from case to case. Needless to say, it is not permissible for researchers to pursue only the consistency of logic without paying attention to the differences in cases.
In the end, I think it would be better to take the same stance as when I was a researcher and handle cases as a lawyer.
Ryu Takabayashi (Professor Emeritus, Waseda University, RCLIP Advisor, Lawyer)
