JAPAN HIGH COURTS TURNS DOWN EPSON !

[Anonymous]

Epson’s Appeal Turned down Again in Patent Infringement Trial against Ecorica
Jun
2007 Japan’s Intellectual Property High Court (IPHC) turned down a
petition in Seiko Epson Corp.’s appeal case (2006(Ne)10077 Appeal Case
of Seeking Injunction and Compensation against Patent Infringement)
which accused Ecorica Inc. of ink cartridge-related patent infringement
(Japanese Patent No. 3257597) and sought an injunction and damages. The
case was first brought to the Tokyo District Court where it was
rejected in October 2006, and Epson appealed against the decision on
the same day.

The patent in question was applied on February
1992, and Epson filed divisional applications based on this parent
application in December 2000. When a divisional application has the
same content to that of the parent application, retroactive application
is possible in which the filing date of the divisional application
dates back to the parent application date. Otherwise, the filing date
of the divisional application will be the day on which it is actually
applied. According to the ruling by the Tokyo District Court, since the
application made in December 2000 did not meet the requirements for
divisional application, the filing date would also be December 2000. In
addition, the Court revoked the patent included in the December 2002
application because it was identical to the patent disclosed in the
patent gazette published in April 1992 (Japanese Patent Laid-open No.
Hei 4-257452, also applied by Epson), and therefore, lacked the
novelty. Once again, the patent is revoked by the IPHC based on the
judgment that it does not meet the requirements for the divisional
application.

When recycling (i.e. refilling ink into) Epson’s
ink cartridges, Ecorica uses a packing to replace the sealing provided
on the cartridge. The major issue of the dispute was whether or not
this packing corresponds to the “annular sealing member” invented and
claimed by Epson. The judgments concerning this issue were suspended in
both the first and second trials because Epson’s petition was
groundless as the patent supporting the company’s right was deemed to
be invalid.

Epson is considering appealing the case to the
Supreme Court of Japan, stating that “the ruling is illegal and based
on a misinterpretation of patent law.” The company comments that the
planned action is strictly according to the “law-abiding management,”
but is not to “deny remanufactured products.” Further, the company
emphasizes its efforts towards recycling.

On the other hand,
Ecorica said “The manufacturer for genuine product had tried to
illegally extend its patent right in order to contain recycled ink
cartridges (products remanufactured from the collected used cartridges
by refilling ink for use again), but the court decide to revoke the
patent itself.” The company also gives a certain credit to the ruling,
as it was “quite appropriate and conforming to the social trends” in
the growing momentum toward environmental protection. However, the
company pointed out that although “the execution of right by the
genuine product manufacturer was restricted” in the trial, it does not
focus on the issue regarding recycling and “exhaustion of patent
rights” and the problem of genuine product manufacturer who obstructs
recycling manufacturers’ market entry. “We are not saying we can ignore
the rights possessed by the manufacturers just because recycling is
environmentally friendly,” Ecorica commented, “We are very disappointed
as a recycling manufacturer that the discussion did not cover the
viewpoint concerning the balance with the environment.”Ecorica has
requested an approval for supplemental participation in the trial
between Canon Inc. and Recycle Assist Co., Ltd. and has expressed its
opinion that the issue regarding recycling and patent right exhaustion
should be discussed thoroughly in the Supreme Court. The case of Canon
vs. Recycle Assist is pending, after the latter won in the first trial
at the Tokyo District Court and the former won in the second trial at
the IPHC.

[Author]

June 7, 2007 at 3:19 PM