*NEWS*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 3:14 PM