In the two decisions discussed below, Japanese courts have established a consistent standard for construing the gist of “sub-combination inventions” — that is, inventions directed to an individual apparatus that is designed to be combined with other apparatus to form an overall system.
When a patent claim recites matters relating to “another apparatus” (i.e., another sub-combination), it is necessary to construe the gist of the invention by determining what significance those matters have in terms of the “structure, function, and the like” (including shape, structure, constituent elements, composition, operation, function, properties, characteristics, acts or actions, applications, etc.) of the apparatus that is the subject of the claimed invention.
If such recited matters serve only to specify the “other apparatus” and do not specify any aspect of the structure or function of the apparatus that is the subject of the invention, then those matters have no significance in defining the claimed invention. Accordingly, the courts have held that it is appropriate to exclude such matters from the construction of the gist of the invention (i.e., from the determination of the technical scope).
Decision in Case No. Reiwa 3 (Gyo-Ke) 10056
This case involved a sub-combination invention directed to an “information processing apparatus” within a system comprising the “information processing apparatus” and a “server.”
The claims recited processing operations performed by the “server” upon receiving notifications from the information processing apparatus, including extraction, generation, and transmission of information.
The court held that these operations were performed independently by the server and neither influenced the processing performed by the information processing apparatus nor specified its functions or operations. Accordingly, the court determined that the recitations concerning the server’s processing should not be treated as claim limitations defining the invention, and that the gist of the information processing apparatus invention should be construed with those recitations excluded.
Decision in Case No. Reiwa 6 (Ne) 10041
This case involved a sub-combination invention directed to a “receiving apparatus” within a system comprising a “mobile phone” and the “receiving apparatus.”
The claims included recitations such as performing transmission and reception with “the mobile phone according to Claim 4.”
The court held that the recitations referring to the cited mobile phone specified the structure and functions of the mobile phone, not those of the receiving apparatus. Therefore, the court determined that the matters relating to the “mobile phone” had no significance in defining the receiving apparatus invention, and that it was appropriate to construe the gist of the invention with those matters excluded.
