New Japan IP High Court Grand Panel Case regarding Territorial Principal Issue
Shoichiro KAJINAMI

The Japan IP High Court recently announced that the IP High Court Grand Panel will examine a case between Dwango Co., Ltd. and FC2, Inc. (U.S. company) wherein the territorial principal of patent law is an issue (Case No. 2022 (Ne) 10046) (the “New Grand Panel Case”).

(Please refer to https://www.ip.courts.go.jp/eng/hanrei/g_panel/index.html)

Last year, in a separate case between the same parties wherein the territorial principal was also an issue with the same background facts, the IP High Court had rendered a first-ever decision allowing patent enforcement against infringing acts partially committed outside of Japan. In such case, the patent at issue was related to an invention of a “computer program” for displaying comments on a video being played on a screen (Case No. 2018 (Ne) 10077).

On the other hand, the patent at issue in the New Grand Panel Case is related to an invention of a “computer system” for delivering comments to be displayed on a video played on a screen, specifically claiming a “server” as a component of the computer system.  In the first instance, the Tokyo District Court dismissed the plaintiff’s claims for the reason that the defendant’s servers existed outside of Japan (Case No. 2019 (Wa) 25152).  Whether or not the difference in the subject of the invention will make a difference to the IP High Court’s decision shall be an interesting point to see in the New Grand Panel Case.

Please refer to the following Kluwer Patent Blog for more details.

https://patentblog.kluweriplaw.com/2022/12/12/japan-ip-high-courts-first-ever-decision-allowing-patent-enforcement-against-infringing-acts-partially-committed-outside-of-japan/