Shoichiro KAJINAMI

The Intellectual Property High Court (“IP High Court”) rendered the first ever decision allowing the extraterritorial application of Japanese patent rights on July 20, 2022 (Case No. 2018 (Ne) 10077).  (Noted that the decision was publicly released in the end of September.)

In the case, the defendant has servers in the United States and thereby provides videos mainly toward users in Japan.  The plaintiff exercised its patents related to inventions showing comments on videos against the defendant.

The Tokyo District Court Decision dated September 19, 2018 (Case No. 2016 (Wa) 38565) dismissed the plaintiff’s claims because the accused products do not fall within the technical scope of the patents.

However, the IP High Court found that the accused products fall within the technical scope of the patents and stated that a part of the defendant’s infringing action occurs outside Japan, but it can be evaluated that the defendant’s infringing action is substantially conducted in Japan as a whole.  Thus, the IP High Court reversed the Tokyo District Court Decision and allowed the extraterritorial application of Japanese patent rights.

You can see the details of the IP High Court Decision (only in Japanese) from the following link.

https://www.courts.go.jp/app/files/hanrei_jp/418/091418_hanrei.pdf

The sentences in “b” and “c” on pages 134 to 135 in the file above are the most important part related to the extraterritorial application.