This infringement litigation, in which the Tokyo District Court rendered a decision of no infringement, is noteworthy for the fact that, in response to plaintiff’s motion to compel production by defendant of documents that plaintiff alleged would demonstrate that asserted claim(s) read on the accused method, the Court conducted an in camera inspection of the documents in question to ascertain whether there were “reasonable grounds for the person possessing the documents to refuse production of the said documents” as provided under Article 105(1) of the Japanese Patent Act. As a result of its in camera inspection of the documents in question, as the Court could find nothing that would substantiate plaintiff’s allegation, and as the Court further considered that the goal of preserving the trade secrets of the defendant outweighed any value that the documents may have had as evidence in the present case, the Court denied plaintiff’s motion to compel and ultimately found in favor of the defendant.
Depending on one’s perspective, this case will likely be viewed as either confirming the general reluctance of Japanese courts to enforce discovery-like motions to compel production of documents and so forth, or as lending hope to the possibility that Japanese courts may be growing increasingly receptive to discovery-like practices such as those envisioned at least in theory under Article 105 of the Japanese Patent Act and Article 182 of the Japanese Code of Civil Procedure.
- Japanese original of the decision in this case can be found at:
- English translation of the decision in this case, should one be made available by the Court, can be found by entering the court, year, code, and number of this case from the caption above into the appropriate fields at:
- Writeup (in Japanese) of this case by Unius patent attorney Tetsuya TSUBOUCHI can be found at:
The foregoing Japanese intellectual-property-related court case summary has been provided by the Japanese patent attorneys at Unius Patent Attorneys Office. A complete list (in Japanese) of all cases reviewed by Unius Patent Attorneys Office can be found at http://www.unius-pa.com/precedent.