Japan Case Law
Jurisdiction in Patent Infringement
(Intellectual Property High Court, 15 September 2010)
FACTS
X (Claimant at first instance), a Japanese company that manufactures electronic equipment, etc., holds the patent right in Japan for its own motor. Y, a Korean company that also manufactures electronic equipment, etc., has a page that introduces their product groups, including the product allegedly infringing the patent right of X (“Product”) and a page that introduces Y’s sales bases in Japan on its website, and has a contact form to enquire about manufacture and sale of the product groups on its Japanese page. Further, the management consultant of Y was conducting sales activities in Japan.
On the other hand, X filed an application for injunction to suspend Company Y to offer to transfer the Product, which is an act of infringing the patent right, and a claim for damages in tort (i.e. a sum equivalent to the attorney’s fees in the proceedings) based on the Japanese patent right of X with the Tokyo District Court.
The court of first instance dismissed the proceedings on the grounds that Japan’s international jurisdiction is not established in either case since it cannot be admitted that Y had offered or may offer to transfer the Product in Japan.
FINDINGS
The judge held:
The original judgment is quashed and remanded.
"It is apparent that a claim for damages in tort falls within “an action for a tort” in Item 9 of Article 5 of the Code of Civil Procedures [before the 2011 revision] as its interpretation and […] the application for injunction based on the patent right is based on the fact that the rights or interests i.e. the patent right of X has been infringed or may be infringed by the illegal infringement of Y, and the substance of the dispute isn’t substantially different from a claim for damages in tort, and therefore, it is understood in the light of jurisdiction that it falls within “an action for a tort” in Item 9 of Article 5 of the Code of Civil Procedures […].”
“In the application of Item 9 of Article 5 of the Code of Civil Procedures that are to be considered to determine whether or not international jurisdiction for this claim is satisfied, it is stipulated that the place of jurisdiction for an action for a tort is “the place where the tort took place” and it is further understood that this “the place where the tort took place” includes both the place where the tortious act took place and the place where the damages accrued. As […] the right that X alleges to be infringed is a Japanese patent, regarding Y’s “act of offering to transfer” that X alleges to amount to a tort, it should be understood that the existence of Japan’s international jurisdiction will be determined by whether or not the act of sending the offer and receiving it as the accrual of its result were made in Japan as an objective fact.”