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IP Court Case Summary:2013 (Gyo-Ke) 10250:

<Invention>

The title of the invention at issue is “Polyimide Film and Copper Clad Laminate using the Film as Base Material”. Claim-9 is “Polyimide film produced using one or more aromatic diamine components chosen from a group which consists of a para-phenylenediamine, 4,4′-diaminodiphenyl ether and 3,4′-diaminodiphenyl ether and one or more acid anhydride components chosen from a group which consists of pyromellitic acid dianhydride and 3,3′-4,4′-diphenyl tetracarboxylic dianhydride; which contains minute silica whose particle diameter is 0.07-2.0 micrometers, which has coefficient-of-thermal-expansion αMD of a machine transportation direction (MD) of a film measured on condition of measurement temperature range:50-200 degree C, a heating rate range:10 degrees C / min, using Shimadzu TMA-50, is in the range of 10 ppm/degree C or more and 20 ppm/degree C or less, and coefficient-of-thermal-expansion αTD of the cross direction (TD) measured on the aforementioned conditions is in the range of 3 ppm/degree C or more and 7 ppm/degree C or less; and in which the aforementioned minute silica is uniformly distributed by film.”

Polyimide frame

<JPO board of appeal>

(1) Requirement for enablement

Concrete embodiments about a polyimide film consisting of 4 ingredients are individually described.

Then, as for the invention of the polyimide film consisting of 4 ingredients which is one of the plural choices in this invention, requirement for enablement is clearly satisfied.

Therefore, there is no reason to deny requirement for enablement on the polyimide film consisting of 2 ingredients, based on the detailed description and the common general technical knowledge.

(2) Requirement to support claims

Based on description of the specification and the common general technical knowledge of those skilled in the art at the time of this application, a problem of the patented invention can be solved by assuming coefficient of thermal expansion of TD and MD of the polyimide film a specific value.

Therefore, it can be understood that this invention including 2 ingredients system can solve a problem of this invention by those skilled in the art.

<IP High Court>

(1) Requirement for enablement

There is not enough proof to explain the fact that coefficient-of-thermal-expansion can decrease to the range in claim-9.

Defendant provided the additional document to try to prove the fact above, but this document only explain that coefficient-of-thermal-expansion can be affected by many conditions such as magnification of extension, contents of solvents, conditions of a temperature, extension speed during the extension. This document does not explain how to decrease coefficient-of-thermal-expansion into the range in claim-9.

Then, requirement for enablement was denies.

(2) Requirement to support claims

Requirement to support claims was denied because requirement for enablement was denied as above.

<Comments>

In the field of chemistry, the proof to explain the requirement for enablement is often important. Specifically, not the assumption but the concrete explanation is often necessary to satisfy the requirement for enablement. This decision by IP High Court teaches those matters.

Requirement to support claims is usually discussed and judged as the different issue from the requirement for enablement. In this IP High Court decision, requirement to support claims was deemed to be closely related to the requirement for enablement, which is interesting for the future practice.

http://www.ip.courts.go.jp/app/files/hanrei_jp/069/085069_hanrei.pdf