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IP High Court Case Summary: 2017 (Gyo-ke) 10232
IP HIGH COURT Judges that “Steak Providing Method” is Patentable, Rescinding JPO’s Revocation Decision.

On October 17, 2018, the Intellectual Property High Court judged that a “Steak Providing Method” was eligible to
receive a patent, overturning the JPO board of appeal’s revocation decision on patent opposition
(Opposition No. 2016-701090).

BACKGROUND

The plaintiff applied for a patent on June 4, 2014 on an invention titled “Steak Providing System”
(Patent Application No. 2014-115682) and the invention was registered as a patent on June 10, 2016
(Patent No. 5946491, referred to as the “present patent”).

An opposition was filed against the present patent on November 24, 2016 (Opposition No. 2016-701090), and
the plaintiff requested a correction of the claims on September 22, 2017 (referred to as the “present correction”).

JPO made a decision on November 28, 2017 stating that the correction of claims 1 to 6 was approved and the claims 1 to 6 were revoked. Then, the plaintiff appealed to the IP High Court. Patent eligibility was discussed with regard to claims 1 to 6 in this court case, but we focus on only claim 1 (present invention 1) here.

CLAIMED INVENTION

The constituent features of the present invention 1 after the present correction are as follows.

[Claim 1]

1. a steak providing system for implementing a method of providing steak including a step of guiding a customer to a table of a buffet-style meal, a step of asking the customer about an amount of steak, a step of cutting the asked amount of steak out of a meat block, a step of grilling the cut meat, and a step of conveying the grilled meat to
   the customer’s table, comprising:
2. a label describing a table number to which the customer was guided;
3. a measuring apparatus for measuring the meat cut in accordance with a request by the customer; and
4. a mark for distinguishing the meat cut in accordance with the request by the customer from that of
   another customer, wherein
5. a seal describing the amount of the meat measured by the measuring apparatus and the table number described on the label is output; and
6. the mark is the seal describing the amount of meat output by the measuring apparatus and the table number,
7. the steak providing system defined by the above constituent features.

JPO BOARD OF APPEAL’S REVOCATION DECISION

The revocation decision stated that the present patent invention 1 by its nature is directed to an economic activity, and as a whole does not fall under “creation of technical ideas utilizing the laws of nature” and thus, it is not
applicable to the definition of an “invention” prescribed in Article 2 (1) of the Patent Act.

DECISION OF IP HIGH COURT

(1) Patent Invention 1

The present patent invention 1 has an object (problem) to provide steak in a desired amount inexpensively to
customers. In addition, [i] By means of executing the method of providing steak (the present steak providing
method) defined by the feature [A], the customer can eat a preferred amount of steak, and since seats for
the customers can be increased in a small area and a seat turnover rate can be improved, the steak can be provided inexpensively.

Moreover, [ii] By means of including a “label,” a “measuring apparatus,” and a “seal (mark)” (the present measuring
apparatus, etc.) defined by the features [B] to [F], confusion about which customer requested which cut of meat can be avoided.

(2) Steak Providing Method (means executed by a human)

The present steak providing method specifies means executed by a human from reception of an order to serving at a steak restaurant.

Therefore, the execution of the present steak providing method cannot be considered to provide substantial technical meaning as a “steak providing system.”

(3) Technical Matters in Patent Invention 1

The present measuring apparatus, etc. are specific articles or equipment (devices) such as a “label,” a “measuring
apparatus,” and a “seal (mark)” and exert the effect of preventing confusion of the meat cut in accordance with
a request of one customer with that of another customer by “stating a table number to which the customer was
guided” on the “label,” by “measuring meat cut in accordance with a request by the customer” by a “measuring
apparatus,” by “outputting a seal describing the measured meat amount and the table number stated on the
label,” and by using this “seal” as a “mark discriminating the meat cut in accordance with the request of
one customer from that of another customer.”

(4) Technical Meanings

Since information of the table number can be accurately carried by using the label, when the information of the
table number is combined with the information of the amount of meat ordered by the customer in the measuring
apparatus, confusion with another table number (another customer) can be avoided, and it is found that stating the table number on the “label” and connecting the information on the table number have a technical meaning in
a relationship with the effect of preventing confusion with another customer’s meat.

Moreover, since the amount of meat differs among customers, to combine the table number and the amount of
meat to be output by the “measuring apparatus” is found to have a technical meaning in a relationship with
the effect of preventing confusion with another customer’s meat. Furthermore, since the “seal” can prevent
confusion with the mark for another customer by being fixed to the customer’s meat or an order slip, to utilize
the seal as a mark for preventing confusion with another customer’s meat is found to have a technical meaning
in the relationship with the effect of preventing confusion with another customer’s meat.

(5) Effect of Invention (solving of the problem)

The effect of preventing confusion with another customer’s meat satisfies a demand unavoidably generated by
a need to associate the cut meat with the costumer who requested the amount of the meat on a one-to-one basis,
since the configuration for executing the present steak providing method includes a “step of asking the customer
about an amount of steak” and a “step of cutting the asked steak amount from a meat block” as the object
(problem) to provide a preferred amount of steak to the customer. As described above, this effect is found to
directly contribute to solving the problem of the present patent invention 1.

(6) Conclusion

As described above, in view of the technical meaning such as the technical problem of the present patent
invention 1, technical means for solving the problem, the effect introduced by the constitution, etc.,
the present patent invention 1 utilizes the specific articles or equipment (the present measuring apparatus, etc.)
such as the label, measuring apparatus, and seal (mark) as the technical means for solving the problem of
the present patent invention 1 by preventing confusion with another customer’s meat, and the entirety can be
considered to fall under the “creation of technical ideas utilizing the laws of nature.”

Therefore, the present patent invention 1 is applicable to the definition of “invention” provided for in Article 2 (1) of the Patent Act.

COMMENTS

This judgment is a case in which patent eligibility was approved for an invention with poor technical features.
Particularly, a “steak providing method” might correspond to “arbitrary arrangements”, and “creation of technical
ideas utilizing the laws of nature”(Article 2 (1) of the Patent Law) was disputed.

According to the Examination Guidelines, even if a part of the matters specifying the invention stated in a claim
does not utilize the laws of nature, when it is determined that the claimed invention as a whole utilizes the laws
of nature, the claimed invention is deemed to utilize the laws of nature. This judgment determined that the claimed
invention as a whole utilizes the laws of nature. This decision corresponds to the Examination Guidelines.

Also, in this judgment, “the effect of preventing confusion with another customer’s meat” is concretely described in the specification by relations with the technical means. As a result, technical meaning was found in “the relation
with the effect of preventing confusion with another customer’s meat”, and patent eligibility was approved.

In the future, in the case of an invention with poor technical features, it is important to describe the relation
between technical means and effects introduced by technical matters” to satisfy patent eligibility.

Note that the accumulation of further precedents is necessary to raise the possibility to predict judgment of the
technical meanings, and future court cases should be carefully monitored.

http://www.ip.courts.go.jp/app/files/hanrei_en/327/002327.pdf