Case 1: Joint Development

1．Background

Company X was requested by Company Y, which was a manufacturer supplying its products to User Company A, to develop a product. Supported in part by financial assistance for development from Company Y, Company X successfully developed the product, which was then delivered to User Company A through Company Y. But because the product had a defect, Company Y corrected the defect itself and delivered the corrected product to User Company A. Thereafter, a patent application for the product, filed by Company X was registered as a patent, but Company X received no orders from Company Y. Thus Company X applied for mediation.

2．Purposes of the application

Company X, the applicant, sought to demand an injunction of Company Y's manufacture and sale of the product and compensation for damages caused by Company Y's working of Company X's patented invention in the past. In addition, Company X " demand from Company Y the placement of orders with Company X for the manufacture of related products to be delivered to User Company A.

3．Arguments of the respondent

Company Y, the respondent, argued that although this patent is regarded as being solely owned by Company X, considering the circumstances of its development, the patent should originally be owned jointly by Companies X and Y. In addition, the invention itself was made by an employee of Company Y. As such, Company Y has a prior use right to this patent right, too.

4. Point in dispute

Company Y, the respondent, also acknowledged that the product they have manufactured and sold fell within the technical scope of the patented invention. Therefore, the point in dispute was who should be the patentee.

5. Conclusion

Company Y will pay \1 million to Company X for dispute resolution. Company X will transfer the patent in question to Company Y.

6. Characteristics of this case

In this case, the ownership of the patent right was the point in dispute and there were complicated problems. But the dispute was finally settled through cooperation among the mediators, applicant and respondent.

Case 2. Trademark Infringement

1．Background

Company X is the owner of the "xxxx Onion" trademark (for a processed food brand) and imports and sells products using this trademark. Company X had negotiated with Company Y, which imports and sells a frozen food product named "Mount xxxx" in Japan in an attempt to demand an injunction of Company Y's trademark infringement and compensation for damages, but did not succeed. Thus Company X applied for mediation.

2．Purposes of the application

Company X, the applicant, sought to demand an injunction of Company Y's import and sale of products with the "Mount xxxx" trademark and compensation for damages.

3．Arguments of the respondent

Company Y, the respondent, claimed that it is impossible to separate and extricate "xxxx" from the registered trademark "xxxx Onion" in question to provide a pronunciation "xxxx". Therefore, "Mount xxxx" is not similar to the registered trademark in question.

4. Point in dispute

The point in dispute was whether the registered trademark "xxxx Onion" in question, is a single and inseparable trademark as a whole or a single pronunciation of "xxxx." would arise.

5. Conclusion

The arguments of the parties were in conflict and no agreement was reached on the amount of compensation for damages. Therefore, the applicant withdrew their application.

Case 3. Trademark Infringement

1．Background

Company X, which manufactured and sold a certain product in Japan under the license of a famous foreign registered trademark, sent a warning to Company Y, which manufactured and sold the same product, requesting Company Y to cease their use of the trademark. But Company Y argued that the registered trademark was invalid, and Company X was unable to find any path to settlement. Thus, Company X applied for mediation.

2．Purposes of the application

Company X, the applicant, sought to demand from Company Y an injunction of the trademark infringement and compensation for damages.

3．Arguments of the respondent

Company Y, the respondent, claimed that registration of the trademark in question is invalid because it does not meet the conspicuity requirements of Article 3 of the Trademark Law.

4. Point in dispute

The point in dispute was the validity of the registration of the trademark.

5. Conclusion

(1) Company Y will pay \1 million to Company X for settlement and sell off its inventory of the product for only one year thereafter. (2) Company Y will not advertise the inventory.

6. Characteristics of this case

This is a case in which the points in dispute were an argument against the grounds to invalidate a trademark registration and the infringement of that trademark. Because both of the parties accepted the proposal for mediation offered by the mediators, the case was settled promptly.

Case 4: Patent Infringement

1．Background

Company X is a patentee of an invention relating to a stabilization measure for finished products. Company X applied for mediation to demand from Company Y compensation for damages caused by Company Y's applying the stabilization measure to products in process of their manufacture temporarily.

2. Purposes of the application (Company X's demand from Company Y)

Company X claimed that Company Y manufactured products infringing on Company X's patent right. Thus, Company X demands from Company Y payment of certain amount of money as compensation for damages caused by the patent infringement.

3．Arguments of the respondent

Company Y, the respondent, claimed that the stabilization measure they applied can not be regarded as falling within the technical scope of the patented invention in question.

4. Point in dispute

The stabilization measure according to the patented invention in question is a stabilization measure applied permanently to finished products. Thus the point in dispute was whether or not the stabilization measure used by Company Y for products in process of their manufacture and then removed from the products after they were finished would fall within the technical scope of the patented invention in question.

5. Conclusion

The Center held eight hearings, but no compromise was reached between the arguments of the parties. The mediation ended in failure.

Case 5: Patent Infringement

1．Background

Company X holds a patent right to a product with a characteristic mechanism. Company X sought to demand the injunction of Company Y's manufacture and sale of a product and compensation for damages arguing that the manufacture and sale of the product constituted an infringement of Company X's patent right. But Company Y insisted that their product did not fall within the technical scope of Company X's patented invention, and no agreement was reached between the two companies. Thus, Company X applied for mediation.

2．Purposes of the application

Company X, the applicant, sought to demand from Company Y an injunction of the manufacture and sale of the product infringing on Company X's patent rights and payment of reasonable license fees for past infringement of the patent rights.

3．Arguments of the respondent

Company Y, the respondent, claimed that they have not worked Company X's patented invention and not infringed on Company X's patent right.

4. Point in dispute

The point in dispute was whether or not specifying a product by a manufacturing process recited in the claim affects the determination as to whether or not Company Y's product falls within the technical scope of Company X's patented invention.

5. Conclusion

The dispute was resolved amicably through a compromise reached by the parties.

6. Characteristics of this case

This is a case in which the opinion of the mediators was respected by both the parties and the case was settled through compromise. It is thought that the mediation was more beneficial to the parties in terms of time and costs than filing a suit.

Case 6: Patent Infringement

1．Background

Party X operated a manufacturing company. When he saw an ad for Company Y's product in a trade newspaper, he thought that the product was manufactured by working his patented invention and demanded from Company Y an injunction of the manufacture and sale of the product and compensation for damages. Both the parties discussed the problem but failed to reach any agreement. Therefore, Party X applied for mediation.

2．Purposes of the application

Party X, the applicant, sought to demand an injunction of the manufacture and sale of Company Y's product, the scrapping of inventories of the product, and the payment of compensation for damages.

3．Arguments of the respondent

Company Y, the respondent, claimed that their product had no constituent features of Party X's patented invention.

4. Point in dispute

The point in dispute was whether or not Company Y's product falls within the technical scope of Party X's patented invention.

5. Conclusion

The mediation for this case ended with Company Y not accepting the mediators' proposal.

Case 7: Patent Infringement and Prior Use Right

1．Background

Company X is the owner of patent right in a certain field. Company X demanded from Company Y an injunction of the manufacture and sale of a product and compensation for damages. Company Y refused to accept the demand arguing that they had not infringed upon Company X's right.

2．Purposes of the application

Company X, the applicant, sought to demand an injunction of the manufacture and sale of the product in question and payment of compensation for past damages.

3．Later Developments

After the application for mediation was sent to Company Y, Company Y gave Company X evidence of prior use right outside of the mediation procedures. Company X saw the evidence and withdrew its application for mediation, and thus the case was settled.

4. Characteristics of this case

This is an example in which the case was settled by the parties themselves triggered by the filing of an application for mediation. Applying for mediation is an effective way to solve a dispute before filing a suit.

Case 8: Patent Infringement (Indirect Infringement)

1．Background

Company X is the owner of patent right to civil engineering and construction material, and demanded from Company Y an injunction of the manufacture and sale of a product and the payment of compensation for damages. Company Y said that they have not infringed on Company X's patent rights but would cease the manufacture and sale of the product in the future, and argued that the amount of damages demanded by Company X was too large. The parties negotiated but were unable to reach any agreement on both of the fact of infringement and an estimate of the damages. Thus, Company X applied for mediation.

2．Purposes of the application

Company X, the applicant, sought to demand an injunction of the manufacture and sale of the product in question and payment of compensation for past damages.

3．Arguments of the respondent

Company Y, the respondent, claimed that the product they manufactured and sold is not "an object used only for working of the patented invention in question", and thus Company Y has not infringed on Company X's patent to begin with. Even if the product is used only for working of the patented invention in question", almost all of products do not correspond to "an object used only for working of the patented invention", and therefore, the amount of damage to Company X is small.

4. Point in dispute

The points in dispute were
1) whether the infringement was a direct infringement or an indirect infringement (claim interpretation);
2) in the case of the indirect infringement, what the range of the object is;
3) how to estimate the quantity of the product manufactured and sold, and the amount of damages.

5. Conclusion

Indirect infringement was accepted for part of the product. The mediators ruled that the dispute would be resolved by Company Y paying a lump sum of money (millions of yen) to Company X as a settlement for past and future damages.

6. Characteristics of this case

The mediators received accounting records from Company Y (the respondent) and checked the overall quantity of the product manufactured and sold. The parties had discussions in advance and asked for the mediators' opinion based on those discussions. Three hearings for mediation were held in two months after the date of the application, and the dispute was settled amicably.