X (Claimant, Appellee, Appellant of final appeal) holds patent rights for the invention regarding the wheel of the automobile and sold its patented product in Germany. Y et al. (Defendant, Appellant, Appellee of final appeal) imported the product by the so-called parallel import and sold it in Japan. X requested an injunction to suspend the import and sale of the product and claimed damages, alleging that Y et al. infringed the patent right of X in Japan.
The judge held:
The appeal is dismissed.
“If a patent holder in Japan or a person who can be regarded as a patent holder transfers a patented product outside of Japan, it should be understood that the patent holder is not allowed to exercise the patent right for the product in Japan against the transferee unless s/he agrees with the transferee that Japan is excluded from the sales destination and area of use of the product, and against the third party to whom the transferee has transferred the patented product and subsequent transferees unless this [the agreement between the transferor and the transferee] is clearly indicated on the product. That is, (1) If a patented product is transferred outside of Japan, it is naturally expected that the product can be imported into Japan thereafter. Therefore, it should be understood that if the patent holder transfers the patented product outside of Japan without condition, the transferee and subsequent transferees are impliedly granted the right to control the product without being restricted by the patent rights of the transferor in Japan. (2) On the other hand, when looking at the rights of the patent holder, it should be said that the patent holder is allowed to reserve the right to exercise the patent right in Japan when transferring the patented product outside of Japan. If, upon the transfer, the patent holder agrees with the transferee to exclude Japan from the sales destination and area of use of the patented product and clearly indicates this on the product, subsequent transferees can recognise that the product is restricted to that effect even if another person intervenes in the process of the distribution of the product, and they can decide free will whether or not to purchase the product on the premise of the existence of the restriction. (3) If a person who can be regarded as a patent holder, such as a subsidiary or an affiliate company, transfers the patented product outside of Japan, it should be understood in the same way as the patent holder itself transfers. (4) It doesn’t depend on whether or not the patent holder holds a corresponding patent in the place where the patented product is firstly transferred that the transferee’s trust in the free distribution of the patented product should be protected.”