Case where a small U.S. enterprise filed a lawsuit against a large Japanese enterprise for patent infringement

 

This was a case where a small machine manufacturer located in Florida, U.S. held a patent in Japan and filed a lawsuit in Japan against a large Japanese enterprise for infringement on the patent right.

This case, which took place before the government set up the guideline that courts should render a judgment after a trial period of about one year as it is nowadays, took about six years before it was closed.

 

The client had felt unsatisfied with the act of the former attorney (attorney at law / patent attorney) and chose our office as a substitute. At the time, a trial for patent invalidation in Japan Patent Office was filed in the process of the hearing at the Tokyo District Court and the hearing was suspended.

When I received the case, I heard from the president of the U.S. enterprise that the case progressed in favor of the plaintiff and the trial for infringement had been almost closed. When I reviewed the past process, I recognized that it was in no way in favor of the plaintiff and, what was even worse, an evidence in Europe which was very disadvantageous to us had been submitted in the course of the trial for patent invalidation.

Our office coped with the situation by means of correction request at the beginning in Japan Patent Office, but we could not break through the situation due to the preponderance of evidence. In the end, I suggested the president to offer settlement to the defendant.

 

However, the president did not readily recognize the critical situation because he was convinced of being able to win the case at this stage.

He did not agree to the settlement because he did not recognize the accurate status of the trial for invalidation due to lack of smooth communication with the former attorney.

Subsequently, we started to persuade the president by facsimile message and telephone. Finally, he correctly understood the situation and agreed to advance toward settlement several months later. I had great difficulty in recommending settlement to him by international telephone in poor English, but it is a pleasant memory.


The matter I learned from this case was the “way of doing business as attorney.”

In this case, the former attorney had failed to sufficiently inform the president (client) of the progress of the lawsuit.

Therefore he (plaintiff) had agreed to carry forward the lawsuit procedure with firm conviction of winning the case. Although the defendant had made several proposals of very favorable settlement in the course of the procedure, the plaintiff had rejected all of them.

As a result, the lawsuit was concluded with a settlement amount of as little as two million yen in comparison with the compensation amount of two hundred million yen.

 

It is a matter of course that attorneys should completely inform their clients of the status of the operations to avoid any mutual misunderstanding.