Japan: DOE and cross-border infringement of a biologics process patent
Summary of the case
Ajinomoto filed patent infringement lawsuits against CJ CheilJedang (CJCJ) of South Korea and its affiliates (CJ Group), which manufactures monosodium glutamate (MSG) products in Indonesia and sells them in various countries, at both the District Court of Düsseldorf and the Tokyo District Court. Ajinomoto is of the opinion that the manufacturing process used by the CJ Group infringes its patent rights.
That is, Ajinomoto holds patent JP3651002 for an invention titled “Process for constructing amino acid-producing bacterium and process for producing amino acid by the fermentation method using the constructed amino acid-producing bacterium” (the patent right 1) and patent JP5343303 for an invention titled “L-glutamic acid-producing bacterium and process for producing L-glutamic acid” (the patent right 2). Ajinomoto alleged that the processes for producing the MSG specified in numbers one through four of Attachment 2 “List of CJ Japan’s Products” respectively by the corresponding processes specified in Attachment 3 “List of CJ Japan’s Production Processes” fall within the technical scopes of the inventions claimed in the patents 1 and 2. Ajinomoto also alleged that CJ Japan’s act of importing, selling, and offering to sell CJ Japan’s products produced by CJ Japan’s production processes, by itself or jointly with its affiliated company, constitutes infringement of the patent right 1 with regard to CJ Japan’s products one and three, as well as the patent right 2 with regard to CJ Japan’s products one through four.
Based on this allegation, Ajinomoto made a claim seeking an injunction against the sale, import, and offer to sell (including displaying for the purpose of sale) of CJ Japan’s products, a claim seeking disposal of CJ Japan’s products, and a claim for payment of damages in the amount of JPY 990 million (US $9,388,336) as partial claims for the damages.
CJ Japan, while recognising that its production process 1 was being used in a part of the subject period, disputes infringement of the patent right 2 under Doctrine of Equivalents (DOE) mainly regarding CJ Japan’s product four.
