Supreme Court Decision on
Enforceability of a US Court
Decision
Dr. Shoichi Okuyama
AIPPI Japan
AIPLA Pre-meeting on October 22, 2014
FACT
• Five JP individuals used to work for a JP
corporation A, which had an exclusive license from a
CA corporation, X, in Japan and two of them quit A
to establish a JP corporation, Y, in Japan (three
others followed)
• Trade secret violation on the proprietary process of
X for treating eyebrows under CA laws
• X obtained a US court decision (default judgment)
against the JP individuals and Y for both damages
and injunction
• X asked for enforcement in Japan of the decision
Lower Court Decisions
• Tokyo District Court, April 15, 2012
• Tokyo High Court, May 11, 2013
• All defendants are in Japan, and proof of
damages having occurred in the US to support
the US decision does not exist
• Rejected X’s claim for enforcement
• X appealed before the Supreme Court
Relevant provisions in Code of Civil
Procedure (1)
• Article 118 (enforceability of final judgment of a foreign court)
• A final and binding judgment rendered by a foreign court
shall be effective only if it meets all of the following
requirements:
▫ (i) The jurisdiction of the foreign court is recognized under laws
or regulations or conventions or treaties.
▫ (ii) The defeated defendant has received a service (excluding a
service by publication or any other service similar thereto) of a
summons or order necessary for the commencement of the suit,
or has appeared without receiving such service.
▫ (iii) The content of the judgment and the court proceedings are
not contrary to public policy in Japan.
▫ (iv) A mutual guarantee exists.
Relevant provisions in Code of Civil
Procedure (2)
• New provisions added in 2011
• Article 3-3 Actions listed in the following items
may be filed with a court of Japan in the cases in
respective items:
• (viii) An action relating to a tort: If the place
where the tort took place is located in Japan
(excluding the case in which the result of a wrongful
act committed in a foreign country occurred in
Japan, and the occurrence of such result in Japan
was ordinarily unforeseeable).
Holdings – April 24, 2014
• With respect to the injunction, the lower court erred
in not considering the future possibility of a tort
carried out by the defendants in the U.S.
• With respect to the damages, as a result of the above
consideration, jurisdiction on the damages may be
recognized for the CA court because it is closely
related to the injunction and may be considered as a
joint claim (Article 3-6)
• The first petty bench of the Sup. Ct. remanded the
case to the Tokyo High Court
Take-away message
• Generally speaking, including this decision and
other decisions, Japanese courts tend to
recognize international jurisdiction broadly
• In this case, the Sup. Ct. suggested that the CA
court might have jurisdiction over defendants
residing in Japan and committed torts only in
Japan
• This goes vice versa with torts committed in a
foreign country
Current Status of Discussions on
Employee Inventions (Article 35)
Dr. Shoichi Okuyama
AIPPI Japan
AIPLA Pre-meeting on October 22, 2014
Governmental Committee Meetings
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March 24, 2014
April 4, 2014
April 14, 2014
April 30, 2014
May 14, 2014
May 29, 2014
June 18, 2014
(June 30, 2014 cancelled)
September 3, 2014
October 17, 2014
On June 18, 2014
• A proposal was made:
▫ Make inventions belong to the employer if certain
conditions for remunerations or rewards are met
▫ Otherwise, inventions belong to inventors
• Planned June 30 meeting was cancelled
• “Certain conditions” would be studied in the
meantime until September
On September 3, 2014
• New person became in charge at the JPO
• Four points raised for further discussions
▫ Are there sufficient grounds for taking away the statutory
rights for claiming remunerations on the value of an
invention?
▫ If the statutory rights are abolished, then general provisions
in the Civil Code would have to be applicable. Does this
result in reduced legal predictability?
▫ Are certain incentives necessary for inventors in view of the
basic purpose of the Patent Act – to encourage inventions?
▫ If the ownership goes to corporations, what about
universities or other research institutions? Any possibility
of complications?
On October 17, 2014
• New proposal
• Guarantee employees current statutory rights for
claiming remunerations or equivalent rights
• The government will publish guidelines for incentive
policies
• Corporations, not employee-inventors, will have
original rights to obtain patents
▫ Exceptions possible for universities and institutes
▫ Inventors belonging to a corporation which does no
have employee invention rules should not treated
unfairly
Where does this lead us to -