jams arbitration city and county of san francisco

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3981306_1 1100078791 IIMURA EXPERT REPORT

JAMS ARBITRATION

CITY AND COUNTY OF SAN FRANCISCO

IMMERSION CORPORATION,

Claimant,

vs. SONY COMPUTER ENTERTAINMENT AMERICA LLC and SONY COMPUTER ENTERTAINMENT INC.

Respondents.

Case No. 1100078791 EXPERT REPORT OF THE HONORABLE TOSHIAKI IIMURA

Case 5:16-cv-00857-RMW Document 48-2 Filed 03/25/16 Page 2 of 18

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3981306_1 1100078791 IIMURA EXPERT REPORT

EXPERT REPORT OF THE HONORABLE TOSHIAKI IIMURA

I. INTRODUCTION

1. I have been retained as an expert in this case by Sony Computer Entertainment

America LLC ("SCEA") and Sony Computer Entertainment Inc. ("SCEI") (collectively, "Sony").

I expect to testify at the arbitration hearing regarding the matters set forth in this report if asked

about these matters by the Arbitrator or by the parties' attorneys. I also reserve the right to testify

about the matters in my April 14, 2015 Declaration and any further declarations or reports

concerning claim construction issues.

2. I have been asked by Sony's counsel to consider and provide my opinion on

Japanese patent law, and its application, to the issues in this arbitration. I understand that the issue

of infringement is whether Sony's accused PlayStation4® ("PS4®") and DualShock 4 Wireless

Controller ("DS4") infringe the asserted claims of Japanese Patent No. 5449301 ("JP '301") when

analyzed through the perspective of Japanese patent law.

3. I have also been asked by counsel for Sony to review and respond to any expert

reports submitted on behalf of Claimant Immersion Corporation ("Immersion" or "Claimant").

II. QUALIFICATIONS

4. I graduated with a BA in law from Tokyo University in March of 1972. I passed

the Japanese Bar Examination before graduation. Since 1974, after I completed two years at the

Legal Training & Research Institute, I was employed as a Judge until my retirement in June 2014,

during which I handled intellectual property ("IP") cases as a judge for 18 years.

5. From 1974 to 1983, I was a Judge at the Tokyo District Court, Administrative

Affairs Bureau of the Supreme Court, and Sapporo District Court.

6. From 1983 to 1987, I was first assigned as a Judge to the Intellectual Property

Division of the Tokyo District Court.

7. From 1987 to 1994, I was assigned to go to the Ministry of Justice.

8. From 1996 to 1998, I returned to the Tokyo District Court as Presiding Judge of the

Traffic Accidents Division.

9. From 1998 to 2004, I was Presiding Judge of the Intellectual Property Division of

the Tokyo District Court.

10. From 2004 to 2006, I was Chief Judge of the Kofu District Court.


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3981306_1 2 1100078791 IIMURA EXPERT REPORT

11. From 2006 to 2014, I was Presiding Judge of the Intellectual Property High Court

(hereinafter "IPHC"), with the last two years as Chief Judge.

12. According to the Supreme Court website,1 I wrote 195 opinions in the area of IP

laws.

13. After retirement in June 2014, I joined the Japanese law firm of Yuasa and Hara as

Special Council, and am now a Partner.

III. OTHER CASES WHERE TESTIFIED AS EXPERT BY TRIAL OR DEPOSITION

14. I have not previously testified as an expert at trial, by deposition or during any

other proceeding, such as an arbitration, Inter Partes Review proceeding or anything of the like.

IV. MATERIALS REVIEWED AND RELIED UPON

15. I have reviewed and relied upon the following materials in reaching my opinions:

a. Japanese Patent Nos. 5,449,301 ("'301 Patent"), 4,938,870 ("'870 Patent),

4,782,859 ("'859 Patent"), 4,808,285 ("'285 Patent") and 5,616,317 ("'317 Patent");

b. The prosecution histories of the above patents as well as Japanese Patent

Publication Nos. 09-520,741 ("'741 Application") and 2007-333,078 ("'078

Application"), all of which claim priority to a patent application filed in the United

states on November 30, 1995 via PCT Application No. PCT/US96/19209;

c. Immersion's Opening Claim Construction Brief dated January 30, 2015;

d. Sony's Opening Claim Construction Brief dated January 30, 2015;

e. Immersion's Reply Claim Construction Brief dated February 6, 2015;

f. Sony's Reply Claim Construction Brief dated February 6, 2015;

g. JAMS' Order Number 7;

h. Joint Statement in Response to Order No. 7;

i. Immersion's Brief Responding to Question 2 of Order No. 7;

j. Sony's Brief Regarding Issue No. 2 in the Arbitrator's March 12, 2015 Order;

k. JAMS' Order Number 8 Claim Construction; and

l. JAMS' Order Number 9.

V. JAPANESE PATENT LAW IN GENERAL

16. Japanese patent law is fundamentally based on German law or continental law,

1 http://www.courts.go.jp/.


http://www.courts.go.jp/

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where statutory provisions rather than court decisions are a source of laws, although Japanese

patent law has been incorporating some aspects of the U.S. patent law recently, such as an

introduction of the Doctrine of Equivalents.

17. The Japanese Patent Act ("JPA"), which governs patent law in Japan, consists of

articles, along with regulations that contain details for implementing the articles. Some of the

regulations further contain Forms that impose additional requirements for patent applications and

patents. Those Forms, in turn, contain Notes, which ____

like the Articles, Regulations and

Forms ____

are authoritative on courts.

18. Under the JPA, "[a] patentee shall have the exclusive right to work the patented

invention as a business." JPA Article 68. Article 2(3)(i) of the JPA defines the term "to work" or

"working" as manufacturing, using, selling or offering for sale, or exporting or importing a

patented product. JPA Article 2.2

19. A patent is infringed when the accused product that a person is accused of

"working" the claimed invention is determined to fall within the technical scope of the patented

invention.

20. The JPA provides few provisions with respect to a burden of proof, and relies on

the Civil Procedural Code (hereinafter "CPC"). Under the CPC, the general principle is that a

person who claims a certain legal right bears a burden to prove facts statutorily required to

constitute the claim. Nakayama on Patents, p. 2425. In an infringement suit, a patentee must

prove his entitlement to a patent, elements in the accused product, and that those accused elements

fall within the technical scope of a patented invention. Nakayama on Patents, p. 1121. Thus, each

of the elements in the accused product must satisfy the corresponding claimed element.

21. Unlike the U.S., Japan does not have a fragmented variation of the standard of

2 The precise language is as follows. "'Working' of an invention in this Act means the following acts: (i) in the case of an invention of a product (including a computer program, etc., the same shall apply hereinafter), producing, using, assigning, etc. (assigning and leasing and, in the case where the product is a computer program, etc., including providing through an electric telecommunication line, the same shall apply hereinafter), exporting or importing, or offering for assignment, etc. (including displaying for the purpose of assignment, etc., the same shall apply hereinafter) thereof; […]."


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proof, but each party is required to prove to the extent to persuade a judge to determine that a

claim based on submitted facts is deemed as true under the principle of free fact-finding

formation. CPC Article 247 ("When making a judgment, the court, in light of the entirety of an

oral argument and evidences submitted through the proceeding, shall determine whether or not a

claim based on facts is deemed as true under the principle of [a judge's] free fact-finding

formation.")

22. In this report, I will address Japanese law on infringement and its application to the

present case based on claim construction in Order No. 8, assuming the Arbitrator does not change

any of the claim constructions. I discuss claim construction briefly and reserve the right to address

claim construction issues in other declarations or reports, or at the arbitration hearing. I also

reserve the right to respond to any allegation of infringement under the doctrine of equivalents or

indirect infringement, if Immersion makes such an argument and is allowed by the Arbitrator to

present it. I understand that Immersion has not yet made an argument based on the doctrine of

equivalents or based on indirect infringement.

VI. CLAIM CONSTRUCTION ISSUES

a. General Overview

23. "The technical scope of a patented invention shall be determined based upon the

statements in the scope of claims attached to the application." JPA Article 70(1). The paragraph

is followed by the following statement: "In the case of the preceding paragraph, the meaning of

each term used in the scope of claims shall be interpreted in consideration of the statements in the

description and drawings attached to the application." JPA Article 70(2).

24. A claim term is generally to be construed narrowly in accordance with the ordinary

meaning that a person of ordinary skill in the art ("POSITA") would understand based on the

invention disclosed in the specification. Takutoron K.K. v. Nintendo K.K., No. 2006 (Ne) 10007

(I.P.H.C. Sept. 28, 2006) ("[I]t is simply wrong for the appellee to assert that the claim term must

not be limited by what is disclosed in the specification . . . .") An infringement court always must

consider the specification in this regard. The prosecution history should also be considered to


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determine if any subject matter surrendered by a patentee cannot be regained through claim

construction. Dictionaries, encyclopedias or technical standards are other regular sources of

reference helpful to understand the meaning of the claim.

25. Each element recited in the claim is considered indispensable to represent the

invention. JPA Article 36(5). "The patented invention requires having 'a communication means

with a computer connected to the Internet' as a claim element. The patentee argues that the claim

term 'a communication means' is not necessary to achieve the purpose of the invention to use a

regular (conventional) phone to communicate via internet. We disagree. If that is the case, it is

not necessary to recite in the claim. Since the invention expressly states in the claim 'a

communication means with a computer,' that element must be construed as being to achieve the

purpose of the invention." K.K. Interlink v. Softbank BB K.K., No. 2011 (Wa) 1305 (Tokyo D.Ct.

Nov. 30, 2012).

b. The Role of the Specification

26. In light of JPA Article 70(2), a court always construes the claim in light of the

entire specification regardless of whether a claim term is unambiguously clear or not. Takutoron

K.K. v. Nintendo K.K., No. 2006 (Ne) 10007 (I.P.H.C. Sept. 28, 2006) ("In an infringement suit,

regardless of whether a claim term is unambiguously clear or not, a claim term must be construed

considering the specification.").

27. In Japan, the claims may not be construed in a manner that is broader than the

invention disclosed in the specification. (JPA, Art. 70(2); Takutoron K.K. v. Nintendo K.K., No.

2006 (Ne) 10007 (I.P.H.C. Sept. 28, 2006) ("[I]t is simply wrong for the appellee to assert that the

claim term must not be limited by what is disclosed in the specification on a matter that is clear in

light of the prior art."); K.K. Interlink v. Softbank BB K.K., No. 2011 (Wa) 1305 (Tokyo D.Ct.

Nov. 30, 2012) ("[I]t is impermissible for [a patentee] to construe the claim improperly expanding

the technical scope to the extent that is not disclosed in the specification against the claim

language.").) See also Oar Case, Nos. 1971 (Wa) 6071, 1973 (Wa) 1731 (Tokyo D.Ct. July 27,

1973), aff'd No. 1973 (Ne) 1730 (Tokyo H.Ct. Sept. 18, 1974), aff'd Supreme Court No. 1975 (O)


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54 (S. Ct. May 27, 1975); Pioneer K. K. v. K. K. Navitime Japan, 2011 (Ne) 10004 (I.P.H.C.

Nov. 30, 2011); Takutoron K.K. v. Nintendo K.K., No. 2003 (Wa) 23079 (Tokyo D.Ct. Dec. 27,

2005); L.C. Yamamoto v. Marui Sangyo K.K., No. 2002 (Ne) 4785 (Tokyo H.Ct. Mar. 31, 2003).

These cases show that Japanese courts do not construe patent claims to cover subject matter that

the patentee never invented or disclosed.

28. Japanese courts also construe claims narrowly to avoid invalidity. Takutoron K.K.

v. Nintendo K.K., No. 2003 (Wa) 23079 (Tokyo D.Ct. Dec. 27, 2005) ("[I]n the case where a claim

term is not unambiguously clear and the specification does not disclose a clear and sufficient

explanation for a POSITA to exercise the invention, that patented invention must be invalidated or

must be deemed that a monopoly right is given only to the extent disclosed in the specification

excluding any technical idea not disclosed in the specification."). Therefore, if a claim

interpretation would make a claim indefinite, or would make the claim invalid for lack of written

support or in view of the prior art, a Japanese court would construe the claim narrowly to avoid

such an interpretation.

c. Prosecution History

29. "[W]hen interpreting an invention, it is a matter of course to consider amendments

and other representations made during the process for its registration." (A v. K.K. Itten Kogyo, No.

2002 (Ne) 5092 (Tokyo H. Ct. Dec. 26, 2002)); see also X v. K.K. NTT Teleca, 2002 (Wa) No.

23687 (Tokyo D.Ct. Dec. 16, 2002) ("It is a matter of course to consider the prosecution history of

a parent application when ascertaining the scope of claims of a divisional application for a utility

model.").

30. "As a divisional application is regarded as having filed on the filing date of the

original application, and as the patentability is determined as of that original filing date, the

divisional application system has a similar function to the amendment system. Therefore, the

scope available for a divisional application to seek for a patent grant must be limited to the scope

available for a parent application to amend." K.K. Planet v. K.K. Namiki Seisakusho, No. 2003

(Wa) 9215 (Tokyo D.Ct. Apr. 23, 2004), aff'd by No. 2005 (Ne) 10050 (Tokyo H.Ct. Apr. 28,


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2005).

31. A patentee cannot "seek to later contradict statements made during prosecution"

and regain through claim construction claim scope that was surrendered during prosecution. Koyo

Kikai Sangyo K.K. v. K.K. Kitagawa Tekkosho, No. 1983 (Wa) 1371 (Osaka D. Ct. May 27, 1991).

VII. JAPANESE LAW ON DIRECT INFRINGEMENT: LITERAL INFRINGEMENT

a. Infringement Overview

32. The general principle is that a court finds infringement when a single person

exercises all the elements recited in a claim. Thereby, the accused product is deemed as falling

within the technical scope of the patented invention that the patentee has an exclusive right to

exercise.

33. In Japan, an infringement analysis is performed on a claim by claim basis and is

found when the accused product satisfies all the claimed elements of the patented invention, since

"[t]he technical scope of a patented invention shall be determined based upon the statements in the

scope of claims attached to the application" (JPA Article 70(1)), and each claim shall state all

elements necessary to identify the invention on a claim-by-claim basis for which a patent is sought

(JPA Article 36(5)).

34. Japanese patent law recognizes both literal infringement and infringement under the

Doctrine of Equivalents since 1998 when the Supreme Court introduced the Doctrine of

Equivalents. Tsubakimoto Seiko v. THK K.K., No. 1994 (O) 1083 (S.Ct. Feb. 24, 1998)

(hereinafter "Ball Spline Case"). However, both analyses are more restrictive in Japan as

compared to U.S. practice.

35. A significant difference from U.S. practice on infringement analysis is that an

infringement court in Japan that determines infringement emphasizes what is invented and

disclosed, i.e. what is the unique solution offered by the patented invention to solve the problem to

be solved. JPA Article 2(1)3.

36. One case from the IPHC provides excellent guidance into the process of

3 JPA Article 2(i) reads "'Invention' in this Act means the highly advanced creation of technical ideas

utilizing the laws of nature."


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determining infringement. I will refer to this case, as well as the Ball Spline Case, in particular

throughout my discussion, Yokohama Rubber K.K. v. Yonnex K.K., No. 2009 (Ne) 10006 (I.P.H.C.

interlocutory judgment on Apr. 15, 2009 and final judgment (on different issues) on May 27,

2010) (vacating Yokohama Rubber K.K. v. Yonnex K.K., No. 2007 (Wa) 28614 (Tokyo D.Ct. Dec.

9, 2008) (hereinafter "Club Head Case").

37. In addition to the critical issue of "what is invented and disclosed" in a literal

infringement analysis, the aforementioned Supreme Court decision in the Ball Spline Case not

only restricts how a literal infringement analysis is performed (literal element-by-element

comparison), but if literal infringement is not found, it is difficult to prove infringement under the

Doctrine of Equivalents since a patentee must prove all 5 factors are met: (1) the missing claimed

element is not an essential part of the patented invention; (2) the objective of the patent and an

identical effect can be achieved with the accused substitute; (3) a POSITA could have easily

conceived the substitutability; (4) the accused product is not identical to and could not have been

conceived from the prior art available at the time of filing; and (5) there are no extraordinary

circumstances such as prosecution history estoppel in which the patentee intentionally excluded

certain technology during prosecution. In this regard, the defendant can rebut infringement under

the doctrine of equivalents by proving one of those factors is not met. Ball Spline Case. I

understand that Immersion has not yet made an argument based on the doctrine of equivalents, and

I reserve the right to address this issue in subsequent reports.

b. Literal Infringement

i. General Overview

38. In the Ball Spline Case, the Supreme Court describes literal infringement as

follows. "In a patent infringement suit, it must be determined whether a product or method that a

person is accused of 'working' the claimed invention falls within the technical scope of a patented

invention. For that objective, the technical scope of the patented invention must be ascertained

based on the claims (see JPA Article 70 (1)). If there is any element recited in the claims that

differs from an accused product, it is not possible to find that the accused product falls within the


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technical scope of the patented invention." Id., Ball Spline Case.

39. In other words, a patentee must prove that all the elements recited in the claim are

present in an accused product to constitute literal infringement. If any element is absent in the

accused product, literal infringement will not be constituted.

ii. Standard for Element-by-Element Comparison

40. A literal infringement analysis is performed strictly and literally in Japan, and never

expanded to substantial equivalents. SE Engineering K.K. v. Nikkan Engineering K.K., No. 2013

(Ne) 10017 (I.P.H.C. Mar. 26, 2014) (rejecting the plaintiff's argument that the accused products

were technically identical in substance to the claimed elements and their function, as being an

impermissible expansion of the technical scope beyond what is identified in the claim); Nisso

Sangyo K.K. v. Sanshin Kizai K.K., No. 2003 (Wa) 27382 (Tokyo D.Ct. Oct. 15, 2004) (holding

that it is impermissible for a patentee to claim literal infringement based on "substantial identity"

between the claimed elements and those in the accused product without going through the five-

factor test under the Doctrine of Equivalents), affirmed by IPHC, No. 2005 (Ne) 10002 (I.P.H.C.

Dec. 21, 2005).

41. A system in Japan is treated as a product. X v. JPO Comm'r, No. 2003 (Gyo-ke) 325

(Tokyo H.Ct. Sept. 6, 2004 (system invention is treated as a product invention under Japanese law).

42. The analysis of the patent claim elements against the accused products under literal

infringement is typically direct and focuses on whether the claimed element exists in the accused

product or not. Pioneer K.K. v. K.K. Navitime Japan (No. 2009 (Wa) 35184 Dec. 6, 2010), aff’d

by IPHC (Id. No. 2011 (Ne) 10004 Nov. 30, 2011) ("This patented invention relates to a

navigation 'device.' Therefore, the issue to be determined is whether a structural element of [the

accused] 'device' is identical to the structural element recited in the claims. Needless to say, the

structural difference can never make the accused product falling within the technical scope, even if

the accused one has identical function to achieve identical effect.")

43. In the Club Head case, the Court focused on the disputed Element D of the asserted

claim. The Court held that the counterpart element (d) of the defendant's product did not satisfy


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Element D of the claim. The claim required that Element D pass through at least two or more

holes to bond one outer shell member to a second outer shell member at least at two points. The

accused product, however, had a short small strip made of carbon fiber that was capable of passing

through only one time between opposite outer shell members. Because the strip of the defendant's

product passed through a through-hole only once and bonded two different outer shell members at

only one point, there could be no literal infringement.

44. A product that does not include all elements of the claim does not directly infringe

even if it can be combined with other components in an infringing manner. In the Kawamori case,

Kawamori held a utility model comprising a folding door and shaded panel. The defendant

manufactured and sold two different products: a folding door only (accused product A); and a

package of a folding door and shaded panel (accused product B). While the Court found that

accused product B (a combination of the door and panel) directly infringed, it found that product

A (the door alone) did not infringe because it did not have all of the elements of the claimed

invention. There was no infringement by product A even though the folding door in product A

was designed to be combined with the shaded panel in an infringing manner. "Based on the

evidences and the entirety of the argument, it is found that the defendant sells the accused product

A as 'Light Gate Cross (LGC)' and the accused product B as 'Light Gate Panel (LGP)' as separate

products, that the accused product A does not include a panel that is sold separately, and that the

brochure for the accused product says as a title 'Two-way use series: MSC (appeared as the name

of the defendant) Light Gate Cross' having photos of both the gate itself and the gate with the

panel attached describing 'features' as 'Two-way use as a cross gate considering wind pressure, or

as with the panel to shut out the inside view from the outside' and 'Upgrade by attaching the panel

with an easy pin! (The panel is sold separately.)' […] Based on the facts above, it is found that

the defendant advertises the accused product A featuring its two-way use that a panel can be

attached or detached. However, those panels are sold separately; therefore, it is highly likely that

a consumer uses a folding gate as such without purchasing the panel separately. In this regard, the

accused product A has a practical use different from the use as a gate with a panel. […] The


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plaintiff argues that the accused product A has a hinge holder to accommodate the panel, therefore

no other use than having it with a panel. Indeed, the hinge holder would become useless when it is

used without a panel. However, as the defendant argued, it is persuasive that the defendant

manufactures the accused product A with the hinge holder to minimize the cost by having a

common structure. The fact that the hinge holder would become useless when the accused product

A is used without a panel cannot be a reason to determine that the accused product is sold only for

that use as a package or to reject that the use without a panel is also a practical use. Kawamori

Sangyo K.K. v. Matsumura Sangyo K.K., No 1997 (Wa) 4084 (Osaka D.Ct. Sep. 19, 2000).

45. An end user's voluntary act cannot make a seller liable as a direct infringer. In

Pioneer, the IPHC found that the mobile terminal does not fall within the technical scope of the

patented invention "car-mounted navigation device," because "car-mounted" was construed to

mean loaded into a vehicle and remaining so all the time, whether or not the vehicle is in use. In

other words, the structural and indispensable element "car-mounted" could not be satisfied by a

user's voluntary act to bring the mobile terminal into a vehicle.

iii. Whether A Claimed Element Must Actually Be Present in the Accused Product Or Merely Capable Of Being Present

46. This is not even an issue in Japan since all claimed element must be present in the

accused product to solve the problem to be solved uniquely presented by the patented invention.

JPA Article 70(1) provides that the technical scope must be determined based on the claims, and

Article 36(5) provides that each claim must state all elements necessary to identify the invention

on a claim-by-claim basis for which a patent is sought. (Art. 36(5) ("[t]he scope of claims […]

shall state a claim or claims and state for each claim all matters necessary to specify [identify] the

invention for which the applicant requests the grant of a patent.").) "Pursuant to these provisions,

the technical scope of the patented invention is limited to the scope recited in the claims and all

matters recited in a claim are required as an indispensable element for the patented invention.

Therefore, it is impermissible for a patentee to assert that a matter recited in the claim is a

peripheral element that may be required or may not be required." Fiber Separation Apparatus

Case, No. 1985 (Wa) 3515 (Osaka D.Ct. May 23, 1986). Also see, K.K. Interlink v. Softbank BB


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K.K., No. 2011 (Wa) 1305 (Tokyo D.Ct. Nov. 30, 2012) (The patentee argues that the claim term

"a communication means" is not necessary to achieve the objective of the invention to make a

telephone call via the Internet using a conventional land-line phone. The court rejected the

argument, holding "[i]f that is the case, the term should not be recited in the claim. As long as the

claim recites 'a communication means with a computer,' the term must be regarded as an element

necessary to achieve the objective of the invention.").4

iv. Prior Art Defense

47. An accused infringer may raise a prior art defense to exclude prior art technology

from the technical scope of the patented invention. A finding of infringement as to subject matter

known or obvious from the prior art is prohibited in Japan. This analysis is separate from an

invalidity determination.

48. As the Supreme Court has repeatedly held, any prior art that was well known to the

public at the time of filing must be excluded from the technical scope of a patent right. In the

Derailment Prevention Device Case, the issue was whether the technical scope of the patented

invention includes art well known prior to the present patent filing that is present in the accused

product. "[A]s long as a patent right is given to a novel industrial invention, any prior art publicly

known at the time cannot be said as a novel invention. In this case, the court below found that it

was publicly known at the time of filing of this patent application that a derailment prevention

device could prevent derailment by inserting a wheel axis into an idler hole of a body part yet

without fixing the body part and wheel axis. Then, as the court below held, the present invention

must be construed to be given to the unique structure [excluding that prior art]. Therefore, there is

no legal error for the court below to hold that the accused device does not fall within the scope of

the present patent right." Derailment Prevention Device Case, No. 1961 (O) 464 (S.Ct. Dec. 7,

4 Immersion is incorrect that the Fiber Separation case was superseded by statutory amendment

(Immersion brief dated March 19, 2015 p.2 n.1). There was a statutory amendment from "only

matters indispensable for the element(s) of the invention" to "all matters necessary to specify the

invention." However, as seen in the minimal change in phrases, the approach taken by the above

case remains valid after the statutory amendment. And the underlying principle remains effective

after the revision, as shown in the Interlink case, that the claims must state what is invented by the

patented invention.


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1962).

49. In the Liquid Fuel Burner Case, No. 1962 (O) 871 (S.Ct. Aug. 4, 1964), the

Supreme Court held that an accused product employing a rotating structure found in the prior art

did not infringe a utility model. "The gist of the utility model must be determined substantially in

view of the nature or purpose of the utility model, or the entirety of the specification both written

description and drawings. In addition, with respect to a utility model that includes prior arts

publicly known or publicly used at the time of filing, the scope of the right must exclude such

prior arts to ascertain the purpose of that novel utility model. (See S.Ct. Dec. 7, 1962.) In the

present case, 'the claims' do not recite either not-rotating fuel outlet (6) or not-rotating guide dish

(5). And in view of "description of the nature, function and effect of the utility model," there is no

statement that the gist of the utility model is both fuel outlet (6) and guide dish (5) do not

rotate. However, the specification discloses "fuel passes from a fuel outlet (6) to a guide dish (5)

to be dripped to a saucer (4)" along with a figure showing not-rotating fuel outlet (6) and guide

dish (5), as the court below so found. In addition, based on the evidences before us, it is obviously

the publicly known structure of a burner that rotates a rotating dish and a fuel hole to introduce an

air from the bottom through a small hole placed in the rotating dish. Therefore, in the present

utility model, the fuel outlet (6) and the guide dish (5) are structural elements indispensable to the

fuel atomization, which constitutes a part of the gist of the utility model; and the novelty is found

in the unique feature of this utility model, that is a not-rotating fuel outlet (6) and not-rotating

guide dish (5), excluding the prior arts."

50. In the Ball Spline Case, the Supreme Court stated that an accused product

representing a combination of the prior art that would have been obvious to a POSITA cannot

infringe. ("[I]f this combination could have been easily conceived by a POSITA without waiting

for the disclosure of the present invention, the accused product could have been easily conceived

at the time of filing from the publicly-known arts available prior to filing. Therefore, it cannot be

determined that the accused product is equivalent to the structure recited in the claims of the

patented invention and that it falls within the technical scope of the present invention.") Since this


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case, there has been no Supreme Court decision to overrule the principle that any prior art

available at the time of filing must be excluded from the technical scope of the patented invention.

v. Prosecution History Estoppel Defense

51. An infringer may raise prosecution history estoppel as a defense to literal

infringement (and to infringement under the Doctrine of Equivalents). If it appears that a patentee

intentionally excluded a certain technology from the technical scope of his invention during

prosecution, he is estopped from making an inconsistent argument in an infringement suit.

52. The Tokyo High Court found no literal infringement by ascertaining the technical

scope narrowly based on the prosecution history where the patentee limited the claimed method to

a certain method that the accused method does not employ. Nissui Seiyaku K.K. v. K.K. Yatoron et

al., No. 1998 (Ne) 5507 (Tokyo H.Ct. Feb. 1, 2000)

53. In A v. K.K. Itten Kogyo, the court stated: "The appellant said in an amendment

that the aperture in this invention has a ‘slit-like’ shape, not a ‘grid-like’ shape. As a natural

result, a ‘grid-like aperture’ does not correspond to the ‘slit-like aperture’ (the principle of file

wrapper estoppel)."

VIII. APPLICATION OF JAPANESE LAW TO THIS CASE

54. The claims of the asserted patent are directed toward systems for providing tactile

sensation to a plurality of users via vibrotactile units. The tactile sensation is created by sending a

common activating signal to an actuator within the vibrotactile units that causes an eccentric mass

that is coupled to a shaft to rotate about said shaft. The common activating signal is generated by

processors in the vibrotactile units either in response to the movement of one of the users (claims 1

through 6 and 8) or in response to the virtual state (claims 9 and 10).

55. The independent claims 1 and 9 are divided into elements as follows:


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Claim 1:

A. A system for providing tactile sensation to a plurality of users, comprising:

B. a plurality of vibrotactile units individually coupled to the plurality of users;

C. each of the vibrotactile units having:

1. a processor for generating a common activating signal in relation to movement of one of the plurality of users sensed by a sensor; and

2. an actuator having a shaft and an eccentric mass coupled to the shaft, the actuator being configured to rotate the eccentric mass about the shaft in response to the common activating signal.

Claim 9:

A system for providing tactile sensation to a plurality of users, comprising:

A. a plurality of vibrotactile units individually coupled to the plurality of users;

B. each of the plurality of vibrotactile units having:

1. a processor for generating a common activating signal in relation to a virtual state; and

2. an actuator having a shaft and an eccentric mass coupled to the shaft, the actuator being configured to rotate the eccentric mass about the shaft in response to the common activating signal

56. The only difference between claims 1 and 9 is that a common activating signal is

triggered by a user's movement (claim 1 - C1) or in relation to a "virtual state" (claim 9 - C1).

57. Claims 1 and 9 require "a plurality of vibrotactile units." Sony sells PS4 systems

that have a game console and one DS4 controller. The sale of these systems does not infringe

because the accused products are missing an element of the claims: a "plurality" of vibrotactile

units. One DS4 controller is not a plurality of vibrotactile units. Because infringement in Japan

requires every claim element to be present in the accused product, Sony's sale of these systems

should be found not to infringe claims 1 and 9 under Japanese law. X v. K.K. Aucfan, No. 2013

(Wa) 24709 (Tokyo D.Ct. Nov. 28, 2014). In the Aucfan case, the Court found the claimed term "a

plurality of banner servers" storing home pages of a number participating companies was not

satisfied by the accused product, which had one server. "[T]he patentee argues that the plurality of

banner servers does not need to exist physically but it is sufficient if they exist functionally. It is


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.t*, tt ut a 'banner server' is recited as a physical element in view of claims and in view of the

specification. As the claim specifically recites 'a plurality of,' it is also clear that a single banner

server is not sufficient." Because independent claims 1 and 9 of the '301 Patent are not infringed,

dependent claims 2-6,8 and 10 are not infringed either.

58. Sony sells replacement DS4 controllers. I understand that consumers can combine

these extra controllers with a PS4 system to make a system with two or more controllers. The sale

of single controllers, however, is not an act of infringement. These controllers are sold separately

from PS4 systems. One DS4 controller is not aplurality of vibrotactile units. Sony's sale of these

replacement controllers should be found not to infringe claims 1 and 9 under Japanese law.

Because independent claims I and 9 are not infringed, dependent claims 2-6, 8 and 10 are not

infringed either.

IX. CONCLUSION

59. I reserve the right to provide rebuttal testimony with respect to the testimony,

reports or evidence submitted by Immersion's witnesses, which may be within my area of

expertise. In addition, I reserve the right to provide supplemental expert testimony relative to my

opinions herein should further or additional information be discovered by or disclosed by the

parties.

Dated: April27,2015 携Йれたιノ九γ協資Hon.Toshiaki limura

11000787913981306 1 16

ⅡⅣIURへ EXPERT REPORT


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