MDI has won against a Korean company a suit over the validity of a patent.
We are pleased to announce that MDI has eventually won against a Korean company a suit over the validity of a patent which MDI owns for the glass cutter wheel (hereinafter referred to as the wheel) at the Intellectual Property High Court in Japan. In April we also won another action of annulment of the trial decision for the same patent in Japan against a Japanese company.
The first patent dispute began in 2004, when Shinhan Diamond Industrial Co., Ltd. filed a suit in Korea claiming that our patent for the wheel called Penett® was invalid. Later, we have been similarly challenged against the same patent in China, Taiwan, and Japan. Although it has been ruled invalid in China and Korea, the Japanese Intellectual Property High Court ruled otherwise and validated the patent in Japan. In short, the Japanese judicial decided that our patent was valid.
In the countries we have been sued, they all used the same evidence, the Japanese published unexamined patent applications to claim that the patent was invalid. The governments (Patent Offices) decisions, however, divided by the countries. The judicial decision in each country also varied after the Japanese Intellectual Property High Court validated the patent.
The invention for the patent is about the wheel called Penett® that creates deep vertical cracks on a sheet glass with minimal damage to the glass surface, and facilitates an easy separation of the glass. It is formed like an abacus-bead (approximately 2-mm in diameter) and has fine serrations (alternating notches and protrusions) along the ridge-line to cut a sheet glass. A conventional wheel requires two consequential steps – scribing and folding before completely separating the glass. Penett®, on the other hand, requires only one single process for a complete separation. The invention is innovative in that it speeds up production process and downsizes the equipment, largely contributing to cost reduction. Since this invention was out on the market, it has become the de facto standard for LCD cutting process.
MDI won an engineering prize for this invention from The Japan Society for Abrasive Technology in 2009. We received an ADY prize twice from FINETECH JAPAN, the largest international trade convention in the FPD industry, for our glass cutting equipment using the invented technology, namely the MPL series in 2004 and MPX series in 2009.
The same patent was also filed in the US and European countries, and it has been fully approved. On the other hand, in Korea and China, the patent was once authorized, and then later invalidated. In Taiwan, MDI appealed against the decision on the invalidity of the patent to the Supreme Court. We are now waiting to see how they ultimately rule its validity.
Japanese manufacturers are now shifting manufacturing bases to other Asian countries, such as Korea, China and Taiwan. If there is a risk that a Japanese company’s patent once approved in foreign countries could be invalidated later, or that either administrative or judicial decision or both in such countries could be influenced by the government’s industrial policy, thus their judicial decision could come out inconsistent, any Japanese companies who are thinking of going international would become very wary of developing a plan for overseas investment.
We really hope to see for all Japanese businesses planning to go international that every country will make a just and fair as well as consistent judgment.