We reported less than half a year ago that UNIQLO’s non-viual scanning kiosks were judged patent-infringing by the IP High Court in Tokyo. The victor, IT company Asterisk Inc., was pleased, but wary of a drawn-out IP battle. Indeed, although appealing would not affect the validity of the patent,[1] UNIQLO’s Fast Retailing Co., Ltd. (Fast Retailing) is taking the matter to the Supreme Court of Japan. In addition, it is seeking Invalidation Trials on various of Asterisk’s other patent claims.[2]
Suzuki Noriyuki, Asterisk’s president and inventor of the patent that drew so much attention (JP 6469758) made a surprise move, however. In fact, back in February 2021, Asterisk had already transferred the contended patent to NIP, an intellectual property management company. Mr. Suzuki was willing to let go of direct control of the patent (while he is working hard to support NIP in the litigation process) because it was a liability for Asterisk’s long-time goal: to go public on the stock exchange. So after passing on its controversial patent, Asterisk forged ahead for that goal. On September 30, 2021, Asterisk did enjoy a successful start to the trade of its new stock on the Tokyo Stock Exchange.[2]
Reporter Soma Rumi reports that Suzuki wanted to get on with further innovations and to avoid being too entangled in the litigation process. NIP faces large costs to wage the patent battle (hundreds of thousands of dollars but, given the rate it has set to charge for licensees of the patent in question, hoping to demand damages awards of around 1.8 billion yen (US $18 million) per year from First Retailing if the courts and JPO maintain the validity of the patent.[2]
However, Ms. Soma comments that smaller enterprises just do not have the resources to fight major corporations like First Retailing when the latter enter a war of attrition. She implies that the Japanese legal environment may need to change to support the weaker corporations.[2] On the other hand, though the agreement between Asterisk and NIP is not clear, the maneuvering of Mr. Suzuki may show a practical strategy for smaller patent holders to use in the future.
Sources
[1] Nikkei Shimbun. “セルフレジ巡る特許でファストリ敗訴 知財高裁 [Fast Retailing loses in self checkout patent trial: IP High Court].” https://www.nikkei.com/article/DGXZQOUE203P50Q1A520C2000000/ May 20, 2021. Accessed October 7, 2021.
[2] Soma, Rumi. “ユニクロ・GU特許訴訟に勝ったアスタリスクが、虎の子の特許を手放した理由 [Why Asterisk, patent litigation winner against Uniqlo/GU, let go of its prized patent].” https://diamond.jp/articles/-/283586? DIAMOND Online. October 1, 2021. Accessed October 7, 2021.
Header image by Michal Jarmoluk from Pixabay
