Old shopping checkouts are vanishing in UNIQLO, which is famous in Japan and now outside of it for its casual apparel retailing. In recent years it gained attention for its automated checkout scanning systems, where the customer can place the shopping basket with items in a depression in the checkout kiosk and everything is instantly scanned and tallied.
IT company Asterisk Inc. (based in Osaka) challenged UNIQLO’s group FAST RETAILING CO., LTD over alleged infringement of its patent JP 6469758, “READING DEVICE AND INFORMATION PROVIDING SYSTEM” (English translation details are available at J-Plat Pat), leading to a request for invalidation by FAST RETAILING.[1] The claimed invention involves scanning items with RFID (radio frequency) tags when they are placed into a depression such as used by Uniqlo’s kiosks, but when Asterisk challenged FAST RETAILING, FAST RETAILING asserted that the depression for scanning was not inventive enough and filed for an invalidation trial.[2]
At the invalidation trial before the Japan Patent Office (JPO), some of the claims of the patent were deemed invalid but not completely (in August 2020), and both FAST RETAILING and Asterisk appealed to the IP High Court. The IP High Court judged on May 20, 2021 that, in fact, all of the patent claims were not easily conceived, valid, and infringed by FAST RETAILING. This decision is considered to be final (the Supreme Court, even if FAST RETAILING did appeal, would not pass judgment on validity of the patent itself).[2]
Most UNIQLO stores in Japan have the new automatic checkout kiosks. The new kiosks are so much a part of the UNIQLO experience now that Asterisk well may be able to get FAST RETAILING to pay for a license to use the patented claims.[2] This loss may attract even more people to UNIQLO for a purchase, so hopefully all parties gain something from this relatively rare Japanese IP fight.
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Taro Yaguchi
Sources
[1] Asterisk Inc. “当方発明特許に対する「ファーストリテイリング」社からの無効審判における進捗のご報告 [Update on invalidation trials instigated by Fast Retailing concerning our inventions].” https://www.asx.co.jp/news/%e5%bd%93%e6%96%b9%e7%99%ba%e6%98%8e%e7%89%b9%e8%a8%b1%e3%81%ab%e5%af%be%e3%81%99%e3%82%8b%e3%80%8c%e3%83%95%e3%82%a1%e3%83%bc%e3%82%b9%e3%83%88%e3%83%aa%e3%83%86%e3%82%a4%e3%83%aa%e3%83%b3%e3%82%b0/ Updated 3 pm, May 20, 2021. Accessed May 27, 2021.
[2] 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 May 27, 2021.
Header image by TheoRivierenlaan from Pixabay.
