JAPAN Trends and Developments Contributed by: Hideaki Kobayashi, Hirofumi Tada, Hiroyuki Kimura and Hiroyuki Ohno, Ohno & Partners
Ohno & Partners Marunouchi Kitaguchi Bldg. 17F 1-6-5
Marunouchi Chiyoda-ku Tokyo 100-0005 Japan
Tel: +81 3 5218 2331 Email: info@oslaw.org Web: www.oslaw.org
Recent Development of Standard Essential Patent (SEP) Litigation in Japan The changing landscape of SEP enforcement in Japan Regarding the exercise of rights under SEPs in Japan, the Intellectual Property (IP) High Court issued a deci- sion in the Samsung v Apple case (“Apple Case”) in 2014, which was not favourable to a patent holder. Following that ruling, no judicial decision was ren- dered for over a decade. This stood in stark contrast to other jurisdictions, such as Europe, where “hold- out” became a major concern and led to pro-patentee judgments. The Tokyo District Court issued two landmark SEP- related decisions in 2025: one granting an injunction in Pantech v Googl e (“Google Case”), and another determining a FRAND-compliant royalty rate in Pan- tech v ASUS (“ASUS Case”). Injunction claim In the Apple Case, the IP High Court held that, if an alleged infringer is a “willing licensee”, injunction claims based on SEPs are dismissed because of abuse of rights, and held that the determination of being “unwilling” should be made strictly. In this par- ticular case, the IP High Court held that the accused infringer is not unwilling, taking into account the fact of licence negotiations between the parties after the lawsuit was filed. In the Google Case, the Tokyo District Court found that the defendant is not “unwilling” based solely on the history of negotiations between the parties, because the defendant expressed a sincere intent to
negotiate and had taken all possible measures, such as entering into an NDA, confirming patent essential- ity and validity, and reviewing or negotiating licence terms. However, the court held that, despite agree- ing to a settlement recommendation from the court, the defendant refused to disclose the sales value and volume of the infringing products, thereby eliminating the possibility of further licence negotiations. Conse- quently, the court found the defendant to be “unwill- ing” and thus granted an injunction against the sale of the defendant’s products (mobile phones). FRAND royalty rate In the Apple Case, the IP High Court set an upper limit for the aggregate royalty (the total licensing fee for all essential patents) at 5%, and determined the amount of reasonable royalty rate per SEP as follows: 5% x [Contribution ratio of UMTS standard] / [Total number of SEPs of UMTS standard]. In the ASUS Case, the Tokyo District Court did not use factors of aggregate royalty or the standard’s contri- bution rate. Instead, it utilised a “Total Royalty Rate for all SEPs related to the LTE standard” (Total LTE Royalty Rate). The court determined the amount of reasonable royalty rate per SEP as follows: [Total LTE Royalty Rate] / [Total number of LTE patents]. The court determined the “Total LTE Royalty Rate” to be 9%, taking into account the royalty rates rec- ognised in Unwired Planet v Huawei , TCL v Ericsson , and Huawei v Samsung . Furthermore, for 5G terminals among the defendant’s products, the court set the rate at 8% after further considering the functions of 5G communication.
174 CHAMBERS.COM
Powered by FlippingBook