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Frand defense in Japan through Tokyo District Courts decision of
Frand defense in Japan through Tokyo District Courts decision of
Parties
Parties
Subject Patent
Subject Patent
Subject Products
Subject Products
Courts Decision
Courts Decision
Issues
Issues
Courts Holdings on Issues
Courts Holdings on Issues
Courts Holdings on Issues
Courts Holdings on Issues
Courts Holdings on Issue
Courts Holdings on Issue
Courts Holdings on Issue
Courts Holdings on Issue
Courts Holdings on Issue
Courts Holdings on Issue
Courts Holdings on Issue
Courts Holdings on Issue
Comments
Comments
Comments (contd)
Comments (contd)
IP High Courts Invitation of Amicus Brief for Appeal Case
IP High Courts Invitation of Amicus Brief for Appeal Case
Thank you
Thank you

: Frand defense in Japan. : ?? ?. : Frand defense in Japan.ppt. zip-: 216 .

Frand defense in Japan

Frand defense in Japan.ppt
1 Frand defense in Japan through Tokyo District Courts decision of

Frand defense in Japan through Tokyo District Courts decision of

FRAND defense in Japan through Tokyo District Courts decision of February 28, 2013, and IP High Courts invitation of Amicus Brief of January 23, 2014 AIPLA MWI IP Practice in Japan Committee Pre-Meeting Wednesday, January 29, 2014

Kei IIDA Attorney at Law & Patent Attorney Nakamura & Partners

1

2 Parties

Parties

Plaintiff Apple Japan G?d? Gaisha, a subsidiary in Japan of Apple Inc. in the US, importing, selling, etc. personal computers, hardware and software of computer related apparatus, instruments attached to computers, etc. manufactured by Apple Inc. Defendant SAMSUNG ELECTRONICS CO., LTD., manufacturing, selling, etc. electronics and electric equipment and apparatus, communication equipment and apparatus, and related instruments, and parts thereof.

2

3 Subject Patent

Subject Patent

SAMSUNGs JP patent No. 4642898 corresponding to US7675941(B2), EP1720322(B1), KR100913900 (B1), etc. Method and apparatus for transmitting and receiving packet data by using pre-established length indicator in a mobile communication system Claim 1: method for data transmission Claim 8: data transmission apparatus

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4 Subject Products

Subject Products

iPhone 3GS by Nvog86 iPhone 4 by Saibo iPad Wi-Fi?3G model by Evan-Amos iPad 2 Wi-Fi?3G model by William Hook

4

5 Courts Decision

Courts Decision

Confirmed in a declaratory judgment action that defendant SAMSUNG is not entitled to claim damages against plaintiff Apple Japan under Subject Patent for manufacture, assignment, lease, import, and offer for assignment and lease by plaintiff Apple Japan of Subject Products. In a separate provisional injunction procedure, also on February 28, 2013, Tokyo District Court dismissed claimant SAMSUNGs claim for a provisional injunction against opponent Apple Japans import, assignment, etc. of iPhone 4 and iPad 2 Wi-Fi?3G model under Subject Patent.

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6 Issues

Issues

Whether Subject Products fall under the technical scope of claim 8 ? Whether Apple Japans import, assignment, etc. of Subject Products constitute an indirect infringement of claim 1 ? Whether claims 1 and 8 have invalidation grounds for lack of novelty or an inventive step ? Whether a patent right under claims 1 and 8 is exhausted or impliedly licensed for Subject Products because of SAMSUNGs license to Intel for baseband chips therein ? Whether a FRAND defense is available for Apple Japan based on a contract through SAMSUNGs FRAND declaration, etc. ? Whether a FRAND defense is available for Apple Japan through SAMSUNGs FRAND declaration, etc. according to Article 1(3) of the Civil Code ?

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7 Courts Holdings on Issues

Courts Holdings on Issues

& ?

iPhone 3GS and iPad Wi-Fi?3G model among Subject Products do not fall under the technical scope of claim 8, since baseband chips therein are not based upon UMTS Standard 3GPP TS25.322 V6.4.0 and therefore do not perform the subject function according to substitutive E bit construction adopted thereinafter. Method for data transmission in iPhone 3GS and iPad Wi-Fi?3G model among Subject Products do not fall under the technical scope of claim 1, too.

7

8 Courts Holdings on Issues

Courts Holdings on Issues

& ? (contd)

iPhone 4 and iPad 2 Wi-Fi?3G model among Subject Products fall under the technical scope of claim 8, since baseband chips therein are based upon UMTS Standard 3GPP TS25.322 V6.4.0 and therefore perform the subject function according to substitutive E bit construction adopted thereinafter, and then claim 8 claims an invention realizing substitutive E bit construction. Method for data transmission in iPhone 4 and iPad 2 Wi-Fi?3G model among Subject Products fall under the technical scope of claim 1, too.

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9 Courts Holdings on Issue

Courts Holdings on Issue

The governing law of issue ? is the laws of Japan. According to the good faith principle under the Civil Code, SAMSUNG owes the duties to disclose important information to and to negotiate in good faith with Apple Inc. for a license with FRAND terms for UMTS Standard 3GPP TS25.322 V6.4.0 under Subject Patent, since (i) according to ETSIs IPR Policy and Guideline, on August 7, 2007, SAMSUNG notified to ETSI that IPR for Subject Patent is probably essential for UMTS Standards, and declared to ETSI that SAMSUNG is ready to grant a license with FRAND terms, (ii) ETSIs IPR Guideline provides that ETSIs member shall grant a license with FRAND terms for ETSIs standard under its essential IPR, and (iii) Apple Inc. specifically requested the license to SAMSUNG.

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10 Courts Holdings on Issue

Courts Holdings on Issue

(contd)

Regarding the above (iii), a request must be specific to show requesters definite intention for a license, and Apple Inc.s request was found specific in light of the draft agreement providing licensed patents, a certain royalty rate (not unreasonably too low), etc. proposed to SAMSUNG on March 4, 2012. Regarding the above (iii), a specific request may still be found, even if a requester reserves the possibility of invalidity of a patent to be licensed.

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11 Courts Holdings on Issue

Courts Holdings on Issue

(contd)

SAMSUNG breached the duties through the following courses of negotiation with Apple Inc. On Jul. 25, 2011, when proposing a license with a certain royalty rate under NDA, SAMSUNG did not show grounds to calculate the royalty rate. On Aug. 18, 2011, Apple Inc., with giving its opinion that the royalty rate was too high based on a certain ground, requested SAMSUNG to disclose information on licenses with others under NDA so that Apple Inc. may determine whether the royalty rate follows FRAND terms. On Jan. 31, 2012, SAMSUNG requested Apple Inc. to show a counterproposal for a license without showing grounds to calculate the royalty rate. On Mar. 4, 2012, Apple Inc. showed the draft agreement providing licensed patents, a certain royalty rate (not unreasonably too low), etc. On Apr. 18, 2012, SAMSUNG gave its opinion that the royalty rate was unreasonably too low. On Sep. 1, 2012, Apple Inc. expressed that it was ready for a proposal for a cross license with FRAND terms for the whole 2G, 3G and 4G standards under the whole essential patents. On Sep. 7, 2012, SAMSUNG made a certain reaction to Apple Inc.s expression. On Sep. 7, 2012, Apple Inc., with explaining a certain ground to calculate the royalty rate, showed the proposal. SAMSUNG did not react to Apple Inc. proposal.

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12 Courts Holdings on Issue

Courts Holdings on Issue

(contd)

A FRAND defense is available for Apple Japan against SAMSUNGs claim for damages under Subject Patent according to Article 1(3) (prohibition of abuse of right) of the Civil Code, since (i) SAMSUNG breached the duties through the courses of negotiation with Apple Inc., (ii) SAMSUNG seeks for a provisional injunction against Apple Japans import, assignment, etc. of iPhone 4 and iPad 2 Wi-Fi?3G model under Subject Patent, (iii) SAMSUNG notified to ETSI that IPR for Subject Patent was probably essential for UMTS Standards around 2 years after substitutive E bit construction was adopted in UMTS Standard 3GPP TS25.322 V6.4.0 according to its own proposal.

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13 Comments

Comments

A FRAND defense under Article 1(3) of the Civil Code is available also against patentees claim for injunction. The bar for a FRAND defense under Article 1(3) of the Civil Code is probably lower than the bar for a FRAND defense adopted by Federal Supreme Court of Germany in the Orange Book Standard case. In general, requirements or decisive factors for a FRAND defense under Article 1(3) of the Civil Code are not necessarily clear, especially in the point of whether patentees breach of the duties to disclose important information and to negotiate in good faith only will suffice the FRAND defense, and whether SAMSUNGs acts after the Decision by the Court may meet the duties.

13

14 Comments (contd)

Comments (contd)

Regarding issue ?, in general, a FRAND defense may be available also based on a contract between a patentee and a standards organization for a person who adopts a standard through patentees FRAND declaration to the organization according to an IPR policy and adoption by the person of the standard. Whether a FRAND defense is available even against patentees claim just for specific damages of reasonable royalty according to FRAND terms only may be a remaining issue, since in this case the Court especially mentioned in the decision that SAMSUNG did not make its assertion for damages. How to calculate the sum of reasonable royalty according to FRAND terms and whether the courts can appropriately calculate the sum may be an ultimate question.

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15 IP High Courts Invitation of Amicus Brief for Appeal Case

IP High Courts Invitation of Amicus Brief for Appeal Case

The case was appealed to the IP High Court (Case No. 2013 (Ne) 10043). The IP High Court decided to hear the appeal case by the Grand Panel. The IP High Court further announced as of January 23, 2014 that Amicus Brief from the public is invited for the issue of a FRAND defense in the appeal case. Anyone may submit Amicus Brief. The person who submits Amicus Brief shall submit the same written or translated in Japanese to either of the attorneys for the parties by March 24, 2014, and then the attorneys for the parties will submit the same to the Court as evidence. If interested, please see the English translation of the announcement provided to the IP Practice in Japan Committee.

15

16 Thank you

Thank you

Kei IIDA Attorney at Law & Patent Attorney Nakamura & Partners Shin-Tokyo Bldg., 6F, 3-1, Marunouchi 3-Chome, Chiyoda-ku, Tokyo 100-8355 Japan Tel: 81-3-3211-8741 Fax: 81-3-3214-6367 E-mail: k_iida@nakapat.gr.jp

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