Tuesday, 28 October 2014

Apple v Samsung in Japan: an English text

Patent litigation blossoming in Japan ...
In May there was a decision of the Japanese IP High Court on Apple v Samsung in which FRAND-based royalties were mentioned. The judgment, which was unsurprisingly delivered in Japanese, was released a month after it was rendered and has since become available to English speakers via this website; it took nearly five months to produce the translation, during the course of which the case settled.

Highlights of this case include the following:


Does a request for an injunction constitute an abuse of patent right? This issue is dealt with from page 17 onwards, one of the highlights being, on page 25, "Whether the respondent (Apple) has any intention of accepting a FRAND licence" (here and here).

FRAND licences

Apple alleged non-infringement of Samsung's patent and sought a declaratory judgment to confirm that Samsung was not entitled to damages from Apple's infringement (a summary of the claim is on page 3). From page 115 onwards the judgment focuses on FRAND (after deciding that Apple infringed Samsung's patent). From page 122 the text discusses whether the patentee should be allowed to seek damages and determination of the "patentee's claim for damages exceeding or equivalent to a FRAND-based royalty".

The court found that damages exceeding a FRAND-based royalty should not in general be allowed, though they may be appropriate in exceptional circumstances. Such circumstances would include situations in which the patentee proves that the alleged infringer is not a willing FRAND-based licensee. The court also decided that the damages equivalent to a FRAND-based royalty should be ordered unless it is significantly unfair to do so (cf the decision of the court of first instance). The court did not find any fact which demonstrated that it was unfair to disallow damages equivalent to a FRAND-based royalty, but found that Apple was a willing licensee which kept on negotiating with Samsung to obtain a licence by presenting specific royalty rates.

The amount of damages is discussed from 130 page onwards. The court analyses the percentage of contribution of the patent in suit in each product in issue, choosing to limit the aggregate royalty at 5% according to WCDMA and other patent pools. The summary of the actual calculation is on page 138 (D).

The court appreciates responses to the public consultation (Amicus Briefs) summarising the responses from page 139.

PatLit is grateful to a friendly reader for this information

No comments: