Patent litigation in Japan: Chief Judge speaks on latest developments

There's a fascinating and highly educative event coming up next month in London, thanks to the generosity of its sponsors and the kindness of its hosts -- our friends the Chartered Institute of Patent Attorneys (CIPA) and the IP Lawyers Network Japan,  The details of this attraction look like this:

Recent Developments in Patent Litigation in Japan

13 April 2015

Time: 5:30-6:30 pm, followed by drinks & canapés thanks to generous contributions from the co-host IP Lawyers Network Japan and sponsors: Asahi Breweries Ltd, Canon Europe Ltd, Fujitsu, Honda Motor Europe Ltd., Kameda Seika Co Ltd, and Niigata University.

CIPA and the IP Lawyers Network Japan are pleased to announce a joint seminar inviting the new Chief Judge of the Japan Intellectual Property High Court (an appeal court), Judge Ryuichi Shitara, as the speaker.

The talk will cover the following topics:

Overview of procedures and recent trends

Introduction to the latest notable IP High Court’s Grand Panel judgments:

•   FRAND SEP, injunction and damages: Apple v Samsung
•   Patent term extension: Genentech v Japan Patent Office

Speaker: Judge Ryuichi Shitara, Chief Judge of the Japan Intellectual Property High Court

Price: Free for both members and non-members

CPD: 1 Hour

CIPA members must book on this seminar using the 'book me on event' button [this link should, with luck, lead to the right page]. If non-members or ITMA members wish to book, or for more information on the event, please email cpd@cipa.org.uk.

Fancy writing a report on this event for the CIPA Journal in exchange for a free place? For more information or to volunteer, please contact cpd@cipa.org.uk.

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:

Injunctions

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

Top Japanese IP judge comes to town

On Wednesday 19 February our friends at IBIL, the Institute of Brand and Innovation Law at University College London, are offering a fascinating insight into how patent litigation -- and indeed all IP litigation --works in practice in Japan, a jurisdiction that is positively bristling with patents.   The programme looks like this:

UCL Institute of Brand and Innovation Law (IBIL) Lecture

How Japanese IP Litigation Really Works

with Chief Judge Toshiaki Iimura of the IP High Court, Tokyo

Chaired by The Rt Hon Professor Sir Robin Jacob, Sir Hugh Laddie Chair of Intellectual Property Law, UCL Faculty of Laws

Wednesday 19 February 2014 from 6.00- 7.30pm
Followed by a reception 

About the eventThe Chief Judge will cover all the following topics, answer questions and entering into debate: 

• General: the court structure, numbers, speed and trends, who the judges are and how they are selected;
• Interim injunctions;
• Procedures on the way to trial including discovery, party and court experts, what happens when the defendant attacks validity and the Japanese approach to bifurcation;
• Remedies, injunctions (mandatory or discretionary) damages, account of profits, legal costs, international jurisdiction
• Invalidation actions
• Post-trial procedure and the active involvement of judges in settlement discussions.

Programme:

17:30	Registration Bentham House Foyer
18:00	Welcome Professor Sir Robin Jacob
	The Lecture
19:15	Reception in the Keeton Room

If you'd like to register, or even if you'd just like to browse through the names of those who have already registered, just click here.

You can read an interview from 2012 with Chief Judge Iimura in Managing Intellectual Property, here

Patent litigation in the US and Japan: what's the difference?

PatLit is pleased to announce that on Tuesday 8 December it is holding a seminar at which the speaker is Professor Toshiko Takenaka (Associate Director, Graduate Program in Intellectual Property Law and Policy Director, CASRIP). The subject of her talk is "Patent litigation in the US and Japan: what's the difference?". The venue is the London office of Olswang, just over the road from Holborn tube station.

Professor Takenaka has professional experience both in-house (with Texas Instruments Japan) and in private practice (with the Yamasaki Law & Patent Office). She is also the editor of Patent Law and Theory: a Handbook of Contemporary Research (Edward Elgar Publishing, 2009).

The event runs from 5.30pm to 7pm and will be accompanied by refreshments. There is no charge for admission. If you'd like to attend, please email Sandra Holloway here.

Shopping for a forum: the RCLIP seminar

The Research Center for the Legal System of Intellectual Property Center of Excellence - Waseda Institute for Corporation Law and Society (RCLIP) is, despite its university base and academic credentials, a practice-focused institution which focuses on many of the most sensitive and important issues in IP today, one of which is patent litigation.

The fifth issue of RCLIP's quarterly newsletter (published in Japanese/English) contains a report on last May's RCLIP International IP Seminar on "Japanese Corporations and Patent Litigations: Offensive Patent Strategies by Forum Shopping”. The first forum-shopping under review, by John Livingstone (Finnegan Henderson, Tokyo Office), was that which takes place within the United States, where the plaintiff can litigate before the Federal District Courts, the US PTO, the US International Trade Commission (ITC) and the Court of Federal Claims -- from all of which an appeal may be made to the Court of Appeals for the Federal Circuit. From the report it appears that, in District Courts, the patentee win rate is high, though fewer than 4% of disputes ever get to trial, the rest being resolved out of court settlement. The ITC, despite the limited range of actions it may hear, offers a patentee win rate of around 50% and a result within the year.

Richard Price (Taylor Wessing, London) then spoke on forum-shopping in England and Germany. He explained that in Germany the most popular locations for patent infringement are the courts in Düsseldorf, Munich and Mannheim, of which Düsseldorf is statistically the least patentee-friendly. The positions in China (Xiaoguang Cui, Sanyou Law Firm, Beijing) and Japan (Professor Toshiko Takenaka, CASRIP) were also reviewed.

PatLit is always pleased to read of events such as these, but hopes that RCLIP will be able in the future to make available the texts of the speakers' presentations, and/or a podcasts of their talks and the question-and-answer session so that a wider audience can study and benefit from the hard work of the speakers.