Ruling regarding the claim for damages based on Standard Essential Patents under FRAND Declaration (Intellectual Property High Court Grand Panel. 2013 (Ne) No. 10043) 

The Intellectual Property High Court Grand Panel ruled regarding the claim for damages based on Standard Essential Patents (“SEPs”) under FRAND Declaration on May 16, 2014 (Case No: 2013 (Ne) No.10043). 

The summary of the judgment is here.

The Court, on January 25, 2014, decided to invite opinions (amicus briefs) from the public on the specific issues in the case. This is unprecedented and epoch-making in the history of not only the intellectual property cases, but also the overall Japanese civil litigations.

Following this decision, we, Intellectual Property Lawyers Network Japan, filed our amicus brief (full text of the brief is here. (Japanese only)) to the Court on the March 20.


The summary of the brief is as follows;

             “The exercise of patent could be restricted based on a theory of contracts or abuse of rights. However, each theory has many issues. Especially in the theory of contracts, more issues must be solved regarding such as the facts which would be required to satisfy mutuality of a contract, and the scope of the mutuality which would be required for the formation of the contract. The decision on the restriction of the exercise of SEPs must be made in careful consideration of these issues because it has significant impacts on the practice.”


The decision held regarding the following matters;

i. the formation of the contract;

  • žgoverning law
  • žthe formation of agreement on the terms such as the fee, term, and area of the license based on the ETSI IPR Policy
  • ža contract for third party beneficiary

ii. abuse of rights;

  • žthe appellee’s reliance toward the license of the SEPs upon the appellant’s conducts
  • žthe process of the negotiation for the license and FRAND Declaration of the patents which could constitute the special facts that could lead to the restriction of exercise of the patents.
  • žthe decision might be different in the case of an unwilling licensee.
  • žthe factors which constitute an abuse of rights would be different between the claim for damages and the injunctive relief.


              We, from the standpoint of intellectual property lawyers, thoroughly considered and pointed out, in our amicus brief, the theories and issues on the restriction of the exercise of SEPs. We believe that our presentation was so valuable that the Court made the decision based on our brief no less than others.

              In addition, on the same day, the Intellectual Property High Court Grand Panel, on the appeal for the preliminary injunction (Case No: 2013 (Ra) No. 10007 and No. 10008), held that the appellant’s injunctive relief was not permitted because its exercise of SEPs was an abuse of rights.