April 8, 2013 NPE litigation in Japan Activities and impact of FRAND commitments Eiichiro Kubota, Hogan Lovells Tokyo

April 8, 2013

NPE litigation in Japan Activities and impact of FRAND commitments

Eiichiro Kubota, Hogan Lovells Tokyo

www.hoganlovells.com

Litigations involving NPEs

• NTT Docomo v. ADC Technologies (October 1, 2004 Tokyo District Court)

• NEC v. ADC Technologies (October 1, 2004 Tokyo District Court)

• Chi Mei v. SEL (October 31, 2007 IP High Court)• ADC Technologies v. Softbank Mobile (March 30,

2010 IP High Court)• IPCom v. eAccess (August 30, 2011 Tokyo District

Court)

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Litigations involving NPEs

• IPCom v. eAccess (May 31, 2012 Tokyo District Court)

• ADC Technologies v. Sony (November 13, 2012 Tokyo District Court)

• High Point v. KDDI (January 17, 2013 IP High Court)

3


Pending cases

• IPCom v. eAccess• NTT Docomo v. IPCom• High Point v. KDDI• Adaptix (Acacia) v. Huawei

4


ADC Technologies

• Company in Nagoya• Founded by Mr. Adachi who is a Benrishi• 331 patents/applications in the IPDL database• Enforced patents on server systems and mobile

handsets• http://www.epoint.co.jp/

5


SEL (Semiconductor Energy Laboratory)

• Company in Atsugi• Led by Mr. Shunpei Yamazaki• 14215 patents/applications in the IPDL database• Taken DR action by Chi Mei on display patent• http://www.sel.co.jp/

6


IPCom

• German NPE• Acquired patent portfolio of mobile phone

technology from Bosch• Run by Mr. Frohwitter, patent attorney who was

founder of the Bardehle firm and was agent to Bosch

• 56 patents/applications in the IPDL database• http://www.ipcom-munich.com/home_en.html

7


High Point sarl

• Luxembourg corporation• Acquired patent originally filed by AT&T• Litigation pending in US, Netherlands, UK and

Germany

8


Acacia

• One of the largest US NPEs• Acquired Adaptix and its patent portfolio on 4G

technology• 16 patents/applications in the name of Adaptix in the

IPDL database

9


FRAND defense in Japan

• The case of Apple v. Samsung is the leading case• Decision of February 28, 2013 by the Tokyo District

Court (Otaka Court)• DR action by Apple claiming its iPhones and iPads

do not infringe Samsung's JP4642898 "Method and apparatus for transmitting and receiving packet data"

• Court found some of the goods to be in the technical scope of the invention but denied Samsung's rights to recover damages

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• Court said that Samsung's attempt to recover damages from Apple would be an "abuse of right" under the following circumstances;– The original application was filed in Korea on May 4, 2005– Samsung participated in the working group of the 3GPP

and made a proposal to introduce the invented technology in May 2005

– Samsung declared on August 7, 2007 that the patent in question is essential to the UMTS (3GPP) standard and that it will license the patent under FRAND terms

– Samsung filed for preliminary injunction against Apple on April 21, 2011 and the case is still pending

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– Samsung made a offer of a license under the patent specifying royalty rate on July 25, 2011 but did not show why they came up with such royalty rate

– Apple argued in its letter of August 18, 2011 that Samsung's royalty rate could not exceed 0.275% and asked Samsung to disclose royalty rates with other licensees

– Samsung requested Apple to give them a counter-offer on January 31, 2012 but again did not give any reasons why they came to the proposed royalty rate

– Apple made a counter-offer specifying royalty rate in its letter of March 4, 2012

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– Samsung replied on April 18, 2012 saying that the proposed royalty rate by Apple is too low and is not a proposal for a license under FRAND terms

– Apple made an offer on September 7, 2012 of a cross-license between Apple and Samsung on all smart phones and tablets specifying royalties

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• The Court, saying that Apple and Samsung have obligations to negotiate a license in good faith, concluded that Samsung's attempt to recover damages will be an abuse of right under current circumstances because;– Samsung did not show the reasons for the proposed

royalty rate– Samsung did not disclose license agreements with other

licensees– Samsung did not make a counter-offer against license

terms proposed by Apple

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– Samsung is still asking for preliminary injunction against Apple's products

– Samsung disclosed its patent after 2 years from when the invented technology was adopted in the 3GPP standard

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April 8, 2013 NPE litigation in Japan Activities and impact of FRAND commitments Eiichiro Kubota, Hogan Lovells Tokyo