Sunday, March 3, 2013

New Victory of Apple against Samsung in Japan

Apple and Samsung have been fighting over IP all over the world. On February 28, 2013, Tokyo District Court ruled for Apple on the Japanese litigation between the parties. Unfortunately, Japanese court opinions are not disclosed automatically and even if it is obtainable, it will take some time until I can review the whole court opinion. So, I actually have not read the court opinion yet. However, according to the news report, this court opinion seems to be epoch-making in terms of Japanese patent law.

In this case, Samsung alleges Apple's infringement on Samsung's patent on 3G telecommunication technology. The court found the prima facie case for Samsung saying that Apple's products including iPhones are using the technology within the scope of Samsung's patent. However, Apple pointed out that Samsung made a "FRAND" announcement, which is to show its willingness to license the Standard Essential Patent (SEP) fairly, reasonably and non-discriminatorily and although Apple asked for license, Samsung did not negotiate with Apple in good faith. Apple argued that Samsung's patent infringement claim is an abuse of its right considering the FRAND announcement and Samsung's bad faith attitude during the license negotiation. The Tokyo District Court bought this argument and judged in favour of Apple.

Traditionally, abuse of right has been used in the context of patent. But in most cases, the concept is used when the holder of a patent has filed an infringement suit and such patent is null and void. For example, Japanese patent law, like the American equivalent, requires "novelty." But sometimes, the Japanese Patent Office misses important prior arts and issues a patent. In such a case, the patent can become null and void through an internal process similar to the re-examination process in the US. In Texas Instruments v. Fujitsu, 54-4 Minshu 1368 (April 11, 2000), or Kilby case, the Supreme Court of Japan ruled that if it is clear that the patent should be nullified, then even before the patent is actually nullified, the patent holder's claim is an abuse of right. After the judgment, the Japanese Patent Law was amended and Article 104-3(1) similar (but not identical) to the Kilby opinion was introduced. However, the Samsung case is not in this kind of context. It is the first time in Japan that a court found an exercise of patent as abuse of right because of the FRAND announcement of the patent holder.

As this is merely a district court level judgment, Samsung can appeal to the Intellectual Property High Court. So, whether this judgment will become final is not yet clear. Also, as the court opinion was not disclosed to the public, I could not check the detailed and concrete reason why the court found Samsung's action to be an abuse of its right. However, as the "FRAND" announcement is widely seen, the impact of this judgment can be enormous. I plan to update on this issue after reviewing the court opinion.

DISCLAIMER: "IT Law issues in Japan" only provides general information about Japanese information technology law and does not, under any circumstances, constitute legal advice. You should first obtain the advice of professional legal counsel who is qualified in Japan before acting or refraining from acting based on this blog.

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