1.Introduction

Regarding patent infringement lawsuits based on FRAND-declared Standard Essential Patents (SEPs), the Tokyo District Court has recently issued two significant judgments. On April 10, 2025, it awarded damages in Pantech v. ASUS (Tokyo District Court, 2022 (Wa) No. 7855) (the “ASUS Judgment”). Subsequently, on June 23, 2025, it granted an injunction in Pantech v. Google (Tokyo District Court, 2023 (Wa) No. 70501) (the “Google Judgment”). This article will first introduce the noteworthy points of the Google Judgment, which granted an injunction, and then discuss the notable aspects of the damages assessment in the ASUS Judgment. Furthermore, on July 10, 2025, the Osaka District Court dismissed a claim for an injunction in Pantech v. Google (Osaka District Court, 2023 (Wa) No. 7855) (the “Google II Judgment”). Therefore, this article will also conduct a comparative analysis of the Google Judgment in light of this decision. As all these cases have been appealed and are currently pending before the Intellectual Property (IP) High Court, the forthcoming decisions from the IP High Court are highly anticipated.

2.The Google Judgment

The Tokyo District Court fully granted the plaintiff Pantech’s claims and issued a judgment enjoining the defendant Google (formally “Google LLC (Japan),” but hereinafter “Google”) from assigning, importing, or offering for sale the “Pixel 7” smartphone in Japan.

(1) The Patent-in-Suit and Background The patent-in-suit (No. 6401224) is titled “Method for Mapping Physical Hybrid Automatic Repeat Request Indicator Channel.” It relates to a technology for efficiently mapping a signal (PHICH) used to confirm whether data has been correctly transmitted and received between a base station and a terminal (smartphone) in mobile communication standards such as LTE. This patent is an SEP essential for implementing the LTE standard.

• The accused product is Google’s “Pixel 7” smartphone.
• Pantech had made a declaration to a standard-setting organization of its willingness to grant licenses for this patent on Fair, Reasonable, and Non-Discriminatory (FRAND) terms (a FRAND declaration).

(2) Main Issues While the case involved disputes over whether the accused product fell within the technical scope of the patent and whether the patent was invalid, the court found that the product was within the technical scope and that there were no grounds for invalidity. The most noteworthy issue in this case was whether the claim for an injunction constituted an abuse of rights.

According to the 2014 Grand Panel judgment (on damages) and ruling (on injunctions) of the IP High Court (hereinafter the “Apple Judgment” and “Apple Ruling,” respectively), in the case of a FRAND-declared patent, it is an abuse of rights for a patent holder to readily seek an injunction against an implementer who is willing to take a license on FRAND terms, as this would betray the implementer’s trust. However, the Apple Ruling also states that an injunction may be granted if there are circumstances indicating that the implementer is “unwilling to take a license on FRAND terms.” Consequently, the determination of this “willingness to take a license on FRAND terms” has become the central issue in FRAND SEP litigation, and the Apple Ruling made this determination based on the history of past negotiations.

It is worth noting that in UK and German judgments, the availability of an injunction also depends on whether the implementer is an “unwilling licensee” or a “willing licensee.” The concept of an “unwilling licensee” is generally understood to be almost identical to an “implementer unwilling to take a license on FRAND terms.” However, the methodology for this determination in UK and German courts has been evolving based on the 2015 judgment of the Court of Justice of the European Union (CJEU) and subsequent case law, and it has aspects that differ substantially from the methodology based on the Apple Ruling in Japan. In this sense, the future development of case law in Japan is of great interest.

• Google’s Argument: Google consistently expressed its willingness to take a license on FRAND terms and negotiated in good faith, but the negotiations failed because Pantech continued to offer unreasonably high royalty rates. Therefore, the claim for an injunction is an abuse of rights.
• Pantech’s Argument: Google employed hold-out tactics to delay negotiations and had no sincere intention of concluding a license agreement, thus qualifying as an “implementer unwilling to take a license on FRAND terms.”

(3) The Tokyo District Court’s Decision The Tokyo District Court found that Google lacked a sincere intention to conclude a license agreement on FRAND terms and, concluding that Pantech’s claim was not an abuse of rights, granted the injunction against the Pixel 7. The court’s decision is fundamentally based on the framework of the Apple Ruling. However, it is highly noteworthy that the court determined the willingness to take a FRAND license by placing significant weight on the party’s response to a settlement recommendation premised on a global FRAND royalty rate applied to the sales revenue of the accused products.

• The court first detailed the negotiation history from June 12, 2020, to the filing of the lawsuit on August 17, 2023, and confirmed that the parties’ FRAND royalty calculation methods were fundamentally different, leading to a deadlock.
• On July 23, 2024, the court, after indicating its impression of infringement, recommended a settlement. It requested Google to propose a settlement plan based on a global SEP portfolio and the calculation method shown in the Apple Judgment (the “Grand Panel method”), which uses the amount derived from multiplying the final product’s sales revenue by a FRAND royalty rate as a starting point.
• However, while Google agreed to a settlement based on a global SEP portfolio, it rejected the court’s recommended framework. Google argued that the Grand Panel method would be “overly complex to calculate” due to the diverse range of accused products and refused to disclose the sales prices and volumes necessary for the calculation.
• Google’s settlement proposal was based on the number of units sold multiplied by a cumulative royalty per smartphone, which not only differed from the Grand Panel method but also had a significant gap with Pantech’s proposal. Consequently, the court terminated the settlement discussions.
• The court judged Google’s response as a rejection of the settlement framework proposed by the court and a refusal to disclose sales figures and volumes, thereby “eliminating any room for negotiation on its own.” The court concluded that this constituted “special circumstances” indicating an “unwillingness to take a license on FRAND terms.” As a result, Pantech’s claim for an injunction was not an abuse of rights.

Comments on this judgment will be provided in Section 4, but first, I will introduce the Osaka District Court’s judgment, which reached a different conclusion on the same matter.

3.The Google II Judgment

In a case between the same parties involving the same patent but seeking an injunction against the Pixel 7a, the Osaka District Court, like the Tokyo District Court, adopted the framework of the Apple Ruling. After reviewing the negotiation history, the court concluded that there were no special circumstances to find that Google was “unwilling to take a license on FRAND terms.” Therefore, it deemed Pantech’s claim an abuse of rights and dismissed the request for an injunction. The Osaka District Court, similar to the Tokyo court, conducted a detailed review of the negotiation history between Pantech and Google and concluded that Google’s conduct during the license negotiations did not lack good faith.

4.Comments on the Google and Google II Judgments

(1) Both the Google and Google II judgments adopted the framework of the Apple Ruling but reached different conclusions. The reason for this divergence is that the Google Judgment considered not only the past negotiation history but also Google’s rejection of the court’s settlement recommendation and its reasons for doing so to find an “unwillingness to take a license on FRAND terms.” In contrast, the Google II Judgment based its decision primarily on the pre-litigation negotiation history, finding no lack of good faith in Google’s conduct. In other words, the judgments diverged on the extent to which a party’s response during court-led settlement proceedings should be weighed. The Google Judgment can be seen as having advanced the Apple Ruling to the next stage, in line with the international trend that has been forming in UK and German FRAND SEP litigation since the Apple Ruling and the 2015 CJEU judgment.

(2) In the Google Judgment, the implementer’s rejection, without reasonable grounds, of the settlement framework based on the Grand Panel method, which the court proposed during the settlement proceedings of a FRAND SEP lawsuit, became the decisive factor in determining an “unwillingness to take a license on FRAND terms.”

(3) In the preliminary injunction proceedings filed before this lawsuit, the claim for an injunction was dismissed as an abuse of rights on the grounds that Google was willing to take a license on FRAND terms, and this decision was upheld by the IP High Court (Judgment, pp. 7, 56). The different outcomes between the preliminary injunction and the main lawsuit can be attributed to the new fact that emerged: Google’s rejection of the court’s settlement recommendation.

(4) In the first-instance judgment of the famous Unwired Planet case in the UK (2017), the court determined a global FRAND royalty for the entire SEP portfolio to be 8.8% of the smartphone price. The patent holder, Unwired Planet, accepted this, but the implementer, Huawei, made it clear that it would not enter into a global license agreement at that rate. Consequently, the court found Huawei to be an “unwilling licensee” and, concluding that Unwired Planet’s injunction claim was not an abuse of a dominant position, ordered an injunction against Huawei’s product sales in the UK based on its UK patents.

(5) The first-instance judgment in the Unwired Planet case was upheld by the UK Supreme Court and has now formed an international trend. The fact that the Tokyo District Court’s Google Judgment similarly considered Google’s rejection of the court’s settlement framework and its reasons to find an “unwillingness to take a license on FRAND terms” can be seen as a reflection of this international trend in FRAND SEP litigation.

(6) It is also noteworthy that in the Google Judgment, the court’s settlement recommendation was premised on a global FRAND royalty rate, and the parties agreed to this premise for the settlement discussions. This also aligns with the recent trends in UK and German case law.

(7) In post-2015 FRAND SEP litigation in the UK and Germany, the central issue in determining the availability of an injunction is whether the implementer is a “willing” or “unwilling” licensee, from the perspective of whether there is an “abuse of a dominant position” under EU competition law. Similarly, under the Apple Ruling in Japan, whether the implementer is “unwilling to negotiate a license on FRAND terms” is the central issue in determining whether an injunction claim constitutes an abuse of rights.

(8) While the legal basis in the EU is competition law, in Japan it is the doctrine of abuse of rights under the Civil Code or Patent Act. Although the legal frameworks differ, the substantive issue is common: whether the implementer is a willing or unwilling licensee, or whether the implementer is “willing to take a license on FRAND terms.”

(9) In FRAND SEP litigation, patent holders decide where in the world to file suit by comparing how different countries’ case law allows for injunctions and damages. While the fairness and speed of court proceedings are important, other major factors likely include which country’s courts are more likely to grant injunctions, which courts award appropriate damages for the patent holder, and the market size of each country.

(10) In Japan, after the Apple Judgment and Ruling were issued in 2014, very few FRAND SEP lawsuits were filed. In contrast, numerous FRAND SEP cases have been litigated in the UK and Germany, even after the CJEU judgment, and these cases have shaped the subsequent international trend. It is therefore highly significant that this year, two judgments from the Tokyo District Court have emerged, which, while considering the recent international trends in UK and German case law, have granted an injunction and damages (as in the ASUS Judgment discussed in Section 5).

(11) The scarcity of FRAND SEP litigation in Japan after the Apple decisions is likely due to an underestimation of the fact that the Apple Ruling, while denying an injunction based on the abuse of rights doctrine, explicitly stated that an injunction would be granted if the implementer is “unwilling to take a license on FRAND terms,” and also due to the low amount of damages awarded in the Apple Judgment.

(12) In a roundtable discussion with former Chief Judges of the IP High Court published in Saishin Chiteki Zaisan Soshō Jitsumu (Modern Intellectual Property Litigation Practice), I stated: “As a first-stage precedent, I think a judgment like Apple v. Samsung was good. However, after first-stage judgments have been issued in Japan, the US, and Europe, whether a party is acting in accordance with the rules of these judgments should be judged a bit more strictly than before. In that sense, I think we are entering an era where second-stage judgments are expected. What form they will take is a future issue, but considering the protection of patent holders, in cases where there are only protracted, formalistic negotiations, it may become necessary to find that the implementer has no intention of concluding a license and to grant an injunction swiftly… I hope that Japanese courts will also make fair and prompt decisions that properly consider the interests of both patent holders and implementers, and that a situation will arise where the international community will want to utilize Japanese courts.” The Apple Judgment and Ruling were the first of their kind in Japan, issued when there were no established norms for the conduct of patent holders and implementers regarding FRAND SEPs. This statement meant that now that a certain norm has been established—that an injunction can be granted against an “implementer unwilling to take a license on FRAND terms”—a second-stage judgment should be more proactive in making such a finding, for example, against an implementer using delay tactics. The Google Judgment is valued as a second-stage judgment that takes into account the recent international trends in case law.

(13) Furthermore, it cannot be denied that the determination of the overall FRAND SEP royalty rate in the Apple Judgment (5% × contribution of the communication standard) was somewhat low compared to subsequent case law, such as the 8.8% rate in the Unwired Planet first-instance judgment (April 5, 2017). The determination of the overall FRAND SEP royalty rate should reference the practice of global license agreements. Therefore, as the ASUS Judgment (discussed later) acknowledges, the accumulation of multiple court decisions from the UK and elsewhere that have determined FRAND SEP royalty rates based on global licensing practices should be considered. It is desirable for Japanese courts to also appropriately determine FRAND SEP royalty rates on a case-by-case basis, referencing these global precedents. In this sense, while the calculation method of the Apple Judgment may be a useful reference, the specific royalty rate determination should be updated.

(14) In ordinary civil litigation in Japan, it has been common practice not to use a party’s response to a settlement recommendation as a basis for the judgment. In contrast, this judgment uses the party’s response to a settlement recommendation, as a noticeable fact before the court, as a basis for determining the crucial fact of “willingness to take a license” (Judgment, pp. 58, 59). As this point is likely to become a central topic of future debate, I would like to comment on it.

(15) Under the Code of Civil Procedure, a party’s response to a court’s settlement proposal is clearly a noticeable fact before the court, as the Google Judgment states. However, it is true that in ordinary civil litigation, judgments considering a party’s response during settlement proceedings have been rare. A major reason for this is that in ordinary civil cases, judgments can be made based on the evidence submitted, so there was no need to consider the party’s response to a settlement proposal as a noticeable fact. There may also have been a consideration by the courts not to use a party’s response to a settlement proposal as material for a judgment, to encourage frank and free statements from the parties for the flexible resolution of disputes.

(16) However, in FRAND SEP litigation, a party’s response to a settlement recommendation based on FRAND terms, made after the court has indicated its impression of infringement, becomes a crucial piece of circumstantial evidence related to the determination of the important fact of the implementer’s “willingness to take a license on FRAND terms.” In the Unwired Planet first-instance judgment in the UK, the implementer Huawei’s rejection of the court’s settlement recommendation, which was based on a FRAND SEP royalty rate determined after careful deliberation by the court, became the decisive grounds for finding it to be an “unwilling licensee,” leading to the issuance of an injunction. Since this judgment was later upheld by the UK Supreme Court, such a practice has become the judicial practice in FRAND SEP litigation in the UK.

(17) It is also necessary to refer to the Court of Appeal’s judgment in the same case, which stated that there is not one single correct FRAND royalty rate, but a range of possibilities. This leads to the need to consider the reasons why an implementer does not comply with a court’s settlement recommendation, such as whether they reject the revenue × royalty rate method itself, or whether they accept the method but are responding within a range of multiple correct rates. In other words, the fact that an implementer does not comply with a court’s settlement recommendation should not immediately lead to a finding that they are “unwilling to take a license on FRAND terms.” The reasons for rejecting the recommended settlement plan should also be considered in determining whether the implementer is “unwilling.” It should be noted that the Google Judgment did consider Google’s reasons for rejecting the court’s settlement recommendation before making its decision.

(18) In Japanese courts, court-led settlement recommendations are a very important practice and are utilized much more than in Western countries. In FRAND SEP litigation, a settlement recommendation is an important process for resolving disputes through discussion, continuing from the pre-litigation negotiations between the parties. Therefore, it is natural to interpret the negotiations and responses of the patent holder and implementer during the court’s settlement recommendation process, which follow the pre-litigation negotiations, as very important facts in determining whether the implementer is “unwilling.” Thus, unlike in ordinary civil litigation, in FRAND SEP litigation, not only the pre-litigation negotiation history but also the parties’ responses during the court’s settlement recommendation process can be extremely important circumstantial evidence for objectively determining the “willingness to take a license on FRAND terms.” The Google Judgment is groundbreaking in FRAND SEP litigation for having clearly established this point.

(19) Furthermore, for Japanese courts to determine whether an implementer who rejects a court’s settlement recommendation is “unwilling,” after considering their reasons for rejection, is also very important for the prompt resolution of FRAND SEP disputes. Patent holders and implementers often negotiate FRAND SEP royalties for several years before trial, and it is a reality that there are often large gaps between them, leading to litigation. If courts were to deny an injunction by considering only the fact that the parties negotiated in good faith until the filing of the lawsuit, even if no agreement was reached, and without considering the negotiation history during the court’s settlement proceedings, it would mean that for the patent holder, filing a lawsuit would only prolong the dispute and solve nothing. At the very least, when a patent holder files a lawsuit, the court indicates its impression of infringement, and a formal settlement recommendation is made, the implementer should be required to respond in good faith. This judgment is an important precedent that is likely to have a significant impact on future FRAND SEP litigation.

5.The ASUS Judgment

(1) In the ASUS Judgment, the Tokyo District Court found that ASUS’s sale of smartphones infringed a patent held by Pantech (Patent No. 4982653) and that there were no grounds for invalidity. It awarded damages equivalent to a FRAND SEP royalty.

(2) The judgment dismissed the claim for an injunction. The reason was that while a FRAND royalty should ideally be agreed upon globally and as quickly as possible through good-faith negotiations, the calculation method for FRAND royalties is not yet well-established in Japanese practice. Given the circumstances, such as the vast difference between the FRAND royalty rates proposed by the parties, a global license solution was not realistic, and ASUS’s negotiation conduct could not be immediately deemed to be in bad faith.

(3) What is noteworthy in the ASUS Judgment is the method of assessing damages. The judgment determined the “total LTE standard royalty rate” as follows: “The Unwired Planet v. HUAWEI judgment (2017) found 8.8% to be appropriate, the TCL v. Ericsson judgment (2017) found 6-10%, and the HUAWEI v. Samsung judgment (2018) found 6-8%, and the average of the upper limits is recognized to be 8.9%. The accused products include those compatible with both LTE and 5G (accused 5G products) and those compatible with LTE but not 5G (accused LTE products), all of which have Wi-Fi and Bluetooth wireless communication functions. The accused products also have features other than communication functions that contribute to their sales, such as cameras, CPUs, displays, batteries, audio functions, and, depending on the product, terminal cooling functions, rear sub-displays, and fingerprint authentication systems. Furthermore, marketing activities by the defendant and ASUS Taiwan have created a brand image of the accused products as being low-priced and of good quality, which is recognized to have contributed to sales to a certain extent. Considering these and other circumstances in this case, it is appropriate to recognize the total LTE standard royalty rate as 9%. … For the accused 5G products only, it is appropriate to recognize the total LTE standard royalty rate to the extent of 8%.” It also determined that “the total number of LTE standard patents is recognized to be 1300.”

(4) In conclusion, the judgment determined that “the amount of damages equivalent to a FRAND license fee is appropriately calculated by multiplying the sales revenue of the accused products (accused LTE products: [Redacted] yen; accused 5G products: [Redacted] yen) by the total LTE standard royalty rate (accused LTE products: 9%; accused 5G products: 8%) and then dividing by the total number of LTE standard patents (1300). Therefore, according to the following calculation, the total amount of damages is [Redacted] yen. (1) Accused LTE products: [Redacted] yen × 9% ÷ 1300 = [Redacted] yen (2) Accused 5G products: [Redacted] yen × 8% ÷ 1300 = [Redacted] yen”

(5) The royalty rate for a FRAND SEP is, in a normal FRAND SEP license agreement, agreed upon as a global royalty rate. In a situation where there is an increasing number of court decisions from the UK and other countries determining global FRAND SEP royalty rates, it is expected that these court decisions will be appropriately considered in Japan as well.

(6) The ASUS Judgment, conscious of this point, considered the court decisions of the UK and other countries, and after considering the contribution of LTE and 5G communication standards and other smartphone functions, recognized the total LTE standard royalty rate as 9% of the smartphone’s sales revenue, and 8% for the accused 5G products. While the Apple Judgment determined the overall FRAND SEP royalty rate as “5% × contribution of the communication standard,” the ASUS Judgment’s determination of the royalty rate as 9%, etc., after considering the contribution of non-communication functions, is based on referencing the global royalty rates in UK court decisions. Since it is a global royalty rate, considering UK and other court decisions is reasonable as it takes into account the international trend in FRAND SEP litigation. The specific royalty rate and contribution of the communication standard determined in the Apple Judgment were case-specific findings based on limited evidence in Japan’s first such case. Now that more objective evidence has accumulated from global royalty rate decisions in other countries, it is a reasonable judgment for the ASUS Judgment to update the royalty rate by considering these new materials.