Publication of the “Guidelines for Patent Infringement Lawsuits Involving Standard Essential Patents” by the Intellectual Property Divisions of the Tokyo District Court

I. Presumed progression of SEP Lawsuit proceedings in light of the Guidelines

While the Guidelines do not provide details of the contemplated proceedings, based on the information provided, we believe that the Guidelines contemplate the following progression of proceedings for SEP Lawsuits.

II. Notable points regarding the Guidelines

Special attention should be paid to the following points of the Guidelines:

• The Global FRAND Royalty: The parties will make their respective proposals for the Global FRAND Royalty and provide the concrete calculation basis, which will not be limited to the SEPs at issue in the SEP Lawsuit, in the early stage of the proceedings.
• Calculation Methods: As long as the basis for the plaintiff’s calculation of its proposed Global FRAND Royalty is provided, the plaintiff may use either the top-down approach, the comparable approach, or a combination of the two as its calculation method. Please note that, in its judgment dated April 10, 2025 (in the Pantech v. ASUS JAPAN case), the Tokyo District Court calculated the amount of FRAND royalty by multiplying the defendant’s product sales by the accumulated LTE standard royalty rate and then dividing the result by the total number of LTE standard patents.
• Expedited Proceedings: It appears that the court intends to encourage both parties to reach settlement as early as possible and, for that purpose, concentrates on settlement negotiations. It seems that the written proceedings for submissions of briefs addressing infringement and/or validity issues are also expected to proceed promptly.
• Abuse of Rights Defense: A claim for an injunction based on an alleged infringement of a FRAND-committed SEP made against a willing licensee will be dismissed as an abuse of rights by the SEP holder. The Guidelines makes it clear that, in determining whether the defendant has a willingness to obtain a license under FRAND terms, the court takes into account the course and content of the parties’ SEP licensing negotiations from the relevant time prior to the filing of the complaint through the termination of the settlement proceedings (i.e., including the course and content of the negotiations after the SEP Lawsuit was filed). This is consistent with the rulings in the Tokyo District Court Judgment.
• Provision of the Evidence Necessary for Royalty Calculation: The Guidelines explicitly state that in a case where a defendant fails to voluntary provide the evidence necessary to calculate the Global FRAND Royalty, there is a risk that the court may determine that the defendant is unwilling to obtain a license under FRAND terms. Both parties (especially defendants) should carefully consider whether and what information/evidence should be provided in a SEP Lawsuit.

III. Comments

The Guidelines highlight the TDC IP Division’s proactive, expedited, and settlement-focused approach to resolving the Global FRAND Royalty disputes. In light of the procedural framework for SEP Lawsuits apparently contemplated by the Guidelines, litigating SEP disputes in Japan may become more attractive, particularly where a comprehensive resolution of the Global FRAND Royalty and related issues is sought. Having said that, since the Guidelines were just recently published, their practical application and impact will need to be carefully considered.

Separately, we note that the TDC IP Division has published their “Guidelines for SEP Judicial Mediation (SEPJM) Proceedings.”

We will continue to provide updates on related developments.