In a landmark decision, the Tokyo District Court today ruled in favor of South Korean mobile manufacturer Pantech in its patent infringement suit against Google, MLex has learned. The case, centered on standard-essential patent issues and fair, reasonable, and nondiscriminatory licensing commitments, marks a significant triumph for Pantech
because it is rare for a Japanese court to grant an injunction based on a SEP.
In a landmark decision, the Tokyo District Court today ruled in favor of South Korean mobile manufacturer Pantech in its patent infringement suit against Google, MLex has learned. The case, centered on standard-essential patent issues and fair, reasonable, and nondiscriminatory, or Frand licensing commitments, marks a significant triumph for Pantech.
The ruling is considered a rare instance in which a Japanese court granted an injunction based on a standard essential patent, or SEP.
Pantech’s patent covers a crucial method for mapping control signals — a process that determines how a cell tower sends acknowledgement messages to mobile phones, ensuring that data is received correctly in LTE networks. Because this technology is an integral part of the global LTE standard, it is classified as an SEP.
According to arguments outlined in the complaint seen by MLex, Pantech claimed that every technical part of Google Japan’s Pixel 7 smartphone matches the patented method and infringes its rights. The company asked the court to order Google to stop selling, transferring or importing the accused products.
Google has since discontinued the Pixel 7 model.
Pantech’s Japan No. 6401224 patent is declared under Frand terms. According to the complaint, Pantech claimed it made fair licensing proposals and acted in good faith by providing detailed patent information. Google on the other hand, insisted on a non-disclosure agreement at the outset — something Pantech says was unnecessary and caused delays.
Pantech also alleged that Google delayed negotiations and failed to engage meaningfully, demonstrating behavior consistent with hold-out tactics.
Pantech has applied to Japan’s customs for an import ban on infringing devices. Customs has published the request and has opened it for public comment until July 4.
According to the disclosed portions of the court decision seen by MLex, the Tokyo District Court recognized that Pantech’s patent qualifies as an SEP. It laid out that when a patent holder makes a Frand declaration, it generally cannot seek an injunction unless the implementer lacks a willingness to obtain a license.
The ruling emphasized that such an injunction, if pursued despite the implementer's good faith, would violate the principles of fairness and justice and constitute an abuse of rights.
However, the court concluded that no such good faith existed in this case. Although both parties engaged in court-led settlement discussions and the court asked Google to present a proposal based on a licensing formula which calculates royalties based on the sales revenue of the end product, Google declined to do so, stating that the calculation would be too complex.
The tech giant also refused to disclose basic sales or shipment figures for the accused products. Given this refusal, the court found that Google had effectively foreclosed any path toward settlement and demonstrated no intention to obtain a Frand license.
As a result, the court determined that the case constituted “special circumstances” indicating Google was not willing to license under Frand terms, and therefore, Pantech’s request for an injunction did not amount to an abuse of rights.
The injunction is provisionally enforceable if Pantech posts a 10 million yen ($68,000) bond. The court also set a 30-day period for appeal and assigned litigation costs to Google.
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