2025.10.24
Pantech v. Google - Japan’s First Decision Granting Injunction Based on SEP Infringement
PATENT
Pantech v. Google - Japan’s First Decision Granting Injunction Based on SEP Infringement
On June 24, 2025, the Tokyo District Court rendered a decision ordering an injunction against Google Japan, prohibiting the sale of the “Pixel 7” smartphone, finding that the Pixel 7 smartphone infringes Japanese Patent No. 6401224 owned by South Korean manufacturer Pantech.
Japanese Patent No. 6401224 is a Standard Essential Patent (SEP) relating to “signal control mapping technology for acknowledgement signals in 4G LTE networks.” For this patent, a FRAND declaration (a commitment to Fair, Reasonable, and Non-discriminatory licensing) has been made.
Pantech had filed a lawsuit against Google, seeking an injunction against the Pixel 7 and claiming damages for patent infringement. This is the first case in Japan where an injunction has been granted based on SEP infringement.
In Japan, following the Intellectual Property High Court (hereinafter, “IP High Court”) Grand Panel Decision of 2014 (Samsung v. Apple, Case No. 2013 (Ne) 10043, decision rendered on May 16, 2014), claims for injunctions based on infringement of SEPs subject to FRAND declaration are, in principle, assessed based on the following criteria 1 to 3:
1. Where the alleged infringer is willing to take a license on FRAND terms, an injunction sought by the SEP holder who made a FRAND declaration constitutes an abuse of rights and is not allowed.
2. On the other hand, where the alleged infringer is not willing to take a license on FRAND terms, an injunction may be granted.
3. The finding that the alleged infringer is not willing to take a license on FRAND terms should be made strictly.
The proceedings in the Pantech v. Google lawsuit concerning Japanese Patent No. 6401224 were as follows:
I. Pantech and Google failed to reach an agreement in negotiations over the license terms. Thus, the Court expressed a preliminary view that sales of the Pixel 7 smartphone constitute infringement of patent right, and recommended settlement.
II. Pantech and Google agreed to pursue settlement negotiations before the Court.
III. Following the aforementioned criteria of the 2014 IP High Court Grand Panel Decision, the Court asked Google to present a settlement proposal which calculated the license fee based on the sales revenue of the final product.
IV. Google responded that it could not present such a proposal due to the excessive complexity of the calculation, and declined to disclose the sales amount and the sales volume of the infringing products.
The Tokyo District Court held that the Google’s conduct of IV above was in bad faith, leaving no room for further license negotiations, and therefore found that Google was unwilling to take a license on FRAND terms.
Google argued as follows: “We have engaged in good-faith license negotiations, and the injunction claim based on the SEP infringement constitutes an abuse of rights.” However, the Court issued the Decision granting an injunction.
In recent years, courts such as the Unified Patent Court (UPC) in Europe and the German Federal Court of Justice (BGH) have placed emphasis on “good faith of FRAND negotiations” when determining whether or not to grant an injunction. The present Decision is considered to align with this trend of the UPC and the BGH.
Google filed an appeal, and the case is now pending before the IP High Court. In the appeal, it will be an issue whether the Court’s finding under the criteria 3 above was sufficiently strict.
One similar lawsuit involving a SEP is the Pantech v. ASUS case (Case No. 2022 (Wa) 7976, decision rendered on April 10, 2025). In that case, while infringement was found, the claim for an injunction was dismissed as an abuse of rights, and only damages were awarded. In the case, Pantech argued that ASUS acted in bad faith during the license negotiations after the recommendation of settlement. However, the Court noted that the lack of an established calculation methodology for license fees in Japanese practice prevented an agreement, and held that ASUS’s acts during the negotiations were not necessarily considered to be in bad faith.
Although sales of the Pixel 7 smartphone have already ended, and the impact of this injunction on Google is expected to be limited, if the injunction becomes final, the sale of second-hand Pixel 7 devices could be prohibited. Therefore, this case warrants close attention going forward.
Japanese Patent No. 6401224 is a Standard Essential Patent (SEP) relating to “signal control mapping technology for acknowledgement signals in 4G LTE networks.” For this patent, a FRAND declaration (a commitment to Fair, Reasonable, and Non-discriminatory licensing) has been made.
Pantech had filed a lawsuit against Google, seeking an injunction against the Pixel 7 and claiming damages for patent infringement. This is the first case in Japan where an injunction has been granted based on SEP infringement.
In Japan, following the Intellectual Property High Court (hereinafter, “IP High Court”) Grand Panel Decision of 2014 (Samsung v. Apple, Case No. 2013 (Ne) 10043, decision rendered on May 16, 2014), claims for injunctions based on infringement of SEPs subject to FRAND declaration are, in principle, assessed based on the following criteria 1 to 3:
1. Where the alleged infringer is willing to take a license on FRAND terms, an injunction sought by the SEP holder who made a FRAND declaration constitutes an abuse of rights and is not allowed.
2. On the other hand, where the alleged infringer is not willing to take a license on FRAND terms, an injunction may be granted.
3. The finding that the alleged infringer is not willing to take a license on FRAND terms should be made strictly.
The proceedings in the Pantech v. Google lawsuit concerning Japanese Patent No. 6401224 were as follows:
I. Pantech and Google failed to reach an agreement in negotiations over the license terms. Thus, the Court expressed a preliminary view that sales of the Pixel 7 smartphone constitute infringement of patent right, and recommended settlement.
II. Pantech and Google agreed to pursue settlement negotiations before the Court.
III. Following the aforementioned criteria of the 2014 IP High Court Grand Panel Decision, the Court asked Google to present a settlement proposal which calculated the license fee based on the sales revenue of the final product.
IV. Google responded that it could not present such a proposal due to the excessive complexity of the calculation, and declined to disclose the sales amount and the sales volume of the infringing products.
The Tokyo District Court held that the Google’s conduct of IV above was in bad faith, leaving no room for further license negotiations, and therefore found that Google was unwilling to take a license on FRAND terms.
Google argued as follows: “We have engaged in good-faith license negotiations, and the injunction claim based on the SEP infringement constitutes an abuse of rights.” However, the Court issued the Decision granting an injunction.
In recent years, courts such as the Unified Patent Court (UPC) in Europe and the German Federal Court of Justice (BGH) have placed emphasis on “good faith of FRAND negotiations” when determining whether or not to grant an injunction. The present Decision is considered to align with this trend of the UPC and the BGH.
Google filed an appeal, and the case is now pending before the IP High Court. In the appeal, it will be an issue whether the Court’s finding under the criteria 3 above was sufficiently strict.
One similar lawsuit involving a SEP is the Pantech v. ASUS case (Case No. 2022 (Wa) 7976, decision rendered on April 10, 2025). In that case, while infringement was found, the claim for an injunction was dismissed as an abuse of rights, and only damages were awarded. In the case, Pantech argued that ASUS acted in bad faith during the license negotiations after the recommendation of settlement. However, the Court noted that the lack of an established calculation methodology for license fees in Japanese practice prevented an agreement, and held that ASUS’s acts during the negotiations were not necessarily considered to be in bad faith.
Although sales of the Pixel 7 smartphone have already ended, and the impact of this injunction on Google is expected to be limited, if the injunction becomes final, the sale of second-hand Pixel 7 devices could be prohibited. Therefore, this case warrants close attention going forward.
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