2013 (Ra) 10008, Appeal against the decision for the dismissal of the petition for aprovisional disposition order based on patent right(Decision in prior instance: Tokyo District Court 2011 (Yo) 22098)

Decision
Appellant:
Samsung Electronics Co., Ltd.
Counsel attorneys:
OHNO Seiji
Same as above:
MIMURA Ryoichi
Same as above:
TANAKA Masato
Same as above:
ICHIHASHI TomomineSame as above:
INOUE Yoshitaka
Same as above:
KOBAYASHI HideakiSame as above:
IIZUKA Akio
Same as above:
INOUE Soh
Same as above:
TSUJIMOTO Kensuke
Same as above:
OKADA HiroakiCounsel patent attorney: SUZUKI Mamoru
Patent attorney as assistant in court:
OTANI Kan
Appellee:Apple Japan Godo KaishaCounsel attorneys: NAGASAWA Yukio
Same as above:
YAKURA Chie
Same as above:
NAGAI Hideto
Same as above:
INASE Yuichi
Same as above:
ISHIHARA Naoko
Same as above:
KANEKO Shinsuke
Same as above:
KURAHARA ShinichiroSame as above:
KATAYAMA Eiji
Same as above:
KITAHARA Junichi
Same as above:
OKAMOTO Naomi
Same as above:
IWAMA Chitaka
Same as above:
KAJINAMI ShoichiroCounsel patent attorneys: OTSUKA Yasunori1

Same as above:
KATO Shimako
Patent attorneys as assistant in court:
Same as above:
SAKATA Yasuhiro

OTSUKA Yasuhiro

Main text
1. The appeal against the decision shall be dismissed.
2. The cost for this appeal shall be borne by the appellant.
3. The additional period for the special appeal against the decision or
the appeal against the decision with permission to the Supreme
Court shall be thirty (30) days.
No. 1 Gist of the appeal
1. The decision in prior instance shall be revoked.
2. The appellee is prohibited from the production, assignment, lease, import, oroffering for the assignment or lease (including displaying for the purpose of
assignment or lease) of the products specified in the List of Products attachedhereto.
3. The appellee must release the possession of the products specified in the List of
Products attached hereto and deliver them to the court execution officer.
4. The entire court costs for the first instance and appeal instance shall be borne by theappellee.
No. 2 Background
1. Summary of caseThis is the case wherein the appellant (obligee) alleged that the appellee's (obligor's)
production, assignment, import or other acts in relation to the products specified in theattached Lists of Products (hereinafter referred to as the "Product") constitutes theinfringement of the appellant's patent right under the Patent No. 4642898 for theinvention titled "method and apparatus for transmitting/receiving packet data using
pre-defined length indicator in a mobile communication system" (this patent shall behereinafter referred to as the "Patent"; and the patent right as the "Patent Right"), andfiled the petition for a provisional disposition order for an injunction against theappellee's production, assignment, import, etc. of the Product and custody of infringing
products by a court execution officer. The right sought to be preserved by thisprovisional disposition is the right to seek an injunction based on the Patent Right.
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In the decision in prior instance, the court held that the Product fall within thetechnical scope of the invention pertaining to the Patent Right; however, the court
dismissed the appellant's petition holding that the appellant's exercise of the right toseek an injunction based on the Patent Right constitutes the abuse of right. The
appellant filed this appeal to challenge such decision.
2. Undisputed facts, etc. (the facts without any indication of prima-facie evidence are
the well-known or undisputed facts, or the facts found from the entire import ofhearings.)(1) Parties
A. The appellee is a limited liability company ("godo kaisha" under the laws ofB.

Japan) whose business objectives are sale, etc. of personal computers, hardware
and software for computer-related devices, and ancillary devices for computers.
The appellee implemented an absorption-type merger of Apple Japan K.K., asubsidiary company of Apple Incorporated, a U.S. corporation, (hereinafterreferred to as "Apple Inc.") on October 30, 2011(hereinafter the term"appellee" includes Apple Japan K.K. before the abovementioned
absorption-type merger).
The appellant is a South Korean corporation whose business objectives are
manufacturing, sale, etc. of electric machine devices, communication andrelated machine devices, and their component parts.

(2) Patent Right
A. The appellant (the name as it appears on the patent registry is "Samsung
Electronics Company Limited") filed an international application for the Patent(the PCT international application number is PCT/KR2006/001699, its priority
date is May 4, 2005, its priority country is South Korea, and the Japaneseapplication number is Patent Application No. 2008-507565; hereinafter referred
to as the "Patent Application") on May 4, 2006, and obtained the registration of
establishment of the Patent Right on December 10, 2010 (Exhibits Ko No. 1
and No. 2).
B. The claims of the Patent comprise Claims 1 to 14. Claims 1 and 8 read as
follows (the invention of Claim 8 is hereinafter referred to as "Invention 1" andthe invention of Claim 1 as "Invention 2," and these Inventions 1 and 2 shall behereinafter collectively referred to as the "Inventions").
"[Claim 1] A method of transmitting data in a mobile communication system,comprising: a stage of receiving a service data unit (SDU) from a higher layerand determining whether the SDU is included in one protocol data unit (PDU);
3

if the SDU is included in one PDU, a stage of configuring the PDU including aheader and a data field, wherein the header includes a sequence number (SN)field, and a one-bit field indicating that the PDU includes the whole SDU in thedata field without segmentation/concatenation/padding; if the SDU is notincluded in one PDU, a stage of segmenting the SDU into a plurality ofsegments according to the transmittable PDU size, and the data field of each
PDU configuring a plurality of PDUs comprising one of said plurality ofsegments, wherein headers of the PDUs include an SN field, a one-bit fieldindicating the presence of at least one length indicator (LI) field and said atleast one LI field; if the data field of the PDU includes an intermediate segmentof the SDU, a stage, wherein the LI field is set to the pre-defined value
indicating the presence in the PDU of an intermediate segment which is neither
the first nor last segment of the SDU, and the PDU is sent to a receiver.
"[Claim 8] An apparatus for transmitting data in a mobile communication
system, comprising: a transmission buffer for receiving a service data unit
(SDU) from a higher layer, determining whether the SDU is included in one
protocol data unit (PDU), and reconfiguring the SDU to at least one segment
according to the transmittable PDU size; a header inserter for configuring atleast one PDU including a serial number (SN) field and a one-bit field in aheader, and said at least one segment in a data field; a one-bit field setter for
setting the one-bit field to indicate that the PDU includes the whole SDU
without segmentation/concatenation/padding in the data field, if the SDU is
included in one PDU, and for setting the one-bit field to indicate the presenceof at least one length indicator (LI) field, if the data field of the PDU includes
an intermediate segment of the SDU; an LI inserter for inserting and setting an
LI field after the one-bit field in said at least one PDU if the SDU is notincluded in one PDU, wherein if the data field of the PDU includes anintermediate segment of the SDU, the LI field is set to the pre-defined value
indicating the presence in the PDU of an intermediate segment which is neither
the first nor last segment of the SDU; and a transmitter for sending at least oneC.

PDU received from the LI inserter to a receiver."The constituent features of each of the Inventions are as follows (each of theconstituent features shall be hereinafter referred to as "Constituent Feature A,""Constituent Feature B," etc.)(A) Invention 1 (Claim 8)[A] An apparatus for transmitting data in a mobile communication4

system, comprising:[B] a transmission buffer for receiving a service data unit (SDU) from ahigher layer, determining whether the SDU is included in one
protocol data unit (PDU), and reconfiguring the SDU to at least one
segment according to the transmittable PDU size;[C] a header inserter for constructing at least one PDU including a serial
number (SN) field and a one-bit field in a header, and said at least
one segment in a data field;[D] a one-bit field setter for setting the one-bit field to indicate that the
PDU
includes
the
whole
SDU
without
segmentation/concatenation/padding in the data field, if the SDU is
included in one PDU, and for setting the one-bit field to indicate thepresence of at least one length indicator (LI) field, if the data fieldof the PDU includes an intermediate segment of the SDU;
[E] an LI inserter for inserting and setting an LI field after the one-bit
field in said at least one PDU if the SDU is not included in one
PDU,[F] wherein if the data field of the PDU includes an intermediatesegment of the SDU, the LI field is set to the pre-defined value
indicating the presence in the PDU of an intermediate segment(B)

which is neither the first nor the last segment of the SDU;
[G] and a transmitter for sending at least one PDU received from the LI
inserter to a receiver.
[H] an apparatus for transmitting data which comprises the features [B]
to [G] above.
Invention 2 (Claim 1)[I] A method of transmitting data in a mobile communication system,comprising:[J] a stage of receiving a service data unit (SDU) from a higher layerand determining whether the SDU is included in one protocol data
unit (PDU);[K] a stage of constructing the PDU including a header and data field, if
the SDU is included in one PDU, wherein the header includes asequence number (SN) field, and a one-bit field indicating that the
PDU includes the whole SDU in the data field without
segmentation/concatenation/padding;5

[L] if the SDU is not included in one PDU, a stage of segmenting the
SDU into a plurality of segments according to the transmittable
PDU size, and the data field of each PDU constructing a plurality of
PDUs comprising one of the plurality of segments, wherein headersof the PDUs include a SN field, at least a one-bit field indicating thepresence of a length indicator (LI) field and said at least one LI
field;[M] if the data field of the PDU includes an intermediate segment of the
SDU, a stage wherein the LI field is set to the pre-defined value
indicating the presence in the PDU of an intermediate segment
which is neither the first nor the last segment of the SDU;
[N] and the PDU is sent to a receiver.
[O] a method of transmitting data which comprises the features [J] to[N] above.
(3) Appellee's acts, etc.
A. The appellee is engaged in import and sale of the Product manufactured byApple Inc.
B. (A) The Product satisfy Constituent Features A and H of Invention 1.
(B) The method of data transmission incorporated into the Product satisfies
Constituent Features I and O of Invention 2.
(C) The Product conform to the UMTS (Universal Mobile
Telecommunications System) standard, which is the telecommunications
standard developed by 3GPP (Third Generation Partnership Project).
3GPP is a private organization established for the purposes of thedissemination of the third-generation mobile telecommunication system ormobile telephone system (3G), as well as the international standardizationof the related specifications (Exhibits Ko No. 3 to No. 5 and No. 11; thetelecommunications standard developed by 3GPP may be hereinafterreferred to as "3GPP Standards").
The UMTS standard, comprising of a large number of technicalspecifications, collectively refers to the third-generation mobile
telecommunication system developed by 3GPP. The UMTS standard
covers various wireless communication systems, such as the W-CDMA
method (Wideband Code Division Multiple Access; Generally, the term
"W-CDMA" is sometimes used to mean the UMTS standard; however, theterm "W-CDMA" in this judgment refers to the method specified in the 25
6Series of 3GPP technical specification (hereinafter, technical specification
is sometimes referred to as "TS")) and the LTE method (Long Term
Evolution, as specified in the 36 Series of 3GPP TS).
(4) FRAND declaration for the Patent
A. ETSI (European Telecommunications Standards Institute), one of the standard
organizations which established 3GPP, provides the "Intellectual Property
Rights Policy" as the guidelines for the treatment of intellectual property rights(IPRs).
The IPR Policy of ETSI (effective as of April 8, 2009) contains the following
Clauses (Exhibit Ko No. 36 and Exhibit Otsu No. 147, the original text is
English):"3. Policy Objectives
3.1 It is ETSI's objective to create STANDARDS and TECHNICALSPECIFICATIONS that are based on solutions which best meet the technicalobjectives of the European telecommunications sector, as defined by theGeneral Assembly. In order to further this objective the ETSI IPR POLICY
seeks to reduce the risk to ETSI, MEMBERS, and others applying ETSISTANDARDS and TECHNICAL SPECIFICATIONS, that investment in the
preparation, adoption and application of STANDARDS could be wasted as aresult of an ESSENTIAL IPR for a STANDARD or TECHNICALSPECIFICATION being unavailable. In achieving this objective, the ETSI IPRPOLICY seeks a balance between the needs of standardization for public use in
the field of telecommunications and the rights of the owners of IPRs.
3.2 IPR holders whether members of ETSI and their AFFILIATES or third
parties, should be adequately and fairly rewarded for the use of their IPRs in
the implementation of STANDARDS and TECHNICAL SPECIFICATIONS.
4.
Disclosure of IPRs
4.1 ….. each MEMBER shall use its reasonable endeavours, in particularduring the development of a STANDARD or TECHNICAL SPECIFICATION
where it participates, to inform ETSI of ESSENTIAL IPRs in a timely manner.
In particular, a MEMBER submitting a technical proposal for a STANDARD
or TECHNICAL SPECIFICATION shall, on a bona fide basis, draw theattention of ETSI to any of that MEMBER's IPR which might be ESSENTIAL
if that proposal is adopted.
4.3 The obligations pursuant to Clause 4.1 above are deemed to be fulfilled
in respect of all existing and future members of a PATENT FAMILY if ETSI
7

has been informed of a member of this PATENT FAMILY in a timely manner.
6.
Availability of Licenses
6.1 When an ESSENTIAL IPR relating to a particular STANDARD or
TECHNICAL SPECIFICATION is brought to the attention of ETSI, theDirector-General of ETSI shall immediately request the owner to give within
three months an irrevocable undertaking in writing that it is prepared to grantirrevocable licenses on fair, reasonable and non-discriminatory ("FRAND")conditions under such IPR to at least the following extent:
・MANUFACTURE, including the right to make or have made customized
components and sub-systems to the licensee's own design for use in
MANUFACTURE;
・sell, lease, or otherwise dispose of EQUIPMENT so MANUFACTURED;・repair, use, or operate EQUIPMENT; and・use METHODS.
The above undertaking may be made subject to the condition that those who
seek licenses agree to reciprocate.
6.2 An undertaking pursuant to Clause 6.1 with regard to a specified memberof a PATENT FAMILY shall apply to all existing and future ESSENTIAL IPRsof that PATENT FAMILY unless there is an explicit written exclusion of
specified IPRs at the time the undertaking is made. The extent of any suchexclusion shall be limited to those explicitly specified IPRs.
6.3 As long as the requested undertaking of the IPR owner is not granted, theCOMMITTEE Chairmen should, if appropriate, in consultation with the ETSISecretariat use their judgment as to whether or not the COMMITTEE should
suspend work on the relevant parts of the STANDARD or TECHNICALSPECIFICATION until the matter has been resolved and/or submit for
approval any relevant STANDARD or TECHNICAL SPECIFICATION.
12. The POLICY shall be governed by the laws of France.
15. Definitions (Note: In this decision, the terms "essential," "IPR,""member" and "patent family" shall be used with the same meaning as ascribedin the following definitions.)
6. "ESSENTIAL" as applied to IPR means that it is not possible ontechnical (but not commercial) grounds, taking into account normal
technical practice and the state of the art generally available at the time ofstandardization, to make, sell, lease, otherwise dispose of, repair, use oroperate EQUIPMENT or METHODS which comply with a STANDARD
8

without infringing that IPR. For the avoidance of doubt in exceptional cases
where a STANDARD can only be implemented by technical solutions, allof which are infringements of IPRs, all such IPRs shall be considered
ESSENTIAL.
7. "IPR" shall mean any intellectual property right conferred by statute law
including applications therefor other than trademarks. For the avoidance of
doubt rights relating to get-up, confidential information, trade secrets or the
like are excluded from the definition of IPR. …
9. "MEMBER" shall mean a member or associate member of ETSI.
References to a MEMBER shall wherever the context permits be

B.

interpreted as references to that MEMBER and its AFFILIATES. …
13. "PATENT FAMILY" shall mean all the documents having at least onepriority in common, including the priority document(s) themselves. For the
avoidance of doubt, "documents" refers to patents, utility models, andapplications therefor.
(A) On December 14, 1998, the appellant made an undertaking (declaration)
to ETSI that it was prepared to license its essential IPR relating to
W-CDMA technology supported by ETSI as the UMTS standard on "fair,reasonable and non-discriminatory terms and conditions" (hereinafterreferred to as the "FRAND Terms") in accordance with ETSI IPR Policy
Clause 6.1 (Exhibit Ko No. 29).
(B) On August 7, 2007, the appellant, in accordance with ETSI IPR Policy
Clause 4.1, notified ETSI of the number of the South Korean patentapplication which served as the basis for the priority claim for the Patent
Application and the international application number of the Patent
Application (PCT/KR2006/001699), and declared that the IPRs relating tothese applications are or highly likely will be an essential IPR for the
UMTS standard (such as TS 25.322), with a declaration that it was
prepared to grant an irrevocable license in accordance with the licensing
terms and conditions complying with ETSI IPR Policy Clause 6.1 (i.e. the

FRAND Terms; and this declaration shall be hereinafter referred to as the"FRAND Declaration")(Exhibit Ko No.37). The FRAND Declaration
contained the provision that the validity, etc. thereof shall be governed by
the laws of France, and the provision to make such undertaking subject tothe condition that prospective licensees agree to reciprocate.
3. Parties' allegations
9

The parties' allegations are as specified in their respective written allegations.
Therefore, the court cites these allegations.
No. 3 Court decision
1. Whether the Product fall within the technical scope of Invention 1
The court determines that the Product fall within the technical scope of Invention 1.
The reasons are as follows:(1) Structures of ProductA. Whether the Product comply with Technical Specification V6.9.0
The appellant alleges that Invention 1 is the implementation of the"alternative E-bit interpretation" as set out in "3GPP TS 25.322 V6.9.0," thetechnical specification of 3GPP standards developed by 3GPP in September
2006 (hereinafter referred to as the "Technical Specification V6.9.0"), andthat the Product complying with such technical specification fall within thetechnical scope of Invention 1.
First, the court determines whether the Product comply with the Technical
Specification V6.9.0.
(A) Alternative E-bit interpretation
Subclauses 9.2.2.5, 9.2.2.8 and 9.2.8.1 of Technical Specification
V6.9.0 (see Attachment "3 GPP TS25.322 V6.9.0(Summary) ")contain the following descriptions. [i] For the E-bit (extension bit) in
the first octet of the PDU (UMD PDU) whose transmission mode isunacknowledged mode, either the "normal E-bit interpretation" or the"alternative E-bit interpretation" is applied depending on the higher
layer configuration. [ii] Under the "alternative E-bit interpretation,"
the E-bit '0' contained in the first octet means that "the next field is acomplete SDU, which is not segmented, concatenated or padded,"
whereas the E-bit '1' means that "the next field is a length indicatorand an E-bit." [iii] The "length indicator" is used to indicate the lastoctet of each SDU (RLC SDU) ending within the PDU, unless the
E-bit contained in the first octet indicates a "complete SDU notsegmented, concatenated or padded." [iv] In the case where the"alternative E-bit interpretation" is configured, and a PDU (RLC PDU)
contains a segment of an SDU but neither the first octet nor the lastoctet of this SDU, the 7-bit "length indicator" with value '111 1110' or
the 15-bit "length indicator" with value '111 1111 1111 1110' shall be
10

used.
(B) Demonstration Testa. Considering prima-facie evidence (Exhibits Ko No. 21, No. 22 andNo. 73), as well as the entire import of hearings, the court finds thefollowing facts:(a) A test for the Products was performed by Chipworks Inc., a
Canadian corporation (hereinafter referred to as the"Demonstration Test"). In the Demonstration Test, a radio
tester named "CMW500 universal radio communication
tester" manufactured by Rohde & Schwarz, a German
corporation, was used as the "base station emulator."
CMW500 is a device supporting the W-CDMA method.
(b) Test 1 of the Demonstration Test was for the "case in which
thePDU
containsacomplete
SDU
without
segmentation/concatenation/padding," and performed under
the conditions of "PDU Size: 488-bit, SDU size: 480-bit."
Test 2 was the test to monitor the PDU as an "intermediatesegment" excluding the first and last PDUs (e.g. the second
PDU), and performed under the conditions of "PDU Size:
80-bit, SDU size: 480-bit."(c) The results of the Demonstration Tests were as follows:[i] In Test 1, the E-bit following the sequence number (SN)was '0,' and a PDU without a length indicator (LI) was
output (Exhibit Ko No. 21, Figures 12 and 14).
[ii] In Test 2, the E-bit following the sequence number (SN)was '1,' and a PDU containing a pre-defined value'1111110' as the length indicator was output (Exhibit Ko
No. 21, Figures 13 and 15).
b. The values of the E-bits and length indicator as indicated by the
results of the Demonstration Test in a. above agree with the values
obtained for the alternative E-bit interpretation as referred to in (A)above (Test 1 corresponds to (A)[ii] and [iii] above, and Test 2
corresponds to (A)[ii] and [iv] above, respectively). Therefore, thecourt finds the Products to be the implementation of the functions
based on the alternative E-bit interpretation.
c. In this regard, the appellee raises allegations that the11"Interpretation" section of the Demonstration Test results reads"next octet: data" and does not mention "a complete SDU without
segmentation/concatenation/padding," and that therefore theDemonstration Test used the normal E-bit interpretation instead of
the alternative E-bit interpretation.
However, for the alternative E-bit interpretation, if the E-bit is set
to '0,' the bit sequence of the next field shows "data" of the SDU
whichcomprisea"complete
SDU
without
segmentation/concatenation/padding." Accordingly, the indicationof "next octet: data" in the "Interpretation" section does notcontradict the use of the alternative E-bit interpretation in the
Demonstration Test.
Therefore, the appellee's allegations as mentioned above are
groundless.
C. Summary
Based on the above, the court finds the Product to comply with Technical
Specification V6.9.0 and have the structure implementing the functions
based on the alternative E-bit interpretation.
(2) Technical significance of Invention 1
A. Matters disclosed by the description
Taking into consideration the wording of the scope of the claim ofInvention 1 (Claim 8) and the statement of the "detailed explanation of theinvention" of the description of the Patent (Exhibit Ko No. 2; thedescription and the drawing shall be hereinafter collectively referred to as
the "Patent Description"), the court finds that the Patent Description
discloses the following. [i] In relation to the mobile communication
system supporting packet service (wireless data packet communication
system), in order to provide VoIP service, which is a communication
technology for transmitting voice frames generated from a voice codec inthe form of voice packets using the Internet Protocol, there was a problem
of unnecessary LI fields being inserted, which caused inefficient use oflimited wireless resources, when using the RLC framing method in the
VoIP communication system based on the conventional technology(operation for processing the RLC SDU received from the higher layer
into a size appropriate for transmission through wireless channel) andwhen the size of an RLC PDU is defined according to the size of an RLC
12SDU most frequently generated. Namely, although the majority of RLC
SDUs are not segmented or concatenated and one RLC SDU is comprisedof one RLC PDU, if the conventional RLC framing operation is applied,at least the length indicator (LI) field indicating the starting point and the
LI field indicating the end point of the SDU are always required. [ii] The
purpose of Invention 1 is to provide a device for using radio resources
efficiently by reducing the header size of the RLC PDU (protocol data unitof radio link control layer), so as to solve the abovementioned problem of
the conventional technology. [iii] Invention 1, as a means to achieve theabovementioned purpose, adopts the structure wherein the RLC PDU data
field shows one-bit information that "one complete RLC SDU can beframed into one RLC PDU without segmentation/concatenation/padding"(i.e. the structure of Constituent Feature D which reads "setting the one-bit
field to indicate that the PDU contains the whole of SDU without
segmentation/concatenation/padding in the data field, if the SDU is
included in one PDU"), and by doing so, eliminates the need to insert
additional information showing segmentation/concatenation/padding of
the RLC SDU (i.e. use of the "LI field"). Further, to this end, Invention 1
adopts the structure wherein the LI field set to the pre-defined new LI
value indicates that the RLC PDU includes "only an intermediate segmentof the RLC SDU which does not include the start or the end of the RLC
SDU" (i.e. the structure of Constituent Feature D which reads "a one-bit
field setter for setting the one-bit field to indicate the presence of at least
one length indicator (LI) field, if the data field of the PDU includes anintermediate segment of the SDU" and the structure of Constituent Feature
F which reads "the LI field is set to the pre-defined value indicating thepresence in the PDU of an intermediate segment which is neither the first
nor the last segment of the SDU"). By adopting these structures, Invention
1 enables the segmentation of the RLC SDU to reduce the header size, andthereby achieves the effect to enhance efficiency for the use of radioB.

resources.
Relationship between Invention 1 and alternative E-bit interpretation(A) The structure and effect of Constituent Feature D of Invention 1 whichreads "setting the one-bit field to indicate that the PDU contains the wholeof SDU without segmentation/concatenation/padding in the data field, if
the SDU is included in one PDU" (A.[iii] above) defines that, under the13alternative E-bit interpretation, if the E-bit contained in the first octet is '0,'
it shows that the "next field is a complete SDU, which is not segmented,
concatenated or padded" and that the LI is not used ((1)A.(A)[ii] and [iii]above). In addition, the structure of Constituent Feature D which reads "aone-bit field setter for setting the one-bit field to indicate the presence ofat least one length indicator (LI) field, if the data field of the PDU
includes an intermediate segment of the SDU" and the structure ofConstituent Feature F which reads "the LI field is set to the pre-definedvalue indicating the presence in the PDU of an intermediate segment
which is neither the first nor the last segment of the SDU" define that,
under the alternative E-bit interpretation, if the PDU (RLC PDU) contains
a segment of the SDU but does not contain either the first or the last octetof the SDU, the 7-bit "length indicator" with value '111 1110' or the 15-bit"length indicator" with value '111 1111 1111 1110' shall be used((1)A.(A)[iv] above).
On the basis of these findings, the court finds Invention 1 to be theimplementation of the alternative E-bit interpretation.
(B) a. In contrast, the appellee relies upon the following arguments to allege
that Technical Specification V6.9.0 contains no disclosure ofConstituent Feature B: Constituent Feature B of Invention 1 whichreads "to determine whether the whole of SDU is contained in one
PDU" has a meaning "to determine whether the whole of SDU is
contained in (completely matches) one PDU;" whereas, the statementof Subclause 4.2.1.2.1 of Technical Specification V6.9.0 which reads"segments the RLC SDU into UMD PDUs of appropriate size, if the
RLC SDU is larger than the length of available space in the UMD
PDU" means that the method as referred to therein aims at
determination of the necessity of segmentation of the SDU andwhether the size of the SDU is larger than the available space of the
PDU (i.e. the size relation between the SDU and the PDU) and it istherefore different from the method to determine whether the whole of
SDU is contained in (completely matches) one PDU.
In spite of such allegation by the appellee, Subclause 9.2.2.5 ofTechnical Specification V6.9.0 indicates that, under the "alternative
E-bit interpretation," the E-bit '0' contained in the first octet means that"the next field is a complete SDU, which is not segmented,
14

concatenated or padded," whereas the E-bit '1' means that "the next
field is a length indicator and an E-bit" (1.(1)A.(A)[ii] above)). Thesestatements can be considered as defining the configuration of the E-bit
as mentioned above, depending on the results of determination as towhether the whole of SDU is contained in (completely matches) thePDU (i.e. whether the SDU is a complete SDU, which is notsegmented, concatenated or padded) as a precondition for suchconfiguration. Therefore, these statements can be considered as
disclosing the structure of Constituent Feature B to determine"whether the whole of SDU is contained in one protocol data unit
(PDU)."
Based on the above, the court finds the abovementioned allegations of
the appellee to be groundless.
b. In addition, the appellee alleges that the structure of Constituent
Feature D differs from the alternative E-bit interpretation as set out inTechnical Specification V6.9.0, based on the following reasons: "thecase where the SDU is included in one PDU" as referred to inConstituent Feature D includes all of the situations [i] where the SDU
is padded, [ii] where the SDU is concatenated, and [iii] where theSDU is not segmented, concatenated or padded, and, accordingly, inorder to satisfy Constituent Feature D, it is necessary that "the one-bit
field is set to indicate that the PDU fully contains the SDU without
segmentation/concatenation/padding" even in the case [i] or [ii] above;
whereas, according to the alternative E-bit interpretation as set out inTechnical Specification V6.9.0, the one-bit field is configured toindicate that the PDU contains a complete SDU only in the case [iii]above.
However, considering the wording of Constituent Feature D whichreads "setting the one-bit field to indicate that the PDU contains thewhole of SDU without segmentation/concatenation/padding in the data
field, if the SDU is included in one PDU," as well as the statement of
Paragraph [0022] and Figure 5A of the Patent Description, it isunderstood that the case where "the SDU is included in one PDU" asreferred to in Constituent Feature D only means the case where "thePDU
contains
the
whole
of
SDU
without
segmentation/concatenation/padding in the data field" (i.e. case [iii]15above), and not the case where the concatenated SDU is contained in
the PDU or the case where the SDU is incorporated into PDU withpadding. Therefore, the appellee's allegation is unacceptable as it fails
to satisfy the conditions precedent.
(3) Whether the Product fall within the technical scope of Invention 1
A. As already mentioned in (3)B. of "Undisputed facts, etc.," the Product satisfy
Constituent Features A and H of Invention 1.
Further, based on the findings that the Product comply with Technical
Specification V6.9.0 and have a structure to implement the functions based on
the alternative E-bit interpretation ((1)B. above), and that Invention 1 is theB.

implementation of the alternative E-bit interpretation ((2)B.(A) above), thecourt finds the Product to satisfy Constituent Features B to G of Invention 1.
Based on the above, the court finds the Product to fall within the technicalscope of Invention 1, as they satisfy all of the Constituent Features of Invention
1.
(A) On the other hand, the appellee alleges that the Product do not satisfy
Constituent Features B and D, because Constituent Features B and D are
not disclosed in Technical Specification V6.9.0.
However, as already mentioned in (2)B.(B) above, the appellee's
allegation is groundless as it fails to satisfy the conditions precedent.
(B) In addition, the appellee alleges that, for the Product to be considered tofall within the technical scope of Invention 1, it is necessary to evidence
that the Product implement all functions stated in the Constituent Featuresof Invention 1 on the real network; however, the alternative E-bit
interpretation is only optional to the normal E-bit interpretation, and noevidence has been submitted which supports that the telecommunication
service providers' networks are configured to allow the use of thealternative E-bit interpretation, and therefore that the Products do not fallwithin the technical scope of Invention 1.
However, as the Product satisfy all of the Constituent Features ofInvention 1 and have the structure to implement the alternative E-bit
interpretation, they are found to fall within the technical scope ofInvention 1, and whether the telecommunication service providers'
networks are actually configured to allow the use of the alternative E-bit
interpretation is irrelevant to the issue of whether the Products fall within
the technical scope of Invention 1.
16

(4) Summary
As mentioned above, the court finds the Product to fall within the technicalscope of Invention 1. In addition, as Invention 2 is an invention for the datatransmission method relating to the data transmission device of Invention 1,
and these inventions have common structures (this is not disputed by theparties), the court finds that the structure of the data transmission method for
the Product falls within the technical scope of Invention 2.
2. Abuse of rightConsidering the circumstances of the case, the court determines the acceptability of
the appellee's defense that the appellant's exercise of the right to seek an injunction
for the production, assignment, etc. of the Product based on the Patent Right
constitutes the abuse of right.
The court determines that the appellant's exercise of the right to seek an injunction
based on the Patent Right constitutes an abuse of right and is therefore notpermissible. The reasons are as follows:(1) Governing laws
First, the court discusses the issue of the governing laws as the premises for the
discussion of this case. It is understood that a claim for an injunction based ona patent right is determined in accordance with the laws of the country wheresuch patent right is registered (Supreme Court judgment of September 26,
2002; Minshu Vol. 56, No. 7, at 1551). Therefore, this case should be governedby the laws of Japan.
(2) Exercise of the right to seek an injunction in cases where a FRAND declaration
is madeA. Facts on which the decision is premised
Considering the totality of the undisputed facts, etc. as mentioned above,
prima facie evidence and the entire gist of the hearings, the court finds thefollowing facts.
(A) ETSI IPR Policya. Outside Europe, the second-generation mobile telecommunication
system (2G) specifications were inconsistent depending on the country.
Even in the same country, different specifications were used and suchspecifications were not universally interoperable. The U.S., Japan andEurope respectively used different systems based on the
non-interoperable standards. Against this backdrop, in 1998,
international standards bodies, such as ETSI (European
17b.

Telecommunications Standards Institute), gathered to organize astandard body called 3GPP. The objectives of this 3GPP were thedissemination of the third-generation mobile telecommunication
system (3G) for providing data communication service andmultimedia service, in addition to conventional voice communication
services, as well as the standardization of the related specifications.
ETSI provides the IPR Policy as the guidelines for the treatment of
IPR (intellectual property rights).
The standardization of technology is expected to have various effects,
such as ensuring product interoperability, reduction in production andprocurement costs, enhanced efficiency in research and development,
and more opportunities for partnership with other companies. In
addition, for end-users as well, standardization would havesignificance, such as more convenient products/services at cheaper
product prices and service fees. On the other hand, the potential usersof the essential patents for the standard seeking commercialization of a
product may be exposed to various risks, such as the demand for an
unreasonably high royalty by essential patent owners, or the loss of theinvestment for development of the standard-compliant products if thelicense turns out to be unavailable.

c.

The ETSI IPR Policy aims to avoid such risks, promote thestandardization and strike a balance between the needs ofstandardization for public use/such expectations and the protection ofrights of IPR owners in the field of telecommunications (See "Policy
Objectives" in Clause 3.1).
The ETSI IPR Policy provides as follows:(a) IPR Policy Clause 4.1 provides that each MEMBER shall use its
reasonable endeavors, in particular during the development of a
STANDARD or TECHNICAL SPECIFICATION where it
participates, to inform ETSI of ESSENTIAL IPRs in a timely
manner, and that, in particular, a MEMBER submitting atechnical proposal for a STANDARD or TECHNICALSPECIFICATION shall, on a bona fide basis, draw the attentionof ETSI to any of that MEMBER's IPR which might be
ESSENTIAL if that proposal is adopted. Clause 4.3 provides thatthe obligations pursuant to Clause 4.1 above are deemed to be18

fulfilled in respect of all existing and future members of a
PATENT FAMILY if ETSI has been informed of a member of thisPATENT FAMILY in a timely manner.
(b) IPR Policy Clause 6.1 provides that, when an ESSENTIAL IPR
relating to a particular STANDARD or TECHNICALSPECIFICATION is brought to the attention of ETSI, theDirector-General of ETSI shall immediately request the owner togive within three months an irrevocable undertaking in writingthat it is prepared to grant irrevocable licenses on fair, reasonable
and non-discriminatory (“FRAND”) terms and conditions undersuch IPR to at least the following extent: [i] MANUFACTURE,
including the right to make or have made customized components
and sub-systems to the licensee's own design for use in
MANUFACTURE, [ii] sell, lease, or otherwise dispose of
EQUIPMENT so MANUFACTURED, [iii] repair, use, or operate
EQUIPMENT, and [ii] use METHODS. Clause 6.1 also provides
that the above undertaking may be made subject to the condition
that those who seek licenses agree to reciprocate. Clause 6.2
provides that an undertaking pursuant to Clause 6.1 with regard
to a specified member of a PATENT FAMILY shall apply to allexisting and future ESSENTIAL IPRs of that PATENT FAMILY
unless there is an explicit written exclusion of specified IPRs at
the time the undertaking is made. Clause 6.3 provides that, aslong as the requested undertaking of the IPR owner is not granted,
the COMMITTEE Chairmen should, if appropriate, in
consultation with the ETSI Secretariat use their judgment as towhether or not the COMMITTEE should suspend work on therelevant parts of the STANDARD or TECHNICALSPECIFICATION until the matter has been resolved and/or
submit for approval any relevant STANDARD or TECHNICALSPECIFICATION.
(c) IPR Policy Clause 15, paragraph 6 provides as follows:"ESSENTIAL" as applied to IPR means that it is not possible ontechnical (but not commercial) grounds, taking into accountnormal technical practice and the state of the art generally
available at the time of standardization, to make, sell, lease,19

d.

otherwise dispose of, repair, use or operate EQUIPMENT or
METHODS which comply with a STANDARD without
infringing that IPR.
(d) IPR Policy Clause 12 provides that the POLICY shall begoverned by the laws of France.
ETSI Guide on Intellectual Property Rights (IPRs) (Exhibits Ko No.
40 and Exhibit Otsu No. 148), which supplements the IPR Policy,
provides as follows:(a) ETSI Guide on IPRs Clause 1.1 provides that the main
characteristics of the Policy can be simplified as follows:"• Members are fully entitled to hold and benefit from any IPRs
which they may own, including the right to refuse the granting oflicenses.
• It is ETSI's objective to create Standards and Technical
Specifications that are based on solutions which best meet thetechnical objectives of ETSI.
• In achieving this objective, the ETSI IPR Policy seeks a balance
between the needs of standardization for public use in the field of
telecommunications and the rights of the owners of IPRs.
• The IPR Policy seeks to reduce the risk that investment in the
preparation, adoption and application of the standards could be
wasted as a result of an Essential IPR for a standard or technicalspecification being unavailable."• Therefore, the knowledge of the existence of Essential IPRs is
required as early as possible within the standards making process,especially in the case where licenses are not available under fair,reasonable and non-discriminatory (FRAND) terms andconditions."(b) ETSI Guide on IPRs Clause 1.4 provides that the ETSI IPRPOLICY defines rights and obligations for ETSI as an Institute,for its Members and for the Secretariat. Non-Members of ETSI
also have certain rights under the Policy but do not have legal
obligations. The "table" as referred to in this clause provides asfollows:"Rights of members""• to refuse the inclusion of own IPRs in the standards (Clauses
208.1 and 8.2).
• to be granted licenses on fair, reasonable andnon-discriminatory terms and conditions in respect of a standard(Clause 6.1)""Obligations of Members""• to inform ETSI about their own, and other people's Essential
IPRs (Clause 4.1).
• owners of Essential IPRs are requested to undertake to grant
licenses on fair, reasonable and non-discriminatory terms andconditions (Clause 6.1)""Rights of Third Parties""• Third parties have certain RIGHTS under the ETSI IPR Policy
either as owners of Essential IPRs or as users of ETSI standards
or documentation:
・To be granted licenses on fair, reasonable andnon-discriminatory terms and conditions in respect of a standard
at least to manufacture, sell, lease, repair, use and operate,(Clause 6.1)"(B) Background of the FRAND Declarationa. On December 14, 1998, the appellant made a declaration to ETSI thatb.

c.

it was prepared to license its essential IPR relating to the W-CDMAtechnology, supported by ETSI as the UMTS standard, on "fair,reasonable and non-discriminatory terms and conditions" inaccordance with ETSI IPR Policy Clause 6.1 (FRAND Terms) .
On May 4, 2005, the appellant filed a South Korean patent application,
which is the base of the priority claim of the Patent Application(Priority Claim No.: 10-2005-0037774). From May 9 to 13 of 2005,
the appellant submitted to the 3GPP Working Group a change request
form. Thereafter, the abovementioned change request was accepted.
The alternative E-bit interpretation was adopted as one of thestandards. The appellant filed the Patent Application on May 4, 2006,
and obtained the registration of establishment of the Patent Right on
December 10, 2010.
On August 7, 2007, the appellant, in accordance with ETSI IPR Policy
Clause 4.1, submitted to ETSI the document titled "Statement on IPR
Information and Licensing Declaration", notifying that the IPRs
21relating to the South Korean patent application number, which served
as the basis of the priority claim for the Patent Application, and theinternational application number of the Patent Application(PCT/KR2006/001699) are or highly likely will be essential IPRs for
the UMTS standard (such as TS 25.322). In this document, theappellant made an undertaking that it was prepared to grant an
irrevocable license on the conditions complying with IPR Policy
Clause 6.1 (FRAND Terms), to the extent to which such IPRs continue
to be essential for the standards (FRAND Declaration).
(C) Role, etc. of the Patent
The Patent is an essential patent unavoidable for manufacturing andselling of, and using methods in relation to, the products complying
with the "alternative E-bit interpretation" as set out in Technical
Specification V6.9.0 of the UMTS standard.
It is a general practice of various types of standardization bodies tostipulate criteria for the treatment of IPRs, such as the ETSI IPR
Policy, and require the members thereof to disclose their patent rights
and other IPRs (hereinafter, the term "IPRs" refers to a patent rightonly) which would be essential for the standards developed
respectively by such bodies. Further, such bodies usually require themembers thereof to make a declaration to license the patent rightunder FRAND or RAND (reasonable and non-discriminatory) terms(the licensing declaration under the FRAND or RAND terms shall behereinafter referred to as "FRAND declaration").
B. FRAND Declaration and exercise of the right to seek an injunction(A) For an essential patent subject to a FRAND declaration (the patent for
which a FRAND declaration is made is collectively referred to as the"Standard Essential Patent"), as mentioned below, allowing a claim for
an injunction based on such patent without any restriction may run
counter to the reliance on use of the prospective users of the standard,
and may also result in the excessive protection of a patented invention.
Allowing the patentee such claim is unreasonable as it has various
detrimental effects, for example, discouraging the general public fromusing the technologies of the patented invention, and may hinder the"development of industry," which is the purpose of the Patent Act(Article 1 of the Patent Act).
22

Any party intending to manufacture or sell a standard-compliant
product would first look to the IPR guidelines of the relevant
standardization body and confirm the availability of a FRAND license
for the essential patent, such as the members' obligation of a FRAND
declaration for an essential patent, before it makes an investment orcommences the manufacturing and sale of such products. If thepatentee is later allowed to seek an injunction under the Standard
Essential Patent, it would be detrimental to the reasonable reliance on
use of a party who made an investment for the manufacture or sales ofthe standard-compliant product in anticipation of availability of a
FRAND license. Considering that a Standard Essential Patent ownervoluntarily makes a FRAND licensing declaration on the premises thatsuch patent would be made available to the standard users, and that thepatent forming a part of the standard makes it possible for the owner toattract a wide range of potential licensees, it is not so necessary toallow the owner of the Standard Essential Patent to exercise the rightto seek an injunction to maintain its dominance over the market, solong as such owner can obtain consideration for the FRAND license.
Thus, considering these situations, allowing the owner to exercise theright to seek an injunction based on the Standard Essential Patent
against parties willing to receive FRAND licenses would result in theexcessive protection of such owner, discouraging the dissemination of
the technologies of the patented invention, and consequently hinder
the "development of industry," which is the purpose of the Patent Act(Article 1 of the Patent Act).
(B) Next, the court discusses the above in more detail, in accordance withthe facts of this court case.
A party intending to engage in the manufacturing, sale, etc. of a
UMTS standard-compliant product would recognize that, among thepatent rights essential for the manufacturing, sale, etc. of such product,
at least those owned by ETSI members require the timely disclosure inaccordance with ETSI IPR Policy Clause 4.1 and the FRAND
licensing declaration under ETSI IPR Policy Clause 6.1. Such party
would rely on the availability of a FRAND license through anappropriate negotiation with the patentee. Such reliance is worth
protecting. Accordingly, in connection with the Patent subject to the23

FRAND Declaration, allowing the unconditional exercise of the rightto seek an injunction would be detrimental to the reliance of parties
who manufacture or sell the UMTS standard-compliant product on theavailability of such license.
Owing to such reliance of the UMTS standard users, the patent rights(including the Patent Right) incorporated into the UMTS standard canbe widely disseminated among a large number of business enterprises
in all part of the world. As a result, an owner of a Standard Essential
Patent can benefit from royalty income, which would be unavailable if
the patent was not adopted as part of the UMTS standard. In addition,a party which makes a FRAND declaration as required by the ETSIIPR Policy, including the appellant's FRAND Declaration, declares on
a voluntary basis that it is prepared to grant an irrevocable licenseunder the FRAND Terms. So, it is considered that such party does not
anticipate the exercise of the right to seek an injunction to maintain its
dominance over the market, so long as such party can obtainconsideration for the FRAND license. For such party, it is not sonecessary to allow the exercise of the right to seek an injunction toprotect its dominance over the market.
Whenever parties intending to engage in the manufacturing, sale, etc.
of any product complying with the UMTS standard, including theappellee, implements the UMTS standard, there is no choice but towork the Patent, and it is impossible for them to adopt alternativetechnology or to change the product design. Therefore, if the patentee
is unconditionally allowed to exercise the right to seek an injunction
based on the Patent Right, the standard users may be put into asituation where they are forced to pay a high royalty or to agree toextremely unfavorable license conditions which are not FRAND
Terms, or to abandon the business project itself, so as to avoid thedamage that may arise from such injunction. In addition, the UMTS
standard contains a large number of patents owned by different owners(1800 or more patent families are declared as essential by 50 or more
patentees). It is considered extremely difficult for a standard user toobtain the licenses in advance, after confirming whether each of suchlarge number of patents is essential or not. Therefore, if the patentee isunconditionally allowed to seek an injunction based on the Standard
24

Essential Patent, the use of the UMTS standard would become
practically impossible. Such situation would have a negative impact
on the dissemination of the UMTS standard and run counter to the
purpose of the ETSI IPR Policy aimed at the harmonization anddissemination of the communication standards. Further, if suchsituation arises, the general public would be unable to enjoy a variety
of benefits which would be available if the harmonization anddissemination of communication standards was achieved.
In relation to a Standard Essential Patent, it is not appropriate to allow
a party who made a FRAND declaration to exercise the right to seek
an injunction based on the patent right against a party willing to obtaina license under the FRAND Terms.
(C) Meanwhile, the injunction should be allowed against a party engaged
in manufacturing, sales, etc. of an UMTS standard-compliant productwithout any intention of receiving a FRAND license, as such party
with no intention of obtaining a FRAND license is not considered tocomply with the standards relying upon the FRAND declaration, andthe patentee would not be adequately protected if the exercise of rightto seek an injunction even against such parties is restricted.
Nevertheless, as allowing the patentee to exercise the right to seek an
injunction involves potential adverse effects as mentioned above,scrutiny shall be made before determining that the prospective licensee
has no intention of receiving a FRAND license.
(D) Considering the totality of the above circumstances, the exercise of theright to seek an injunction based on the Patent Right by the appellant
who made the FRAND Declaration would constitute the abuse of right(Article 1, paragraph (3) of the Civil Code) and therefore is notallowed, if the appellee successfully alleges and proves the fact of theappellant having made the FRAND Declaration and the appellee's
intention of receiving a FRAND license.
(3) Whether the appellee has an intention of receiving a FRAND license
The appellee alleges that Apple Inc. or itself is a willing licensee, namely, aparty who has an intention of receiving a FRAND license for the Patent. The
court discusses this point as follows:
A. Discussion
Considering the totality of prima facie evidence and the entire import of25

hearings, the court finds the following facts, in addition to those mentionedin (2)A. above. [i] In the letter dated July 25, 2011, the appellant proposed
to Apple Inc. a specific royalty rate as the condition for license of its
Standard Essential Patent portfolio. [ii] Apple Inc., in its letter dated August
18, 2011, proposed the royalty rate cap. Apple Inc., in its letter dated March
4, 2012, made an offer for a license agreement, proposing to pay the royalty
at a rate less than the prior proposal by several decimal fractions. Apple Inc.,in its letter dated September 7, 2012, made a specific licensing proposal,
including a proposal for a cross-license agreement. [iii] In response, theappellant only requested Apple Inc. to make a specific counterproposal if
dissatisfied with the appellant's proposal. [iv] The appellant, in its letter
dated September 14, 2012, made a proposal of reduction of the cap rate,
which is the basis of calculation of the royalty. [v] The appellant, in its
letter dated December 3, 2012, made a proposal to discount the initially
proposed royalty rate by less than half. [vi] Apple Inc. and the appellant
held conferences on December 12, 17 and 18 of 2012, when the appellant
made some proposals, including a large lump-sum payment by Apple Inc.,
and Apple Inc. proposed a cross-license agreement for the UMTS standard
essential patent portfolio. [vii] Apple Inc. and the appellant met on January
14, 2013, when Apple Inc. made a proposal of a royalty-free cross-license
agreement. [viii] When Apple Inc. and the appellant held a conference on
February 7, 2013, a draft agreement was prepared […….] [ix] Even after
these conferences, the appellant and Apple Inc. have had negotiations fromtime to time for various issues, including the conditions for the settlementof the dispute through an arbitration.
Considering the above situations, Apple Inc. and the appellee can beconsidered as the parties who have the intention of receiving a FRAND
license, as Apple Inc. has made specific royalty rate proposals with acalculation basis several times, including the presentation of a royalty rate
cap in its letter dated August 18, 2011, and held several conferences withthe appellant for intensive licensing negotiation. There has been a material
discrepancy in opinions between the appellant and Apple Inc. as to theappropriate royalty rate for a long time. Even so, the proposals made byApple Inc. can be considered fairly reasonable, considering the fact that theparties are by nature in a conflict-of-interest situation as the prospective
licensor and licensee, and that the royalty to be considered appropriate may
26vary depending on the different assessment of the essential nature or
significance of individual patent in terms of the UMTS standard, as there isno definite criteria for determining the FRAND royalty. In addition, as it isappropriate to consider that the appellant's attempt toward negotiation did
not facilitate the execution of a license agreement with Apple Inc., thepersistent and material discrepancy in the opinions between the parties does
not immediately preclude the court from finding that Apple Inc. and theappellee have the intention of entering into a FRAND license agreement.
B. On the contrary, the appellant alleges that neither Apple Inc. nor theappellee can be considered to have an intention of receiving a license,
because Apple Inc. intentionally obstructed the formation of a license
agreement by making proposals favorable to itself without specifically
identifying the licensed patents, and persistently showed an attitude that its
proposed conditions are not inconsistent with FRAND Terms. However, inlight of the purpose and significance of the development of the standards,
scrutiny shall be made to determine that the appellee has no intention ofreceiving a FRAND license. As Apple Inc. and the appellant had a license
negotiation as mentioned in A. above, the court finds the appellee to be theparty who has an intention of receiving a FRAND license. Therefore, theappellant's allegation is unacceptable.
(4) Summary
Based on the above, the appellant's exercise of the right to seek an injunction
based on the Patent Right constitutes an abuse of right (Article 1, paragraph (3)of the Civil Code) and is therefore impermissible.
3. Conclusion
On the premises of the foregoing, the court concludes that this petition should bedismissed without the need to discuss other points at issue, as the appellant failed tomake a prima facie showing of the right sought to be preserved. The court therefore
holds that this appeal should be dismissed, as the decision in prior instance whichreached the same conclusion is appropriate. Therefore, the court renders the decision
as mentioned in the main text.
May 16, 2014
Intellectual Property High Court, Special Division

27

Presiding Judge:
Judge:
Judge:
Judge:
Judge:

Toshiaki Iimura
Ryuichi Shitara
Yoshinori Tomita
Misao Shimizu
Shinji Oda

28

(Attachment)
List of Products"iPhone 4S"

29

(Attachment)
3GPP TS25.322 V6.9.0(Summary)

30

31

32

33