SEPs and the Law in Japan – Episode 29

April 29, 2024

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  • Shogo Matsunaga, Sonderhoff & Einsel

Shogo Matsunaga’s practice covers legal advice and representation before courts in patent infringement disputes in the ICT and semiconductor technology sectors, trademark infringement disputes including anti-counterfeiting measures. Shogo is one of the most influential SEP experts in Japan, one of the organizers of the so-called “SEP study group in Japan,” and a Partner at Sonderhoff & Einsel, where he has worked on many SEP cases in the past.

At Sonderhoff & Einsel a law firm with German roots that has quite some history and is over 100 years in practice, Shogo represents Japanese clients in their worldwide SEP licensing negotiations and SEP litigation disputes. Japan has experienced only a handful of SEP cases thus far, including the Apple v. Samsung case, which saw a verdict delivered on May 16, 2014. Shogo discusses and expands upon the court ruling in the podcast because he feels that the outcome of the cases is often misinterpreted. He explains that Japanese courts are too often perceived as standards implementer friendly, which he explains is different. Shogo reveals that he was several times very close to being part of another SEP case in Japan, but after all, the parties settled. But Shogo believes we will soon see the next SEP case litigated in Japan, maybe later this year. This also makes sense because Shogo explains that Japanese courts are efficient and that the Japanese smartphone market is huge, with strong sales numbers for high-end smartphone generations and brands.

Japanese government agencies like the JPO or the METI have published guidelines for SEP licensing negotiations and fair value calculations. These guidelines, Shogo explains, are, however, not binding for courts and, in practice, only used sometimes. Like the JPO “Manual of Hantei”, a service by the JPO to claim chart Japanese patents – a service that was hardly ever used because claim chart results would be published.

Shogo elaborates and compares the German court systems with the Japanese court systems, which have similarities because the Japanese patent system used the German system as the foundation. Even today, German courts have developed to handle multiple SEP cases per year, which differs from Japanese courts. Shogo explains the reason for that is that, as of today, the definition of a willing licensee in Japan could be clearer. SEP enforcing parties fear losing the case or only getting low royalties when litigating in Japanese courts. Again, Shogo does not see it that way and encourages SEP holders to try the courts again.

Shogo describes how the Japanese industries have been behind in terms of SEP licensing. Also, in Japan, many suppliers indemnify OEMs when shipping connectivity solutions. Indemnification is getting less and less, but Shogo feels the industry needs to change faster. Shogo, however, has a good feeling about the rising IoT industry in Japan and is eager to learn about SEP licensing and engage in understanding it early on.

Shogo regularly meets with the Japanese IP industry experts in a group organized by METI called “SEP study group”. This group comprises over 150 member experts from various industries like Telecom, Automotive, Manufacturing, Home Appliances and many more. The Japanese community is well organized. However, Shogo explains when it’s about SEPs, the different points of view, e.g., between automotive OEMs and the SEP owners, are often not openly discussed. Shogo would love to see more contrivers discussions. After all, Japan remains an exciting market and may soon become another important SEP litigation venue.

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