Samsung v Apple (IP High Court, 2013 (Ne) 10043, 2014)

Dhenne Avocats · 11 October 2026

Our analysis

Summary

Sitting as a five-judge Special Division, the Japanese Intellectual Property High Court held Samsung’s patent valid and infringed by two Apple products, but capped damages at the amount of a FRAND royalty: JPY 9,955,854 plus interest (main text, item 3). Claiming more is an abuse of right unless the implementer has no intention of taking a FRAND licence (No. 4, 6(2)B.(C)).

The judgment lays down a top-down calculation method, the share of the product attributable to the standard, a 5% aggregate cap and division by the number of essential patents, and refuses to treat the FRAND declaration as an offer of a licence (No. 4, 5(2) and 7(2)).

Facts and procedure

Samsung owns Japanese Patent No. 4642898, on packet transmission using a pre-defined length indicator, which it declared to ETSI on 7 August 2007 as essential to the UMTS standard with a FRAND undertaking (No. 2, 2(2) and 2(4)). After Samsung’s 2011 petitions for provisional injunctions against the iPhone and iPad, Apple Japan sought a declaration that Samsung had no right to damages; the Tokyo District Court found for Apple on 28 February 2013 on the ground of abuse of right (No. 2, 2(5)). Samsung appealed.

The applicable law

Whether a licence arose from the FRAND declaration is governed by French law, chosen by the ETSI policy and by the declaration (No. 4, 5(1)). The damages claim, being in tort, is governed by Japanese law as the law of the place of the harm (No. 4, 6(1)); the court assessed it under the abuse of right doctrine in Article 1(3) of the Civil Code and the purpose of the Patent Act, the development of industry (No. 4, 6(2)B.).

Question

Did the FRAND declaration create a licence in Apple’s favour, and to what extent may the owner of a standard essential patent recover damages for its infringement?

Decision

Only the iPhone 4 and the iPad 2 Wi-Fi+3G practise the invention; the other two products use a chip that predates the claimed function (No. 4, 1(1) and 1(4)). All five invalidity grounds failed (No. 4, 3). There was no exhaustion: the cross-licence with Intel expired on 30 June 2009, did not cover the chip at issue and carried no implied consent to the making of the finished products (No. 4, 4).

The FRAND declaration is not an offer under French law: it says only « prepared to grant », fixes no royalty, territory or term, contains a reciprocity condition, and ETSI leaves licensing to negotiation, an automatic licence having been rejected when its policy was adopted; the stipulation pour autrui analysis fails for the same reasons (No. 4, 5(2) and 5(3)).

Claiming more than the FRAND royalty would defeat implementers’ reliance on the availability of a licence; the excess is recoverable only if the patentee proves that the implementer has no intention of taking a FRAND licence. Up to that amount the claim fails only if it is extremely unfair (No. 4, 6(2)B.). The court noted that injunctions are themselves restricted against an implementer willing to take a FRAND licence (No. 4, 6(2)B.(B)). Samsung had not facilitated the negotiation, but portfolio-only offers are common practice, confidentiality justified withholding other licences and the late declaration, about two years, was not decisive (No. 4, 6(3)B.). Apple’s proposals were reasonable enough to rule out any lack of willingness (No. 4, 6(3)C.).

The royalty starts from the products’ sales, multiplied by the share attributable to UMTS compliance (redacted), by a 5% aggregate cap supported by many SEP holders, then divided by 529 essential families, a study’s figure preferred to the 1,889 declared families given over-declaration (No. 4, 7(1) and 7(3)).

Key points for practice

• A FRAND declaration to ETSI is not a licence and does not deprive the patentee of all compensation (No. 4, 5(4) and 6(2)B.).
• Damages are capped at the FRAND royalty for as long as the implementer remains willing to take a licence (No. 4, 6(2)B.(C)).
• An aggregate cap and a count limited to truly essential patents keep the award low (No. 4, 7(3)B.).
• Practical point: an implementer that makes reasoned, quantified proposals protects itself against any award above the FRAND royalty (No. 4, 6(3)C.).

Provisions applied

National law

Japanese Civil Code, Arts 1(3) and 709; Japanese Patent Act, Arts 1, 2(3), 29(1)(iii), 29(2), 101, 102, 104-3(1) and 123(1)(ii); Japanese Act on General Rules for Application of Laws, Arts 7 and 17; French contract law (offer, acceptance, stipulation pour autrui)

Other texts

ETSI Intellectual Property Rights Policy, clauses 3.1, 3.2, 4.1, 6.1, 12 and 15; ETSI Guide on Intellectual Property Rights, clauses 1.4, 4.1 and 4.4; TRIPS Agreement, Art. 31 (argument rejected)

Case law cited

Supreme Court of Japan, BBS, 1 July 1997, Minshu Vol. 51, No. 6, p. 2299; Supreme Court of Japan, 8 November 2007, Minshu Vol. 61, No. 8, p. 2989; IP High Court, 2013 (Ra) 10007 and 10008 (provisional injunction appeals between the same parties)

Prepared by Dhenne Avocats from the text of the decision (IP High Court website, full English translation published by the court), consulted on 11 October 2026. Only the official text is authoritative.