Japan’s First SEP Injunction: Pantech v. Google and the High Bar for Establishing Unwillingness

On 23 June 2025, the Tokyo District Court rendered Japan’s first-ever injunction based on standard essential patent (SEP) infringement in Pantech v. Google Japan (Case No. 2023 (Wa) 70501), ordering Google to cease sales of its Pixel 7 smartphone. However, the ruling’s true significance lies not in this headline achievement, but in what it reveals about the remarkably high threshold for establishing that an implementer lacks willingness to obtain a FRAND license. The court’s critical distinction between negotiation-phase conduct and court-settlement-phase conduct creates a two-tier framework with far-reaching implications for global SEP licensing strategies.

Background and Legal Framework

Japan’s SEP framework was established by the 2014 IP High Court decision in Apple v. Samsung, which held that SEP holders making FRAND declarations cannot seek injunctions against implementers willing to obtain FRAND licenses, as doing so constitutes abuse of rights. For over a decade, this remained largely untested until Pantech, a Korean company holding Japanese Patent No. 6401224 covering LTE acknowledgment signal mapping technology, brought multiple SEP cases in 2025 that would clarify the boundaries of this framework.

The Contrasting Cases

Pantech v. ASUS (April 10, 2025): The Tokyo District Court found patent infringement but denied injunctive relief, holding that ASUS demonstrated willingness despite failing to reach royalty rate agreement with Pantech. Significantly, the court attributed the negotiation impasse not to ASUS’s bad faith but to systemic factors—Japan’s lack of established FRAND rate calculation jurisprudence in the decade since Apple v. Samsung.

Pantech v. Google (June 23, 2025): In contrast, the court granted an injunction against Google. The decisive factor was not the negotiation history itself, but Google’s conduct during court-supervised settlement proceedings.

The Court’s Critical Analysis

The High Bar for Negotiation-Based Unwillingness: From June 2020 through litigation, Google and Pantech engaged in extensive negotiations with fundamentally incompatible methodologies. Pantech proposed royalty calculations based on sales revenue multiplied by rates, while Google consistently used per-unit fixed amounts. Despite this impasse, extended NDA negotiations, and Google’s refusal to adopt Pantech’s preferred “Daigogi approach” (the sales-revenue-based methodology from Apple v. Samsung), the court explicitly held: “Based solely on the negotiation history between the parties, it cannot be found that there exist special circumstances establishing that the defendant lacks willingness to obtain a license under FRAND terms.”

The Decisive Settlement Non-Compliance: The turning point came during court-mediated settlement. On 23 July 2024, both parties agreed to global SEP portfolio settlement discussions. The court requested Google prepare a proposal using the Daigogi approach while considering comparable licenses. Google refused, claiming excessive complexity and arguing its existing proposal was more favorable. Crucially, Google declined to disclose sales figures or volumes necessary to verify these claims. The court found that “even though the defendant agreed to the court’s settlement recommendation, it refused to disclose sales amounts and sales volumes of the infringing products, failed to present a settlement proposal based on the Daigogi approach, and thereby eliminated any room for license negotiations on its own accord.”

The court rejected Google’s arguments that its diverse product lineup made Daigogi calculations too complex, noting that even accepting Pantech’s claims, only approximately 28 smartphone models were at issue. The court emphasized that Google’s refusal to engage with the court’s specified methodology, combined with failure to provide essential sales data, constituted unwillingness despite the preceding negotiation history showing otherwise.

Practical Implications

The Two-Tier Framework: This decision establishes that negotiation-phase conduct and court-settlement-phase conduct are evaluated under different standards. During negotiations, implementers enjoy substantial latitude—methodological disagreements, hard-line positions, and prolonged discussions do not establish unwillingness. However, once court-mediated settlement begins and the court specifies methodologies, compliance becomes paramount. Refusing court instructions, particularly while withholding essential data, can establish unwillingness even where negotiation history would not.

Strategic Considerations: For implementers: (1) document all negotiation efforts meticulously; (2) recognize that methodological positions alone won’t establish unwillingness; (3) treat court-mediated settlement as a distinct phase with heightened obligations; (4) if unable to comply with court instructions, provide substantive reasons rather than simply refusing. For SEP holders: obtaining injunctions in Japan requires demonstrating not negotiation-phase misconduct, but settlement-phase non-compliance, setting a remarkably high bar.

Ongoing Developments: Google has appealed to the IP High Court, and the outcome will clarify whether this settlement-compliance framework becomes established precedent. Meanwhile, on 10 July 2025, the Osaka District Court rejected Pantech’s claims in a parallel case involving different Google products, underscoring the fact-intensive nature of these determinations. The Tokyo injunction’s practical impact is limited as Pixel 7 is discontinued, but Pantech reportedly seeks preliminary injunctions covering newer models.

Conclusion

Pantech v. Google marks a watershed in Japanese SEP jurisprudence, but not for the obvious reason. Japan’s first SEP injunction matters less than the court’s revelation of the extraordinarily high threshold for establishing unwillingness based on negotiation conduct and the decisive importance of court-settlement compliance. This two-tier framework provides implementers significant freedom during negotiations while requiring genuine engagement with court-specified methodologies during settlement. As Japan develops its SEP jurisprudence, this decision will serve as a foundational reference, demonstrating that FRAND obligations create context-dependent frameworks requiring sustained engagement and respect for judicial processes—but not abandonment of preferred positions unless courts specifically require it during settlement proceedings.