[Translation]

Guidelines for Proceedings 
in Patent Infringement Actions
Based on Standard Essential Patents

January 2026
Intellectual Property Divisions, Tokyo District Court
  (Civil Divisions No. 29, No. 40, No. 46, and No. 47) 

Please take note of the following points when conducting proceedings in patent infringement actions based on standard essential patents (hereinafter, “SEPs”; and such actions, “SEP Actions”).

1. Policy for Proceedings
In light of the global adoption of standardized technologies, which necessarily entails cross-border exploitation of SEPs, one of the important roles for the Court in resolving SEP Actions is to facilitate the formation of a royalty agreement under FRAND terms for a license covering the SEP holder’s entire global SEP portfolio, including the SEPs at issue (hereinafter, the “Global FRAND Royalty”), to thereby provide a mechanism for resolving worldwide disputes concerning SEPs.

From this perspective, the Court in an SEP Action will, in principle at the first hearing date, recommend settlement and, for the purpose of expediting the formation of an agreement on the Global FRAND Royalty as promptly as possible, will designate hearing dates for settlement discussions in a planned and concentrated manner in order to support the parties in reaching an agreement.

2. Case Management Plan
In SEP Actions, it is common that the number of issues regarding infringement (claim construction/essentiality) and invalidity is relatively limited, and the principal issue becomes the viability of the defense of abuse of rights (i.e., whether or not the implementer has the willingness to obtain a license on FRAND terms).

With respect to the defense of abuse of rights, if settlement negotiations are conducted after the Court’s settlement recommendation but the settlement procedure is terminated on the ground that there is no prospect of reaching a settlement, then both parties must promptly submit briefs and evidence that organize and consolidate their assertions and proof concerning the defense of abuse of rights, taking into account the course and content of negotiations from before the filing of the action through the termination of the settlement procedure. In such case, the Court will decide on the viability of the defense of abuse of rights on the basis of these submissions.

Where there are issues remaining concerning infringement (essentiality/satisfaction) and invalidity, the Court will set deadlines at the first hearing date for two rounds of submitting briefs on these issues (plaintiff’s assertions and evidence; defendant’s rebuttals and counter-evidence; plaintiff’s surrebuttal (further rebuttal) and counter-evidence; and defendant’s further surrebuttal and counter-evidence), and will basically proceed primarily on the papers. In such case, the Court may, while taking into account the oral discussions at the first hearing, set a date for a Technical Explanation Session at that time, if necessary.

3. Settlement Procedure
Under the Court’s settlement recommendation, both parties are to engage in focused settlement negotiations after the first hearing date, in parallel with the above-described paper-based proceedings. In the settlement procedure, the Court excludes extreme bargaining positions such as hold-up and hold-out positions, and seeks to establish a fair and neutral order for negotiations grounded in moderation. Respecting the course and content of the parties’ negotiations, and from the standpoint of supporting the formation of an agreement, the Court will adjust the settlement proposals submitted by both parties. Ultimately, the Court may present a settlement proposal regarding the Global FRAND Royalty; even in such a case, however, the Court will not unilaterally determine the Global FRAND Royalty but will instead present a proposal that respects the parties’ intentions after fully listening to the same.

Further, promptly after the first hearing date, the parties shall, from the standpoint of facilitating the formation of an agreement, confer and prepare an agreement on all terms other than the Global FRAND Royalty. If a settlement is reached, that agreement will then be supplemented by inserting the Global FRAND Royalty and attached as an appendix to the judicial settlement record.

4. Preparations by the Plaintiff
In the Complaint, the Plaintiff is to propose a Global FRAND Royalty with a concrete statement of the grounds and basis for the calculation thereof. As to the calculation methodology, any of the following may be used so long as the basis is specified: (i) the top-down approach; (ii) the comparable licenses approach; or (iii) a combination thereof.

5. Preparations by the Defendant
In the Answer, the Defendant is to state specific admissions or denials and rebuttals to the Plaintiff’s stated calculation basis, and, after clarifying the Defendant’s own calculation basis, is to submit a counterproposal concerning the Global FRAND Royalty. In doing so, the Defendant must also submit evidence regarding the number of units sold, the sales amounts, and the like, for the accused products, etc.

Please note that if the Defendant does not voluntarily submit evidence necessary for calculating the Global FRAND Royalty, the Court may determine that the Defendant lacks the willingness to obtain a license on FRAND terms.

End

[Translation]

Guidelines for Proceedings
in SEP Judicial Mediation (SEPJM)

January 2026
Intellectual Property Divisions, Tokyo District Court
  (Civil Divisions No. 29, No. 40, No. 46, and No. 47) 

Tokyo District Court Civil Divisions No. 29, No. 40, No. 46, and No. 47 have decided to commence SEP Judicial Mediation (SEPJM) as special operational framework within the intellectual property mediation procedure for cases involving standard essential patents (hereinafter, “SEPs”). The purpose, features, and method of the proceedings for SEP Judicial Mediation matters are as follows. For all other matters, the operation of the intellectual property mediation procedure shall be applied mutatis mutandis; therefore, please refer to the notice titled “Operation of Intellectual Property Mediation Procedure” posted on the website of the Intellectual Property Divisions of the Tokyo District Court.

1. Purpose of SEP Judicial Mediation
In view of the fact that the implementation of SEPs necessarily crosses national borders due to the international dissemination of standardized technologies, SEP Judicial Mediation aims to facilitate the formation of an agreement on a royalty under FRAND terms for a license covering the SEP holder’s entire global SEP portfolio, including the SEPs at issue (hereinafter, the “Global FRAND Royalty”).
To achieve this purpose, the Mediation Committee, while referring to global standards, will smoothly and flexibly support the formation of an agreement on the Global FRAND Royalty and, in principle, aim to achieve successful mediation by the third mediation date.

2. Features of SEP Judicial Mediation
The features of SEP Judicial Mediation are as follows.
(1) International Character
SEP Judicial Mediation seeks to facilitate the formation of an agreement on the Global FRAND Royalty. In such case, the method of calculation concerning the Global FRAND Royalty shall, taking into account the global nature of SEPs, refer to global standards; for example, so long as the basis for calculation is specified, it is permissible to use any of the following: (i) the top down approach; (ii) the comparable licenses approach; or (iii) a combination thereof.
(2) Expediency
Between the parties to cases concerning SEPs, it is generally considered that: (i) negotiations are conducted prior to the filing of a mediation petition; (ii) the issues concerning the basis for calculating the Global FRAND Royalty are identified; and (iii) each party possesses the relevant materials and the like. SEP Judicial Mediation proceeds on this premise, and the Mediation Committee seeks the submission of assertions and evidence from both parties by the first mediation date, and, in principle, aims for the expeditious resolution of the dispute within three mediation dates.
(3) Expertise
The Mediation Committee in SEP Judicial Mediation is composed of a total of three members: one judge from the Intellectual Property Divisions and two experts such as attorneys or patent attorneys who have extensive experience in intellectual property cases. Therefore, in terms of expertise, it is on par with litigation and similar procedures. Furthermore, it is possible for court research officials possessing specialized knowledge concerning SEPs to be involved in the proceedings.

3. Method of Proceedings in SEP Judicial Mediation
(1) First Mediation Date
In its petition, the Petitioner shall submit a proposal for the Global FRAND Royalty with a concrete statement of the grounds and basis for the calculation thereof. In response, the Respondent shall, in its answer, state specific admissions or denials and rebuttals to the Petitioner’s proposal and, after clarifying the basis for calculation, submit a counterproposal concerning the Global FRAND Royalty. In doing so, the Respondent must also submit evidence regarding the number of units sold, the sales amounts, and the like, for the respondent’s products, etc.
At the first mediation date, the Mediation Committee will individually hear from each party as to the purport of each proposal and will then instruct both parties to further submit their respective counterproposals by the second mediation date. Furthermore, after the first mediation date, from the standpoint of facilitating the formation of an agreement, both parties shall confer regarding all terms other than the Global FRAND Royalty and prepare an agreement. If mediation is successfully concluded, this agreement will then be supplemented by inserting the details of the Global FRAND Royalty and attached as an appendix to the mediation record.
Should there be issues concerning infringement (essentiality/satisfaction) and invalidity, then, from the standpoint of achieving a simple and swift resolution, depending on the case, the parties may be asked to exchange one round of briefs on infringement (satisfaction) and invalidity ((i) the Respondent’s assertions and proof of non infringement (non satisfaction) and invalidity in response to the petition; and (ii) the Petitioner’s rebuttal and counter evidence thereto), and, if necessary, at the second mediation date, a date may be set for a simplified Technical Explanation Session. In such cases, from the standpoint of ensuring smooth coordination between the mediation and litigation proceedings, both parties will promptly submit each of the above briefs in litigation procedures pertaining to an action filed after mediation is unsuccessful or withdrawn.
(2) Second Mediation Date (If a simplified Technical Explanation Session is held on the second mediation date, this refers to the third mediation date.)
The Mediation Committee, taking into account the respective bases submitted by both parties for calculating the Global FRAND Royalty, will present a mediation proposal or instruct both parties to submit their final proposals. If both parties are instructed to submit their final proposals, they will submit such proposals by the third mediation date (if a simplified Technical Explanation Session is held on the second mediation date, this refers to the fourth mediation date; the same applies hereinafter).
In addition, if a simplified Technical Explanation Session is held on the second mediation date, the Mediation Committee may (as at the first mediation date) also provide instructions at the second mediation date to the effect that further respective counterproposals be submitted by the third mediation date.
(3) Third Mediation Date
If the Mediation Committee has presented a mediation proposal, it will confirm the parties’ intention to accept the same and, based on such confirmation, deem the mediation to be successful or unsuccessful.
On the other hand, if the Mediation Committee has instructed both parties to present their own final proposals, then the Mediation Committee will take such proposals into account and present a mediation proposal. Then, after confirming the parties’ intention to accept such proposal, the Committee will deem the mediation to be successful or unsuccessful.
(4) Handling Where Mediation Is Unsuccessful
If mediation is unsuccessful, the mediation record shall state, in the case where the Petitioner or the Respondent lacks the intention to participate in the mediation, that mediation was unsuccessful for that reason. In cases where a mediation proposal was presented, the mediation proposal and the opinion of the Mediation Committee shall be attached. Thereafter, in subsequent litigation or preliminary injunction proceedings, both parties may submit the said mediation record with respect to the defense of abuse of rights issue.

End.