Kay KONISHIKay KONISHI NICHI-EI Patent and Trademark NICHI-EI Patent and Trademark Attorneys, P.C.Attorneys, P.C.AIPLA MWI, Japan Practice Committee, AIPLA MWI, Japan Practice Committee, Jan. 29-30, 2013, Tampa, FLJan. 29-30, 2013, Tampa, FL

Patent Trolls Comin’ Patent Trolls Comin’ to JP Courtsto JP Courts

--NO Living Space in Japan??NO Living Space in Japan??

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Who’s a troll?Who’s a troll?Why evil?Why evil?

Hard to define…Hard to define…If ask businesses, “Yes, they’re If ask businesses, “Yes, they’re

trolls”, if ask NPEs, “No, we’re trolls”, if ask NPEs, “No, we’re not.”not.”

All NPEs are trolls?All NPEs are trolls?Hard to differentiate universities,Hard to differentiate universities,individuals and other good NPEs individuals and other good NPEs from harmful NPEsfrom harmful NPEs

1.1. So-called “Patent 1.1. So-called “Patent Trolls”…Trolls”…

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Patent aggregators/ patent holding Patent aggregators/ patent holding companies/ patent funds/ even “patent companies/ patent funds/ even “patent terrorists”…terrorists”…Good or evil?Good or evil?Investment purpose or defensive purpose?Investment purpose or defensive purpose?Profit-oriented or nonprofit?Profit-oriented or nonprofit?New business models on IP are not New business models on IP are not

necessarily evilnecessarily evilSpooky NPEs who seek for Spooky NPEs who seek for

outrageous compensation and/or outrageous compensation and/or reckless injunctionreckless injunctionOnce NPEs start to offer fancy license Once NPEs start to offer fancy license

royalty, the other party calls them “trolls”. royalty, the other party calls them “trolls”.

1.1. So-called “Patent Trolls”1.1. So-called “Patent Trolls”

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NO chance of cross licensingNO chance of cross licensing““Patent thicket” favors trollsPatent thicket” favors trollsTrolls cleverly choose end product Trolls cleverly choose end product

manufacturers/distributers as manufacturers/distributers as targettarget

Bulk offer for patent licensing Bulk offer for patent licensing without showing infringement without showing infringement analysis and technical discussionanalysis and technical discussion

Early bird incentive on royalty rateEarly bird incentive on royalty rateSimultaneous/serial attacksSimultaneous/serial attacks

1.2. Why Aliens for 1.2. Why Aliens for Businesses?Businesses?

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Patent litigation aspects:Patent litigation aspects:IP High Court with exclusive IP High Court with exclusive

jurisdiction jurisdiction NO chance of forum shoppingNO chance of forum shoppingNO ITCNO ITCHigher predictabilityHigher predictabilityNO punitive damages/”entire-NO punitive damages/”entire-

market-value-rule”market-value-rule”NO presumption of validityNO presumption of validityNO contingency lawyersNO contingency lawyers

1.3. Disincentive to Bring 1.3. Disincentive to Bring Lawsuits in Japan…Lawsuits in Japan…

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Other aspects:Other aspects:NO big collapse of IT bubblesNO big collapse of IT bubblesLess active IP liquidationLess active IP liquidationHigher threshold of patentable Higher threshold of patentable

subject mattersubject matterHigher threshold of inventive-stepHigher threshold of inventive-stepNO continuing application practiceNO continuing application practiceLong- and well-established Long- and well-established

invalidation trial system before the invalidation trial system before the JPOJPONO limitation to grounds for NO limitation to grounds for

invalidationinvalidation

1.3. Disincentive to Bring 1.3. Disincentive to Bring Lawsuits in JapanLawsuits in Japan

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Plaintiff: ADC Technology, Inc.Plaintiff: ADC Technology, Inc.Pioneering “Troll” born in Nagoya, JapanPioneering “Troll” born in Nagoya, JapanThe most litigious Japanese trollThe most litigious Japanese trollLost “Dual-display mobile phone” caseLost “Dual-display mobile phone” caseClaiming \100M damage compensationClaiming \100M damage compensation

Defendant: SONY Computer Defendant: SONY Computer Entertainment, Inc.Entertainment, Inc.Manufacturing/selling PlayStation3 (PS3) and Manufacturing/selling PlayStation3 (PS3) and

“torne” (PS3 dedicated terrestrial digital TV “torne” (PS3 dedicated terrestrial digital TV broadcasting video-recording kit), and providing broadcasting video-recording kit), and providing related Internet-based servicerelated Internet-based service

……The troll beaten againThe troll beaten again

2.1. PS3 w/ ”torne” Case2.1. PS3 w/ ”torne” Case-Tokyo Dist. Ct. 2011(wa)3572, Decided on Nov. 30, -Tokyo Dist. Ct. 2011(wa)3572, Decided on Nov. 30,

20122012

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2.1. PS3 w/ ”torne” Case2.1. PS3 w/ ”torne” Case-Long History-Long History

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““VIEWING RATING VIEWING RATING SURVEY SYSTEM”SURVEY SYSTEM”JP2001-283242JP2001-283242Filed Sep.18, 2001Filed Sep.18, 2001

JP4261092JP4261092Patented Feb. 20, 2009Patented Feb. 20, 2009

G1: “SERVER, USER DEVICE, G1: “SERVER, USER DEVICE, PROGRAM AND INDEX PROGRAM AND INDEX PROCESSING METHOD” (Pat.#2)PROCESSING METHOD” (Pat.#2)JP2008-324143JP2008-324143Filed Dec.19, 2008Filed Dec.19, 2008

JP4644735JP4644735Patented Dec. 10, 2010Patented Dec. 10, 2010

Invalidation Trial demanded Sep. Invalidation Trial demanded Sep. 30, 2011 (MUKO2011-800190)30, 2011 (MUKO2011-800190)

Decided Mar. 30, 2012 Decided Mar. 30, 2012 Claims 2-10 InvalidatedClaims 2-10 InvalidatedClaim 1 Found validClaim 1 Found valid

On Appeal at IP High CourtOn Appeal at IP High Court

SONY SONY launched launched “torne” “torne” serviceserviceMar. 2009Mar. 2009

G2: “SERVER, USER DEVICE, G2: “SERVER, USER DEVICE, PROGRAM AND INDEX PROGRAM AND INDEX PROCESSING METHOD” (Pat.#1)PROCESSING METHOD” (Pat.#1)JP2010-160000JP2010-160000Filed Jul.14, 2010Filed Jul.14, 2010

JP4612747JP4612747Patented Oct. 22, 2010Patented Oct. 22, 2010

Invalidation Trial demanded Sep. 30, Invalidation Trial demanded Sep. 30, 2011 (MUKO2011-800189)2011 (MUKO2011-800189)

Decided Mar. 30, 2012 Decided Mar. 30, 2012 Claims 2-10 InvalidatedClaims 2-10 InvalidatedClaim 1 Found validClaim 1 Found valid

DivisionalDivisional

G2: “USER DEVICE, PROGRAM, G2: “USER DEVICE, PROGRAM, INDEX PROCESSING METHOD AND INDEX PROCESSING METHOD AND TUNER”TUNER”JP2010-248970JP2010-248970Filed Nov.5, 2010Filed Nov.5, 2010PendingPending

On Appeal at IP High CourtOn Appeal at IP High Court

G3: “SURVEY SYSTEM”G3: “SURVEY SYSTEM”JP2012-192099JP2012-192099Filed Aug.31, 2012Filed Aug.31, 2012PendingPending

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Problem to be Solved: To survey Problem to be Solved: To survey viewing rating/ video recording viewing rating/ video recording rating by collecting user’s choice on rating by collecting user’s choice on TV program through Electric TV TV program through Electric TV Program Guide (EPG)Program Guide (EPG)

Server (survey agent) - client Server (survey agent) - client (users) based viewing rating survey (users) based viewing rating survey systemsystem

Users select TV program through Users select TV program through EPG to transmit channel selectionEPG to transmit channel selection

A survey agent collect users channel A survey agent collect users channel selection to calculate viewing rating selection to calculate viewing rating

Displayed EPG may contain viewing Displayed EPG may contain viewing rating/ video recording ratingrating/ video recording rating

2.1. PS3 w/ ”torne” Case2.1. PS3 w/ ”torne” Case-What’s originally disclosed…-What’s originally disclosed…

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Original Claim 1 (sum.)Original Claim 1 (sum.)A viewing rating survey system A viewing rating survey system for surveying a viewing rating based for surveying a viewing rating based

on data on data sent from users to a survey agentsent from users to a survey agent, comprising:, comprising:

at a user sideat a user side,,

means for displaying an EPG;means for displaying an EPG;

means for designating TV program to be viewed by users means for designating TV program to be viewed by users through the EPG;through the EPG;

means for showing the designated TV program; andmeans for showing the designated TV program; and

means for transmitting channel data of the designated TV means for transmitting channel data of the designated TV program to the survey agent side, program to the survey agent side,

at a survey agent sideat a survey agent side,,

means for receiving the channel data;means for receiving the channel data;

means for counting a number of users viewing a TV means for counting a number of users viewing a TV program identified by the channel data for each channel; andprogram identified by the channel data for each channel; and

means for means for calculating a viewing rating calculating a viewing rating based on a based on a number of all users to be surveyed and a counted number of number of all users to be surveyed and a counted number of users.users.

2.1. PS3 w/ ”torne” Case2.1. PS3 w/ ”torne” Case-What’s originally disclosed-What’s originally disclosed

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2.1. PS3 w/ ”torne” Case2.1. PS3 w/ ”torne” Case-Accused SONY’s service…-Accused SONY’s service…

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PS3PS3

““torne”: Digital torne”: Digital TV tuner for PS3TV tuner for PS3 EPGEPG

2) Owner PS3 receives access 2) Owner PS3 receives access information of PS3s to calculate information of PS3s to calculate “MIRU” information“MIRU” information

3) Owner PS3 sends “MIRU” information 3) Owner PS3 sends “MIRU” information to the matching SVRto the matching SVR

Query/room Owner PS3Query/room Owner PS3

Matching/storage SVRsMatching/storage SVRs

1)1) PS3s access the matching SVRPS3s access the matching SVR

4) PS3s obtain “MIRU” information from 4) PS3s obtain “MIRU” information from SVR to incorporate into EPG data to SVR to incorporate into EPG data to be displayedbe displayed

EPGEPG

SONY launched “torne” with PS3 around March SONY launched “torne” with PS3 around March 2009, peer-to-peer service to provide users with 2009, peer-to-peer service to provide users with real time popularity of on-air TV programreal time popularity of on-air TV program

Accused feature was “Accused feature was “MIRUMIRU” and “” and “TORUTORU” ” information to be displayedinformation to be displayed ““MIRU (viewing)” information: number of audience watching MIRU (viewing)” information: number of audience watching

on-air TV programon-air TV program ““TORU (TV recording booking)” information: number of TORU (TV recording booking)” information: number of

audience who have booked the TV program audience who have booked the TV program

2.1. PS3 w/ ”torne” Case2.1. PS3 w/ ”torne” Case- Accused SONY’s service- Accused SONY’s service

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““MIRU” MIRU” informationinformation

““TORU” TORU” informationinformation

Patented Claim 1 of #1 (corrected after grant)Patented Claim 1 of #1 (corrected after grant)A server A server comprising: comprising:

means for receiving from a plurality of user devices means for receiving from a plurality of user devices viewing viewing status information identifiable of an on-air TV program being viewed status information identifiable of an on-air TV program being viewed through the user devicesthrough the user devices;;

means for receiving from a plurality of user devices means for receiving from a plurality of user devices TV TV recording booking status information identifiable of a TV program recording booking status information identifiable of a TV program being bookedbeing booked;;

means for calculating means for calculating viewing index comprehensible of viewing index comprehensible of whether a number of viewers viewing the on-air TV program is large whether a number of viewers viewing the on-air TV program is large or small or small based on the viewing status information;based on the viewing status information;

means for calculating means for calculating TV recording booking index TV recording booking index comprehensible of whether a number of booking is large or smallcomprehensible of whether a number of booking is large or small based on the TV recording booking status information; andbased on the TV recording booking status information; and

means for transmitting the viewing index and the TV means for transmitting the viewing index and the TV recording booking index corresponding to the on-air TV program to recording booking index corresponding to the on-air TV program to be displayed on EPG on the user devices.be displayed on EPG on the user devices.

Claims 4,5: user device claims, claims 6,7: program claimsClaims 4,5: user device claims, claims 6,7: program claims

2.1. PS3 w/ ”torne” Case2.1. PS3 w/ ”torne” Case- How the troll tried to trap “torne”? - How the troll tried to trap “torne”?

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Issue 1: Does SONY’s SVRs on PlayStation Issue 1: Does SONY’s SVRs on PlayStation network, “torne” w/ PS3 and its program network, “torne” w/ PS3 and its program infringe patents at issue?infringe patents at issue?Server claims, user device claims and program Server claims, user device claims and program

claimsclaims

Issue 2: Does SONY’s “torne” indirectly Issue 2: Does SONY’s “torne” indirectly infringe patented user device claims (Art. infringe patented user device claims (Art. 101 (i), (ii))?101 (i), (ii))?

Issue 3: Validity (Art.104Issue 3: Validity (Art.104terter (1)) (1)) Issue 4: DamagesIssue 4: Damages

2.1. PS3 w/ ”torne” Case2.1. PS3 w/ ”torne” Case-Issues-Issues

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Issue 1: Does SONY’s SVRs on PS network, Issue 1: Does SONY’s SVRs on PS network, PS3 w/ “torne” and its program infringe PS3 w/ “torne” and its program infringe patents at issue?patents at issue? Court ruled non-infringement of server claim (Claim 1), Court ruled non-infringement of server claim (Claim 1),

because neither SONY’s SVRs on PlayStation network because neither SONY’s SVRs on PlayStation network nor PS3 w/ “torne” constitutes claimed “server”nor PS3 w/ “torne” constitutes claimed “server”

NON infringement of other user device claims and NON infringement of other user device claims and program claims both claiming the same “server”program claims both claiming the same “server”

Issue 2: Does SONY’s “torne” indirectly Issue 2: Does SONY’s “torne” indirectly infringe patented user device claims (Art. infringe patented user device claims (Art. 101 (i), (ii))?101 (i), (ii))? NON indirect infringement of user device claimsNON indirect infringement of user device claims

Issue 3: Validity (Art.104Issue 3: Validity (Art.104terter (1)) (1)) Issue 4: DamagesIssue 4: Damages

2.1. PS3 w/ ”torne” Case2.1. PS3 w/ ”torne” Case-Court Decision-Court Decision

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Issue 1: Does SONY’s SVRs on PlayStation Issue 1: Does SONY’s SVRs on PlayStation network, PS3 w/ “torne” and its program network, PS3 w/ “torne” and its program infringe patents at issue?infringe patents at issue? Neither SONY’s SVRs on PlayStation network nor PS3 w/ Neither SONY’s SVRs on PlayStation network nor PS3 w/

“torne” constitutes claimed ““torne” constitutes claimed “serverserver”, because:”, because: The SVR on PS network does not calculate “The SVR on PS network does not calculate “MIRUMIRU” ”

information and “information and “TORUTORU” information, but the PS3 does which ” information, but the PS3 does which is comparable to claimed “is comparable to claimed “user deviceuser device””

Claimed “server” is construed as a server Claimed “server” is construed as a server independent/separate from “user devices”independent/separate from “user devices” according to claim according to claim languagelanguage

Original disclosure clearly differentiate “survey agent Original disclosure clearly differentiate “survey agent (server)” from “users (user devices)”, so that (server)” from “users (user devices)”, so that “survey agent” “survey agent” could not be “users” who are survey targetcould not be “users” who are survey target in light of in light of transparency of the viewing rating surveytransparency of the viewing rating survey

Plaintiff, ADC’s infringement claim was dismissedPlaintiff, ADC’s infringement claim was dismissed

2.1. PS3 w/ ”torne” Case2.1. PS3 w/ ”torne” Case-Reasoning-Reasoning

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Plaintiff: IPCom GmbHPlaintiff: IPCom GmbH Highly litigious German “Troll”Highly litigious German “Troll” Run by Bernhard Frohwitter, “one of the most Run by Bernhard Frohwitter, “one of the most

successful German patent litigators”successful German patent litigators” Pursuing patent battles against telecom Pursuing patent battles against telecom

companies around the worldcompanies around the world NPEs purchased patents originally filed by NPEs purchased patents originally filed by

Bosch GmbHBosch GmbH Claiming injunctive relief and \151M damage Claiming injunctive relief and \151M damage

compensationcompensation

Defendant: eAccess Ltd. (merged Defendant: eAccess Ltd. (merged eMobile Ltd. by absorption)eMobile Ltd. by absorption) Manufacturing/selling mobile communication Manufacturing/selling mobile communication

devices with “EMnet mail”, Multimedia devices with “EMnet mail”, Multimedia Messaging Service (MMS) Messaging Service (MMS)

……The troll beatenThe troll beaten

2.2.”EMnet Mail” Case2.2.”EMnet Mail” Case-Tokyo Dist. Ct. 2009(wa)8390, Decided on Aug. 30, -Tokyo Dist. Ct. 2009(wa)8390, Decided on Aug. 30,

20112011

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2.2.”EMnet Mail” Case 2.2.”EMnet Mail” Case -Long History-Long History

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““TRANSMISSION FRAME TRANSMISSION FRAME AND RADIO UNIT WITH AND RADIO UNIT WITH TRANSMISSION FRAME”TRANSMISSION FRAME”DE19856440.6DE19856440.6Filed Dec.8, 1998 in DEFiled Dec.8, 1998 in DE

PCT/DE1999/003328PCT/DE1999/003328Filed Oct. 16, 1999Filed Oct. 16, 1999

eMobile eMobile launched launched “EMnet mail” “EMnet mail” serviceserviceMar. 2008Mar. 2008

JP2000-587547JP2000-587547National Entry Jun. 8, 2001National Entry Jun. 8, 2001

JP4001718JP4001718Patented Aug. 24, 2007Patented Aug. 24, 2007

Transferred from Bosch Transferred from Bosch to IPComto IPComApr. 28, 2008Apr. 28, 2008

DivisionalDivisional

Priority claimingPriority claiming

G1: “TRANSMISSION G1: “TRANSMISSION FRAME AND FRAME AND TRANCEIVER”TRANCEIVER”JP2007-169122JP2007-169122Filed Jun. 27, 2007Filed Jun. 27, 2007Refusal decision Sep. 21, Refusal decision Sep. 21, 20122012

IPCom sued IPCom sued eMobileeMobileMar. 16, 2009Mar. 16, 2009

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Patented invention is directed to Patented invention is directed to Multimedia Multimedia Message Service (MMS) Message Service (MMS) capable of embodying capable of embodying e.g., text data, audio data and image data into one e.g., text data, audio data and image data into one short message transmission frame in mobile radio short message transmission frame in mobile radio communicationcommunication

““Would-be essential” patent Would-be essential” patent in 3GPP Global in 3GPP Global System for Mobile Communications (GSM) System for Mobile Communications (GSM) standardstandard

Prior Art: ASCII text based Short Message Service Prior Art: ASCII text based Short Message Service (SMS) defined in 3 GPP GSM standard(SMS) defined in 3 GPP GSM standard

eMobile devices embody “EMnet mail” function, eMobile devices embody “EMnet mail” function, i.e., MMS defined in 3GPP GSM standard, allowing i.e., MMS defined in 3GPP GSM standard, allowing e.g., pictogram mail, photo mail and movie mail e.g., pictogram mail, photo mail and movie mail

2.2.”EMnet Mail” Case 2.2.”EMnet Mail” Case -Patented Invention and accused device-Patented Invention and accused device

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Claim 1:Claim 1:

A method for transmitting a message (5) including at least two A method for transmitting a message (5) including at least two data fields, comprising the steps of:data fields, comprising the steps of:

including, in a first data field (15) of the message (5), including, in a first data field (15) of the message (5), data in a first data formatdata in a first data format, and including, in a second data field , and including, in a second data field (20), (20), data in a second data format, different from the first data data in a second data format, different from the first data formatformat;;

inserting inserting a first identification code (35), which identifies a first identification code (35), which identifies a makeup of the whole message (5) a makeup of the whole message (5) , into the first data field , into the first data field (15); and(15); and

including, in the first identification code (35), including, in the first identification code (35), information about at least one of a number of data fields (15, information about at least one of a number of data fields (15, 20, 25, 30), size of the data fields, and the data format20, 25, 30), size of the data fields, and the data format..

Claim 11: Communication device claimClaim 11: Communication device claim

2.2.”EMnet Mail” Case 2.2.”EMnet Mail” Case -Patented Invention-Patented Invention

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Issue 1: Does eMobile device infringe Issue 1: Does eMobile device infringe a patent at issue (JP4001718)?a patent at issue (JP4001718)?

Issue 2: Validity (Art.104Issue 2: Validity (Art.104terter(1))(1))Issue 3: Is last-minute additional Issue 3: Is last-minute additional

assertion based on originally non-assertion based on originally non-asserted patented claims (Claims 2 asserted patented claims (Claims 2 and 12) admissible?and 12) admissible?

Issue 4: DamagesIssue 4: Damages

2.2.”EMnet Mail” Case 2.2.”EMnet Mail” Case -Issues-Issues

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Issue 1: Does eMobile device infringe a patent at issue (JP4001718)?Issue 1: Does eMobile device infringe a patent at issue (JP4001718)?

Issue 2: Validity (Art.104Issue 2: Validity (Art.104terter(1))(1))Novelty destroying killing prior art ended the Novelty destroying killing prior art ended the

battlebattle““Generalized Structure for a Multimedia Generalized Structure for a Multimedia

Messaging Service”, submitted at ETSI Messaging Service”, submitted at ETSI Standardization Committee in Hannover, Standardization Committee in Hannover, Germany by Bosch itself on Dec. 2-3, 1998, just Germany by Bosch itself on Dec. 2-3, 1998, just several days before the priority date several days before the priority date

Issue 3: Is last-minute additional assertion based on Issue 3: Is last-minute additional assertion based on originally non-asserted patented claims (Claims 2 originally non-asserted patented claims (Claims 2 and 12) admissible?and 12) admissible?

Issue 4: DamagesIssue 4: Damages

2.2.”EMnet Mail” Case 2.2.”EMnet Mail” Case -Court Decision-Court Decision

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Issue 1: Does eMobile device infringe a patent at issue (JP4001718)?Issue 1: Does eMobile device infringe a patent at issue (JP4001718)?

Issue 2: Validity (Art.104Issue 2: Validity (Art.104terter(1))(1)) Issue 3: Is last-minute additional assertion based on Issue 3: Is last-minute additional assertion based on

originally non-asserted patented claims (Claims 2 originally non-asserted patented claims (Claims 2 and 12) admissible ?and 12) admissible ? Mar. 16, 2009: IPCom brought lawsuitMar. 16, 2009: IPCom brought lawsuit Mar. 25, 2011: IPCom added assertion based on Mar. 25, 2011: IPCom added assertion based on

originally non-asserted patented claims 2 and 12, after originally non-asserted patented claims 2 and 12, after the judge showed interim opinion of non-infringement the judge showed interim opinion of non-infringement and solicited settlementand solicited settlement

The court dismissed as impermissible change in cause The court dismissed as impermissible change in cause of action under Civil Procedure Act 143(1), because it of action under Civil Procedure Act 143(1), because it will irreparably delay proceedingswill irreparably delay proceedings

Issue 4: DamagesIssue 4: Damages

2.2.”EMnet Mail” Case 2.2.”EMnet Mail” Case -Court Decision-Court Decision

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Plaintiff: IPCom GmbHPlaintiff: IPCom GmbH NPEs purchased patent originally filed by NPEs purchased patent originally filed by

Bosch GmbH after eMobile launched Bosch GmbH after eMobile launched accused 3G Mobile serviceaccused 3G Mobile service

Claiming injunctive relief and \151M Claiming injunctive relief and \151M damage compensationdamage compensation

Defendant: eAccess Ltd.Defendant: eAccess Ltd. Manufacturing/selling W-CDMA 3G mobile Manufacturing/selling W-CDMA 3G mobile

embodying CODEC defined in 3GPP embodying CODEC defined in 3GPP standard standard

Patent at issue: JP4021622 “METHOD FOR Patent at issue: JP4021622 “METHOD FOR TRANSMITTING DIGITAL USEFUL DATA”TRANSMITTING DIGITAL USEFUL DATA”

““Would-be essential” patent Would-be essential” patent in 3GPP in 3GPP standardstandard

……The troll beaten againThe troll beaten again

2.3.”3G Mobile CODEC” Case2.3.”3G Mobile CODEC” Case--Tokyo Dist. Ct. 2009(wa)17937, Decided on May 31, 2012Tokyo Dist. Ct. 2009(wa)17937, Decided on May 31, 2012

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Issue 1: Does eMobile’s transmission Issue 1: Does eMobile’s transmission method infringe patent at issue?method infringe patent at issue?Burden of proof on infringement for Burden of proof on infringement for

“would-be essential” patent“would-be essential” patent

Issue 2: Indirect infringementIssue 2: Indirect infringementIssue 3: Joint infringementIssue 3: Joint infringementIssue 4: Validity (Art.104Issue 4: Validity (Art.104terter (1)) (1))Issue 5: Is seeking an injunction Issue 5: Is seeking an injunction

abuse of right?abuse of right?Issue 6: DamagesIssue 6: Damages

2.3.”3G Mobile CODEC” Case2.3.”3G Mobile CODEC” Case-Issues-Issues

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Issue 1: Does eMobile’s transmission method Issue 1: Does eMobile’s transmission method infringe patent at issue?infringe patent at issue?Court ruled non-infringement, because:Court ruled non-infringement, because:Even if claimed transmission method is defined in Even if claimed transmission method is defined in

3GPP standard and eMobile’s method is in 3GPP standard and eMobile’s method is in compliance with 3GPP standard, it does not compliance with 3GPP standard, it does not necessarily mean that eMobile’s method infringes necessarily mean that eMobile’s method infringes the claimed method which is optional in 3GPPthe claimed method which is optional in 3GPP

Insufficient evidence to prove that eMobile’s method Insufficient evidence to prove that eMobile’s method uses all element in claimed inventionuses all element in claimed invention

Burden of proof is still on a plaintiff for “would-be Burden of proof is still on a plaintiff for “would-be essential” patent essential” patent

Issue 2: Indirect infringementIssue 2: Indirect infringement Issue 3: Joint infringementIssue 3: Joint infringement Issue 4: Validity (Art.104Issue 4: Validity (Art.104terter (1)) (1)) Issue 5: Is seeking an injunction abuse of right?Issue 5: Is seeking an injunction abuse of right? Issue 6: DamagesIssue 6: Damages

2.3.”3G Mobile CODEC” Case2.3.”3G Mobile CODEC” Case-Court Decision-Court Decision

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Trolls have failed in “holdup”Trolls have failed in “holdup”Trolls have failed to pocket huge Trolls have failed to pocket huge

moneymoneyTo date, no living space in JapanTo date, no living space in JapanAutomatic injunction issue has not yet Automatic injunction issue has not yet

addressed by the Courtaddressed by the Court……But trolls are always pesky and But trolls are always pesky and

getting smartergetting smarter……Not yet off the hookNot yet off the hook

4. …The Troll Sneaked Away?4. …The Troll Sneaked Away?

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Kay KONISHIKay KONISHI NICHI-EI Patent and Trademark Attorneys, NICHI-EI Patent and Trademark Attorneys, P.C.P.C.konishi@p-nic.com