Latest amendment to Tokyo District Court’s SEP rules: global license requirement compared to latest UPC, UK, German, Brazilian approaches

We wish to thank Shogo Matsunaga for engaging with us in constructive discussion on this subject. This is a splendid opportunity to clarify, in a free section after the part reserved for premium members, the Dos & Don’ts for reasonable and productive discussions with us over SEP and other IP issues.

1. Overview

Let’s start with a set of tables comparing the latest Tokyo rules to multiple jurisdictions’ approaches to judicial mediation of SEP disputes:

6. Dos & Don’ts of publicly and/or privately engaging on matters of fact and/or opinion in SEP (or similar) contexts

It was a very positive experience to discuss not only the topic, but also areas of agreement and disagreement, with a Japanese SEP litigator. A different Japanese SEP expert previously elected to take to LinkedIn and attack ip fray in unacceptable and grossly illogical ways that forced us to push back.

First, we are always happy to make corrections if anything is objectively wrong or missing. No week goes by without lawyers and law firm marketing departments reaching out so we credit additional professionals. We always do so. We often have no way of knowing because court rulings often do not list all persons involved with a case, or even if they try to do, some of the information may be outdated.

In a certain SEP settlement context, we saw a licensee’s name appear on a patent pool’s website for the first time a few hours after a Brazilian court, further to an expert report that was previously known, ordered an injunction. From that, we reasonably inferred that the injunction led to the settlement. According to the licensee, however, the license was not signed after the court entered the injunction. The fact that the injunction still came down shows that the license agreement was not signed long before the decision because a license is a full defense to an infringement lawsuit. So the difference is not big, and we did not understand why the party made threats instead of simply talking to us on a “we have some information for you” basis. As a matter of principle, we must make such threats public and cannot bow to them, which does not mean that we do not make edits that we owe to our readership. Just rely on the fact that we all want our readers to get the most accurate information possible.

Second, everyone is entitled to their own opinion, but not to their own facts. That goes both ways. We are committed to factual accuracy, but we also reserve the right to voice opinions. We do not take it lightly if someone accuses us of factual inaccuracies where it is a mere disagreement based on correct facts. In the SEPJM context, that happened a few months ago. Someone from Japan accused us of “misconceptions” even though everything we had written (which was just basic at the time) was correct. It is not that we misunderstood how the Tokyo system would work. We were right that it was not mediation by Western standards (a fact that no reasonable person can dispute) and we were entitled to the opinion that this can lead to further interjurisdictional friction. Even when we engaged in private correspondence with the person and explained it, all that we elicited was a further insistence on how great the Japanese SEPJM concept allegedly is. If someone from the Japanese patent profession thinks it’s great, that’s fine, but it does not make our reporting incorrect, which is what a word like “misconceptions” would mean.

Third, if someone lacks respect, it becomes difficult to contradict in the same respectful way in which it would otherwise be possible. Public comments on LinkedIn that say things like we should read decisions before we write are not justified by (for example) someone’s expansive interpretation of a legal term.

There was a case where an Indian law firm had moved for an injunction on behalf of a pharma company and the defendant (a generics maker) then entered into a covenant not to practice a particular claim limitation. There was no injunction in formal terms, no matter how much the firm representing the plaintiff insists that there was, though a formal commitment to a court can ultimately also be enforced. Our headline initially said that the injunction had been denied, and we gladly corrected that part. But a commitment is not an injunction, so we refused to call it one, and we were still entitled to our opinion that the generics maker’s market entry was bad news for the patent holder. In that case, that does not mean the law firm did bad work (it is a good firm for all we know), but the patent was apparently not broad enough to prevent market entry. After an unnecessarily heated debate, we nevertheless connected on LinkedIn.

Fourth, it is often best to talk to us privately before going public. We will correct errors regardless of the channel through which they are communicated. But private correspondence avoids any unnecessary friction and confusion, and even if anything goes wrong, such as because of someone being too emotional, it’s easier to fix any problems. You can then also tell us something off the record. Again, you choose the channel, but if you have a problem, why don’t you start raising it privately as you can always make public statements if you later feel forced to. Chances are that if you talk to us, we’ll thank you for your input, make corrections to the extent they are warranted, and even our opinions may be adjusted at some point.

Fifth, if you believe you’ve identified a factual error, please quote what we said that you think is wrong; say why you think it’s wrong; point us to ways to verify it if possible (sometimes it’s not, in which case we must know whether we can attribute it to you); and make it clear what you think we should say instead, not because we are lazy but because it may otherwise take another iteration before we have converged on the same wording. It is in the interest of our readers and those contacting us (and our own objective) to correct something as swiftly as possible.

Sixth, even if something is not a hard fact in the strictest sense or cannot be disproven conclusively, we will push back if clearly unreasonable or utterly unrealistic positions call into question our understanding of the issues. For example, an Italian litigator defended the UPC’s Milan LD against an article that flagged a major problem: two Ericsson v. ASUS cases were filed about two years ago and won’t go to trial until a few months from now, which will be about a year after the last written pleading. The UPC has a one-year time-to-trial objective. Someone then said there could be good reasons for such a delay, but that is extremely unrealistic when the delay is so excessive. In other UPC divisions, confidentiality issues regarding comparable license agreements led to minor delays only. Without a doubt, the SEP holder wants to get a decision (as evidenced by recent preliminary injunction motions), and even if the implementer was extremely good at stalling, it means the court did not do its job, part of which is to combat delay tactics. Try to play such games in the Munich I Regional Court and it will get you nowhere…

Seventh, adjusting positions based on new information is not an inconsistency. It is the rational thing to do. That’s a major part of the reason for this follow-up on the Tokyo District Court’s proceedings and how they compare to practice in other major SEP venues.

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1. June 30, 2025 ip fray article on Pantech v. Google ↩︎
2. This September 10, 2025 article by leftist newspaper The Guardian talks about the current prime minister being the subject of non-complimentary soccer stadium chants. ↩︎
3. Appellate case law has recently been adjusted, but significant overreach remains (May 19, 2026 ip fray article) and the UKSC could go off the deep end once it decides Tesla v. InterDigital & Avanci (April 27, 2026 ip fray article). ↩︎