The Legal 500

Nakamura & Partners’ well-established team provides agency services for actions such as applications and appeals before the Japan Patent Office and overseas patent offices regarding industrial property rights, and related research and expert testimony. Its 20-strong legal team handles domestic and international counselling, expert testimony, infringement litigation and enforcement, and unfair competition cases. Thought leader Koichi Tsujii is vastly experienced, and Yoshio Kumakura is another highly regarded expert. Shinichiro Tanaka is also recommended.

IP is a core practice for TMI Associates, which advises government agencies and provides guidance on policy. The firm’s patent attorneys handle filing applications for patents, utility models, designs, and trade marks. It also advises on licensing and technology development agreements. The firm fields several contentious IP experts with a good record in patent infringement cases. Tomohiro Tohyama, Tadahito Orita, patent attorney Yoshiyuki Inaba, Katsuro Tanaka and Mitsuko Miyagawa are highly recommended.

Yuasa and Hara rises to the top tier this year. The team handles patent, trade mark and design, and accounting and auditing matters, including advising on business method patents, computer software protection, domain name disputes, international brand and patent protection. Toshiaki Makino, who is noted for his experience at the Tokyo High Court, is recommended along with licensing expert Kozo Yabe and Osamu Suzuki.

Abe, Ikubo & Katayama provides superb IP counsel, with top-end IP litigation prowess as well as a dedicated patent prosecution division. Highly respected managing partner Eiji Katayama has experience spanning the chemistry, electronics and industrial machinery sectors.

Anderson Mori & Tomotsune provides ‘very good service’ and is ‘excellent value for money’. It fields a large group of benrishi (patent attorneys), including Korean patent expert Sungho Kim. The firm recently advised on a licence and distribution agreement with Booyah, and successfully defended Hitachi in the IP High Court when one of its former employees claimed compensation for the assignment of his invention. Other clients include Bayer, Merck, Hitachi, LG Innotech and Asahi Kasei. Yasufumi Shiroyama ‘speaks good English and is a very pleasant individual’. ‘Superb lawyer’ Yoshikazu Iwase provides ‘exceptional service and great-quality work’, and ‘really understands what customer service is all about’. Satoshi Miyagaki and Shigeyoshi Ezaki are recommended for soft IP matters.

The ‘superb’ Mori Hamada & Matsumoto acted as legal adviser for Nippon Television Network Corporation in a copyright infringement case brought by a North Korean administrative organisation and its Japanese licensee. It also advised Sanyo on the sale of washing machine and refrigerator businesses and associated IP matters in Japan (and subsidiaries in other Asian countries) to Haier Group Corporation in China. Yuko Noguchi ‘knows everything about copyright law’: ‘her definite strength is that she understands public policy and how these discussions are formulated within the government’, and is ‘the ideal lawyer that a lobbyist would want as a partner’. Masayuki Matsuda, Yutaka Miyoshi and Koichiro Iida are also recommended. Tomoya Fujimoto left the firm to join the Walt Disney Company.

Nagashima Ohno & Tsunematsu represents domestic and foreign companies in patent and copyright litigation and patent invalidity proceedings before the Japan Patent Office. It also assists clients in IP transactions, including the negotiation of licence agreements and technology transfers, and IP due diligence in M&A. The firm is advising several semiconductor manufacturers in patent infringement litigation and assisting an education sector business in a domain name dispute. Ryoichi Mimura, Kazuo Ohtake, Yoshimi Ohara and Takahiro Yamauchi are highly experienced.

New to the table, Sonderhoff & Einsel Law and Patent Office mixes lawyers, patent attorneys, certified public accountants (CPAs) and tax consultants to provide comprehensive counselling, assistance and representation. Patent attorney Felix-Reinhard Einsel is recommended.

Abe, Wada & Watanabe continues to attract high praise for its IP capability. It enforces patent rights and pursues infringers, provides anti-counterfeiting advice, and registers trade marks and designs. Takashi Koyama and Hiromi Watanabe are particularly experienced.

Atsumi & Sakai’s corporate practice advises on IT and IP matters including data protection, regulatory advice and the registration and protection of IP rights. The firm recently advised a rightsholder on internet games. Chie Kasahara is recommended.

Nishimura & Asahi has a particularly vibrant contentious IP practice. Clients include Mitsubishi Chemical Corporation, Microsoft and GREE. The firm advised Allied Telesis on patent infringement litigation regarding a network transmitter and receiver switching device; represented Toto in litigation rescinding an earlier patent invalidation; and acted for Sumitomo Asset Management in a trade mark invalidation trial case. Yoshiyuki Miyashita, Eiichi Fukushima, Masakazu Iwakura and Hiroshi Suga are recommended.

Shobayashi International Patent & Trademark Office enters the table this year with clients praising the team’s ‘client-centred and friendly attitude’, ‘depth of IP knowledge’ and ‘excellent level of service’. Its patent attorneys include a former deputy commissioner and former chief of appeals at the Japan Patent Office. Masayuki Shobayashi excels in patent prosecution and litigation, and IP business management across the chemical, pharmaceutical and biochemical sectors. Tetsuo Shiba is ‘accurate and prompt’, and Kazuyoshi Hayashi and trade mark specialist Yukihiro Higashitani are also recommended.

In collaboration with local US counsel, Hashidate Law Office successfully defended a client against a patent infringement claim by winning on summary judgment before the New York District Court. The same matter was also dismissed by the Tokyo High Court and Japan’s Supreme Court. Kenji Hashidate is recommended.

Hiroe & Associates handles matters relating to patents, designs, utility models, trade marks and copyright. Tutomu Nisio advises on the prosecution and enforcement of patents and utility models for industrial and mechanical devices. Takenori Hiroe also has a strong reputation.

At Lexwell Partners, managing partner and patent attorney Akimitsu Hirai has experience in negotiating and drafting international licence agreements for various types of IP, with a special focus on cutting-edge technology such as biotechnology and software.

Miyake & Yamazaki’s Junichi Yamazaki represents clients in IP rights disputes.

At STW & Partners, Wataru Sueyoshi has vast experience in IP-related matters. IP expert Hajime Watanabe is also recommended.

Hogan Lovells Horitsu Jimusho Gaikokuho Kyodo Jigyo’s office managing partner Lloyd Parker is an expert in global trade mark portfolio management and enforcement work, and has ‘extensive IP knowledge’. His team, which gives ‘client-centred service’, recently advised Panasonic Group and related group companies on trade mark portfolio management work in over 50 countries, community design work and a patent infringement lawsuit in New York concerning liquid crystal display panels. The firm also advised Brother Group on trade mark and design matters including anti-counterfeiting work in Europe and China, and has assisted with its global trade mark portfolio, again, in over 50 countries. Other clients include Yonex, Sony, Kao Group, PepsiCo International and NEC. Philippe Riesen and Eiichiro Kubota are highly reputed patent litigators, and of counsel Kensaku Takase focuses on IT and copyright issues.

Morrison & Foerster Ito & Mitomi provides ‘excellent service’ and ‘speedy and detailed responses’. The firm is highly regarded for Japanese law advice, and also acted for Fujitsu and its German subsidiary, Fujitsu Technology Solutions, in successfully negotiating a worldwide patent licence agreement with SISVEL. Other clients include Hitachi, Sharp, Yamaha and TDK. Max Olson, who leads the IP litigation department, is’good at both litigation and negotiation’, and head of the patent team Robert Hollingshead is ‘strong at handling international IP disputes’. Louise Stoupe’s strengths include ‘strategic advice’ and ‘examining witnesses at trial’. Yukihiro Terazawa, Masato Hayakawa and technology transactions group head Stuart Beraha are also recommended.

The ‘excellent’ White & Case LLP- White & Case Law Offices (Registered Association) rises a tier this year. It advised on IP aspects of Toshiba’s acquisition of Western Digital’s HDD manufacturing equipment, and assisted Haier Group with its acquisition of Sanyo Electric’s white goods businesses (including the transfer of more than 1,200 patents). It also advised on the Panasonic and Freescale patent infringement litigation. Other clients include Rohm, Flextronics International, Abbott Laboratories, Alere, Japan Times, Panasonic, and Saudi Aramco. David Case ‘understands commercial complexity’, and ‘proposes positions to bridge commercial gaps while proactively asserting his clients’ best interests’. Yuji Ogiwara is also recommended.

Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. has a superb market reputation, and ‘excellent knowledge and experience’. The firm represented Mitsubishi Heavy Industries and Mitsubishi Power Systems America in multiple cases brought by General Electric, including a US International Trade Commission investigation, two US district court cases, and an appeal of the ITC ruling to the US Federal Circuit. The firm is representing Roland DG Corporation in a patent infringement lawsuit against Gerber Scientific over large-format printers. Practice head Naoki Yoshida is highly recommended. The team also includes senior associate David Albagli, who has ‘strong Japanese communication skills together with a science background’.

Jones Day is praised for its ‘superior service’, ‘reliable advice’ and ‘high level of expertise’. It successfully defended Dell when JST Mfg Co filed a patent infringement action against it before the Tokyo District Court, seeking a preliminary injunction requesting the cessation of sale of Dell’s laptop computers with respect to its patent regarding connectors. Other clients include Starbucks Corporation, Sunkist Growers and Eastman Kodak. An ‘expert in the field’, Michiru Takahashi is ‘reliable, knowledgeable, composed, and easy to talk to’. The ‘very personable’ Scott Jones provides a ‘service that is excellent with regard to accuracy, knowledge and analysis, response time, performance and communication with clients’. Nobutoshi Yamanouchi is also recommended.

‘Extremely good, especially for business acumen and knowledge’, Ropes & Gray LLP rises a tier this year for its impressive IP practice, which has notable strength in the electronics, internet and auto industry sectors. The firm is acting in IV v Nikon, where it is representing Nikon Corporation in US patent infringement litigation brought by Intellectual Ventures, in a Delaware district court. Other clients include Aisin AW, DeNA, Fujifilm, Fujitsu, Hitachi Kokusai, Mitsubishi Tanabe Pharma, NEC and Olympus Corp. Hiroyuki Hagiwara is noted for his experience, and Maxwell Fox is also highly regarded. James DeGraw has relocated and now splits his time between San Francisco and Hong Kong.

Baker & McKenzie (Gaikokuho Joint Enterprise) handles the Japanese trade mark portfolio of Abbott Laboratories, and recently advised a Japanese electronics giant in an anti-counterfeiting action in Egypt. However, the group suffered a blow when Yasunori Hashiguchi left to found his own firm, Hisata & Hashiguchi. Head of IP Ken Nakayama specialises in patents and trade marks, and is recommended along with Daisuke Tatsuno, who focuses on IT, telecoms and broadcasting matters. Kei Matsumoto was promoted to partner.

DLA Piper Tokyo Partnership represented Ricoh Co in a patent infringement case against Oki Data at the ITC and Federal District Court. US Senior counsel Henry Koda is a very experienced IP practitioner. Senior associate Chris Mizumoto focuses on electronics and medical equipment matters, and has extensive US patent prosecution and litigation experience.

Herbert Smith Freehills’s ‘knowledge of Japanese law plus its excellent English skills and knowledge of legal systems outside of Japan offers something extra’. The firm is advising a global pharmaceutical company on competitor intelligence in Asia, scientific research analysis, and potential patent litigation against a competitor’s generic product; and assisting a Japanese medical instruments supplier and its distributor with the defence of a potential claim for trade mark infringement, defamation and malicious falsehood. Head of practice and senior associate Frederick Ch’en is ‘diligent and talented; a lawyer and a scientist, he can easily understand the technical issues and is very good at figuring out a solution’. Peter Godwin, Gavin Margetson and Graeme Preston also advise on IP matters.

Foley & Lardner’s Japan practice fields 18 IP attorneys. It is representing the plaintiffs in ongoing patent infringement litigation between glass manufacturers Asahi Glass Co and AGC Flat Glass North America, and their competitor, Guardian Industries, involving the standard technology being used in the large area glass coating industry. The firm also led a team involved in Takeda’s worldwide licensing of a biotechnology drug, Omontys, for treating anaemia. Etsuo Doi and Michael Kaminski are ‘very good’.

Orrick, Herrington & Sutcliffe LLP is advising a global outdoor apparel manufacturer on a strategy against parallel importers regarding copyright and trade mark infringement in Japan, as well as representing clients in trade mark, copyright and unfair competition actions. The team also represented a Japanese optical glass manufacturer in filing a patent infringement action against Essilor International and several of its subsidiaries in the US District Court for the Eastern District of Texas. Yoshihiro Takatori and of counsel Shinsuke Yakura are recommended.

Quinn Emanuel Urquhart & Sullivan, LLP joins the ranking. The firm has a strong contentious IP practice, featuring office managing partner Ryan Goldstein as well as the experienced Wayne Alexander and of counsel Marc Weinstein.

Morgan Lewis – TMI’s Satoru Matsuo is a highly experienced IP litigation expert. Lisa Yano has experience advising on licensing issues.

O’Melveny & Myers Gaikokuho Kyodojigyo Horitsujimusho has an active contentious and non-contentious IP practice handling cross-border patent disputes, R&D and licensing agreements, e-commerce counselling, and complex transactional strategic alliances and joint ventures. Clients include GDC Technology, Look Incorporated and Mitsui & Co. Mangyo Kinoshita is recommended.

Sughrue Mion is an IP and IT boutique. Office managing partner Yoshinari Kishimoto is a master of the bench of The Tokyo American Intellectual Property Inn of Court.