The Legal 500

Nakamura & Partners is a ‘niche specialist in the full sense of the world’, with clients praising its IP capability as ‘market leading’ and its lawyers as ‘Japan IP’s “all star team”’. The firm is known for its enviable wealth of resources (there are around 70 patent attorneys and a further 20 lawyers practicing exclusively in this field), but among the names to note, managing partner Koichi Tsujii stands out for his ‘incomparable experience’, and Yoshio Kumakura attracts praise for his participation on the country’s landmark cases. Telecoms and media is a strong area of specialism and the firm is usually involved in the most high-profile patent and copyright infringement cases in the market.

TMI Associates’ IP practice is the bedrock of the firm and it provides ‘good all-round advice’. Clients include start-ups through to long-established companies and government agencies and are drawn from the telecoms, IT and entertainment sectors. Leading lawyers include: Tomohiro Tohyama, who specialises in sports and media work; trade mark prosecution specialist Yoshiyuki Inaba; and dual New York and Japan-qualified Mitsuko Miyagawa, who is revered for her ‘technical knowledge and ability to keep on top of the market trends’.

Abe, Ikubo & Katayama attracts praise for its experience in patent litigation and prosecution cases under the leadership of the ‘very intelligent and knowledgeable’ Eiji Katayama. The pharmaceutical, biotech and hi-tech sectors are its typical source of instructions and it acts for a solid roster of multinational clients. Trade mark, competition and copyright matters are also strong areas of activity.

At Mori Hamada & Matsumoto, Yuko Noguchi continues to impress clients with her ‘ability to get to grips quickly with the fundamentals of any case’, Masayuki Matsuda is ‘highly experienced’, and Tomoya Fujimoto is recommended for entertainment work. On the litigation side, the firm is particularly active in patent and trade mark infringement cases and successfully represented Sony Corporation in a high-value copyright and trade secret infringement case. Other representative clients include Bellsystem24 and Nippon Television Network Corporation.

Nagashima Ohno & Tsunematsu continues to rise in profile following the arrival of former IP High Court judge Ryoichi Mimura in 2009 - commended as ‘highly intelligent and technically superb’. The firm acts for domestic and foreign companies on a broad range of contentious matters and recently advised a consumer electronic company in copyright-related litigation. On the non-contentious side, the firm receives a steady flow of instructions relating to the negotiation of license agreements involving patents, copyrights and trade secrets. Kazuo Ohtake heads the team and is recommended.

Yuasa and Hara has an excellent reputation. Lawyers are considered ‘reliable and well-informed’, with former judge Toshiaki Makino singled out as an ‘expert litigator’, and Kozo Yabe well-regarded for his expertise in cyber law. Infringement litigation is a strong area of activity and clients include companies from the manufacturing, media and pharmaceutical sectors.

IP is a strong focus for Abe, Wada & Watanabe and this is evident through an impressive client list which includes high-end fashion houses, household name food and beverage companies and well-known sports brands. Among the firm’s recent work, it advised on a trade mark infringement case disputing the similarity of a design and also acted for a European telecommunications company in patent licensing negotiations and an enforcement representation.

Anderson Mori & Tomotsune fields a solid all-round team that can call on the services of patent litigation specialists Yasufumi Shiroyama and Yoshikazu Iwase, as well as soft IP partners Satoshi Miyagaki and Shigeyoshi Ezaki. The firm acts for major domestic and multinational clients and has particular experience across the healthcare, consumer electronics and pharmaceutical sectors.

In a landmark case, Nishimura & Asahi recently represented a well-known Japanese plumbing company at the Intellectual Property High Court in a challenge to the validity of a patent regarding a flush toilet. Eiichi Fukushima heads a strong group that also has expertise in IT and media matters.

Hashidate Law Office’s practice retains a focus on domestic clients and is known for contentious work, particularly patent litigation, although it does also handle trade mark and copyright issues. Kenji Hashidate is the main contact and is recommended for cyber law matters.

Niche specialist Hiroe & Associates scores points for its ‘unswerving focus on the needs of the clients’. Takenori Hiroe is ‘technically excellent’ and has a strong reputation for work in the chemistry and electronics sectors. Former doctor Tutomu Nisio fields in-house experience from an earlier stint at a bio-pharmaceutical company. Highlights included successfully registering the trade mark “IFRS” for the International Financial Reporting Standards Foundation.

Lexwell Partners acts for small start-ups through to major multinationals on the full gamut of patent and trade mark prosecution, patent portfolio management and technology licensing. Managing partner and patent attorney Akimitsu Hirai is recommended for work in the information technology, pharmaceutical and biotechnology sectors.

Miyake & Yamazaki fields strong experience in IT and online matters under the leadership of cyber law specialist and name partner Junichi Yamazaki. The firm specialises in litigation but also handles IP rights agreements.

STW & Partners may have begun life as a breakaway niche from Mori Hamada & Matsumoto in 2007, but the firm is steadily building its own reputation for excellence. Wataru Sueyoshi and Hajime Watanabe are both highly recommended for patent litigation and prosecution.

Hogan Lovells Horitsu Jimusho Gaikokuho Kyodo Jigyo ‘makes the in-house lawyer’s life easier’. The firm offers both Japanese and international IP advice. Praised for its ‘particular strength in cross-border co-ordination’, the firm is ‘extremely well informed and client focused’, and offers a comprehensive service that includes not just its highly reputed trade mark expertise but also covers patents, designs, copyright, trade secrets, unfair competition, and contentious and non-contentious matters. Office managing partner Lloyd Parker ‘gives cost efficient advice’ on international IP matters and focuses on global trade mark portfolio management and enforcement work; Philippe Riesen covers US IP litigation with a particular focus on US patent litigation; and Eiichiro Kubota specializes in Japanese IP matters, especially patent litigation in Japan. Consultant Kensaku Takase is ‘extremely knowledgeable in his area whilst being very commercial in his advice’. Active and high-profile clients include Brother Industries, Fujifilm Corporation, NEC Corporation, Nissan, PepsiCo, Panasonic Corporation, Sony Computer Entertainment and Toshiba Corporation.

Morrison & Foerster Ito & Mitomi IP practice focuses on patent, trade mark, copyright, trade secret, unfair competition, and related intellectual property matters. Max Olson, who is ‘bright, thoughtful, cautious and pleasant’, specializes in patent litigation, adversarial patent license negotiations and international arbitration. Head of the patent department Robert Hollingshead is ‘basically very gentle in the way he speaks, but he can be very tough and tenacious in negotiations with third parties’. The firm recently advised on Yahoo Japan’s strategic partnership with Twitter; and advised Nikon Corporation, Nikon Precision, and Nikon Research Corporation of America in patent litigation against Anvik Corporation in the Southern District of New York. Head of the firm’s technology transactions group Stuart Beraha and Masato Hayakawa are also highly recommended.

Baker & McKenzie GJBJ Tokyo Aoyama Aoki Koma Law Office’s IP group frequently advise on IP licensing, trade mark and design prosecution and IP enforcement and litigation. Recent highlights include representing QVC Japan in its negotiation for the naming rights to rename the Chiba Marine Stadium to QVC Marine Field; and a European furniture designer in a lawsuit in Japan against a Japanese furniture manufacturer and seller that was imitating the designs of its client’s product. Yasunori Hashiguchi’s ‘legal services are excellent. His response is quick and well thought out, precise and appropriate’. He co-heads the IP group with Ken Nakayama. Daisuke Tatsuno is also recommended.

Jones Day has domestic and foreign IP law capability which covers both patent and soft IP (trade mark and copyright) matters. For US patent litigation issues, Nobutoshi Yamanouchi’s team calls on the expertise of its colleagues in Shanghai. In Tokyo, the firm’s IP practitioners are ‘exemplary - response times are exceptional, industry knowledge and appropriateness of advice are likewise excellent’. Clients include Dell, Starbucks Corporation, Canon Marketing Japan and Nidec Corporation. Of counsel Michiru Takahashi is ‘very thorough and knowledgeable’ and ‘obviously cares a great deal about client relationships’. Scott Jones has a strong technical background and as a result ‘a wealth of experience’.

White & Case LLP- White & Case Law Offices (Registered Association) offers both international and domestic IP expertise. Recent work highlights include advising Panasonic in a patent litigation involving semiconductors, where both Panasonic and Freescale Semiconductor are defendants as well as plaintiffs, asserting patents against each other and their respective customers; and advising a global financial institution in connection with its daily information technology licensing and procurement agreements with global and regional information technology companies. David Case is head of the Tokyo IP practice, and is ably supported by Yuji Ogiwara, who leads the bengoshi IP team.

Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. suffered following the relocation of John Livingstone to Atlanta. Sole remaining partner Naoki Yoshida heads the US law IP team, which provides ‘an overall level of service that is very high’, and recently advised Otsuka Pharmaceuticals on patent litigation in the district court of New Jersey. It also advised Mitsubishi Heavy Industries and Mitsubishi Power Systems America against General Electric in a US International Trade Commission investigation, and acted for Elpida Memory in a patent infringement case.

Foley & Lardner delivers a full life cycle of IP services for technology-driven companies, from counseling and licensing to due diligence and litigation. Etsuo Doi recently advised a leading Japanese medical device manufacturer, Terumo Corporation, on its acquisition of biotechnology company Harvest Technologies Corporation. Michael Kaminski has extensive experience in IP litigation.

Orrick, Herrington & Sutcliffe LLP’s IP practice group was bolstered by the arrival of litigation specialists Yoshihiro Takatori and counsel Shinsuke Yakura from Paul Hastings LLP. Together with counsel John Inge, the firm assists local and foreign companies with all aspects of their IP rights, not only in Japan but globally.

At Ropes & Gray LLP, Hiroyuki Hagiwara has extensive experience in advising technology and life sciences companies in cross-border licensing and litigation matters. Tokyo office managing partner James DeGraw is experienced in handling technology licensing and patent infringement matters; and Maxwell Fox focuses his practice on representing technology companies in all aspects of patent and other intellectual property infringement litigation, licensing, and counseling matters. Clients include Hyundai Motor America, LG Electronics USA, Quanta Computer, NCSoft, EMC and TRIA Pharmaceuticals.

DLA Piper Tokyo Partnership has bolstered its regional IP practice with the lateral hire of counsel Henry Koda from Quinn Emanuel Urquhart & Sullivan, LLP, who now leads the intellectual property and technology group in Tokyo. The firm advises on licensing technology, trade marks, patents, distribution, commercial agreements, Japanese intellectual property and privacy/data protection law, IP-related antitrust issues and lobbying for the creation of IP and telecommunications-related legislation.

Herbert Smith enters the table this year. It recently advised a leading Japanese technology company with respect to a €400m patent licensing dispute; and has been retained by a leading telecommunications company to establish from scratch a world-wide patent licensing program, backed by litigation if necessary. Litigators Peter Godwin and Gavin Margetson were joined by senior associate, IP specialist and ‘excellent advisor’ Frederick Ch’en, who is ‘responsive and experienced’ and formerly from Linklaters LLP in London.

At Morgan Lewis - TMI, Satoru Matsuo focuses his practice on IP litigation, and Lisa Yano is experienced in licensing and other technology matters. Clients have included Sanyo Electric and Nikon.

At Paul Hastings LLP, corporate partner Matthew Berger, who splits his time between Palo Alto and Tokyo, focuses on technology transactions and intellectual property counseling and advice, predominantly for clients in high technology industries such as the semiconductor, life sciences and alternative energy industries. IP litigators Yoshihiro Takatori and Shinsuke Yakura have left the firm and joined Orrick, Herrington & Sutcliffe LLP.

At Sughrue Mion Yoshinari Kishimoto’s practice is divided between patent litigation and patent prosecution relating to the electrical and mechanical arts. Mainak Mehta now works out of the firm’s Silicon Valley office.