The Legal 500

John Inge’s departure from Hogan & Hartson LLP to Orrick, Herrington & Sutcliffe LLP has undoubtedly had an impact on the now two-partner practice. In 2008/09, however, it continued to act on a selection of major contentious and non-contentious IP matters, with particular success in advising Japanese companies on US patent litigation. For example, the team advised Takeda Pharma in a patent lawsuit against Teva Pharma in Delaware District Court. The ‘hardworking and intelligent’ Wayne Alexander has been involved in many high-profile cases in this area for Japanese blue-chip corporates, while Tokyo managing partner Philippe Riesen is recognised as ‘a leading name for IP litigation’.

Lovells Horitsu Jimusho Gaikokuho Kyodo Jigyo draws upon a bank of experienced bengoshi and the skills of the ‘highly talented’ Lloyd Parker to provide a blend of domestic and foreign IP law services. Eiichiro Kubota heads up the Japanese law side of the practice and offers ‘a sharp, precise and generally very impressive service’ with a particularly strong reputation in contentious matters. The cross-border element of the practice has also been key in 2008/09 as evidenced by its work for PepsiCo on trade mark matters in Japan and its involvement on the IP aspects of the strategic alliance with Calbee Foods.

Morrison & Foerster Ito & Mitomi is unrivalled in the market for the depth of its IP practice, an attribute further augmented by the arrival of patent litigation expert Jack Londen and tech-orientated bengoshi Yukihiro Terazawa. On the transactional side, the team draws on the experience of ‘excellent’ practice head Matthew Berger, who recently advised Seiko Epson on its multibillion-dollar wireless chip venture with Infineon. The firm’s US West Coast origins give it an advantage on technology-related IP issues and this is reflected in the make up of a client base that includes the likes of Sharp, TDK, Fujitsu, Nikon and Hitachi. The IP contentious practice includes the ‘brilliant legal mind’ of Peter Stern, Max Olson, who recently led a major patent litigation for Fujitsu, and ‘superb negotiator’ and practice co-head Craig Celniker.

‘Very capable all-round advisers’, Baker & McKenzie GJBJ Tokyo Aoyama Aoki Koma Law Office’s Tokyo IP group consists of three partners who cover a wide range of non-contentious and contentious IP issues. Partner Kenichi Nakayama had an outstanding year and is ‘the most dynamic partner we’ve come across’, according to one client. During 2008/09 he litigated several major cases including the defence of a Swiss electronic devices company in appealing a trade mark registration invalidation before the IP High Court in Japan. Yasunori Hashiguchi heads the group and also comes highly recommended.

Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.’s Tokyo managing partner Naoki Yoshida is ‘among the very elite IP lawyers in Asia’. His expertise in contentious IP matters, particularly on the patent side, chimes with the strengths of the firm’s US practice and gives it an advantage representing Japanese clients in US litigation. For example, the team defended Mitsubishi Heavy Industries against patent infringement allegations.

Foley & Lardner continues to build a practice well equipped to take on its larger competitors with the recruitment of former Paul Hastings Janofsky & Walker partner Etsuo Doi. Doi’s skill set covers a range of IP and corporate capabilities and complements Tokyo managing partner Michael Kaminski’s ‘inspiring abilities as a litigator’. The group defended Takeda Pharma in the re-examination of the Ochiai patent.

Jones Day’s ten-lawyer practice offers a mix of Japanese and international law experience, combining IP High Court experience with cross-border contentious and transactional capabilities. The team has ‘good technical lawyers and a very good network of resources behind it’, and, accordingly, it regularly assists international clients including Honda Motors, Starbucks, Sharp and Nikon. In 2009, the team worked with Sumitomo on brand licensing in connection with a business alliance with Lagardere Active. Michiru Takahashi is recommended.

Boasting an impressive track record for IP litigation in Japan and the US, Paul Hastings Janofsky & Walker is a popular choice for clients from a wide range of industries. The team defended Quanta in front of the US Supreme Court over its right to use computer chips purchased from LG without playing additional royalties, as well as defending Dong-A Pharmaceutical in an international arbitration brought by a US corporate. Yoshihiro Takatori is ‘exceptional’, while Maxwell Fox is also recognised for his international law capabilities.

White & Case LLP- White & Case Law Offices (Registered Association) has ‘first-rate understanding of the IP issues we face in Japan’, say clients. Yuji Ogiwara heads a strong bengoshi team and is highly regarded for prosecuting copyright infringement matters. On the foreign-law side, David Case had a strong year for both contentious and transactional matters, including defending Panasonic on patent infringement claims brought by TPL.

Morgan Lewis - TMI combines patent litigation expertise with licensing work for clients including Nikon, Terumo, Mitsubishi Rayon and Ricoh. Satoru Matsuo is well respected for his litigation expertise and recently represented Funai Electric in a patent infringement case against Daewoo.

The arrival of John Inge from Hogan & Hartson LLP is the latest in a series of lateral hires that has seen Orrick, Herrington & Sutcliffe LLP’s IP practice flourish. Recent highlights includes defending Fujifilm and Konica Minolta against patent infringement claims in various US courts, as well as representing Panasonic and JVC in a patent infringement action brought by Eastman Kodak.

Sughrue Mion includes several patent litigators and has a reputation as an ‘IP boutique with a lot of well-respected attorneys’. Yoshinari Kishimoto leads the team and is recommended for his experience in patent prosecution in both the US and Japan.