The Legal 500

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.