The Legal 500

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.