Intellectual property: International firms and joint ventures in Japan

Baker McKenzie (Gaikokuho Joint Enterprise)

Baker McKenzie (Gaikokuho Joint Enterprise) is well known for its integrated local and international IP practice. Situated as part of the firm’s global IP and tech team, the Tokyo practice maintains a premier client list, managing some of Japan’s largest trademark portfolios. With a full range of IP capabilities, the firm is adept at IP-related transactions, disputes, anti-counterfeiting, trade secret protections, copyright, and design matters. Kensaku Takase, a seasoned trademark, copyright, and designs expert, leads the team and Daisuke Tatsuno’s practice focuses on IP registrations, protection, licensing, and disputes. Kei Matsumoto is well versed in patent litigation, as well as M&A related IP matters. Yosuke Takenaka is both a certified patent and trademark attorney and New York qualified lawyer who’s expertise focuses on IP prosecution and litigation and domain name disputes. At the associate level a key name in the team is Tsugihiro Okada, particularly in IP and ITC-related matters.

Practice head(s):

Kensaku Takase

Other key lawyers:

Daisuke Tatsuno; Kei Matsumoto; Yosuke Takenaka; Tsugihiro Okada

Testimonials

‘The office is managed by Japanese lawyers who are familiar with Japanese practice. I believe that understanding about Japanese law practice is important for handling IP issues, in particular, before the court.’

‘Ken Takase is fully bilingual, a smart lawyer and commercially savvy.’

‘I recommend Mr. Kei Matsumoto, who is one of the partners of the Tokyo Office. He has long experience and knowledge of handling IP issues in Japan, and manages the IP team well.’

‘The practice can seamlessly advise on Japanese and non-Japanese law IP matters, utilizing the firm’s extensive network.’

Key clients

Arcelik

Amadeus Code

Hogan Lovells Horitsu Jimusho Gaikokuho Kyodo Jigyo

The ‘excellent’ IP team at Hogan Lovells Horitsu Jimusho Gaikokuho Kyodo Jigyo offers one of the largest multi-jurisdictional IP teams at an international firm in Japan. The firm advises on contentious and non-contentious matters and is led by Lloyd Parker, who has a wealth of experience across IP management and disputes. Dr Frederick Ch’en is a key figure for patent litigation in the pharmaceuticals industry, with a background in life sciences. Hiroto Imai also maintains a broad practice, he has a scientific background and is both a bengoshi and a benrishi who focuses on patent litigation and licensing within the former sectors and telecommunications. Triple qualified (UK, New Zealand, Japan) Tomoe Takahashi largely focuses on trademark enforcement. Other names of note include Nicoas Hirt, Aki Koshizuka, and Mikako Tsukada.

Practice head(s):

Lloyd Parker

Other key lawyers:

Dr Frederick Ch’en; Hiroto Imai; Tomoe Takahashi; Nicolas Hirt; Aki Koshizuka; Mikako Tsukada

Testimonials

‘Excellent team, very innovative and efficient. They are very systematic and forward thinking, make extensive use of technology, which probably also explains why they have a loyal client following.’

‘I work with the partner Frederick Ch’en and his team. Fred is very courteous, conscientious and knowledgeable about the law, the relevant science, and the relevant business areas.’

‘Lloyd Parker and Tomoe Takahashi have excellent reputations, Nicolas Hirt and Aki Koshizuka are all well experienced and client centric. A pleasure to work with them.’

The Hogan Lovells IP team that I worked with is comprises high quality attorneys with sophisticated legal skills and strong technical capabilities. The team has shown a deep understanding of not only the underlying legal issues but also the practical implications that those legal matters could have on our business. The team worked on my matters with a global perspective and developed strategies with careful considerations of global impact of legal arguments used in a particular country. One thing stood out in particular is that the team has been laser focused on finding legal solutions including proposing creative approaches to address difficult legal issues.

Key clients

Merck & Co., Inc., d.b.a. Merck Sharp & Dohme (“MSD”)

Nissan Motors

Brother Industries, Ltd.

Mixi, Inc.

Work highlights

  • Advising MSD on complex legal actions in relation to MSD’s proposed pipeline of vaccine products.
  • Advising Brother Industries, Ltd. on its global trademark portfolio.
  • Advising Mixi, Inc. on multiple global trademark oppositions and litigation proceedings.

Morrison Foerster

The fully bi-lingual and comprehensive IP offering at Morrison Foerster is headed by Louise Stoupe, Masato Hayakawa, and Yuka Teraguchi. The firm has significant experience in advising clients in a number of fields including IT, FinTech, life sciences, telecommunications and the semiconductor industries. Stoupe focuses on commercial litigation and technology related to IP, while Hayakawan’s practice is concentrated on transactional IP matters, such as licensing, technology transfers. Teraguchi is co-head of the litigation department, and is a hardware and software litigation expert. Max Olson is also a name of note, he is an expert patent litigator, often covering multi-jurisdictional cases including in the US. Chie Yakura’s expertise as lead counsel in multiple complex technology and IP related disputes, strengthens the teams offering. In addition, Yukihiro Terazawa is also a litigation expert who handles areas including international licensing and privacy matters, while Akira Irie is noted for frequently representing Japanese clients before US courts.

Practice head(s):

Louise Stoupe; Masato Hayakawa; Yuka Teraguchi

Other key lawyers:

Max Olson; Chie Yakura; Yukihiro Terazawa; Akira Irie

Testimonials

‘Morrison & Foerster has a great team for handling intellectual property matters, particularly patent and antitrust litigation cases.’

‘Ms. Chie Yakura, who is one of partners at MOFO, organizes the teams for handling intellectual property cases. She is an experienced attorney and handled many cases for US clients with US or Japanese opponents.’

‘Has many lawyers with a profession in various fields and developed a team with all the necessary experts. Their turnaround time is very quick and they worked around the clock regardless of the time zone difference. They also supported in both English and Japanese which was very helpful.’

‘The team of Morrison & Foerster are aware of the practices of Japanese companies well, such as decision-making procedure, preparation documents for such decision and acts on a timely basis based on our intentions.’

‘The team is friendly and customer-first. They always provides us with prompt and accurate risk assessment comments for any contracts and negotiations.’

‘Akira Irie and Yuka Teraguchi, are partners who can speak Japanese and English very well. It’s easy for us to communicate with them and to understand discussions. We feel comfortable.’

Key clients

Renesas Electronics Corporation

JOLED Inc.

Mitsui Chemicals, Inc.

Socionext Inc.

Fujitsu Limited

Buffalo Inc.

SANYO Electric

NEC

Ping An Insurance (Group) Company of China Ltd.

Santen Pharmaceutical Co. Ltd.

Cadence Design System, Inc.

Work highlights

  • Acted in a patent infringement action for JOLED Inc. against Samsung Electronics and Samsung Display in the U.S. District Court for the Western District of Texas as part of JOLED’s global patent enforcement campaign.
  • Represented Socionext in the U.S. District Court for the Western District of Texas, in which Computer Circuit Operations claimed that Socionext products with DDR controllers infringe five U.S. patents.
  • Advised Johnson & Johnson and Janssen in the license and technology transfer agreements with PeptiDream.

Jones Day

The Jones Day Tokyo office functions as a key part of the firms wider global IP practice. Headed by leads Maxwell Fox and Michiru Takahashi, the practice handles inbound and outbound matters. The offering is particularly experienced within the life sciences industries for both international and Japan-based clients. On the outbound side, Fox leads and is supported by Shogo Asaji on litigation, post-grant proceedings, patent licensing and negotiations. The domestic practice led by Takahashi which maintains a strong trademark practice for global companies such as Dell and Sunkist in trade mark protection,  anti-counterfeiting, infringements, and litigation.

Practice head(s):

Maxwell A. Fox; Michiru Takahashi

Other key lawyers:

Shogo Asaji

Testimonials

‘Michiru Takahashi has clear expertise in the field and her advice is always thoughtful and detail oriented. We have the utmost confidence that our intellectual work in Japan is in excellent hands.’

Michiru Takahashi is uncommonly responsive to our requests. She has clear expertise in the field and her advice is always thoughtful and detail oriented. We have the utmost confidence that our intellectual work in Japan is in excellent hands.

Key clients

Daikin Industries Co. Ltd.

Dell Inc.

Idemitsu Kosan Co., Ltd.

Kiss Nail Products, Inc.

NEC Corporation

Ricoh USA

Sunkist Growers, Inc.

Suntory Holdings Limited

Torii Pharmaceutical, Co., Ltd.

Wikimedia Foundation Inc.

Orrick, Herrington & Sutcliffe LLP

The Tokyo IP team at Orrick, Herrington & Sutcliffe LLP has extensive experience representing international and Japanese clients across the food, chemical, and technology industries. Comprising patent attorneys and attorneys at law, the firm is regularly instructed on Japan and international patent disputes and SEP licensing disputes. The firm also provides comprehensive advice in copyright and trademark actions, unfair competition matters, and trade secret issues. Led by Shinsuke Yakura , the practice also handles non-contentious work such as portfolio management and licensing. The firm is also adept at advising on matters involving AI, the IoT and big data technology legal issues. At a non-partner level, Masao Fujino and Anri Nakamoto are key contacts.

Practice head(s):

Shinsuke Yakura

Other key lawyers:

Masao Fujino; Anri Nakamoto

DLA Piper Tokyo Partnership Gaikokuho Kyodojigyo Horitsu Jimusho

New to the ranking this year, DLA Piper Tokyo Partnership Gaikokuho Kyodojigyo Horitsu Jimusho’s Japanese IP team is co-led by Lance Miller  and Tomomi Fujikouge. The team advises both Japanese and international clients looking to expand into the region in the technology, life sciences, sports and manufacturing industries. Advising on trademark, patent and copyright filings/prosecutions, the firm regularly works with globally well-known brands such as Nike, Amazon, and Match.com.

Practice head(s):

Lance Miller; Tomomi Fujikouge;

Morgan Lewis & Bockius LLP

Morgan Lewis & Bockius LLP's IP practice covers a wide range of industry sectors such as manufacturing, life sciences, and electronics. Within these industries, the firm regularly advises on patent prosecution strategies, licensing and transactions for Japanese head-quartered multinationals. The team is led by Motonori Araki, who’s primary focuses within IP are licensing, due diligence, and international dispute resolution. Mitsuyoshi Saito and Jitsuro Morishita are also names of note and key contacts.

Practice head(s):

Motonori Araki

Other key lawyers:

Mitsuyoshi Saiko; Jitsuro Morishita

Key clients

MEI Pharma

Paul Hastings LLP

The ‘outstanding’ Hiroyuki Hagiwara leads the Japanese IP practice at Paul Hastings LLP. The practice is particularly focussed on patents, particularly in complex cross-border licensing and litigation matters in the US, and operates as part of the firm’s wider IP network. Kyotaro Ozawa supports the practice and primarily focuses on IP litigation and investigations.

Practice head(s):

Hiroyuki Hagiwara

Other key lawyers:

Kyotaro Ozawa

Testimonials

‘Hiroyuki Hagiwara: His explanation is thorough. He has firm confidence based on a wealth of experience and knowledge. He is a true professional. Eric W.Dittmann/Isaac S.Ashkenazi/Minniti Carl: Their analyses are accurate. ’

‘‘Mr. Hagiwara is a lawyer with a wealth of litigation experience and a good manager who can hire human resources to meet customer needs.’

Quinn Emanuel Urquhart & Sullivan, LLP

Backed by the firm's wider disputes focus, the IP team at Quinn Emanuel Urquhart & Sullivan, LLP has a strong cross-border litigation practice for multi-national companies. The team advises and litigates on patent infringement matters and actions in the US and Europe seamlessly with its offices across jurisdictions. Ryan Goldstein leads the team which represents a high-profile client list across the tech industry. Goldstein’s practice is devoted to complex commercial and IP litigation.

Practice head(s):

Ryan Goldstein

Testimonials

‘Well-thought-out strategy, very good communication.’

‘Ryan S. Goldstein is excellent to put together with other colleagues to achieve the client’s goal. He has excellent knowledge and experience as well.’

‘Jeffery S. Gerchick is so smart. He understands client demands easily. He has great knowledge and excellent experience as well.’

‘Richard Lowry and Anne-Raphaelle Aubry have excellent document writing capability and the skills to understand complicated technology.’

Key clients

Opticon, Inc., Opticon Sensors Europe B.V., OPTO Electronics Co., Ltd., and Hokkaido Electronic Industry Co., Ltd.

Hamamatsu Corporation, Hamamatsu Photonics K.K., and Photonics Management Corp.

Canon, Inc.

Godo Kaisha IP Bridge

IP Bridge

JCB (Japan Credit Bureau)

Nikon

Otsuka Pharmaceutical Co., Ltd.

Panasonic Corporation

Work highlights

  • Represented Panasonic in a major patent lawsuit  against Magna on radar and car technology in the United States District Court (W.D. Texas) as well as in Germany.
  • Represents Godo Kaisha IP Bridge 1 (“IP Bridge”) in a patent infringement lawsuit against Micron Technology, Inc. (“Micron”) and two of its subsidiaries after IP Bridge asserted that four of its semiconductor patents are infringed by Micron’s DDR DRAM chips.
  • Represents Otsuka Pharmaceuticals in a matter involving intellectual property counselling regarding pharmaceutical products for the treatment of patients with anemia related to chronic kidney disease (“CKD”).