Intellectual property: International firms and joint ventures in Japan

Baker McKenzie (Gaikokuho Joint Enterprise)

Baker McKenzie (Gaikokuho Joint Enterprise)'s intellectual property practice (IP) is led by Kensaku Takase who has expertise across the fields of trade marks, copyright, and design rights. Collectively, Takase's team represents a stellar roster of some of the world's leading brands across the full gamut of matters, including IP transactions, disputes, prosecutions, filings, portfolio management, trade secrets, and anti-counterfeiting campaigns, among others. Other notable practitioners in the group are Daisuke TatsunoKei Takenaka, and the recently promoted to counsel, Yosuke Takenaka.

Practice head(s):

Kensaku Takase

Key clients

Yildiz Holding

GODIVA

Work highlights

  • The Tokyo office, along with the Brussels, London, Washington DC and Hong Kong offices, acts as the exclusive legal counsel to Yildiz Holding and GODIVA on the sale of its retail and distribution operations in four markets: Japan, South Korea, Australia and New Zealand.

Hogan Lovells Horitsu Jimusho Gaikokuho Kyodo Jigyo

Under the leadership of Lloyd Parker, the full-service intellectual property offering at Hogan Lovells Horitsu Jimusho Gaikokuho Kyodo Jigyo handles all contentious and non-contentious trade marks, patents and copyright matters both inside and outside of Japan. While Parker provides trademark portfolio prosecution management, and enforcement counsel to clients with global brands, Frederick Ch’en focuses on multi-jurisdictional patent litigation, specifically in the life sciences area. Also notable within the team are a host of qualified patent and trademark attorneys, including benrishi, such as Hiroto Imai, and counsels Chikako HashimotoNicolas Hirt. New partner Tomoe Takahashi, who is qualified in New Zealand, England and Wales, and Ireland, is also of note.

Practice head(s):

Lloyd Parker

Other key lawyers:

Frederick Ch’en; Hiroto Imai; Chikako Hashimoto; Nicoas Hirt; Tomoe Takahashi

Testimonials

‘This team sets itself apart through its effective teamwork and coordinated approach.’

‘The firm’s impressive international network provides easy access to many standout individuals across the world.’

Key clients

Nissan Motor Co Ltd

Merck & Co., Inc., d.b.a. Merck Sharp & Dohme

Brother Industries, Ltd.

Recordati Industria Chimica E Farmaceutica S.p.A

Work highlights

  • Continues to advise its longstanding and key strategic client Nissan on every aspect of its global trademark portfolio and strategy.
  • Representing Merck Sharp & Dohme in Japan (as well as in in the UK, Germany, the Netherlands, and the US) in legal actions challenging the validity of certain GSK and Pfizer patents in relation to MSD’s proposed pipeline vaccine product, V114.
  • Assisted Recordati Group on the licensing agreements with Aegerion for the exclusive marketing rights to the Juxtapid drug in Japan for a value of $30m in addition to further payments conditional upon achievement of commercial targets and orphan drug royalties.

Morrison & Foerster LLP

At Morrison & Foerster LLP the intellectual property department is jointly spearheaded by litigation specialist Louise Stoupe and patents expert Robert Hollingshead. The group has substantial experience in advising clients in a variety of fields, including the semiconductor, software, information technology, fintech, pharmaceutical, medical device, and telecoms industries. Recent work highlights pertain to issues including critical patent license and cross-license arrangements, complex software licensing arrangements, cloud computing transactions, open-source software, and emerging blockchain technologies. Max Olson is a key name to note on the contentious front, while technology transactions partner Masato Hayakawa provides crucial advisory counsel. Also notable are Chie Yakura and Yuka TeraguchiAkira Irie was recently promoted to partner, while Stuart Beraha joined Latham & Watkins Gaikokuho Joint Enterprise.

Practice head(s):

Louise Stoupe; Robert Hollingshead

Testimonials

‘MoFo’s many intellectual property experts are knowledgeable on Japanese practices and have easy access to a great international network of lawyers.’

‘Yukihiro Terazawa, Chie Yakura, Yuka Teraguchi, and Robert Hollingshead are of the highest quality and clients can have nothing but good experiences working with them on patent litigation related matters.’

‘The MoFo team knows Japanese companies’ customs in the decision-making process and the preparation of documents.’

‘Chie Yakura is one of the important partners handling intellectual property matters in Japan. She is knowledgeable on foreign intellectual property law as well as Japanese law, especially when it comes to litigation.’

‘Yukihiro Terazawa is a particularly insightful and strategic and skillful leader. Chie Yakura is a reliable and profoundly competent lawyer.’

‘Max Olson quickly recognises the situation at hand and provide the appropriate answers because he knows every fibre of his clients’ business.’

Key clients

Fujitsu

SoftBank

Nikon

Toshiba and Toshiba Memory Corporation

Socionext

NEC

Buffalo

SANYO Electric

Renesas Electronics

Sharp

Work highlights

  • The group defended Nikon in US patent litigation matters initiated by Carl Zeiss and ASML.
  • The team represented Nissan Motor in the sale of its electric battery operations and production facilities to Envision Group, a Chinese renewable energy firm.
  • Defending Mitsui Chemicals, Inc., and its US subsidiary Mitsui Chemicals America, Inc., in a trade secret misappropriation case filed by Developmental Technologies, Ltd
  • Successfully obtained a favourable ruling in a JCAA arbitration for Sanyo. Defendants tried to overturn the arbitral award and in 2017 the Japan Supreme Court upheld our arguments and remanded the case back to the Osaka High Court to examine defendants’ allegations.
  • Representing Renesas Electronics Corp. in its $6.7bn acquisition of Integrated Device Technology, Inc.

Jones Day

At Jones DayMaxwell Fox and of counsel Shogo Asaji focus on litigation, post-grant proceedings, patent analysis and assertions, patent licensing negotiations and agreements in both the United States and Japan. The pair are especially strong and adept at representing Japanese companies in US patent litigation, particularly in helping clients navigate patent discovery obligations. On the domestic front, Michiru Takahashi advises on trademark issues including trade mark clearance, counterfeiting counselling, as well as trade mark infringement litigation, and maintains longstanding relationships with a number of global brands.

Practice head(s):

Maxwell Fox; Michiru Takahashi

Other key lawyers:

Shogo Asaji

Testimonials

‘Jones Day knows about trademark portfolios and understand its clients’ risk tolerances in searches and policing trademarks.’

‘Michiru Takahashi gives advice that is on-target. She is exceptionally useful in the search of clearance reports and third-party dispute recommendations. In transactions she is thorough and efficient. She is also timely.’

‘One of Maxwell Fox’s main strengths is his Japanese language capability. He is always very smooth and understandable for Japanese clients whom he effectively guides through US litigation.’

‘Jones Day’s patent analysis skills are higher than other firms’.’

Key clients

CANON INC.

Cylance, Inc.

Daikin Industries Co. Ltd.

Dell Inc.

Denka Company Limited

Educational Testing Service

Hino Motors, Ltd.

Kiss Nail Products, Inc.

Kobayashi Pharmaceutical Co., Ltd.

Kyowa Hakko Kirin Co. Ltd.

NEC Corporation, NEC Corporation of America

NEC Display Solutions Co. Ltd.

Ricoh USA, Inc.

Seven-Eleven Japan Co., Ltd.

Sunkist Growers, Inc.

Torii Pharmaceutical Co., Ltd.

Work highlights

  • Since 2002 Jones Day has been representing Dell on the company’s IP matters in Japan, including both patent and trademark work.
  • Advising Sunkist since 2009 when the client transferred its entire trademark portfolio in Japan to Jones Day.
  • Representing Kiss Nail Products in several Intellectual property enforcement matters, including assisting in cease and desist letters and takedown notices against a number of infringements.
  • Advised NMP, a leading radiopharmaceuticals manufacturer in Japan, in its negotiations of a joint development agreement with Global Medical Solutions Taiwan, Ltd.
  • Defending NEC Display Solutions against allegations brought by Ultravision Technologies, LLC that certain of NEC Display Solutions’ modular LED display panels and related components infringe eight patents allegedly owned by Ultravision.

Orrick, Herrington & Sutcliffe LLP

Orrick, Herrington & Sutcliffe LLP provides both outbound and inbound intellectual property (IP) counsel to its Japanese and international clients. Under the leadership of Shinsuke Yakura, the team handles cross-border disputes, license negotiations, transactions and portfolio management, with strong expertise in new technologies such as artificial intelligence. Yoshihiro Takatori heads the litigation department in Tokyo and has a strong track record in acting in cross-border IP and counterfeiting issues on behalf of Japanese clients. David Case has left the firm to start his own firm in the US. Anri Nakamoto has been promoted to managing associate. Also notable in the team is fellow managing associate Kei Kato.

Practice head(s):

Shinsuke Yakura

Other key lawyers:

Yoshihiro Takatori; Kei Kato

Testimonials

‘Shinsuke Yakura and Masao Fujino are particularly strong in the field of intellectual property.’

‘Orrick’s Tokyo team has excellent capabilities and capacities for worldwide strategic intellectual property issues. No matter how complicated it gets, clients always get accurate and timely advice.’

‘Shinsuke Yakura and associate Masao Fujino have outstanding negotiation skills, but they are also excellent when it comes to drafting contracts, which contributes greatly to the promotion of overseas business.’

Key clients

Applied Materials

Fujikin Incorporated

V. MANE Fils SA

Mitsubishi UFJ Research and Consulting

Morinaga Milk Industries Co., Ltd

NEC Corporation

Nitto Denko Corporation

Sanei International

Softbank Technology Corporation

Practice head(s):

Ryan Goldstein

Paul Hastings LLP

Paul Hastings LLP’s intellectual property (IP) team in Japan is focused on patents and has expertise in the automotive, technology, chemicals, life sciences and pharmaceutical sectors. Practice head Hiroyuki Hagiwara advises on complex cross-border licensing and patents litigation matters in various jurisdictions, including Japan and the US. Working closely with its white-collar and compliance colleagues, the IP group can leverage significant dispute resolution capabilities with shared expertise across the firm's key industry sectors. In the junior ranks, associate Kyotaro Ozawa intervenes primarily in IP litigation and government investigations. Counsel Timothy Mackey became deputy head of legal at SoftBank.

Practice head(s):

Hiroyuki Hagiwara

Other key lawyers:

Kyotaro Ozawa

Key clients

Canon

Olympus Corp.

Takeda Pharmaceutical

Fujifilm

Eisai

Teijin

Dainippon Sumitomo Pharma

Align Technology

Xtera

Work highlights

  • Representing Canon as plaintiff in a patent dispute filed against TCL Corporation in the Eastern District of Texas. Canon is asserting five patents relating to streaming, remote controlling, and connectivity capabilities in Smart TVs
  • Representing Align Technology in patent enforcement actions against its 3Shape A/S in the United States.
  • Representing Xtera in patent enforcement actions against its competitors, including Nokia/Alcatel Lucent and NEC.

Squire Gaikokuho Kyodo Jigyo Horitsu Jimusho

Squire Gaikokuho Kyodo Jigyo Horitsu Jimusho's intellectual property offering operates as part of the wider disputes resolution practice jointly spearheaded by Haig Oghigian and David T. Miyamoto. In an arbitration before the Singapore International Arbitration Centre, applying Hong Kong law, the team was successful in an intellectual property infringement action on behalf of a US-based telecoms software company against a Chinese mobile phone manufacturer.

Practice head(s):

Haig Oghigian; David Miyamoto