Morrison & Foerster is the only global firm with a dedicated full-service litigation team in Japan.
We have over 25 full-time litigation attorneys in Tokyo, more than half of whom are fluent in Japanese. Our trial lawyers in Japan work seamlessly with our firm’s U.S. attorneys to provide creative and strategic approaches in commercial and intellectual property litigation in courts, administrative agencies, and arbitration venues. We are available locally, in real time, to interview witnesses and prepare them for deposition; gather and review key documents in Japanese; prepare trial strategy; and counsel clients in all aspects of litigation.
Our experience extends to numerous fields:
- IP litigation in all major U.S. jurisdictions, including popular patent venues such as the Northern District of California, the Eastern District of Texas, and the Western District of Wisconsin, and before the International Trade Commission (ITC);
- Adversarial patent license negotiations, worldwide;
- Global antitrust investigations and litigation, and investigations commenced by the Japan FTC (we have one of the few JFTC-trained attorneys in private practice);
- General commercial arbitration and litigation, from consumer class actions and product defect claims, to major construction and other commercial disputes;
- Internal investigations in Japan and the region on alleged accounting misstatements, product quality, safety and labeling, construction defects, export control, whistleblower retaliation, and matters involving possible corrupt practices under the FCPA.
Morrison & Foerster's Litigation Department has been singled out for praise by the American Lawyer magazine, which noted that the Department had “the depth, breadth, and talent to win high stakes disputes.”
Morrison & Foerster's Tokyo office was the exclusive winner in the Litigation category for Japan in the 2011 and 2010 International Law Office’s “Client Choice Award” for excellence in client services (based on a survey of 2,000 in-house counsel).
The following describes litigation matters recently handled by the Tokyo Litigation Department — including major wins for Nikon, Pioneer, and others. We have also successfully resolved many other contentious matters through confidential settlements.
Intellectual Property Litigation
Federal District Court Cases:
- Pioneer. We represent Pioneer in a patent infringement lawsuit against Samsung SDI in the Eastern District of Texas relating to plasma display technology. On October 29, 2008, after an 8day trial, a jury in Marshall, Texas, awarded Pioneer $59.3 million in damages against Samsung. The jury also found that Samsung’s infringement was willful.
- Nikon. We represent Nikon in an action brought by Anvik Corporation in the Southern District of New York relating to precision lithography machines used in the manufacture of cutting-edge electronics and display components.
- Sharp. We represent Sharp in an action against Hannstar and Samsung in the Eastern District of Texas relating to Liquid Crystal Display technology used by the defendants in their LCD panels for flat screen televisions, laptops, computer monitors and cell phones.
- Hitachi Plasma Patent Licensing. We represent Hitachi Plasma Patent Licensing in litigation against LG Electronics in the Eastern District of Texas asserting that LG infringes seven patents relating to plasma displays.
- Fujitsu Hitachi Plasma Display. We represent Fujitsu Hitachi Plasma Display in an action against LG Electronics. In this suit, originally filed in the Northern District of California but now pending in the Eastern District of Texas, our client is seeking declaratory relief that it does not infringe six LG plasma display patents. This case also involves affirmative patent infringement claims asserted by LG.
- Hitachi. In another suit in the Eastern District of Texas, we represent several Hitachi entities against allegations of infringement in connection with four other LG plasma display patents.
- Nichia. We represent Nichia and its U.S. subsidiary in patent litigation against Seoul Semiconductor in the Eastern District of Texas relating to UV-laser diodes and light emitting diodes.
- NTT DoCoMo and SoftBank Mobile. We represent NTT DoCoMo and SoftBank Mobile against Technology Patents, LLC in a patent infringement litigation pending in the District of Maryland relating to international text messaging technology. We recently won dismissal of all claims against our clients based on lack of personal jurisdiction.
- AMEC. We represent Shanghai-based Advanced Micro-Fabrication Equipment (“AMEC”) in a trade secret case pending in the Northern District of California. The firm is defending AMEC against allegations that former employees of Applied Materials misappropriated trade secrets after joining AMEC.
- Fujitsu Computer Systems. We represented Fujitsu Computer Systems in a patent case brought by BIAX in the Eastern District of Texas relating to servers and microprocessors.
- Fujitsu Computer Systems. We represent Fujitsu Computer Systems in Commonwealth Scientific & Industrial Research Org. v. Toshiba America Information Systems, a patent infringement lawsuit in the Eastern District of Texas regarding wireless products that comply with 802.11 standards.
- Fujitsu Computer Systems. We represent Fujitsu Computer Systems in Northpeak Wireless, LLC v. 3COM Corp., a patent infringement lawsuit in the Northern District of Alabama regarding direct sequence spread spectrum wireless technology.
- Nikon. We represented Nikon and its U.S. subsidiaries in patent litigation against ASML Lithography, Nikon’s chief rival in the photolithography business. The litigation resulted in a settlement under which ASML and Carl Zeiss SMT AG paid Nikon $145 million.
- Konica Minolta. We represented Konica Minolta Business Solutions U.S.A. and Konica Minolta Sensing Americas in a patent litigation brought by Orion IP, LLC in the Eastern District of Texas.
- Toshiba. We represented the Toshiba defendants in patent litigation brought by Axalto in the Eastern District of Texas.
- Sharp. We represent Sharp Corporation, Sharp Electronics Corporation and Sharp Electronics Manufacturing Company of America, Inc., in two patent infringement investigations in the ITC (Inves. 337-TA-631 and 337-TA-634) against Samsung relating to liquid crystal display devices and products.
- Sanyo Electric. We defended Sanyo Electric in an ITC action (Inves. 337-TA-600) and in a parallel district court case in Minnesota brought by 3M Company and 3M Innovative Properties Company relating to rechargeable lithium ion batteries.
- Toshiba. We represented Toshiba Corporation and its subsidiary Toshiba America Consumer Products in patent litigation in the ITC (Inves. 337-TA-603) and the Northern District of California against 17 manufacturers and importers of DVD players, DVD recorders, and other DVD-related products.
General Commercial Litigation (Includes Product Liability and Antitrust)
- Nippon Gohsei Sorbates Cases. We represent Nippon Gohsei, a manufacturer of specialty chemicals, in numerous civil suits stemming from an alleged international price-fixing conspiracy. The firm has won dismissal of many of these suits and has settled others on favorable terms.
- Toshiba Computer Class Action Cases. We currently represent, or have represented, Toshiba America Information Systems in eight class actions brought in different courts in California alleging product-related and/or misrepresentation claims regarding various notebook computers, as well as a number of other actions or claims concerning other computer models.
- KDDI. We represent KDDI in an action brought by Pacnet Network Ltd. in the Commercial Division of the New York State Supreme Court in New York County relating to alleged breaches of an agreement for the supply of a submarine fiber optic telecommunications cable system.
- NTT DoCoMo. We represented NTT DoCoMo and Panasonic Mobile Communications in Golden Bridge Technologies v. Nokia, an antitrust case in the Eastern District of Texas relating to industry standards for third generation wireless communication technology.
- Sankyo. We served as nationwide coordinating counsel for Sankyo in the Rezulin product liability litigation, devising and implementing Sankyo’s defense strategy in hundreds of claims in state and federal courts around the country.
- Toyobo. We represented Toyobo in two cases claiming that bullet resistant vests made of Zylon®, produced by Toyobo, failed to adequately protect the users.
- Fujitsu. We represented Fujitsu in a lawsuit in which Cubic Corp. alleged fraudulent inducement of a $1.7 billion contract to develop and run a new ticketing system for London Transit, the authority responsible for the London Underground. Our motion to dismiss was granted by the U.S. District Court for the Southern District of California.
- Fuji Electric. We represented Fuji Electric Systems and Fuji Electric Corporation of America in an insurance claim in federal courts in California and Texas. We successfully brought a motion to dismiss for insufficient service of process and the case now represents one of the landmark decisions on service of process on Japanese companies. The matter settled.
Domestic Japanese Litigation
- Albemarle. We represented Albemarle in a series of invalidity proceedings relating to patents for flame retardants and compositions containing synthetic resins and flame-retardants before the Japan Patent Office.
- Colgate-Palmolive. We represented Hill’s-Colgate (Japan), a Japanese subsidiary of ColgatePalmolive, in a products liability action in the Osaka District Court. We obtained a complete defense verdict for our client.
- Dell. We represent Dell and its subsidiary Dell Japan in a series of litigation proceedings in Tokyo and Osaka District Courts relating to certain transactions for Dell goods and services.
- Motorola Japan. We represent Motorola Japan in a $40 million dispute involving a telecommunications equipment lease in Japan.
- Vertex. We represent this Motorola subsidiary in a preliminary injunction action brought by a distributor based in India.
- Fidelity Investments Japan. We represent Fidelity in a commercial real estate dispute.
- Silchester International. We represented Silchester International Investors Ltd. in its petition to the Tokyo District Court to enjoin the issuance of convertible bonds aggregating to $570,000,000 by Autobacs Seven, a publicly listed Japanese auto parts and accessories company. Injunctive relief was sought on the basis of the contemplated bond issuance constituting a situation of extreme unfairness (fukosei hakko) and the bonds containing unfair terms (yuri hakko). The issuance of the bonds was cancelled following inquiries by the Tokyo Stock Exchange.
- Intercontinental Hotels Group. We represented IHG in the court-supervised restructuring of IHG’s landlord, a third sector company related to the Tokyo government, under the Civil Rehabilitation Law (Minji Saisei).
- SeaSpace. We represented SeaSpace, a California manufacturer of satellite ground stations, in a contract dispute with Nihon Hakuyo Electronics, SeaSpace’s former Japanese distributor. The dispute involved parallel proceedings in the Southern District of California and the Tokyo District Court, and settled favorably for SeaSpace.
- Japan Telecom. We currently represent Japan Telecom (a subsidiary of SoftBank) in two ICC arbitrations concerning a trans-pacific telecommunications cable system.
- SoftBank. We represented SoftBank in two separate San Francisco-based arbitration proceedings against an American software provider stemming from a dispute over failed joint ventures in Japan and Korea.
- TDK. We represented TDK in an arbitration before the Hong Kong International Arbitration Centre in a dispute relating to a breach of representations in connection with TDK’s purchase of a Chinese business.
- Sega. We represented Sega in a global dispute over the rights to Sega’s intellectual property. The case involved an arbitration before the Japan Commercial Arbitration Association and an arbitration before JAMS in Los Angeles and San Francisco, as well as two actions in U.S. District Court and four appeals to the U.S. Court of Appeals for the Ninth Circuit.
Our recent arbitration engagements include the following matters:
- We represented a Japanese oil company in a dispute with a Middle Eastern government before the London Court of International Arbitration regarding a long-term oil supply contract.
- We represented a major luxury hotel resort developer in an arbitration before the Singapore International Arbitration Center arising out of a failed development project in Kenya.
- We represent a Japanese joint venture partner in connection with a Japan Commercial Arbitration Association proceeding concerning a dispute between the U.S. partner and joint venture regarding the licensing of technology for semiconductor manufacturing equipment.
- We represented a Cayman Islands telecommunications company before the Hong Kong International Arbitration Centre in a dispute with a Chinese telecommunications company for breach of an asset purchase agreement.
- We represented a Singapore-based software developer in an action before the Japan Commercial Arbitration Association in Tokyo stemming from a custom software development and implementation project for the Japanese subsidiary of a multinational insurance company. After a four-day hearing, the arbitral tribunal ruled in our client’s favor on liability. The panel subsequently rendered a substantial damage award in our favor.
- We represented a major Japanese electrical equipment company in a dispute with a European company that led a consortium of contractors to build a steel mill in Brazil. Our client was a subcontractor on the project. The arbitration was administered by the International Chamber of Commerce pursuant to its Rules of Arbitration.
- We represented a major Japanese electronics company in a dispute with a California based start-up. We successfully resolved the matter with a favorable settlement.
- We represented a major Korean industrial company in a dispute with an Indonesian company that was a general contractor on a project to build an off-shore oil facility in Indonesia. An arbitration was sited in Kuala Lumpur under the UNCITRAL rules of arbitration.
- We represented an athlete in a Japan Commercial Arbitration Association proceeding concerning a contract dispute with an event promoter, resulting in a favorable award for the athlete.
Adversarial Patent Licensing Negotiations
Morrison & Foerster’s Tokyo litigators are currently handling or have successfully resolved numerous adversarial patent licensing matters, including for such clients as Advantest, Astellas, Fujitsu, Konica Minolta, PFU, TDK, Toshiba, and Yamaha. While most of the licensing transactions we handle are confidential, one recent matter that has been publicly announced is our representation of Toshiba in its $288 million acquisition of certain of Micron’s semiconductor patents and license under all patents owned or previously owned by Lexar Media.
Our Tokyo-based litigators also play an active role in internal investigations in Asia.
Together with our offices in Hong Kong, Beijing, and Shanghai, we frequently represent audit committees, and advise independent directors and special board committees, as part of internal investigations in diverse industries. Recent representations include the following:
- We represented a major Nasdaq-listed Chinese company in a company-wide internal investigation regarding possible accounting irregularities, working with the company’s outside auditors. Following the investigation, we successfully defended the company against multiple delisting actions by Nasdaq, handled all aspects of the related communications with public investors, and represented the company in an SEC investigation and U.S. class-action lawsuit, negotiating favorable settlements of both.
- We represented a Japanese manufacturer of precision equipment in an internal investigation of the circumstances under which the company’s Singapore affiliate exported technology to certain Middle Eastern countries.
- We represented a U.S.-based multinational corporation in an internal investigation regarding the import licensing practices of its Japanese subsidiary.
- We represented a Japanese chemical company in an antitrust investigation triggered by a grand jury subpoena. The investigation included the company’s U.S. and European subsidiaries, and was conducted by attorneys from the firm’s Tokyo, New York, San Francisco, and London offices.
- We represented a U.S. software company in an internal investigation of its Japanese subsidiary after a whistleblower complaint about revenue manipulation.
- We represented a Japanese software company in an internal investigation in connection with a possible theft of trade secrets.
- We represented a U.S. public company with operations in Asia in an internal investigation regarding the company’s employee stock option program, involving the review of documents and the interviewing of employees in English, Chinese, and Japanese.