Morrison & Foerster's multidisciplinary Life Sciences Practice draws upon the expertise of our attorneys from a wide range of practice areas to meet the particular needs of each of our life sciences clients, large and small, around the world. The firm represents some of the leading participants in the biotechnology, medical technology, and pharmaceutical industries in Japan.
With 120 U.S., Japanese, English and Australian-qualified lawyers resident in the Tokyo office, Morrison & Foerster, in conjunction with Ito & Mitomi, is the largest international law firm in Tokyo. Our attorneys have extensive experience representing both Japanese and foreign life sciences companies in a wide range of matters, including corporate finance, licensing, collaboration and other technology transactions, IP strategy issues, and litigation.
Our life sciences lawyers in Japan are supported by one of the world's premier biotechnology and life sciences patent groups. Our patent attorneys' scientific expertise and knowledge of the industry are instrumental to our corporate counseling and also provide critical litigation support. We understand how important intellectual property issues are to our life sciences clients' success.
Corporate Finance
We represent life sciences clients in a wide range of corporate finance transactions, including public and private securities issuances, M&A and joint ventures. Some of our recent prominent corporate finance representations include the following:
- Astellas. Represented Astellas, Japan's second largest pharmaceuticals company, in its $4 billion acquisition of OSI Pharmaceuticals, the first unsolicited cross-border tender offer by a Japanese company.
- Astellas. Represented Astellas in its $537 million acquisition of Agensys Inc., a Santa Monica based biotech firm.
- Astellas. Represented Astellas in its strategic alliance with Amgen to co-develop and co-commercialize in Japan four biologics and one small molecule drug through a newly established joint venture, Amgen Astellas BioPharma KK.
- Astellas. Represented Astellas in a joint venture with Maxygen, Inc., a California based biotechnology company, for multiple protein discovery and R&D programs. As part of the JV, Astellas obtained an option to acquire substantially all of Maxygen's programs and technology assets for protein pharmaceuticals.
- Biotech-Healthcare Partners. Represented Biotech-Healthcare Partners in its Series A investment in SanBio, a California company focusing on cell therapy products.
- Fujisawa/Yamanouchi. Represented Fujisawa Pharmaceutical in international aspects of its $7.6 billion merger with Yamanouchi Pharmaceutical. The merger integrated Japan's second and eleventh largest pharmaceutical companies to create Astellas.
- Fujisawa Investments for Entrepreneurship. Represented FITE in its investments in, among other companies, Linden Technologies, Artecel, Neuronautics and Quark Biotech.
- Fujisawa. Represented Fujisawa in its formation of Fujisawa Investments for Entrepreneurship, L.P. ("FITE"), a private venture capital fund.
- Fujisawa. Represented Fujisawa in its formation of Fujisawa Research Institute of America, a research and development corporation.
- Fujisawa. Represented Fujisawa in its strategic investment in Sucampo Pharmaceutical, Inc. for ophthalmic pharmaceutical compounds.
- Fujisawa. Represented Fujisawa in its purchase of a significant equity interest in Pharmingen, a developer of monoclonal antibodies.
- Fujitsu Kyushu Systems Engineering. Represented Fujitsu Kyushu Systems Engineering in its investment in Gene Networks, Inc.
- Kyowa Hakko. Represented Kyowa Hakko in its investment in Geron, a U.S. developer of cancer and aging-related drugs, and in Cephelon, a U.S. developer of drugs for the treatment of neurological disorders.
- Omron Healthcare. Represented Omron Healthcare, a subsidiary of Omron Corp., in its acquisition of all of the shares of Colin Medical from The Carlyle Group.
- Otsuka Pharmaceutical. Represented Otsuka in a preferred stock investment in GangaGen, Inc., a Delaware corporation with operations in Bangalore, India.
- Paradigm Therapeutics. Represented Paradigm, a UK drug discovery company, in its acquisition by Takeda Pharmaceutical Company.
- Sankyo Co. Represented Sankyo in international aspects of its multi-billion dollar merger with Daiichi Pharmaceutical. The merger integrated Japan's third and seventh largest pharmaceutical companies to create Daiichi Sankyo.
- SoftBank. Represented SoftBank in its formation of SB Life Science Ventures Fund, a fund focusing on investments in life sciences and biotechnology companies in the United States.
- SoftBank Media & Marketing. Represented SoftBank Media & Marketing in its joint venture with WebMD/Healtheon to offer online medical advice in Japan.
- Sumitomo Chemical Company. Represented Sumitomo Chemical in its acquisition of the pharmaceutical division of Regeneron.
- Summit Pharmaceuticals. Represented Summit Pharmaceuticals, an affiliate of Sumitomo Corporation, in its investment in ChemBridge Research Laboratories, a developer of drug discovery products.
- Taisho Pharmaceutical. Represented Taisho Pharmaceutical in its $310 million acquisition of Bristol-Myers Squibb's Indonesia manufacturing and distribution subsidiary as well as brand rights for over-the-counter pharmaceutical products sold throughout Asia.
- Taisho Pharmaceutical. Represented Taisho in its $120 million acquisition of Hoepharma Holdings Sdn. Bhd., a leading Malaysia-based pharmaceutical company.
- Taiyo Pharmaceutical. Represented Taiyo, Japan's third-largest generic drug maker, in its sale of shares to Israel-based Teva Pharmaceutical Industries, the world's largest producer of generic drugs, in a transaction that gives Taiyo an enterprise value of $1.3 billion.
- Terumo Corporation. Represented Terumo in its $2.6 billion acquisition of CaridianBCT from Sweden's Gambro AB. CaridianBCT is a leading global provider of technology, products, and services in the blood banking, transfusion, and cell therapy industries. The transaction will be the largest acquisition ever made by a Japanese company in the medical device sector.
- Terumo Corporation. Represented Terumo in its acquisition of MicroVention Inc., a privately held medical device company based in Orange County, California, that focuses on the development of endovascular coils and related products for the treatment of cerebral aneurysms.
- Terumo Corporation. Represented Terumo in its acquisition of Mission Medical.
- Topcon Corporation. Represented Topcon in its acquisition of OptiMedia's glaucoma and retina businesses.
- Zeon Corporation. Represented Zeon Corporation in the sale of its recombinant and conventional animal vaccine producing U.S. subsidiary, Biomune, to Ceva Santé Animale, an animal health company based in France.
We have also represented both Japanese life sciences companies and their investors in many minority investments in non-Japan bio and pharma companies, often tied to licenses and other collaborative relationships. Our clients in these investments have included, among others, Kyowa Hakko, Fujisawa Investments, Sankyo, SoftBank, and Sumitomo Pharmaceutical.
Representative Licensing, Collaboration, and Other Technology Transactions
We are unique among Tokyo law firms in having team of IP and licensing specialists on the ground in our Tokyo office. These experts are able to provide immediate and focused assistance to our Japanese clients for their complex IP issues. Some recent representative IP licensing transactions that we have handled include the following:
- Astellas. Represented Astellas in its collaboration with Theravance, Inc., for telavancin, an injectible lipoglycopeptide antibiotic currently in phase III clinical trials. The deal is for a worldwide (excluding Japan) collaboration to complete development of and commercialize telavancin.
- Atrix Laboratories. Represented Atrix Laboratories in its manufacturing, supply, and license agreements with Sosei Co., Ltd.
- Chiron. Represented Chiron in its research and development agreements with Taisho Pharmaceutical Co., Ltd. for certain drug compounds.
- CoTherix, Inc. Represented CoTherix in its agreement with Asahi Kasei Pharma Corporation granting CoTherix exclusive rights in North America and Europe to develop and commercialize oral and inhaled formulations of Fasudil.
- Effector Cell Institute, Inc. Represented Effector Cell Institute in its collaborative research agreement with AstraZeneca.
- GW Pharmaceutical PLC. Represented GW Pharmaceutical, an AIM-listed pharmaceutical research and development company, in a $273 million long-term strategic cannabinoid alliance with Otsuka Pharmaceutical. Under the terms of the license agreement, GW has granted Otsuka an exclusive license to develop and market Sativex®, GW's lead product, in the United States. Sativex® is being developed by GW and is a novel prescription pharmaceutical product derived from components of the cannabis plant.
- Kaken Pharmaceutical. Represented Kaken in its license and distribution agreement with Dow Pharmaceutical Sciences, Inc. for the development and commercialization of Kaken's antifungal compound, KP-103.
- Kaken Pharmaceutical. Represented Kaken in its global collaboration agreement with Elitra Pharmaceuticals relating to the research, development, and commercialization of small molecule antifungal agents.
- Kaken Pharmaceutical. Represented Kaken in its agreement relating to the marketing of a gout drug in Japan, its supply and license agreements relating to dosage forms containing loxiglumide for human therapeutic or diagnostic use, and its license agreements relating to other pharmaceutical products.
- Kaken Pharmaceutical. Represented Kaken in its consulting services agreement relating to marketing authorizations in the European Union and the United States.
- Kawasumi Laboratories. Represented Kawasumi in its prostate brachytherapy development and supply agreement with RadioMed.
- Kawasumi Laboratories. Represented Kawasumi in its disposable medical products supply and distribution agreement with Medisystems.
- Kirin Brewery. Represented Kirin in its agreement with Shire for the clinical development, registration, marketing, and distribution of Agrylin in Japan.
- Kirin Brewery. Represented Kirin in its development, marketing, and license agreements relating to an anti-cancer vaccine and an anti-cancer drug.
- Kirin Brewery. Represented Kirin in its clinical research agreement with Rockefeller University and its patent license with Indiana University's Advanced Research & Technology Institute and the Ludwig Maximilians University Munich for certain growth factor technologies.
- Kowa. Represented Kowa in its license agreement with BioStratum relating to the manufacture and sale of pyridoxamine in Japan, Taiwan, Korea, and China.
- Maruishi Pharmaceuticals. Represented Maruishi in global manufacturing, supply, and distribution arrangements with regard to Sevoflurane, a leading inhalant anesthesia, including its license agreement with Baxter International, its supply and license agreement with Abbott Laboratories, and its license and manufacturing agreement with Central Glass.
- Mochida Pharmaceutical. Represented Mochida in a wide range of its licensing, collaboration, distribution, and joint development agreements with American and European pharmaceutical companies.
- SBI Biotech. Represented SBI Biotech in its licensing and collaboration agreements with Baylor Research Institute and Changchun Huapu Bio-Tech pursuant to which SBI Biotech obtained license rights to compounds, methods, and other technologies to develop a new class of nucleotide drugs and other forms of cancer treatment.
- SBI Biotech. Represented SBI Biotech in its strategic investment in ODC Therapy, a biotech company founded by the Baylor Health Care System that develops cancer treatment vaccines. The parties will also enter into a license arrangement for SBI Biotech's right to develop and commercialize cancer treatment vaccines in Japan based on ODC's technology.
- SmithKline Beecham. Represented SmithKline Beecham in the formation of a distribution relationship in Asia, including Japan, with ALZA Corporation for transdermal nicotine patch products.
- Terumo Corp. Represented Terumo in its development and license agreement with Diacrin for the development and commercialization of cardiovascular cell therapy products.
The matters stated above are a small sampling of our experience in complex licensing and collaboration transactions involving Japanese pharmaceutical, medical devices, and biotech companies. Some other clients that we have acted for in licensing transactions include Kaken Pharmaceutical, Kawasumi Laboratories, Kowa, Mochida Pharmaceutical, Locomogene, Ginkgo Bio, and Advangen.
Representative Intellectual Property and Litigation Matters
We currently have over 30 IP lawyers practicing in our Tokyo office, including 9 litigation partners with patent trial experience, 3 technology transactions partners, 7 U.S. patent attorneys with engineering backgrounds, a former USPTO patent examiner, and 3 Japanese patent attorneys (benrishi). We have one of the world's leading teams of patent prosecutors comprising about 40 prosecutors and others specializing in biotech and pharmaceutical-related technologies. Some recent representative Japan-related transactions include the following:
- Ajinomoto. Represented Ajinomoto in its review of a competitor's patents in preparation for adversarial licensing negotiations.
- Daiichi Pharmaceutical. Provide general legal advice to Daiichi on protection of trade secrets.
- Hisamitsu Pharmaceutical. Represented Hisamitsu in its evaluation of a competitor's patent portfolio in preparation for adversarial licensing negotiations and in its adversarial patent licensing negotiations with a university TLO as well as a U.S. company.
- Kaken Pharmaceutical. Represented Kaken in its investigation of the unauthorized sale of a human growth hormone over the Internet.
- Kirin Brewery. Represented Kirin and its joint venture partner in formulating intellectual property strategies relating to the development of novel cancer treatments.
- Mochida Pharmaceutical. Represented Mochida in its adversarial licensing negotiations with a U.S. company.
- Omron. Represented Omron in its patent litigation with Becton Dickinson relating to certain ear thermometers.
- Omron. Represented Omron in its patent litigation relating to blood pressure monitors.
- Omron. Advise Omron with respect to the U.S. tax aspects of its international patent policies and compliance with U.S. transfer pricing regulations.
- Omron. Represented Omron regarding patent and trademark matters before the USPTO.
- Sankyo Co. Serve as nationwide coordinating counsel for Sankyo and its U.S. subsidiary, Sankyo Pharma, in U.S. product liability litigation and supervised all aspects of Sankyo's defense in numerous jurisdictions.
- Sumitomo Electric Industries. Represented Sumitomo Electric Industries regarding patent matters before the U.S. Patent and Trademark Office.
- Yoshitomi Pharmaceuticals. Represented Yoshitomi Pharmaceuticals in a licensing dispute involving recombinant human serum albumin.