Emergency Info

Morrison | Foerster
Japan
Japan		 China
China		 Europe Israel
Hebrew
SEARCH

Japan Breadcrumb
Japan Overview Left
Ito & Mitomi left
Japan Practices and Industries
Japan Attorneys & Professionals
Japan Legal Updates & News Left
Japan Events Left


Litigation

Overview

Morrison & Foerster is the only global firm with a dedicated litigation team in Japan.

With more than 20 full-time litigation attorneys in Tokyo, more than half of whom are fluent in Japanese, we are active in representing clients worldwide - including in inbound matters in Japanese courts, and litigation matters for our Japan-based clients in the region and around the world.

We have broad experience in numerous fields.

  • In connection with IP disputes, we have handled litigation in all of the major U.S. jurisdictions, including the Northern District of California, the Eastern District of Texas, and the Western District of Wisconsin, and before the International Trade Commission (ITC).
  • We have substantial experience in advising clients in adversarial patent licensing negotiations.
  • We have broad experience in general commercial litigation, handling everything from consumer class action and product defect claims, to major construction and other commercial disputes.
  • In the antitrust area, we have represented clients in global antitrust investigations and litigation, as well as in investigations commenced by the Japan FTC (and have one of the few JFTC-trained attorneys in private practice).
  • Our U.S. and Japan-qualified litigators team to provide creative and strategic approaches to representing clients in commercial and intellectual property litigation in courts, administrative agencies, and arbitration venues in Japan.
  • Finally, we handle a broad range of internal investigations in Japan and the region, including with respect to alleged accounting misstatements, product mislabeling, construction defects, and matters involving possible corrupt practices under the FCPA.

While many of the contentious matters we handle are ultimately resolved through confidential settlements, some of the recent publicly-disclosed matters handled by our Japan-based litigators are listed on the following pages.

Intellectual Property Litigation

Federal District Court Cases

  • 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.
  • Pioneer. We represent Pioneer in a patent infringement lawsuit against Samsung SDI in the Eastern District of Texas relating to plasma display technology.
  • 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.
  • Fujitsu. We represent Fujitsu in a patent infringement suit against Netgear in the Western District of Wisconsin relating to wireless products that comply with the 802.11 standard.
  • Fujitsu Computer Systems. We represent 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.
  • 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.

ITC Cases

  • Toshiba. We represent 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.
  • Funai Electric. We represent Osaka-based Funai Electric in an action in the ITC (Inves. 337TA-617) and the Central District of California against 15 manufacturers and importers of digital televisions and other related products.
  • Sanyo Electric. We are defending 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.

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.
  • 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 court 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 court 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

  • Apple. We represent Apple and its subsidiary, Apple Japan, in a $100 million patent infringement proceeding relating to the iPod before the Tokyo District Court and in parallel proceedings before the Tokyo Customs Office.
  • Albemarle. We represent Albermarle 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 represent Hill’s–Colgate (Japan), a Japanese subsidiary of ColgatePalmolive, in a products liability action in the Osaka District Court.
  • Silchester International Investors Ltd. We represented Silchester International Investors Ltd. in its petition to the Tokyo District Court to enjoin the issuance of convertible bonds aggregating to US$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 of 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.

Arbitrations

  • 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.

Other recent arbitration engagements include the following matters:

  • We represent 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 represent 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 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 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.

Adversarial Patent Licensing Negotiations

Morrison & Foerster’s Tokyo litigators are currently handling or have successfully resolved numerous adversarial licensing matters, including for such clients as Advantest, Astellas, Fujitsu, Konica Minolta, PFU, TDK, Toshiba, Yamaha. While most of the licensing transactions we handle are confidential, some recent matters that have been publicly announced include the following:

  • Fujitsu. We represented Fujitsu in its license covering the entire portfolio of patents of Rambus Inc. The agreement covers chip interface technology that Fujitsu has used in PCs and servers, as well as future products.
  • Toshiba. We represented 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.

Internal Investigations

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 in violation of company rules and applicable U.S. export rules and regulations.
  • 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 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 interviewing of employees in English, Chinese and Japanese.