Morrison & Foerster is the largest global firm with a dedicated 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.
Litigation Practice Areas
Intellectual Property Litigation
Morrison & Foerster is widely recognized as one of the strongest global IP litigation firms, handling critical matters in electronics, communications, semiconductors, software, pharmaceuticals and life sciences. Our Tokyo IP litigation team frequently appears in all of the U.S. federal district courts that handle high volumes of patent litigation, as well as the U.S. International Trade Commission, and the U.S. Court of Appeals for the Federal Circuit. We have won many high-stakes cases involving disputes over key patents, trade secrets, trademarks, and other intellectual property.
International Trade Commission Disputes
We are one of the leading firms representing clients before the U.S. International Trade Commission (ITC) in administrative proceedings seeking to block the importation of infringing products. Our Tokyo litigators regularly represent both complainants and respondents in ITC proceedings. We have appeared before all of the current administrative law judges at the ITC.
Defense Against Patent Infringement Claims by Non-Practicing Entities (Trolls)
In the United States, a significant amount of patent litigation is driven by non-practicing entities (NPEs), sometimes referred to as patent trolls. NPE licensing campaigns and lawsuits targeting entire industries are common. Our Tokyo litigators frequently negotiate with NPEs and defend against their lawsuits in an efficient and cost-effective manner. We have successfully defended companies against some of the most aggressive NPEs, including Intellectual Ventures, Tessera, and Acacia, often as counsel for joint defense groups.
Adversarial Patent License Negotiations
We conduct adversarial patent licensing negotiations for many clients. Often, these involve comprehensive cross-licenses of hundreds or thousands of patents between some of the largest companies in the world, but just as often we conduct focused negotiations over a single patent. Our strategy involves deep analysis of validity and infringement issues, assessment of potential damages and reasonable royalties, and analysis of issues from legal specialties other than intellectual property—such as antitrust—that can affect licensing terms.
Patent Prosecution and Counseling
Morrison & Foerster has an experienced and highly regarded patent practice, including a sizable group of PTO-qualified attorneys in Tokyo with unrivaled technical experience. The firm’s attorneys have played a significant role in the creation and protection of many of the landmark patent portfolios in the information technology and life sciences industries. We are particularly skilled with regard to the strategic planning of a patent portfolio, including writing successful patent applications in complex and novel situations in anticipation of possible future litigation. We are experts in the administrative procedures involved in challenging or confirming patent validity in the USPTO, including the new AIA post-grant procedures—that is, inter partes review, post-grant review, supplemental examination, and transitional post-grant review for business-method patents.
Our Tokyo litigators handle complex, high-stakes commercial disputes for our Japanese clients in U.S. courts and arbitral venues around the world. Our experienced Tokyo-based trial lawyers have a successful track record for both plaintiffs and defendants. Our cases involve claims for breach of contract, commercial fraud, business torts, breaches of fiduciary duty, and joint venture dissolutions; they arise from many types of commercial activity, including manufacturing and distribution, technology transfer, real estate investment and development, and commercial lending.
Investigations and Regulatory Compliance
Our investigations and regulatory compliance practice builds on the firm’s broad and deep corporate capabilities in the region. We regularly conduct investigations relating to compliance with antitrust, anti-corruption, data-protection, and export-control laws, as well as revenue recognition and other accounting issues. Our clients include top global companies, as well as audit committees, independent directors, special committees, and individual employees. With more than 25 years of experience in Japan, we understand the issues faced by global companies operating in Japan when they are dealing with investigations and compliance matters.
Japanese Dispute Resolution
We have a team of 10 Japanese and 15 American litigation attorneys in Japan who jointly develop strategies and provide definitive, well-reasoned advice for clients involved in IP and commercial disputes in Japan. We were one of the first international firms to represent clients in Japanese litigation, including high-profile proceedings before the Tokyo District Court, the IP High Court, the Japan Patent Office, and the Japan Customs Office. Japanese judges have responded well to our creative, innovative approaches to litigation, to the benefit of our clients.