Intellectual Property / Technology Transactions | Japan


Morrison & Foerster is the only global law firm in Tokyo with a dedicated team of attorneys specializing in licensing and other IP transactions including the transfer, commercialization, development and exploitation of intellectual property. Working together with the firm's strong patent and IP litigation teams, the IP/Technology Transactions Group offers clients seamless IP services, from patent analysis; to technology development and licensing; to adversarial licensing, cross licensing, and preparation and defense of litigation.

Morrison & Foerster's Tokyo IP/technology transactions group is particularly active in the areas of computer hardware (including hardware peripherals and semiconductors) and software, information technology, biotechnology and new media, offering a combination of strong cross-border transactional and litigation experience, and in-depth knowledge of applicable intellectual property and regulatory issues.

Some representative matters handled by the group are as follows (please see Mergers + Acquisitions and Litigation for related matters that we have handled).

Semiconductors

Morrison & Foerster has one of the most active semiconductor practices of any law firm, with extensive expertise in all aspects of the semiconductor and semiconductor equipment industries.

Examples of recent semiconductor transactions on which we have advised include:

  • Elpida/Micron. We represented Elpida Memory, a Tokyo-based DRAM manufacturer, in its $2.5 billion sale to Micron Technologies, making Micron the world’s second largest DRAM manufacturer.
  • NECEL/Renesas Technology. We represented NEC Electronics in its merger with Renesas, resulting in the formation of the world's third-largest semiconductor company.
  • NECEL/IBM. We represented NEC Electronics in its joint development relationship with IBM to develop leading-edge semiconductor technologies.
  • ON Semiconductor/Sanyo Semiconductor. We represented ON Semiconductor in its $600 million acquisition of Sanyo Semiconductor, the first ever acquisition of a major Japanese semiconductor company by a US company (and one of the largest inbound investments into Japan to date). Recipient of "M&A Deal of the Year" - The M&A Advisor's 2011 International M&A Awards.
  • Sumitomo Heavy/Axcelis. We represented Sumitomo Heavy Industries in its bid to acquire semiconductor equipment maker Axcelis Technologies for $640 million.
  • Toshiba/SanDisk. We represented Toshiba in the formation of a $2 billion joint venture with SanDisk to expand the parties' NAND flash manufacturing capabilities. We also represented Toshiba in the restructuring of the parties' prior joint venture, including Toshiba's acquisition of $1.8 billion of manufacturing equipment from the JV.
  • Toshiba/AU Optronics. We represented Toshiba Mobile Display, a wholly-owned subsidiary of Toshiba, in the sale of its LCD manufacturing operations in Singapore to AU Optronics.
  • Toshiba/Xilinx. We represented Toshiba in the establishment of its foundry relationship with Xilinx under which Toshiba produces programmable semiconductor products for Xilinx.
  • Toshiba/Micron Technology. We represented Toshiba in its $288 million acquisition of certain of Micron's semiconductor patents from Micron.
  • Toshiba/M-Systems. We represented Toshiba in its NAND flash memory alliance with M-Systems for the development of DiskOnChip and DiskOnKey products.
  • Toshiba/Mitsubishi Electric. We represented Toshiba in the transfer of its power semiconductor business to Mitsubishi Electric.
  • Toshiba/Matsushita. We represented Toshiba in the formation of its $1.3 billion joint venture with Matsushita to design, develop and manufacture flat panel displays in Singapore. 
  • Fujitsu/Spansion. We represented Fujitsu and its wholly owned subsidiary, Fujitsu Semiconductor Limited, in the sale of its global fabless microcontroller and analog semiconductor business to Spansion for $150 million.
  • Fujitsu/AMD. We represented Fujitsu in the restructuring and expansion of its NOR flash memory joint venture with AMD, resulting in the creation of the world's second largest stand-alone flash company with 7000 employees and annual sales of $3 billion.
  • Fujitsu/Sun Microsystems. We represented Fujitsu in its multi-billion dollar strategic alliance with Sun to combine the parties' Unix server development and distribution businesses, including agreements for joint development and manufacture of server CPUs, ASICs, and boards and the development, manufacture and sale of servers.
  • Hitachi/IBM. We represented Hitachi in its $2 billion acquisition of IBM's hard disk drive business (with over 20,000 employees in 8 countries), including a series of agreements with IBM for the supply of chips for the hard drive business.
  • Sony/IBM. We represented Sony Computer Entertainment in the Sony group's $1 billion investment in IBM semiconductor fabrication facilities, including its $325 million agreement with IBM for the manufacture of next generation PlayStation 3 chips.
  • Dainippon Screen/Applied Materials. We represented Dainippon Screen in its joint venture with Applied Materials.
  • Dainippon Screen/KLA-Tencor. We represented Dainippon Screen in its joint venture with KLA-Tencor Corporation for the development of deposition equipment.
  • Advanced Semiconductor Engineering/NEC Electronics. We represented Taiwan's ASE in its acquisition of NECEL's semiconductor packaging and testing facilities.

The Tokyo Technology Transactions group's work for these and other clients has included structuring, negotiating and documenting semiconductor patent and other intellectual property license agreements, process technology joint development and/or license agreements, core and other design joint development and/or license agreements, foundry and other manufacturing agreements, and a wide variety of strategic alliances and acquisitions.

Computer Hardware and Software

Morrison & Foerster has extensive experience in representing clients in complex computer hardware and software transactions.  We have been particularly active in deals involving computers and computer peripherals, LCD's, plasma displays, hard disk devices, and other storage technologies.

Examples of recent computer hardware-related transactions on which we have advised:

  • Toshiba Tec/IBM’s retail store point-of-sale solutions business.  We are representing Toshiba Tec in its $850 million acquisition of IBM’s Retail Store Solutions business.  The acquisition will make Toshiba Tec the world’s leading retail point-of-sale systems and solutions business, offering hardware, software and integrated in-store solutions.
  • Hitachi/Western Digital. We represented Hitachi in the sale of its hard disk drive subsidiary, Hitachi Global Storage Technologies (HGST), to Western Digital for $4.8 billion in cash and stock.
  • Hitachi/IBM. We represented Hitachi in its $2 billion acquisition of IBM's hard disk drive business, with more than 17,000 people and manufacturing, research & development, and distribution facilities in over two dozen countries around the world.  As part of this transaction, our Technology Transactions group negotiated agreements for long-term supply of key hard disk semiconductor components by IBM, the provision of R&D services, the purchase by Hitachi of over 1,000 IBM patents, and licenses for substantial non-transferred technology.
  • Fujitsu/Cisco Systems. We represented Fujitsu in its strategic alliance with Cisco Systems for the joint development of routers and the related integration of the parties' product lines for routing and switching products.
  • Fujitsu/Hitachi. We represented Fujitsu in its sale to Hitachi of a 30% interest in Fujitsu Hitachi Plasma Display Limited, a leading manufacturer of plasma display panels, and in the transfer of certain PDP patents to Hitachi.
  • TDK/Alps. We represented TDK in its purchase of Alps' business for the development, commercialization and manufacture of heads for hard disk drives for $350 million.
  • TDK/Imation. We represented TDK in the sale of its recording media business (including branded tape, DVD, CD and similar products) to Imation for $260 million in Imation shares and cash.
  • TDK/Amperex Technology Limited. We represented TDK in its acquisition of a Amperex Technology, a China-based manufacturer of lithium batteries used in laptops and other mobile computing devices.
  • Ricoh/Hitachi. We represented Ricoh in international aspects of its $600 million acquisition of Hitachi's printing business, including facilities in the U.S., Mexico and Europe.

The Internet

Examples of recent internet-related transactions on which we have advised:

  • SoftBank/Alibaba and Alipay.com. We represented SoftBank in the Alibaba Group's $4 billion restructuring of its holdings in Alipay, China's largest online payment system, to address regulatory requirements relating to foreign ownership of online payment systems in China. 
  • Yahoo! Japan/Google. We represented Yahoo! Japan, Japan's leading Internet portal and search provider, in its search transaction with Google Inc., under which Yahoo! Japan will migrate its web search services and search advertising services to platforms provided by Google.
  • Rakuten/Baidu. We represented Rakuten, Japan's largest online retailer (and the world's second largest internet retailer by revenues), in its joint venture with Baidu to develop a Chinese e-commerce business modeled on Rakuten’s successful Japanese model and leveraging Baidu’s leading position in Chinese search and related technologies.
  • SoftBank/Alibaba. We represented SoftBank in its investment in Alibaba and TaoBao, China’s largest e-commerce business, including in connection with Yahoo!’s $1 billion investment in Alibaba and Tao Bao - China’s largest internet investment to date.  SoftBank is Alibaba’s second largest shareholder, with a 30% stake.
  • Dow Jones/SBI Holdings. We represented Dow Jones in its joint venture with SBI Holdings to provide the Wall Street Journal online in Japan.
  • SoftBank/InMobi. We represented SoftBank in its $200 million investment in InMobi Pte. Ltd., a mobile advertising and payment technology company based in Bangalore, India.
  • GREE/OpenFeint. We represented GREE, Inc., a leading Japanese social networking and gaming services company, in its acquisition of OpenFeint Inc., a California-based mobile social gaming network provider with 75 million registered users.

Life Sciences

We have one of the world's premier life science practices combining exceptional expertise and experience.  The Tokyo office represents some of the leading participants in the biotechnology, pharmaceutical, and medical device and equipment industries in Japan.

Examples of recent life sciences transactions on which we have advised:

Mergers and Acquisitions:

  • Astellas/OSI Pharmaceuticals.  We represented Astellas, Japan's second largest pharmaceuticals company, in its $4 billion acquisition of OSI Pharmaceuticals, the first ever unsolicited cross-border tender offer by a Japanese company.
  • Terumo/CaridianBCT.  We represented Terumo Corporation 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 by a Japanese company in the medical device sector.
  • Taiyo Pharma/Teva.  We represented Taiyo Pharmaceutical, Japan's third-largest generic drug maker, in its sale of a 57% stake to Israel’s Teva Pharmaceutical, the world's largest producer of generic drugs, in a transaction that gives Taiyo an enterprise value of $1.3 billion.
  • Topcon/OptiMedica. We represented Topcon in its acquisition of OptiMedia's glaucoma and retina businesses.
  • Taisho Pharma/HOE Pharma. We represented Taisho Pharmaceutical in its US$120 million acquisition of Hoepharma Holdings Sdn. Bhd. (HOE), a leading Malaysia-based pharmaceutical company.
  • Taisho/Bristol-Myers Squibb. We 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.
  • Astellas/Agensys.  We represented Astellas Pharma Inc. in its $535 million acquisition of Agensys Inc, a Santa Monica based biotech firm.  The acquisition is Astellas' largest since its formation through the merger of Fujisawa Pharmaceutical and Yamanouchi Pharmaceutical.
  • Fujisawa/Yamanouchi. We represented Fujisawa Pharmaceutical in international aspects of its $8 billion merger with Yamanouchi Pharmaceutical.  The merger integrated Japan's 3rd and 5th largest pharmaceutical companies to create Astellas Pharma Inc. and represents the largest pharmaceutical merger in Japan to date.
  • Sankyo/Daiichi.  We represented Sankyo in the international aspects of its multi-billion dollar merger with Daiichi Pharmaceutical. The merger integrated Japan's 3rd and 7th largest pharmaceutical companies to create Daiichi Sankyo, Japan's second largest pharmaceutical company.
  • Omron Healthcare/Colin Medical. We represented Omron Healthcare,  a subsidiary of Omron Corp., in its acquisition of all of the shares of Colin Medical Technology from The Carlyle Group.  Colin Medical is a leading manufacturer of blood pressure and vital signs monitors for medical professionals and related equipment.

Development, Licensing, and Manufacturing:

  • Asahi Kasei. We represented Asahi Kasei in collaboration agreements with respect to proprietary sleep hypnotic compounds.
  • Atrix Laboratories. We represented Atrix Laboratories in manufacturing, supply, and license agreements with Sosei Co., Ltd.
  • Chiron Corporation. We represented Chiron in the negotiation of research agreements with Taisho Pharmaceutical for certain drug compounds.
  • Kaken Pharmaceutical. We represented Kaken in negotiating global collaboration agreements with Elitra Pharmaceuticals relating to the research, development, and commercialization of small molecule antifungal agents.
  • Kawasumi Laboratories. We represented Kawasumi Laboratories in its prostate brachytherapy development and supply agreements with RadioMed.
  • Kirin's license agreement. We represented Kirin Brewery in its license agreements with Human Genome Sciences and Corixa for the development and marketing of an anti-cancer drug.
  • Maruishi Pharmaceuticals. We represented Maruishi Pharmaceuticals 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.

Entertainment and Media

Tokyo's Technology Transactions group also has significant experience in entertainment and media matters.

The group's clients in these areas include producers, creators, licensors, licensees, and other acquirers of content ranging from major motion picture and animation properties to mobile telephone ringtones, video game developers and distributors, wireless infrastructure providers, and site developers and operators.

Examples of recent entertainment and media-related transactions on which we have advised:

  • Sega's acquisition of KUSH and Sale of Virtual Concepts to Take-Two. We represented Sega in its acquisition of US sports video game developer KUSH, the integration of KUSH with Sega's Virtual Concepts subsidiary, and the subsequent sale of Virtual Concepts to Take-Two.
  • Amana's sale of its US business to Getty Images. We represented Amana, a leading Japanese online photo stock company, in the sale of its U.S. and European operations to Getty Images.
  • Warner Brothers Online licenses of movie content. We represented Warner Brothers Online in the licensing of certain of its animated characters and movie content for distribution via Japan's wireless network operators.
  • Index's Acquisition of Shenzhen Skyinfo Telecom. We represented Index, a leading Jasdaq-listed wireless value-added service provider, in its acquisition of Shenzhen Skyinfo Telecom, China's 3rd largest mobile content provider.
  • Sega's entrance into the China online gaming market. We represented Sega in its entrance into the China online gaming market through licenses with CNC Broadband Entertainment for the CTRacer massively multiplayer online (MMO) game and with T2 for the Shenmue Online MMO role-playing game.
  • Yamaha international licensing of music data. We represented Yamaha in its international licensing arrangements regarding music data for use as mobile telephone ringtones.
  • Fuji Television Network. We represented Fuji Television Network, Inc., in numerous matters in the international exploitation of its domestic programming.
  • Kadokawa Shoten Publishing. We represented Kadokawa Shoten Publishing Co., Ltd. in the international exploitation of its authors.

Our IP group is also very active in advising on global and Japan-specific privacy and data security issues, and assists a broad range of US, European and Japanese multinationals on data protection, privacy and similar issues, including on compliance issues resulting from Japan's planned implementation of new legislation for the protection of personal information next year.

Chambers Global 2017
Intellectual Property: International Firms: Japan (Band 1)


Chambers Asia-Pacific 2017 
Intellectual Property: International Firms: Japan (Band 1)


Legal 500 Asia-Pacific 2017
Intellectual Property: International Firms and Joint Ventures: Japan (Band 1)
TMT: International Firms and Joint Ventures: Japan (Band 1)


Managing Intellectual Property Patent Survey Asia 2015
Japan Foreign Firms: Patent (Band 1)


IAM Patent 1000 2015
Japan: Foreign Firms - Litigation and Transactions (Highly Recommended)


Asian Legal Business (ALB) Japan Law Awards 2015
IP Law Firm of the Year


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