Hiroyuki Hagiwara

Partner

  • LLM, New York University School of Law, 1999; Heiwa Nakajima Scholar
  • BS (Electrical Engineering), Tokyo University of Science (Tokyo Rika Daigaku), 1998
  • LLB, Keio University, 1993; Dartmouth-Keio Exchange Scholar, 1990-1991

Qualifications

  • Japan, Gaikokuho Jimu Bengoshi (New York), 2008
  • New York, 2000
  • U.S. Patent and Trademark Office

Court Admissions

  • Supreme Court of the United States
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the Eastern District of New York
  • U.S. District Court for the Southern District of New York
  • Japanese
  • Tokyo IP American Inn of Court, Program Committee Co-Chair
  • Advisor, Advisory Committee, Center of Advanced Study and Research on Intellectual Property, University of Washington, School of Law 
  • American Bar Association
  • American Intellectual Property Law Association
  • New York Intellectual Property Law Association
  • Japan Intellectual Property Association
  • A.I.P.P.I. Japan
  • Licensing Executives Society Japan, International & Education Committees
  • Advisor, Advisory Committee, Center of Advanced Study and Research on Intellectual Property, University of Washington, School of Law
  • Japan Patent Attorneys Association (1993-2000, currently inactive)

Hiroyuki Hagiwara

Partner

Hiro offers more than 20 years of experience in representing the world’s leading technology and life sciences companies in cross-border IP licensing and litigation matters. Early in his career, Hiro was a patent attorney in the International Licensing Department of a major multinational technology company, specializing in contentious licensing negotiations and settlements of IP disputes. In private practice, Hiro has litigated a number of IP cases involving complex technologies and legal issues in the US federal courts and the ITC, defending infringement claims as well as monetizing client’s IP assets. He previously practiced out of the firm’s New York Office for a number of years and is now resident in Tokyo Office. Leveraging the rare combination of training and experience in Japan and the US, Hiro has represented the world’s most admired corporations such as Aisin AW, British Telecom, DeNA, Denso, Ebara, Fujitsu, Hitachi, Honda, Linear Technology, Mitsubishi Tanabe Pharma, Motorola, Nikon, Olympus, Ricoh, Sanyo, Senju Pharma, Spansion Japan and Toyota. Clients and other independent sources have singled out Hiro as one of the very best in advising Japanese clients in navigating complex cross-border IP landscape. One source says Hiro “is admired for his robust approach and is deeply experienced in IP generally and US patent litigation in particular” (Chambers Global 2013). Another source says, “Hiroyuki Hagiwara’s group makes the firm one of the best in this field” (Legal 500 Asia Pacific 2014). IAM Patent 1000’s 2013 edition says, “Commercially canny partner Hiroyuki Hagiwara has an exceptional ability to extract the maximum value from his clients’ assets.” Another source calls Hiro a “Local Disputes Star” (Benchmark Litigation Asia Pacific 2013). Hiro is often engaged to speak on international IP issues. Hiro is a frequent lecturer at such renowned institutions as University of Washington Law School, Waseda Law School, and Osaka Institute of Technology. Hiro serves as a member of the Advisory Committee at Center for Advanced Study and Research on Intellectual Property at University of Washington Law School as well as co-chair of the Program Committee of the Tokyo Intellectual Property American Inn of Court.

Experience

  • Labyrinth Optical Technologies LLC v. Fujitsu America, Inc., et al (C.D.Cal.); Defends Fujitsu companies in a patent infringement lawsuit involving optical data communication network technologies.
  • Versata v. Toyota Motor Corp., et al (E.D. Tex.); Defended a major Japanese automaker in a patent infringement lawsuit involving Computer Aided Design software and product configuration software and secured dismissal of the case with prejudice.  
  • In the Matter of Certain Automotive GPS Navigation Systems, Components Thereof, and Products Containing Same (ITC); Represents a Japanese automotive components supplier in connection with complainant’s claims.  
  • Gametek LLC v. Gameview Studios, LLC (S.D.Cal.); Represented Gameview Studios, the Internet game/SNS developer in the patent infringement litigation involving in-game currency features and secured a settlement for the client.  
  • Intellectual Ventures I LLC et al v. A Major Japanese Electronics Company (D.Del.); Represents Nikon in the patent infringement litigation involving various features of digital cameras.  
  • Optimum Power Solutions v. Fujitsu America, Inc. (C. D.Cal.); Represented Fujitsu in the patent infringement litigation involving computer power management technologies and secured dismissal of the case with prejudice.  
  • Power Management Solutions LLC v. Fujitsu Semiconductor America (C.D.Cal.); Represented Fujitsu in the patent infringement litigation involving semiconductor chip power management technologies and secured dismissal of the case with prejudice. 
  • Smart Memory Solutions LLC v. Fujitsu Semiconductor Limited et al (D. Del.); Represented the semiconductor chip manufacturer in the patent infringement litigation involving flash memory technology and secured a settlement for the client. 
  • Fast VDO LLC v. Olympus America Inc. et al (D. Del) 11-cv-797-PD; Represents the digital camera supplier in the patent infringement litigation involving video recording technology and secured dismissal of the case with prejudice. 
  • Wireless Recognition Technology LLC v. Ricoh Americas et al (E.D. Tex.); Represented Ricoh in the patent infringement litigation and secured a settlement for the client. 
  • Infinity Computer Products, Inc. v. Ricoh Americas et al (E.D. Penn.); Represents Ricoh in the on-going patent infringement litigation and related patent reexaminations.  
  • In the matter of certain flash memory and products containing same, ITC 337-TA-685 : Successfully secured dismissal of the client from the ITC Section 337 investigation brought by a major Korean electronics company against technology for manufacturing flash memory products.
  • In re: Halftone Color Separations (C.D. Cal.); On behalf of Ricoh, successfully settled the litigation relating to printer color toning technology. 
  • Sanyo v. MediaTek (C.D. Cal.); Won a motion for summary judgment of non-infringement of a counter-claim patent relating to optical disk drive controller chips and concluded the matter with settlement.
  • Guardian v. Sanyo et al (D. Del.): Successfully concluded the matter relating to LCD panel technology with settlement.
  • Arnco Corp. v. British Telecom (D. Del.); Sherman & Reilly v. British Telecom (E. D. Tenn.); British Telecom v. SBC Communications et al (D. Del.): Successfully concluded the multi-district litigations relating to fiber optics technology in settlement. 
  • Semitool v. Ebara (D. Ore.): Won counts of motion for summary judgment of non-infringement and successfully concluded the matter relating to semiconductor manufacturing with settlement. 

In addition to these litigation representations, Hiro has represented many clients in contentious licensing and other business dispute negotiations.

Awards

  • Chambers Global: The World’s Leading Lawyers for Business (2012-2014)
  • Chambers Asia: Asia's Leading Lawyers for Business (2010-2014)
  • IAM Patent Litigation 250-The World’s Leading Patent Litigators (2011)
  • IAM Licensing 250 - The World's Leading Patent and Technology Licensing Lawyers (2010-2012)
  • IAM Patent 1000 - The World’s Leading Patent Practitioners (2012-2013)
  • Asia Pacific Legal 500, Intellectual Property (2013)
  • Asia IP, IP Experts (2013)
  • Benchmark Litigation (Asia-Pacific), Local Disputes Star (2013)

Insights

Publications

  • Co-author, “2013 Year-in-Review: Important U.S. Patent Law Developments,” Bloomberg BNA’s Patent, Trademark & Copyright Journal (January 31, 2014)
  • “Standard Essential Patents, FRAND Licensing,” co-author, Intellectual Property Law Annual Report 2013, December 2013, Nippon Hyoron Sha
  • “The Latest Developments in the U.S. Patent Law,” co-author, Intellectual Property Law Annual Report 2013, December 2013, Nippon Hyoron Sha
  • "International Commerce and Licenses: Taking Care not to Give it all Away,” Intellectual Asset Management Magazine, Life Sciences 250
  • 2012 Year-in-Review: Important U.S. Patent Law Developments,” Bloomberg BNA’s Patent, Trademark & Copyright Journal (January 4, 2013)
  • “Joint and Divided Infringement: Navigating the Changing Landscape For Multiple Actors and Distributed Systems Under U.S. Patent Law,” Intellectual Property Management, Japan Intellectual Property Association, Vol. 62, No.3 (No. 735), March 2012
  • "2011 Year-In-Review—Important U.S. Patent Law Developments," IP Bloomberg Law Report, January 2012
  • “Important Developments in U.S. Patent Law in 2010,” Bloomberg Law Reports-Intellectual Property, Vol. 5, No. 3, January 12, 2011
  • “Important Developments in U.S. Patent Law in 2010,” Journal of the Japanese Group., A.I.P.P.I., Vol. 53, No. 3 2011
  • "Important Developments in U.S. Patent Law in 2009," Journal of the Japanese Group, A.I.P.P.I., Vol. 55, No. 4, April 2010
  • "Important Developments in U.S. Patent Law in 2009," Bloomberg Law Reports - Intellectual Property, Vol. 4, No. 7, February 2010
  • "International Commerce and Licenses: Taking Care not to Give it all Away,” Intellectual Asset Management Magazine, Life Sciences 250, 2010
  • Review of U.S. Patent Litigation and Dispute Resolution Strategy in view of changing U.S. Patent Law, New Business Law, Separate Vol. 123, Annual IP Special Volume, November 2008
  • "Asian Clients Need a Helping Hand in E-Discovery," The National Law Journal, September 1, 2008
  • "Litigating Non-Obviousness After KSR v. Teleflex," Intellectual Asset Management Magazine, Patents in The USA 2008, September 2008

Presentations

  • “Educating and Training Intellectual Property Professionals Who Can Perform on the Global Stage,” Panelist, International Intellectual Property Forum 2014, National Center for Industrial Property Information and Training (January 2014)
  • “How Companies Can Use Antitrust to Fight Back Against Patent Aggression,” moderator/co-speaker, Ropes & Gray Tokyo Morning Briefing (November 2013)
  • “Patent Troll Disputes and FRAND Licensing” Speaker, Japan External Trade Organization Seminar (Los Angeles, California)(November 2013)
  • “Today’s IP Challenges and Possible Answers,” Speaker, Japan Institute of Intellectual Property (Tokyo, Japan)(November 2013)
  • “Determining a Reasonable Royalty,” co-speaker, Ropes & Gray Tokyo Morning Briefing (October 2013)
  • “e-Discovery Toolkit: Cost-Saving Opportunities and Trends,” moderator/co-speaker, Ropes & Gray Tokyo Morning Briefing (September 2013)
  • “Introduction to U.S. Patent Law,” lecturer for Technology Advanced Study of Comparative Intellectual Property Law, Summer Intensive Course at Osaka Institute of Technology (September 2013)
  • “IP Law III: IP R&D Strategies,” lecturer at University of St. Gallen (August 2013)
  • “The EU Unitary Patent System,” moderator/co-speaker, Ropes & Gray Tokyo Morning Briefing (July 2013)
  • “Legal and Ethical Requirements of Making a FRAND Declaration under Contract and Antitrust Law,” and “Negotiating Settlement of Int'l Litigation,” Speaker, CASRIP Summer Institute (July 2013)
  • “Privacy and Data Security Compliance: It’s a Supply Chain Issue Too,” moderator/co-speaker, Ropes & Gray Tokyo Morning Briefing (June 2013)
  • “Session 2: IP Exhaustion in Information Age Part I: Patent Exhaustion,” panelist at Proper Extent of Patent and Copyright Protection in the Information Age, 2013 CASRIP China Conference Series, UW School of Law – Beijing Conference (May 2013)
  • “The Mobile Patent Wars - FRAND Term Licensing,” co-speaker, Ropes & Gray Tokyo Morning Briefing (May 2013)
  • “Challenging Issued Patents at the USPTO After the America Invents Act,” co-speaker at AIA Olympus (May 2013)
  • “US Technology Licensing Essentials” and “US Technology Licensing Advance Topic”, speaker at Advanced Intellectual Property Management For Legal Professionals, NSTDA Academy (May 2013)
  • “Patent Exhaustion,” speaker at the 2013 CASRIP China Conference: Proper Extent of Patent and Copyright Protection in the Information Age, CASRIP/ University of Washington School of Law (May 2013)
  • “Development in the U.S. Antitrust and FCPA Enforcement Trends,” moderator/co-speaker, Ropes & Gray Tokyo Morning Briefing (April 2013)
  • “From the IP Front Line: Developments All General Counsel Should Know,” speaker for a JICN Seminar (April 2013)
  • “Stem Cells: Perspectives on Intellectual Property and Regulation,” moderator/co-speaker, Ropes & Gray Tokyo Morning Briefing (February 2013)
  • “Introduction to U.S. Patent Litigation,” speaker at Invention Promotion (2013)
  • “Year 2012 in Review: Developments in US Patent Litigation,” co-speaker, Ropes & Gray Tokyo Morning Briefing (January 2013)
  • “Intervening Rights” co-speaker, Ropes & Gray Tokyo Morning Briefing (November 2012)
  • “Evolving Licensing Models,” speaker for Tokyo Medical Dental University Program (October 2012)
  • “Divided Infringement, Joinder and Transfer, and Post-Issuance Challenge Mechanisms,” moderator/co-speaker, Ropes & Gray Tokyo Morning Briefing (September 2012)
  • “Biosimilars in the United States: The Emerging Regulatory Framework”, Biosimilars Seminar (September 2012)
  • “Introduction to U.S. Patent Law,” lecturer at the Osaka Institute of Technology IP Graduate School Summer Course (August 2012) 
  • “IP R&D Strategies,” lecturer at Waseda University and St. Gallen IBL Program (August 2012) 
  • “Negotiating Global Licensing Terms and Royalties: Impact of Cross-Border Infringement,” co-speaker/panelist at High Technology Protection Summit, University of Washington School of Law (Seattle, Washington)(July 2012) 
  • “Trends in Japanese Companies’ global Patent Strategy,” panelist at the Osaka Institute of Technology Global Patent Enforcement Strategy Seminar (July 2012)
  • “Navigating the Chinese Patent Litigation Minefield,” moderator/co-speaker, Ropes & Gray Tokyo Morning Briefing (June 2012)
  • “Strategic Use of Reexamination and Post-Grant PTO Challenges Under the America Invents Act of 2011,” speaker at the Waseda Law Conference hosted by Waseda University Law School (June 2012) 
  • “Patent Pools and Standard-Setting,” speaker at the 2012 CASRIP China Conference: IP Protection in the Information Age, CASRIP/Renmin University of China (June 2012) 
  • Eolas Technologies, Inc. v. Adobe Systems, Inc. et al. – At Trial Against an Aggressive Patent Troll,” co-speaker, Ropes & Gray Tokyo Morning Briefing (May 2012) 
  • “Developments in U.S. Criminal Antitrust Enforcement – Recent Cartel Cases and Advice for Avoiding Liability,” moderator/co-speaker, Ropes & Gray Tokyo Morning Briefing (April 2012)
  • “An Overview of Patents and Trademarks and Cross Border Investment Strategies in Today’s Environment,” speaker for a JICN Seminar (April 2012) 
  • “Hot Topics in Life Sciences and Health Care Cross-border M&A,” moderator at Life Science Seminar (April 2012) 
  • “Data Security Breaches: Understanding the Danger and Mitigating the Legal Risks,” co-speaker, Ropes & Gray Tokyo Morning Briefing (March 2012) 
  • “Proposed Model Order on E-Discovery in Patent Litigation,” moderator/co-speaker, Ropes & Gray Tokyo Morning Briefing (February 2012)
  • “2011 Year Review: Developments in U.S. Patent Litigation,” co-speaker, Ropes & Gray Tokyo Morning Briefing (January 2012) 
  • “U.S. Patent Law Reform: Part2 - The America Invents Act of 2011 and Its Impact on Protecting Inventions in the U.S.,” co-speaker, Ropes & Gray Tokyo Morning Briefing (December 2011) 
  • “Strategic Procurement, Acquisition and Use of Patents for Life Sciences Businesses” lecturer at Tokyo Medical Dental University (November 2011) 
  • “U.S. Patent Law Reform: Part1 – The America Invents Act of 2011 and Its Impact on U.S. Patent Litigation,” co-speaker, Ropes & Gray Tokyo Morning Briefing (November 2011) 
  • “Hot Topics and Legal Strategies for Life Sciences Companies,” co-speaker, Ropes & Gray Tokyo Morning Briefing (October 2011) 
  • “Freeing the West Memphis Three: Freeing Innocent Death Row Inmates,” co-speaker, Ropes & Gray Tokyo Morning Briefing (October 2011) 
  • “Knowing the Other Side:  Non Practicing Entities, Intellectual Ventures, Acacia and Beyond,” co-speaker, Ropes & Gray Tokyo Morning Briefing (September 2011) 
  • “Recent Developments in US Patent Litigation” speaker at AIPPI Seminar  (August 2011) 
  • Summer IP Lecture Series at Osaka Institute of Technology (Osaka, Japan)(August 2011) 
  • “Front Line of ANDA Litigations, Reverse Payment Settlements, and Relevant Antitrust Issues”, co-speaker/panelist at High Technology Protection Summit, University of Washington School of Law (July 2011) 
  • “Multi-Defendant Patent Litigation: Front Line Strategies For Success,” co-speaker, Ropes & Gray Tokyo Morning Briefing (August 2011) 
  • Life Sciences Seminar, “ANDA and Medical Device Patent Litigation – Trend & Strategy for Winning Damages Case,” speaker and moderator (June 2011) 
  • “M&A Nuts and Bolts,” moderator/co-speaker, Ropes & Gray Tokyo Morning Briefing (June 2011)
  • Therasense v. Becton Dickinson: The Decision, The Dissent, And The Future of Inequitable Conduct,” co-speaker, Ropes & Gray Tokyo Morning Briefing (June 2011) 
  • “Due Diligence of Life Sciences Companies in M&A and Securities Transactions,” moderator/co-speaker, Ropes & Gray Tokyo Morning Briefing (May 2011)
  • “Race to the End: U.S. ITC Section 337 Litigation Strategies and Defenses,” co-speaker, Ropes & Gray Tokyo Morning Briefing (May 2011) 
  • TEEMA Seminar, Seminar in Hsinchu Science Park, Taiwan (April 2011) 
  • “Buying Distressed Assets in U.S. Bankruptcy Cases,” moderator/co-speaker, Ropes & Gray Tokyo Morning Briefing (March 2011)
  • “Litigation Roundup: An Overview of Recent Developments in Key U.S. Litigation Venues,” co-speaker, Ropes & Gray Tokyo Morning Briefing (March 2011) 
  • “2010 Year in Review: Developments in U.S. Patent Litigation,” co-speaker, Ropes & Gray Tokyo Morning Briefing (January 2011) 
  • “Of Corruption and Cartels: Cutting Edge Developments in the U.S. Enforcement Arena,” co-speaker, Ropes & Gray Tokyo Morning Briefing (December 2010) 
  • “Managing Shareholder Lawsuits in U.S. M&A Transactions,” moderator/co-speaker, Ropes & Gray Tokyo Morning Briefing (November 2010)
  • “U.S. International Trade Commission Section 337 Practice,” co-speaker, Ropes & Gray Tokyo Morning Briefing (November 2010) 
  • “Patent Reexaminations in Infringement Disputes,” co-speaker, Ropes & Gray Tokyo Morning Briefing (September 2010) 
  • “R&D and IP Strategy of Japanese Businesses,” lecturer at Waseda University and St. Gallen IBL Program (August 2010) 
  • “Swinging Standard for Inequitable Conduct Defense,” panelist at High Technology Protection Summit, University of Washington Law School (Seattle, Washington)(July 2010) 
  • “Developments at the Antitrust and Intellectual Property Crossroads,” speaker and moderator at International Business Law Conference (Tokyo, Japan)(July 2010) 
  • “Method Patents in the United States—Why the Supreme Court's Bilski Decision Matters,” co-speaker, Ropes & Gray Tokyo Morning Briefing – Special Update Briefing (July 2010) 
  • “The U.S. Opens the Door to Follow-on Biologic Products: Understanding the Benefits and Challenges of the Biosimilars Act,” moderator/co-speaker, Ropes & Gray Tokyo Morning Briefing (July 2010)
  • “The Latest in the ITC Section 337 Litigation Practice,” LESJ Kansai Seminar (Osaka, Japan)(June 2010) 
  • “Art of Advocacy in Patent Jury Trial,” co-speaker, Ropes & Gray Tokyo Morning Briefing (June 2010) 
  • “Government Review of Strategic Transactions,” moderator/co-speaker, Ropes & Gray Tokyo Morning Briefing (May 2010)
  • “Update on Developments at the Antitrust/Intellectual Property Crossroads in the U.S.,” co-speaker, Ropes & Gray Tokyo Morning Briefing (April 2010) 
  • “E-Discovery Case Study: What Actually Happens In Court?” Ropes & Gray co-sponsored Seminar (Tokyo, Japan)(April 2010) 
  • “Fundamentals of U.S. Law for Understanding U.S. Patent and Trademark Prosecution,” JPO (INPIT) sponsored IP &e-Learning webinar session (October 2010) 
  • “U.S. Cross Border MA Securities Regulations,” moderator/co-speaker, Ropes & Gray Tokyo Morning Briefing (March 2010)
  • “Effective Defense Strategy Against Patent Trolls,” Ropes & Gray co-sponsored IP Seminar (Tokyo, Japan)(March 2010) 
  • “Recent Development in U.S. Patent Litigation,” co-speaker, Ropes & Gray Tokyo Morning Briefing (February 2010) 
  • Summer IP Lecture Series at Osaka Institute of Technology (Osaka, Japan)(August 2009) 
  • High Technology Protection Summit, University of Washington Law School (Seattle, Washington)(July 2009) 
  • Ropes & Gray co-sponsored IP Seminars (Tokyo/Osaka, Japan)(June 2009) 
  • Intellectual Property High Court of Japan, Intellectual Property Study Group (Tokyo, Japan)(December 2008) 
  • Yokokawa Memorial Lecture Series on IP Law, Waseda University School of Law (Tokyo, Japan)(June 2008) 
  • IP Lecture Series at Osaka Institute of Technology (Osaka, Japan)(June 2008) 
  • Intellectual Property Discussion Group of Private Practitioners and Judges (Tokyo, Japan)(March 2008)