IP Litigation

IP Litigation

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The IP litigation professionals in our Tokyo office counsel clients faced with complicated cross-border intellectual property disputes, global intellectual property protection and enforcement strategies, litigation matters, contentious licensing negotiations and settlements of IP disputes. Ropes & Gray has handled more than 400 IP lawsuits in the past 10 years worldwide, representing plaintiffs and defendants and staking a claim as one of the most sought after IP litigation firms.

Our IP litigation group has creative solutions for a variety of situations:

  • Third-party IP issues that threaten a business strategy
  • ITC enforcement and defense
  • ANDA and biosimilars challenges
  • Handling and setting up IP licensing programs
  • Handling NPE assertions
  • Freedom-to-operate analyses
  • Strategic IP portfolio development

Our Tokyo attorneys recognize the unique issues faced by our Japanese clients and their executives, scientists and engineers when adapting to U.S.-style litigation. With that in mind, we have special training for witnesses facing deposition and trial and are experienced in conducting extensive juror research. We have more than a dozen Japanese-speaking professionals firmwide with a deep understanding of the Japan’s corporate culture who regularly assist Japanese professionals interface with the U.S. legal system.

Our IP litigation experience for Japanese clients includes:

  • Winning a dismissal in an ITC section 337 investigation based on a U.S. patent infringement complaint filed against our client, flash memory maker Spansion Japan Ltd., by Samsung Electronic Co., Ltd.
  • Managing global litigation, with counsel in Germany and Japan, and structuring a successful global settlement of all pending litigation for Aisin AW in infringement cases in Texas as part of global patent dispute over navigation devices.
  • Helping a Japanese pharmaceutical company develop and execute on an Orange Book and ANDA litigation strategy for one of their key compounds.
  • Winning summary judgment of noninfringement in favor of Sanyo Electric Co., Ltd. and obtaining a ruling that a foreign company selling patented products outside the United States is entitled to claim lost profit damages in the United States.
  • Defending Display Solutions, a Japanese maker of monitors, projectors and other display and imaging devices, against allegations that its products infringe a U.S. patent related to displays used in digital advertising.
  • Securing a favorable settlement for Denso Corp., on a U.S. patent relating to Denso’s auto engine control unit.
  • Defending Kyowa Hakko Kirin, in a multi-party pharmaceutical patent litigation in which an individual inventor alleges that our clients infringe a U.S. patent related to means of identifying biological information. Kyowa Hakko Kirin is a Japanese specialty pharmaceutical company, with cutting-edge biotechnologies centered on antibodies, mainly in the therapeutic areas of oncology, nephrology, and immunology.  We defend our client’s wholly owned U.S. subsidiaries, Kyowa Hakko Kirin America and Kyowa Hakko Kirin Pharma.
  • Securing a favorable settlement for a major, multi-billion dollar Japanese company in a U.S. patent infringement action involving devices that alert a driver of the need for maintenance based on operating time and mileage. Our case analysis and early discussions with plaintiff's counsel helped our client reach a favorable settlement before they were required to file an answer. We also secured early and favorable dismissal of this major Japanese company from a patent infringement action involving a system and method for connecting portable audio players to an automobile sound system.
  • Securing a favorable settlement for Ricoh Americas Corporation, a leading provider of digital office automation equipment and office software solutions in a multi-district litigation relating to halftone printing technology for use in color laser printers and copiers.
  • Defending Ricoh in the ongoing patent infringement litigation Wireless Recognition Technology LLC v. Ricoh Americas et al (E.D. Tex.)
  • Defending Ricoh in the ongoing patent infringement litigation Infinity Computer Products, Inc. v. Ricoh Americas et al (E.D. Penn.)
  • Obtaining an amicable settlement for Mitsumi Electronics Corp., a supplier of computer peripherals in a multi-party patent infringement litigation in the U.S. District Court for the District of Delaware, related to optical disk drives with certain interface technology incorporated.
  • Negotiating a settlement for Hitachi in connection with several patent infringement disputes, including a patent infringement litigation relating to mobile phone technologies.  We also negotiated a significant royalty payment to Hitachi in a cross-licensing matter with a major Asian semiconductor manufacturing company.
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