Asialaw Profiles
The Guide to the legal markets of the Asia-Pacific

Abe Ikubo & Katayama ascends to the top tier of the IP rankings this year as a result of market feedback. The firm is recognised as having a “very strong” litigation practice, and senior partner Eiji Katayama is described by peers as a “superstar” in the IP area. Notable matters the team is handling include representing a client in complex, high profile litigation before the IP Court and helping another client to appeal to the Japan Patent Office for its patent applications. The firm’s patent prosecution practice gained two new clients in the pharmaceutical industry in the past year.

Nakamura & Partners has a first rate reputation in both contentious and prosecution work and the IP powerhouse continues to lead the market. Kazuhiko Yoshida is a market luminary and is admired by clients for his knowledge and understanding of legal issues across a wide range of technical fields. Fujifilm, Mazda Motor, Sony and TDK are just some of the firm’s key clients. One noteworthy case in 2010 saw the firm successfully defend Aeon Retail in an unfair competition case before the Osaka District Court in which the client was accused of employing the same layout of babies’ and children’s wear as a specialty chain selling kids’ products.

Anderson Mori & Tomotsune is often regarded as having one of the strongest IP practices among its big four counterparts. This is thanks to its prowess in dispute resolution, a thorough understanding of technology issues, and an experienced prosecution team. Described by clients as “very responsive”, Yasufumi Shiroyama and Yoshikazu Iwase are noted for their expertise in patent litigation. Recently, the team has advised on a technology transfer negotiation between a US semiconductor supplier and some Japanese electronics manufacturers. It has also represented a Japanese electronics manufacturer in an employee invention dispute.

Mori Hamada & Matsumoto is building up a niche advising on copyright infringement litigation, having been involved in some of the landmark copyright cases of recent years. In March 2011, the Mori Hamada team defended Sony in a copyright and trade secret infringement claim against a Taiwanese company that involved copyright issues for drawings, product shapes and business secrets over USB memory products. Bellsystem 24 and Nippon Television Network are some of the other clients that have sought advice from the firm on contentious matters in the past year.

Nishimura & Asahi moves up to the second tier of the IP rankings this year to join some of its big four counterparts. Peers note the skills of Yoshiyuki Miyashita, while Eiichi Fukushima and Masakazu Iwakura are two other star IP practitioners at the firm. Takeshi Nomura’s arrival as counsel in the past year has added more strength to the team. The group has represented clients on various matters before courts and the administrative board. Of note was its involvement in unfair competition litigation between listed companies in the gaming sector. Iwakura led a team advising GREE in its lawsuit against DeNA and ORSO over game software for cellular phones. This suit was the first time that such software had been reviewed from an IP point of view by a court in Japan.

The IP team of TMI Associates was bolstered by the joining of Tomokatsu Tsukahara, an ex-chief judge of Japan’s IP High Court, in September 2010. The team is well regarded for its contentious IP work and has always been a stable presence in the market. A number of litigation matters have been keeping the firm busy, such as defending the largest global contact lens manufacturer in a patent infringement case, and advising premium brands against counterfeiting and other trade mark infringements. Key partners Yoshiyuki Inaba, Mitsuko Muyagawa and Akihiko Eguchi are all recommended by peers and clients.

Working for such prestigious clients as Microsoft, Coca-Cola, Daewoo Electric and Gap, Yuasa & Hara has an all round IP practice that is equally strong on prosecution and contentious matters. Partner Kozo Yabe is the key person behind some of the firm’s high profile cases, while Shinjiro Ono and Yukio Yagyu drive the growth of the patent and trade mark practices respectively. The firm is also known for its expertise in industries such as pharmaceutical, semiconductor and telecommunications.

Handling complex patent and copyright disputes and advising on commercial IP matters are just two fo the strengths of Nagashima Ohno & Tsunematsu’s IP practice. Partners Kazuo Ohtake and Takahiro Yamauchi are recommended for their litigation expertise. Meanwhile, the team has been advising a semiconductor company in a patent litigation matter, as well as advising an automobile company on an employee invention compensation case. The firm’s strength in corporate transactions also means much IP due diligence work for the IP group.

In addition to advising high profile local clients, Atsumi & Sakai is also very popular with overseas clients and often features on multi-jurisdictional matters. The firm has an active presence in the technology sector and has been working on many internet-related cases in the past year. Of note was its role in providing advice on the introduction of a new deep-packet inspection system that can be used to monitor data on the internet for infringement.

City-Yuwa Partners

Noted for its forte on patent litigation, the Hideo Ozaki-led IP team at City-Yuwa Partners recently defended telco KDDI on a patent infringement case that was initiated by a consortium of small mobile telco operators. The firm houses experienced practitioners in the fields of trade mark, unfair competition and copyright, and is regularly involved in IP related licensing agreements and technology transfer agreements.