// // Intellectual Property (Litigation/Enforcement) – Sonderhoff & Einsel Law and Patent Office
  • Intellectual Property (Litigation/Enforcement)

In IP infringement litigation in general and in patent infringement litigation in particular, it is common practice for the defense of invalidity of patent to be submitted and for the defendant to initiate nullification proceedings at the Japan Patent Office at the same time, with the related appeal proceedings held at the IP High Court.  Therefore, a team of specialists who have expertise in not only civil proceedings at the court but also nullification proceedings at the Japan Patent Office and the IP High Court becomes necessary.  Sonderhoff & Einsel has outstanding teams for IP court proceedings consisting of both patent attorneys and attorneys-at-law. We fully leverage the wealth of experience our patent attorneys have in their technical fields and in the IP prosecution process, and the outstanding expertise of attorneys-at-law in IP infringement litigation as well as nullification proceedings.

Team Member

Hidehiko Suzuki

Partner

Registered with Japan Bar as of April 1989

IP Practice Areas

Patent Infringement Litigation, patent nullification proceedings at Japan Patent Office and at the IP High Court

Representative Experience

Chemistry:  The client is a European manufacturer of chemical products (patent owner/plaintiff) and owns its patent concerning dental restoration material.  The client filed a patent infringement litigation against a Japanese dental material manufacturer (defendant).  We also defended the client in the patent invalidation proceedings at Japan Patent Office and its appeal proceedings at the Tokyo High Court filed by the defendant.  JPO and Tokyo High Court upheld the validity of the patent, but the court did not approve the infringement for the reason that one of constituent elements of the patent claim is not satisfied.

Telecommunication:  The client owns patents related to control channel allocation and decoding system in respect of LTE network systems internationally (including Japan). This patent is not regarded as a Standard Essential Patent (SEP), but most telecommunication companies are believed to use the same or similar technology as this patent for their control channel allocation in LTE system.  One telecommunication company challenged the validity of this patent at Japan Patent Office, and we represented the client.  JPO declared invalidity of this patent, and the client appealed to the IP High Court.  The issue is whether the amendment to the claims requested in the patent invalidation proceedings should be allowed.  The IP High Court rejected our appeal.

Machinery:  The client is an affiliate of a Japanese semi-conductor manufacturer (patent owner/plaintiff) and owns its patent concerning machinery used for manufacturing semiconductor chips.  The client filed a patent infringement litigation seeking injunction of sale of machines and compensation for damages against a competing manufacturer (defendant).  There is no room for the defendant to deny that the defendant’s product satisfies all constituent elements of the patent claim, and the issue was whether the patent should be invalidated or not.  The Japan Patent Office dismissed the patent invalidation trial filed by the defendant, and the defendant appealed to the High Court.  In the infringement litigation, differently from the patent invalidation trial, the defendant argued invalidity of the patent for the reason that the patent invention was publicly used.  A settlement agreement wherein the defendant admits validity of the patent and the infringement was reached before the court.

Software: We represented a smartphone application development and distribution company (defendant) in patent infringement litigation and multiple preliminary injunction proceedings filed by a Korean company (patent owner/plaintiff) based upon its smartphone software-related three patents. We also represented the same company in patent invalidation proceedings at the Japan Patent Office which we filed against the patent owner. The court delivered a verdict of non-infringement for one petition of preliminary injunction for the reason of invalidity of the patent due to breach of requirements for amendment to the claim after registration of the patent.  The plaintiff withdrew all such preliminary petitions.  The settlement for the patent infringement litigation was made in front of the court upon the condition that, in exchange of withdrawing the invalidation proceedings, the patent owner admitted no infringement of their patent in-issue in such proceedings.

Cosmetics:  This is a case following the case mentioned below as “Unfair Competition” case.  The Japanese individual (patent owner/plaintiff) filed a patent infringement litigation against our client, an affiliate of the European cosmetic company (defendant), based upon its patent concerning a lipstick container.  Our client filed the patent invalidation proceedings at the Japan Patent Office against the Japanese individual and appealed to the IP High Court, in addition to submitting defense of invalidity of the patent based upon usurped application, as well as defense of the prior use rights.  The court did not approve the invalidity of the patent, but rejected the infringement based upon the prior use rights, and dismissed the plaintiff’s claim.

Unfair Competition; False Statement of Patent Infringement: Under Japanese law, distribution of warning letter of infringement to third parties constitutes an Unfair Competition, if the alleged infringing products is proved not to infringe the patent.  A Japanese small company (defendant), represented by a Japanese individual (patent owner), distributed warning letters to retailers alleging that our client, a European cosmetic company (plaintiff), infringed the patent owned by the patent owner concerning a lipstick container, and visited some retailers by threatening them with criminal penalty under the Patent Law.  Our client filed a litigation at a District Court and the IP High Court seeking declaratory judgement of non-infringement of patent, injunction of false statements of infringement and compensation for damages pursuant to the Unfair Competition Prevention Law, as well as patent nullification proceedings at Japan Patent Office and the IP High Court against the defendant.  The court did not approve the invalidity of the patent, but declared the non-infringement of the defendant’s patent based upon the prior use rights of our client, and ordered injunction of false statements and the payment of compensation for damages pursuant to the Unfair Competition Prevention Law.

Doctrine of Equivalent and Abuse of Patent Right:  The client is the supplier of roof plates, which is the defendant in patent infringement litigation concerning the roofing structure.  The client denied the literal infringement, but the plaintiff argued the application of the Doctrine of Equivalent.  The client also submitted a defense of abuse of patent right based upon apparent invalidity of the patent (this case is after “Kilby” case Supreme Court judgement, but before insertion of Article 104-3 of the Patent Law).  The court declared the apparent invalidity of the patent, as well as denial of application of Doctrine of Equivalent, and dismissed the plaintiff’s claim.

Employee’s Invention: The client is an affiliate of a Japanese semi-conductor manufacturer.  A former employee of the client filed a lawsuit seeking payment of “reasonable consideration” for transfer of employee’s invention to the client pursuant to Article 35.3 of the Patent Law (before amendment of 2004).  The issue was the contribution ratio of the plaintiff.  The court admitted only about 5% of the amount claimed by the plaintiff.

Legal Writing; Lectures; Seminars

2006 – 2009 Supreme Court, Legal Training and Research Institute of Japan Professor (Civil Procedures)

1993 – 1996 Supreme Court, Legal Training and Research Institute of Japan, Assistant Professor (Civil Procedures)

Shogo Matsunaga

Partner

Representative Experience

Legal Writing; Lectures; Seminars

Kengo Sakai

Registered with Japan Bar as of April 2011

IP Practice Areas

Patent Infringement Litigation, Patent Nullification Proceedings at the Japan Patent Office and the IP High Court, Employee Invention-related Disputes

Representative Experience

  • Represented a Korean smartphone app development and distribution company (defendant) in patent infringement litigation and multiple preliminary injunction proceedings filed by a Korean company (patent owner/plaintiff) based upon its smartphone software-related patents, as well as serving as a representative in patent nullification proceedings at the Japan Patent Office against the Korean company (the court delivered a verdict of non-infringement for one petition and the plaintiff withdrew all the petitions).
  • Represented a European cosmetics company (plaintiff) in litigation seeking a declaratory judgment of non-infringement of patent, an injunction of false statements of injunction, and compensation for damages. Also represented the cosmetics company in patent nullification proceedings at the Japan Patent Office and the IP High Court against a small Japanese company (patent holder/defendant) who alleged that the European cosmetic company was infringing upon its cosmetics container patent (the court did not recognize the invalidity of the patent, but declared non-infringement, and ordered the payment of compensation for damages).

 

Legal Writing; Lectures; Seminars

“New Employee Invention Regulation in Japan after 2016 Amendments” (Newsletter August of Preu Bohlig & Partner) February 2017

“License Agreements with U.S. Companies: Provisions Which Japanese Companies Should Carefully Consider – With a Focus on Provisions Regarding Infringement and Intellectual Property under Japanese and U.S. Law.” (the Japan Pharmaceutical Industry Legal Affairs Association’s Study Group on International Issues) December 2017

“Patent Infringement Litigation in Japan“ (Japanese-German Business Association, “Intellectual Property in Japan”) October 2017

“Patent Infringement Litigation in Japan” (Seminar with Preu Bohlig & Partner, “Current Development in Intellectual Property in Japan and Germany”) October 2017

Yasuyo Kimura

Counsel

Registered with Japan Bar as of 2003

Areas of Intellectual Property Practice

Infringement lawsuits (trademarks, unfair competition) invalidation trial procedures/trial decision revocation actions, preparation of licensing contracts and representation during negotiation of same

Representative Experience

  • Responsible for lawsuits on behalf of European and Japanese companies calling for Japanese firms to stop selling products that copied the forms of products sold by the represented companies based on the Unfair Competition Prevention Act.
  • Was responsible for a lawsuit on behalf of a European company calling for a Japanese firm selling products that were slightly altered versions of the European company’s products to stop selling/destroy said products based on the infringement of copyright law.
  • Represented a European company in procedures involving a Japanese firm that used as the name of its retail establishments an identical or similar trademark as that held by the European firm and instituted a lawsuit based on copyright law and the Unfair Competition Prevention Act calling for the suspension of use of said name.
  • Represented a European company regarding the names of products being considered for sale in Japan in negotiations with a copyright holder who held trademark rights in the same field.
  • Represented a European artist in negotiations with a Japanese firm that sold goods featuring illustrations of the artist’s work, conclusion of a licensing contract (extension) relating to the use of copyrighted material.

Legal Writing; Lectures; Seminars

“Legal Consulting for Trademarks I” (Seirin-shoin, co-author) September 2017

“Introduction to Trademark License Agreements” (Workshop of Japan Patent Attorneys Association, Kanto Branch) 2016

“Overview of Recent IP-related Court Precedents (Trademark Law)” (IP-related Workshop of Japan Bar Association) 2016

Hiroshi Morita

Senior Partner

Registered with Japan Patent Attorneys Association as of 1989

IP Practice Areas

Patent applications, trials and appeals, expert opinions, and litigation in the fields of pharmaceuticals, organic chemistry, pharmaceutical formulations, and biochemistry.

Mr. Morita has extensive IP experience in the life-science field due to his work at a global pharmaceutical company, where he secured exclusivity through the utilization of intellectual property in areas as diverse as worldwide patent filings, prosecutions, litigation, patent evaluation for in-licensing, patent strategies, etc.

Representative Experience

・2007 (Ne) 10034 Patent Infringement Injunction Appeal (September 10, 2007)

・2009 (Gyo-ke) Request for Rescission 10170 (May 10, 2010)

Legal Writing; Lectures; Seminars

“Patent Strategy and the Trend in Developing Technologies for Drug Modalities” (The Technical Information Institute Co., Ltd., pp. 549-555, Co-author: Hiroshi Morita, etc.) May 31, 2019.

“4 Global Business Expansion and IP Management in the Pharmaceutical Industry” (“Institute of Intellectual Property Forum, 2015, Spring, Vol. 101, Special Feature: “Japanese Company Overseas Business Expansion and IP Strategies/ Issues and Responses in IP Negotiations” pp. 4-7, Institute of Intellectual Property) 2015.

“From the Ground Up: The Latest IP Information Related to Pharmaceutical Patents such as the China/Taiwan Patent Linkage System”(Johokiko Co., Ltd) August 2018.

“Employee Inventions in Germany and Japan” (EU-Japan Centre for Industrial Cooperation) 2016.

 

Junichi Maekawa

Partner

IP Practice Areas

Patent nullification proceedings at the Japan Patent Office and litigation rescinding trial decisions at the IP High Court

Representative Experience

  • While working for one of the leading precision machine manufacturers, handled litigation rescinding a trial decision at the IP High Court regarding three of the manufacturer’s patent applications which were nullified in oppositions. Drafted a brief and won a judgment upholding our claim with regard to one of the three cases.
  • Represented a defendant in an invalidation trial regarding a patent held by a molding apparatus manufacturer. Drafted all related documents including the written answer, and won a decision rejecting the demand.
  • Represented a defendant in two invalidation trials concerning patents held by a vehicle equipment manufacturer. Drafted all related documents including the written answer, and won a decision rejecting the demand in both cases.

Rui Ueshima

Partner

Registered as a patent attorney as of April, 2009

IP Practice Areas

Patent Infringement Litigation, patent nullification proceedings at Japan Patent Office and the IP High Court

Representative Experience

  • Provided expertise in a dispute between a European machine part manufacturer (represented by Sonderhoff & Einsel) and a Japanese company (patentee) who claimed that the manufacturer was infringing on patent rights related to a valve structure.
  • Resolved a dispute between a European sporting goods manufacturer (represented by Sonderhoff & Einsel) and a Japanese company (patentee) who claimed that the manufacturer was infringing on patent rights related to the structure of a snowboard binding.
  • Helped resolve a dispute between a European machine parts manufacturer (patentee, represented by Sonderhoff & Einsel) and a European company who claimed that its patent rights related to the structure of a torque converter were invalid.
  • Handled dispute resolution between a European multi-tool manufacturer (patentee, represented by Sonderhoff & Einsel) and a Japanese company who infringed on the patent rights of the manufacturer’s multi-tool structure.

Hideo Nagashima

Partner

Registered as a patent attorney in 2004 

IP Practice Areas

Appeal, Suit against appeal decision

Takuya Kuno

Registered as a patent attorney in 1990

IP Practice Areas

Suits against appeal, trial decisions, patent infringement litigations, license negotiations

Representative Experience

  • Eight suits against appeal/trial decisions, two patent infringement litigations, four license negotiations

Yoshihiro Takahashi

Registered as a patent attorney as of 1998

IP Practice Areas

Patent nullification proceedings at the Japan Patent Office, suits against appeals/trial decisions at the IP High Court and Patent Infringement Litigation

Representative Experience

・represented a European automotive/power tool manufacturer (Patentee) in a provision for patent infringement litigation while assisting in license engagement negotiation. This assistance led to a successful conclusion of a license engagement after convincing a licensee (a Japanese major electronics manufacturer) that it would not prevail in patent infringement litigation.

・represented a European automotive/power tool manufacturer, a European electronics manufacturer, and a Canadian communication equipment developer in several cases of suit regarding appeals/trial decisions at the IP High Court.

Legal Writing; Lectures; Seminars

“Basic knowledge of Intellectual property 1” Textbook for Sangyo nouritsu University correspondence course (Sanno Institute of Management), coauthor, 2006

Saori Maekawa

Registered as a patent attorney as of 2001

Registered as a Qualified IP Litigator in 2006

IP Practice Area

Trademark infringement litigation; trademark oppositions, trials and appeals, unfair competition

Legal Writing; Lectures; Seminars

  • (Publications) Section 11 IT Company Tasks and Trademarks”, (Intellectual Property and the Law: Business Models and Compliance Program Framework, Nikkan Kogyo Shimbun, Co-author: Saori Maekawa), August, 2004
  • (Lectures) “Trademark Inventory” (Japan Trademark Association (JTA)) July 10th, 2019

Akinori Ohta

Registered as a patent attorney as of 2003

IP Practice Areas

Mr. Ohta has extensive IP experience in worldwide patent filing and prosecution, patent searches, providing opinions, and consulting regarding company IP strategy in the field of chemistry. His specialties are chemical engineering, polymer chemistry, organic chemistry, and electrochemistry.

Representative Experience

・Represented a European automotive/power tool manufacturer (Patentee) in a provision for patent infringement litigation while assisting in license engagement negotiation. This assistance led to a successful conclusion of a license engagement after convincing a licensee (a Japanese major electronics manufacturer) that it would not prevail in patent infringement litigation.

・Represented a European automotive/power tool manufacturer, a European electronics manufacturer, and a Canadian communication equipment developer in several cases of suit regarding appeals/trial decisions at the IP High Court.

Reiko Otani

Registered as a patent attorney as of 2010

IP Practice Areas

semiconductors, circuits, information processing and communication devices

Representative Experience

As a patent attorney assisting attorneys-at-law, represented a Korean IT venture company in three provisional dispositions.  These three cases ended due to withdrawal by the obligee.

Represented the same Korean IT venture company (appellee) in a patent infringement litigation as a patent attorney assisting attorneys-at-law.