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Anri Nakamoto

Of Counsel

Tokyo

Anri Nakamoto is an Of Counsel in Orrick's Tokyo office and a member of the Intellectual Property Group.

His practice focuses on representing Japanese companies in patent litigation, trade secret litigation and other intellectual property disputes. Anri also counsels clients on patent portfolio management, intellectual property strategies, adversarial patent licensing negotiations and other IP-related matters in cross-border M&A and strategic business and technology alliances.

Prior to joining Orrick, Anri worked for more than 10 years at Hitachi Ltd., Panasonic Corporation, and a Japanese sovereign patent fund management company where he gained hands-on experience in patent prosecutions, sales and purchase transactions of patent portfolios, adversarial patent licensing negotiations and litigation.

  • Litigation

    • Certain Active Matrix Organic Light-Emitting Diode Display Panels and Modules For Mobile Devices, and Components Thereof, Inv. No. ITC-337-TA-1351 (ITC).  Representing Mianyang BOE Optoelectronics Co., Ltd. in a patent infringement action relating to AMOLED technology against Samsung Display Co. Ltd.
    • Fundamental Innovation Systems International LLC v. Toyota Motor Corporation et al.  Represented Toyota and DENSO in a patent infringement action relating to USB chargers at the Eastern District of Texas.
    • Certain Electronic Devices, Including Streaming Players, Televisions, Set Top Boxes, Remote Controllers, and Components Thereof, Inv. No. ITC-337-TA-1200 (ITC).  Represented Funai Electric Co., Ltd., Funai Corporation, Inc. and Funai (Thailand) Co., Ltd. in a patent infringement action relating to smart TVs against Universal Electronics Inc.
    • Desktop Metal, Inc. v. Markforged, Inc. et al. Represented Desktop Metal in a patent infringement action relating to 3D printing technology at the District Court of Massachusetts.
    • Certain X-Ray Breast Imaging Devices and Components Thereof, Inv. No. 337-TA-1063 (ITC). Represented FUJIFILM in an ITC action filed by Hologic, Inc. alleging infringement of patents covering X-ray breast imaging devices against Hologic, Inc.
    • FUJIFILM Corporation v. Hologic, Inc. Represented FUJIFILM in a patent infringement action against Hologic relating to x-ray breast imaging devices at the United District Court for the District of Delaware.
    • Nitto Denko Corporation v. Hutchinson Technology Inc. Represented Nitto Denko in a patent infringement action relating to flexible printed circuit board used in hard disk drives in the United States District Court for the District of New Jersey.
    • Hutchinson Technology Inc. v. Nitto Denko Corporation et al. Represented Nitto Denko in a patent infringement action relating to flexible printed circuit board used in hard disk drives in the United States District Court for the District of Minnesota.
    Administrative Proceedings
    • Nitto Denko Corp. et al v. Hutchinson Technology Incorporated et al, IPR2018-01300, IPR2018-01301, IPR2018-01302, IPR2018-01303, IPR2018-01304, IPR2018-01305, IPR2018-00954, IPR2018-00955, IPR2018-00956, IPR2018-01042, IPR2018-01043. 
    • Hutchinson Technology Incorporated et al v. Nitto Denko Corporation, IPR2017-01625, IPR2017-01607, IPR2017-01499, IPR2017-01422 IPR2017-01421.

    Licensing & Due Diligence 

    • Advised a Japanese precision device manufacturer on defending against assertions of patents relating to semiconductor manufacturing process by a U.S. based non-practicing entity.
    • Advised a Japanese company on OEM and supply agreement with a Chinese semiconductor manufacturing equipment provider.
    • Advised a Chinese semiconductor company on patent and technology license relating to semiconductor manufacturing process technology.
    • Advised a U.S. company on a joint R&D and patent licensing agreement with a Japanese company relating to agricultural chemicals.
    • Advised a Japanese consumer electronics company on a commercial arbitration relating to a breach of contract for patent assignment covering lighting technology.
    • Advised a Japanese securities trading company on a patent matter relating to Fintech technology.
    • Advised a Japanese start-up company on patent, software technology and joint R&D agreement relating to artificial intelligence in self-driving vehicles.
    • Advised a Japanese semiconductor manufacturer on a patent portfolio and technology licensing of wireless charging system for electric vehicles.
    • Advised a Japanese electronic components manufacturer on patent cross-licensing negotiations and agreement relating to the surface acoustic wave filter technology.
    • Advised a Japanese consumer electronics company on a patent licensing negotiation regarding licensing of audio/video codec related and FRAND encumbered standard essential patents.
    • Advised a Japanese telecommunication equipment provider on a patent license negotiation regarding licensing of 3G/4G telecommunications related and FRAND encumbered standard essential patents.
    • Advised a Chinese consumer electronics and home appliances company on patent due diligence of a Japanese start-up company making smart home appliances.
    • Advised a Japanese chemical company on legal due diligence of a German automotive component manufacturer.
    • Advised a French private equity fund on legal due diligence of a Japanese start-up company making anticancer drug.

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