Anri Nakamoto
Partner
Tokyo
Washington, D.C.
Anri Nakamoto leads Orrick's Tokyo intellectual property practice and has been instrumental in achieving major victories for Orrick's clients in the technology sector. As a trilingual (English, Japanese, and Chinese) IP lawyer and a member of Orrick's Intellectual Property Group, which was honored as a finalist for the American Lawyer IP Litigation Department of the Year in 2023, Anri and his team not only know when and how to convince clients to settle early, they are also always ready to take advantage of their distinguished expertise in courtroom practice to win.
Anri brings a combination of unique skills and attributes which, collectively, make him essential to both maintaining and growing Orrick's longstanding successful practice representing Japanese clients in high-value IP litigation matters as well as serving Orrick's clients worldwide who have needs in Japan. Unlike the limited role of most lawyers in Japan who focus on U.S. IP litigation to client relationship management, Anri is adept at both client relationship and substantive litigation work including briefing and taking witness at trials.
In addition to many patent cases at district courts, USITC and before the US Patent and Trademark Office, Anri is also an experienced practitioner in international arbitration practice. Most recently, he played a huge role in a massive international arbitration matter, which resulted in a complete victory for his client.
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Anri’s litigation, licensing and due diligence work in financing and M&A matters covers a broad range of technologies such as printed circuit board, Wi-Fi, x-ray irradiation, semiconductor wafer testing, digital image processing, xerography, artificial intelligence, musical instruments, autonomous driving, Fintech, electric vehicles, auto/video coding, telecommunications, 3D printing, LED, pharmaceuticals and polymer materials. Anri draws on more than a decade of experience as in-house counsel at Japanese global tech companies Panasonic and Hitachi, where he handled important IP licensing and litigation matters.
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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.
- 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.
