Orrick Library Seminar Series: Advanced Licensing Considerations for 2018

Seminar | January.17.2018 | 9:00am - 10:30am (Tokyo Standard Time)

Orrick Tokyo Office オリック東京オフィス


Orrick’s Global Japan Practice is hosting a series of “Orrick Library” seminars to explore legal issues in various fields in Japan as well as the United States, Asia and Europe. The next seminar will be held on Wednesday, January 17 from 9:00 am to 10:30 am.

David Case and Anri Nakamoto will discuss recent developments in US case law decisions affecting licensing and current legal principles applicable to asserting and licensing SEPs. Case and Nakamoto will discuss specific drafting strategies, common drafting mistakes and recent cases that IP and legal departments should be aware of before entering a license negotiation. Points to consider when licensing SEPs will be introduced during this session.

Our 90-minute long seminar will cover the following topics:

  • Recent developments in technology licensing
  • Advanced license agreement drafting considerations
  • Current state of licensing SEPs

There will be time set asides for questions and answers.

Date: January 17 (Wednesday) 9:00 am – 10:30 am (Registration from 8:45 am)
Place: Orrick Tokyo Law Office (Map)
Speakers: David Case, Partner, Tokyo office and Anri Nakamoto、Associate, Tokyo Office
Language: English and Japanese
Fee: No charge
Registration deadline: January 15 (Monday)

* Tokyo Litigation Partners Yoshihiro Takatori and Shinsuke Yakura will join and offer additional perspectives.

* * Orrick, Herrington & Sutcliffe LLP is an accredited MCLE provider in the States of New York and California.  This continuing legal education course has been approved in accordance with the requirements of the Continuing Legal Education Board for a maximum of 1.5 credit hours, of which 1.5 credit hours can be applied toward the areas of professional practice requirement.



オリックのグローバル・ジャパン・プラクティスでは、「Orrick Library」と題し、日本のみならず米国、アジアおよびヨーロッパの各地域における様々な分野の法律問題についてセミナーを開催しております。


今回は標準必須特許(SEP:Standard Essential Patent)の権利行使及びライセンス供与に適用される、現行の法的原則に影響を及ぼす可能性のある米国判例法の最新動向について取り上げます。東京オフィス知的財産グループのディビッド・ケイスおよび中本 安利がライセンス契約のドラフティングにおける具体的な戦略及び、陥りやすい一般的な落とし穴など、ライセンス交渉以前に知財部門および法務部門が考慮すべき事項を近時の判例をもとに紹介いたします。


  • テクノロジー・ライセンスに関する最新動向
  • ライセンス供与契約のドラフティングに関するさらなる考慮事項
  • 標準必須特許のライセンス供与に関する現状


日 時:2018年1月17日(水)9:00 am – 10:30 am (開場および受付開始8:45 am)
会 場:オリック東京法律事務所(アクセス)
講 師:東京オフィス、パートナー、ディビッド・ケイスおよび東京オフィス、アソシエイト、中本 安利
言 語:英語・日本語

※1 東京オフィス訴訟グループの髙取 芳宏弁護士(第一東京弁護士会)及び矢倉 信介弁護士(第一東京弁護士会)が適宜、日本語で対応質問等にお答え致します。

※2 このプログラムは米国ニューヨーク州及びカリフォルニア州のCLEクレジットの対象となっています。


CLE Credits Available: Y



  • Complex Litigation & Dispute Resolution
  • International Arbitration & Dispute Resolution
  • Cybersecurity
  • Antitrust & Competition
  • Mass Torts & Product Liability
  • Intellectual Property
  • Employment Law & Litigation
  • Japan

Yoshihiro Takatori Partner Complex Litigation & Dispute Resolution, International Arbitration & Dispute Resolution


Yoshi Takatori is head partner of the Litigation Group in the Tokyo office. His practice focuses on cross-border dispute resolution including multi-jurisdictional litigation and international arbitration on intellectual property, product liability, anti-trust, FCPA, UKBA, cybersecurity issues, compliance investigation and disputes involving labor laws. Yoshi has been recognized by numerous international publications such as being ranked Band 1 as a Dispute Resolution lawyer in Chambers Asia Pacific.

Yoshi has an active practice advising and counseling multi-national Japanese companies and the Japanese Government, on proactive cybersecurity program development, testing and strategy. He also advises on cybersecurity issues in the context of adversarial proceedings and dispute resolution. He is an Editor and Co-author of “Cyber Security Strategy for Litigation and Compliance,” which is the first book in the Japanese legal marketplace discussing multi-stakeholder risk management strategies relating to external cyber-attacks and insider cyber trade secret theft. He is regularly consulted by leading media outlets, including TV and newspapers, and quoted, in major business publications on cybersecurity issues and insights.

Yoshi's previous experience includes:

  • representing several Japanese companies in the Cresvale Securities (Princeton Bonds) incident, which victimized over 150 Japanese companies, and played a central role in the trial and settlement procedures in Japan and New York;
  • successfully representing clients in a number of IP-related dispute resolutions involving trademark, counterfeit and patent issues in U.S., Asian and EU jurisdictions. In recent years he has gained attention for victories in compensation for damages of trademark infringement in foreign countries through application of foreign law and Japanese law through the Act on General Rules for Application of Laws; and
  • numerous achievements in cross-border enforcement, trial and international arbitration such as obtaining a temporary restraining order in Japanese court based on the certified decision in California that includes JPY400 billion in punitive damages.
In addition, Yoshi is listed as a recommended arbitrator for the Japan Commercial Arbitration Association (JCAA) and listed on SIAC’s Panel of Arbitrators, and serves key positions in the international arbitration field such as being an executive director for the Japan Association of Arbitrators, a fellow (FCAIrb.) and co-convener of the Japan Chapter of the Chartered Institute of Arbitrators (CIArb.).

Prior to joining Orrick, he was chair of the litigation department at the Tokyo office of Paul, Hastings, Janofsky & Walker LLP.


  • Complex Litigation & Dispute Resolution
  • Patents
  • Copyright, Trademark & False Advertising
  • Antitrust & Competition
  • International Arbitration & Dispute Resolution
  • Mass Torts & Product Liability
  • Employment Law & Litigation
  • Japan

Shinsuke Yakura Partner Complex Litigation & Dispute Resolution, Patents


Shinsuke Yakura is a partner in Orrick’s Tokyo office and a member of the Complex Litigation and Dispute Resolution Group. His practice focuses on intellectual property, antitrust, product liability, medical and pharmaceutical disputes, employment law, including labor law related disputes, and other commercial disputes for both domestic and foreign companies.

He actively engages in cross-border litigation and arbitration and draws on his extensive knowledge and experience from the United States, United Kingdom, China and Japan.

Shinsuke has represented companies in patent infringement litigation involving a wide range of technologies related to pharmaceuticals, computer software, electric devices and industrial machinery. He has also handled other IP-related issues such as trademark infringement (including parallel import matters), anti-counterfeiting, copyright and right to publicity. He is a qualified patent attorney (Benrishi) in Japan.

Shinsuke also counsels clients on antitrust and competition matters. He is regularly involved in mergers and acquisitions, licensing and other transactional matters, as well as litigious matters related to antitrust and competition issues.