Naoki Yoshida

Partner

Naoki Yoshida, managing partner of Finnegan’s Tokyo, Japan office, handles a broad range of intellectual property matters including litigation, patent portfolio management, intellectual property due diligence, client counseling, licensing and negotiations, patent prosecution, and pre-litigation strategic counseling.  He has represented both domestic and foreign clients in numerous patent infringement actions before U.S. district courts and the U.S. International Trade Commission (ITC).  In particular, he has extensive experience in all types of discovery, depositions, motion practice, and day-to-day case management.   

Mr. Yoshida counsels clients on agreements related to intellectual property.  For example, he represented a major Japanese semiconductor company in a licensing negotiation.  Also, he has evaluated corporate patent portfolios and has conducted intellectual property due diligence for both large and small companies in connection with mergers and acquisitions. 

Additionally, he drafts opinions relating to patent infringement, validity, and enforceability; advises clients on intellectual property strategies; and has drafted and prosecuted numerous patent applications in the fields of electrical and mechanical arts.  His practice also includes reissue and reexamination proceedings before the U.S. Patent and Trademark Office.

Mr. Yoshida has significant experience in global intellectual property issues involving multinational corporations.  With his fluency in Japanese and appreciation for cultural differences, Mr. Yoshida frequently counsels clients on unique intellectual property issues arising out of negotiations and disputes involving Japanese companies.  He has also participated in proceedings in Japanese courts in connection with U.S. patent infringement litigation.

Mr. Yoshida is a frequent lecturer on U.S. patent law for universities and professional organizations, including the Licensing Executives Society, the Japan Patent Attorneys Association, and the International Association for the Protection of Intellectual Property (AIPPI).

Highlights

• Certain Variable Speed Wind Turbines and Components, 337-TA-641 (ITC). Represented Mitsubishi Heavy Industries in ITC investigation based on claims of patent infringement against MHI's wind turbines and obtained a favorable trial judgment.
• Certain Dynamic Random Access Memory Semiconductors, Including Memory Modules, 337-TA-707 (ITC). Represented Elpida in ITC and related district court actions related to semiconductor memories.
• Certain Multimedia Display and Navigation Systems, 337-TA-694 (ITC). Represented Pioneer in ITC and related district court litigation against a major manufacturer of GPS navigation devices and obtained a favorable trial judgment.
• Represented a major Japanese automobile company in U.S. district court litigation and obtained a favorable summary judgment decision.
• Represented a Fortune 500 company in a patent infringement suit involving HVAC technology and obtained a favorable trial judgment.
• Handled intellectual property due diligence for one of the world's leading manufacturers of mechanical equipment.
• Assisted one of the largest Japanese chemical companies in formulating intellectual property strategies for its various technologies.
• Managed a patent portfolio of a major consumer product company in Japan.
• Guest lecturer at Waseda University Law School on U.S. IP litigation.
• Adjunct faculty at Osaka Institute of Technology Graduate School on U.S. legal system.

Professional Recognition

• Recognized by The Legal 500 Asia Pacific–Japan as a leading intellectual property lawyer, 2011-2013.
• Recognized as a leader in the field of intellectual property law by Chambers Asia: Asia's Leading Lawyers for Business, 2010-2011.
• Listed in Intellectual Asset Management (IAM) magazine as one of the world's 250 leading patent and technology licensing lawyers, 2010; and recommended for licensing, 2012.

Professional Activities

• American Bar Association
• American Intellectual Property Law Association
• Intellectual Property Owners Association
• Licensing Executives Society
• International Association for the Protection of Intellectual Property (AIPPI) Japan

Select Publications

• Coauthor. “Prior User Rights in Japan: They Can’t Take that Away from Me,” Financier Worldwide Global Reference Guide 2012: Intellectual Property, Sept. 2012.
• Coauthor. “The Fastest Routes for Green Patents,” Managing Intellectual Property, Aug. 2012.
• "KSR and Obviousness after KSR," AIPPI, Journal of the Japanese Group, Aug. 2008.
• "Permanent Injunction in U.S. Patent Litigation: eBay v. MercExchange," AIPPI, Journal of the Japanese Group, Dec. 2006.
• Coauthor. "Global IP Litigation," Seirinshoin, Dec. 2006.