Naoki Yoshida, managing partner of Finnegan's Tokyo 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 represents both domestic and foreign clients in 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's counseling experience includes licensing negotiations, evaluating corporate patent portfolios, and conducting intellectual property due diligence for both large and small companies in connection with mergers and acquisitions. He drafts opinions relating to patent infringement, validity, and enforceability and advises clients on intellectual property strategies. His practice also includes reissue and reexamination proceedings before the U.S. Patent and Trademark Office (USPTO). He has drafted and prosecuted numerous patent applications in the fields of electrical and mechanical arts.
Mr. Yoshida has significant experience in global intellectual property issues involving multinational corporations. With his fluency in Japanese and appreciation for cultural differences, he frequently counsels clients on unique intellectual property issues arising out of negotiations and disputes involving Japanese companies. Mr. Yoshida 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).
- Certain Lithium Metal Oxide Cathode Materials, Lithium-Ion Batteries for Power Tool Products, 337-TA-951 (ITC) and BASF Corp. v. Umicore and Makita (D. Del). Represented Makita in actions related to lithium-ion batteries and obtained a favorable result.
- Certain Variable Speed Wind Turbines, 337-TA-641 (ITC). Represented Mitsubishi Heavy Industries in action 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 district court litigation against a major manufacturer of GPS navigation devices and obtained a favorable trial judgment.
- Represented a major Japanese semiconductor company in a licensing negotiation.
- 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.
- Adjunct faculty at Osaka Institute of Technology Graduate School on U.S. legal system.
- Recognized by Intellectual Asset Management (IAM) magazine as one of the world's 250 leading patent and technology licensing lawyers, 2010; and for patent transactions, 2012-2016.
- Recognized as an "IP Star" in Japan by Managing Intellectual Property, 2014-2016.
- Selected by his peers for inclusion in The Best Lawyers in Japan® for intellectual property law, 2017
- Ranked among top Japan patent lawyers in Legal Media Group's Guide to the World's Leading Patent Law Practitioners since 2015.
- Recognized as one of the "50 Licensing Lawyers You Should Know" by Asia IP, 2015.
- 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.
- 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
- "CMU v. Marvell Case and Patent Infringement Damages Extraterritoriality and a Sale of Infringing Goods," LES Japan News, Dec. 2015.
- "With Long-Awaited Guidance from the United States Patent Office, a Patent Eligibility Saga Continues," Financier Worldwide, Jan. 2015.
- "Patent Eligibility of Software Invention in the United States," Financier Worldwide, Dec. 2013.
- "Present Environment Surrounding Standard-Essential Patents in the United States," Financier Worldwide, Sept. 2013.
- "Uniloc v. Microsoft Decision and Its Effect on Patent Infringement Damage," LES Japan News, Dec. 2013
- 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.