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Jones Day

World IP Survey Coverage: Print-friendly version

Editorial coverage

Australia

Jones Day jumps into the patent contentious ranking this year owing to the crucial additions of Anthony Muratore and Lisa Taliadoros in early 2010. With two partners and six on the core team, all with science qualifications in biochemistry or chemistry, the group is quickly rising in the ranks to compete against the top firms.

The team has been especially busy with the pharmaceutical, biotech, mining and gaming industries. In a case that will for the first time consider whether genetic materials are patentable subject matter in Australia, Taliadoros is representing Myriad Genetics against Cancer Voices in revocation proceedings over patents for breast cancer genes BRCA-1 and BRCA-2.

Muratore and Taliadoros additionally advised Pfizer against Sigma Pharmaceuticals, Alphapharm and Generic Health in patent infringement and revocation proceedings that involve a patent for a way to treat depression using venlafaxine hydrochloride. The Federal Court ruled that the patent was valid and infringed. Essential to the case was how the doctrine of inherency plays a role in the law of novelty in Australia.

ResMed, Sanofi-Aventis, ALZA Corporation and Transocean Offshore Deepwater Drilling are all instructing the firm in separate Federal Court proceedings.


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China

Jones Day has in the last 12 months lost of-counsel Mark Cohen to Microsoft and widely praised partner Benjamin Bai to Allen & Overy. During his tenure with the US firm, Bai and the Jones Day team went to battle for many multinational entities on patent matters in China and for local companies for litigation in the US. Mike Vella arrived from Morrison & Foerster in August last year to work in the firm's Shanghai office.

The firm is a strong pick for some of the world's leading technology, pharmaceutical and manufacturing companies, such as IBM, Apple, Abbott, Owens Corning, Eastman Chemical, General Motors, Pfizer and GSK. It has been defending Nokia on various occasions over the past six years and it helped the company win a patent infringement case last year.


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Hong Kong

Jones Day remains a steady performer after recruiting the trio of Peggy Cheung, Anita Leung and Li Chiang Ling three years ago, although trade mark specialist Helen Tang left last April to join Wilkinson & Grist as a partner. Nonetheless, the foundation of the Hong Kong office's IP team is still strong – Cheung is dual-qualified as a trade mark attorney and a solicitor, Leung is a copyright expert while Li is well-versed in China IP and pharmaceutical law. The team, in addition, enjoys the support of Jones Day's global network and works closely with the other offices to deliver the best solutions and advice to its clients, which include leading names in the pharmaceutical, technology and electronics industries.


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Japan

Although joining Jones Day short of partner level, associate Hisanori Oguri's arrival earlier this year was welcomed, providing a wealth of local working experience as an in-house patent agent and an attorney at a boutique IP firm. "They provide well reasoned legal opinions and take into account technical trade mark issues as well as real world commercial issues," says a US company. "They put our interests first and deliver high-quality work." Oguri supports partners Nobutoshi Yamanouchi, Scott Jones and of counsel Michiru Takahashi in enforcement and litigation work. Of Takahashi, an in-house patent attorney says: "She is extremely knowledgeable and a very clear communicator – we rely upon her to advise us in very important markets and we feel confident that we are being provided the best possible counsel."

Significant cases the team was involved in include representing Sharp in two ITC investigations against Samsung regarding LCD devices, which settled favourably for the Japanese company, as well as acting for a leading Japanese pharmaceutical company in arbitration proceedings in Paris against a US pharmaceutical company over alleged breach of a licence agreement for selling products in France. In prosecution work, the strength of Jones Day's local trade mark practice led to Sunkist Growers transferring its trade mark portfolio management and enforcement work to the firm from its previous Japanese counsel of 30 years. Moreover, the firm manages the trade mark portfolios of distinguished brands such as Dell, Mag Instruments and Starbucks. "They are responsive, thorough, strategic, practical in the business sense, solution-driven and efficient," summarises a client.


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Taiwan

The continual outstanding performance of Jones Day in patent litigation has nudged the firm up a Tier in the patent contentious ranking this year. "I have worked closely with Jones Day, Taipei and Jones Day, USA on several large patent licensing disputes and litigations over the past five years and have been very happy with their services. In fact, they're my first choice for IP matters," says an in-house counsel.

In a case demonstrating the firm's command of complex litigations, partner Jason Chen and associate Chen Po-Chien led the defence for Taiwan Union Technology Corporation (TUC), a manufacturer of copper clad laminate, to dismiss a preliminary injunction filed by a US company and prevented TUC from being sued for patent infringement. The team is further representing TUC before the IP Court in filing a civil complaint based on unfair competition against the US company.

Regarded by a counterpart as "an excellent lawyer," Jason Chen is a former judge and clients enjoy working with him and the up-and-coming Chen Po-Chien. "I was determined to retain the best lawyers available [for my case]. I had no hesitation in selecting Jones Day and have been very pleased with Jason and Po's performance," says one client.

With a worldwide office network, Jones Day is strong in multi-forum and US patent litigations as well. US-qualified of counsel Chang Ya-Chiao specialises in US patent litigation in the Taipei office and is praised by clients for his language ability and technical knowledge. One highlight matter handled by Chang saw him working with his US colleagues to advise Taiwan Semiconductor Manufacturing Company in a US ITC 337 investigation started by the University of New Mexico.


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Firm contact

This firm does not have a profile in the 2011 Handbook