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Morrison & Foerster

World IP Survey Coverage: Print-friendly version

Editorial coverage

United States

Morrison & Foerster rose to the second tier in this year's patent contentious rankings for its expertise in ITC, biotechnology and computer matters. "I think the firm is really quite good," said a peer. "They work hard." Its sizeable IP group offers a robust counselling and prosecution practice in addition to litigation, setting it apart from rival general practice firms. Legal commentators characterised the firm's bench as including strong lawyers who tackle issues as a team. "I look for top-notch lawyers to pay attention to my case, not just one person in IP," said a peer. "Morrison & Foerster has people you go to."

The firm regularly appears before the ITC, and partner G Brian Busey serves as the 2010 president of the ITC Trial Lawyers Association. In two decisions by the ITC in 2009, the firm successfully represented Sharp in a dispute with Samsung involving patents used in LCD products. The parties later reached a global settlement to resolve their patent disputes. In a matter in which electronics and copyright law intersect, the firm represents Novell in a dispute involving the rights to the operating system UNIX, claimed by The SCO Group to have been transferred in a sale to SCO's predecessor. Novell has requested the Supreme Court to interpret the Copyright Act's transfer requirements.


Japan

Morrison & Foerster boasts one of the largest and most comprehensive IP practices of any general practice law firm. The team has a wealth of experience in both patent and trade mark litigation, and unlike some of its competitors that operate satellite offices in Tokyo, runs active projects in its Japan office on behalf of Japanese multinationals.

"The attorneys are very experienced in general and we enjoy that many of these attorneys are located right in Tokyo," says one foreign client. While Morrison & Foerster concentrates in three technology areas, including chemistry and life sciences, its IP practice shines when dealing with patents in electronics, semiconductors and those relating to the internet. Examples of this include technology transactions involved with Elpida Memory's acquisition of Spansion's NAND flash memory development facility and associated IP licences, as well as On Semiconductor's $600 million acquisition of Sanyo Semiconductor and its patent portfolio, advised by practitioners Stuart Beraha and Masato Hayakawa.

Although these semiconductor transactions were significant, the team considers its involvement in Anvik v Nikon, in which Nikon Corporation sought counsel against 10 patent infringement cases, the most challenging recent case. The dispute saw the plaintiff seek $50 billion in damages based on all LCD products fabricated using Nikon Corporation's scanning lithography machines and presents interesting questions about the extraterritorial reach of US patent laws. Partners Robert Hollingshead, Max Olson and Taro Isshiki were also recommended by clients in the electronics industry for serving the likes of Fujitsu, TDK, FujiFilm, Hitachi and Toshiba. "Hollingshead is a very diligent IP attorney," admits an in-house counsel.


Firm contact

This firm does not have a profile in the 2011 Handbook