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Morrison & Foerster is the only global firm in Tokyo with a team of attorneys dedicated to the unique issues presented by complex technology transfers, including in the context of license and settlement agreements, joint development agreements, technology joint ventures and M&A.

The group, which includes three partners and a supporting team of associates, handles transactions in all technology areas, including semiconductors, computer hardware (including servers, pc, laptops, peripheral devices and semiconductors), computer software, biotechnology, the internet, and new media, offering a combination of strong cross-border transactional and litigation experience, and in-depth knowledge of applicable intellectual property and regulatory issues.

The group also includes Japan, New York, and California-admitted partners, and many of the group’s members are bilingual.

Some of the matters we have recently handled in specific technology areas are as follows:

Semiconductors 

Morrison & Foerster has one of the most active semiconductor practices of any law firm, with extensive expertise in all aspects of the semiconductor and semiconductor equipment industries. 

Examples of recent semiconductor transactions on which the Tokyo office has advised include:  

• Sumitomo Heavy Industries/Axcelis.  We are representing Sumitomo Heavy Industries, Ltd., together with TPG, to acquire semiconductor equipment maker Axcelis Technologies for $640 million.
  
  
• Toshiba/Xilinx.  We represented Toshiba in the negotiation of its strategic foundry relationship with Xilinx under which Toshiba will produce programmable semiconductor products for Xilinx.
  
  
• Toshiba/Micron Technology.  We represented Toshiba in its $288 million acquisition of certain of Micron’s semiconductor patents and of a license under all patents owned or previously owned by Lexar Media.
  
  
• Toshiba/M-Systems.  We represented Toshiba in its NAND flash memory strategic alliance with M-Systems, involving licensing and supply arrangements and the development and manufacture of DiskOnChip and DiskOnKey products.
  
  
• Toshiba/Mitsubishi Electric.  We represented Toshiba and Mitsubishi Electric in the international aspects of Toshiba’s transfer of its power semiconductor business to Mitsubishi.
  
  
• Toshiba/Matsushita.  We represented Toshiba in the formation of its $1.3 billion joint venture with Matsushita to design, develop and manufacture next generation flat panel displays in Singapore, including representing the joint venture in securing all government approvals for its manufacturing facilities.
  
  
• Fujitsu/AMD.  We represented Fujitsu in the restructuring and expansion of its flash memory joint venture with AMD, resulting in the creation of the world’s second largest stand-alone flash company with 7000 employees and annual sales on formation of $3 billion.
  
  
• Fujitsu/Spansion.  We represented Fujitsu in its $150 million purchase from Spansion Limited, of two semiconductor fabrication facilities located in Aizu-Wakamatsu, Japan, and related equipment lease, supply and employee secondment and transfer arrangements.
  
  
• Fujitsu/Sun Microsystems.  We represented Fujitsu in its multi-billion dollar strategic alliance with Sun to combine the parties’ Unix server development and distribution businesses, including agreements for the development and manufacture of server CPUs, ASICs, and boards and the development, manufacture and sale of servers.
  
  
• Fujitsu/AU Optronics.  We represented Fujitsu in its LCD alliance with NYSE listed AU Optronics, including AUO’s purchase of a 20% interest in Fujitsu Display Technologies.
  
  
• Hitachi/IBM.  We represented Hitachi in its $2 billion acquisition of IBM’s hard disk drive business (with over 20,000 employees in 8 countries), including a series of agreements with IBM for the supply of families of chips for the hard drive business.
  
  
• Sony/IBM.  We represented Sony Computer Entertainment in the Sony group’s $1 billion investment in semiconductor fabrication lines to manufacture chips using 65nm process on 300mm wafers, including its $325 million agreement with IBM for the manufacture of next generation PlayStation 3 chips.
  
  
• Chartered Semiconductor/IBM.  We represented Chartered Semiconductor in the establishment of a joint venture with IBM to develop 90nm and 65nm processes for foundry chip production on 300mm silicon wafers, to allocate manufacturing capacity between the two foundries, and to manufacture chips.
  
  
• Dainippon Screen/Applied Materials.  We represented Dainippon Screen, a top 10 supplier of semiconductor fabrication equipment, in the creation of a joint venture company with Applied Materials.  The new company, called “SOKUDO Co., Ltd.”, combined Dainippon Screen’s existing business in coater/developer track equipment with Applied Materials’ contribution of technology, key development employees and US$150 million.
  
  
• Dainippon Screen/KLA-Tencor.  We represented Dainippon Screen in its joint venture with KLA-Tencor Corporation, a U.S. semiconductor equipment manufacturer based in California, for the development of deposition equipment.
  
  
• Advanced Semiconductor Engineering/NEC Electronics.  We represented Taiwan’s ASE in its acquisition of NECEL's semiconductor packaging and testing facilities in Takahata, Japan.
  
  
• NEC Electronics/Link-A-Media Devices Corporation.  We represented NEC Electronics in its preferred financing of Link-A-Media Devices, a technology company based in Santa Clara, California.
  
  
• Intel Capital/Elpida.  We represented Intel Capital in its $150 million investment in Elpida, a joint venture between Hitachi and NEC which is the world’s fifth largest DRAM chip manufacturer.

The Tokyo Technology Transactions group’s work for these and other clients has included structuring, negotiating and documenting semiconductor patent and other intellectual property license agreements, process technology joint development and/or license agreements, core and other design joint development and/or license agreements, foundry and other manufacturing agreements, and a wide variety of strategic alliances and acquisitions.

Computer Hardware and Software

Morrison & Foerster has extensive experience in representing clients in complex computer hardware and software transactions.  From the founding of the office in 1987, many of our key clients have been the leading Japanese computer and computer peripherals companies as well as  software developers and distributors.  We have been particularly active in deals involving computers and computer peripherals, LCD’s, plasma displays, hard disk devices, and other storage technologies.

Examples of recent computer hardware-related transactions on which the Firm’s Tokyo office has advised include:  

• Hitachi’s acquisition of IBM’s Hard Disk Drive business. We represented Hitachi in its $2 billion acquisition of IBM’s hard disk drive business which had more than 17,000 people and manufacturing, research & development, and distribution facilities in over two dozen countries around the world.  As part of this transaction, our Technology Transactions group negotiated agreements for long-term supply of key hard disk semiconductor components by IBM, the provision of R&D services, the purchase by Hitachi of over 1,000 IBM patents, and licenses for substantial non-transferred technology.
  
  
• Fujitsu’s strategic alliance with Cisco Systems.  We represented Fujitsu in its strategic alliance with Cisco Systems for the joint development of operating system software for high end routers and the related integration of the parties’ product lines for high end routing and switching products. 
  
  
• Fujitsu’s sale of Fujitsu Hitachi Plasma Display. We represented Fujitsu in connection with its sale to Hitachi of a 30% interest in  Fujitsu Hitachi Plasma Display Limited, a leading manufacturer of plasma display panels, as well as in connection with the transfer of certain PDP patents to Hitachi.
  
  
• Fujitsu’s global alliance with Sun Microsystems.  We represented Fujitsu in the intellectual property aspects of its global strategic alliance with Sun Microsystems, in which the two companies combined their world-wide UNIX server businesses.  In the course of this transaction, our Technology Transactions group negotiated agreements for supply of semiconductors and complete server systems, development of next-generation semiconductor components and servers and the licensing and support of operating system and related software.
  
  
• TDK’s acquisition of Alps HDD Head Business.  We represented TDK in its purchase of Alps’ business for the development, commercialization and manufacture of heads for hard disk drives for $350 million. 
  
  
• TDK’s sale of its Recording Media Business to Imation.  We represented TDK in the sale of its recording media business (including branded tape, DVD, CD and similar products) to Imation for $260 million in Imation shares and cash.
  
  
• TDK’s Acquisition of Amperex Technology Limited. We represented TDK in its acquisition of a Amperex Technology, a China-based manufacturer of lithium batteries used in laptops and other mobile computing devices, for $110 million.
  
  
• Ricoh’s acquisition of Hitachi’s printing business. We represented Ricoh in international aspects of its $600 million acquisition of Hitachi’s printing business, including facilities in the United States, Mexico and Europe.
  
  
• Dai Nippon Printing’s purchase of a majority stake in Pixel Magic. We represented Dai Nippon Printing and Altech ADS in their acquisition of a majority stake in Pixel Magic, a leading integrator of electronic components for digital printing.   
  
  
• Toshiba/Matsushita CRT joint venture. We represented Toshiba in the merger of its cathode-ray tube manufacturing operations with those of Matsushita.  The joint venture company integrated 15,000 employees, and was the world’s third largest manufacturer of TV picture tubes, with annual sales of over $2 billion on formation.
  
  
• Toshiba/Matsushita LCD joint venture. We also represented Toshiba in a series of transactions with Matsushita relating to the companies’ LCD businesses.  In 2001, we represented Toshiba in establishing a $1 billion TFT LCD plant in Singapore, jointly owned by Toshiba and Matsushita (then the largest foreign investment in Singapore to date).  In 2002 and 2003, we represented Toshiba in the formation of a global LCD joint venture with Matsushita integrating all aspects of the companies’ LCD businesses. 

 Examples of recent software-related transactions on which the Firm’s Tokyo office has advised include:

• Yahoo Japan search engine transactions with Google and Overture. We represented Yahoo Japan in its sponsored search transactions with Google and Overture and in a series of other search-related and commercial transactions.
  
  
• Yahoo Japan Co-branded toolbars. We represented Yahoo Japan in drafting and negotiating agreements to develop and license co-branded versions of the Yahoo Japan companion toolbar for distribution with certain Adobe and Macromedia software products.
  
  
• SoftBank acquisition of Betrusted Japan. We represented SOFTBANK BB Corp. in connection with the licensing and distribution aspects of its acquisition of a majority interest in Betrusted Japan Co. Ltd., pursuant to which Betrusted secured the exclusive right to sell Cybertrust electronic certification and public key products in Japan.
  
  
• Kana Software license agreements. We represented Kana Software, the CRM solution provider, in agreements for use of its products in Japan and in Japan-specific distribution and service agreements.
  
  
• The Nikko Securities license agreements. We represented the Nikko Securities and its subsidiary, Financial Network Technologies,  in multiple negotiations to license software used by investment advisors to access and assess financial products over the Internet.
  
  
• ACCA Networks software development agreements. We represented ACCA in its software development outsourcing arrangements with two leading Indian software development companies, Wipro and CTS.
  
  
• Aplix Corporation development and licensing of wireless communications software. We represented Aplix Corporation, a developer of embedded Java software solutions, in multiple licensing negotiations with carriers, handset manufacturers, software developers and other participants in the wireless communications industry.

The Internet

The firm’s Tokyo Office is very active in representing U.S. and Japanese companies in internet-focused transactions.  Some recent transactions that we have handled include:

• Yahoo!’s $1 billion investment in SoftBank’s China affiliates, Alibaba and Tao Bao. We represented SoftBank in connection with Yahoo!’s $1 billion investment in SoftBank’s China affiliates, Alibaba and Tao Bao, including in the negotiation of agreements under which Yahoo! provided Alibaba with exclusive rights to the Yahoo! name and search technologies in China.   
  
  
• Rakuten’s $425 million purchase of Linkshare. Represented Rakuten in its purchase of Linkshare Corporation, a leader in the US online affiliate marketing business, for $425 million.  This was Rakuten’s first major acquisition in the United States.   
  
  
• Rakuten’s investment in Ctrip. We represented Rakuten, Japan’s largest online retailer, in its $110 million investment in NASDAQ-listed Ctrip, China’s largest travel consolidator and online travel site.  We also represented Rakuten in its subsequent sale of this stake for approximately $500 million. Recruit’s $135 million investment in 51job. 
  
  
• Recruit’s investment in 51Job.  We represented Recruit, Japan’s leading human resources company, in its $150 million investment in NASDAQ-listed 51job, China’s leading provider of internet-based employment information services.  
  
  
• Yahoo Japan search engine transactions with Google and Overture. We represented Yahoo Japan in its sponsored search transactions with Google and Overture and in a series of other search-related and commercial transactions.
  
  
• Yahoo Japan Co-branded toolbars. We represented Yahoo Japan in drafting and negotiating agreements to develop and license co-branded versions of the Yahoo Japan companion toolbar for distribution with certain Adobe and Macromedia software products.
  
  
• Softbank’s joint venture with NCsoft. We represented SoftBank in its joint venture with NCsoft to develop and distribute online game services in Japan.
  
  
• Other Softbank internet joint ventures.  Over the last decade, Morrison & Foerster has represented Softbank in the formation, and, in some cases, subsequent restructuring, of joint ventures with numerous leading internet companies, including, among others: 
• • broadcast.com (for digital distribution of films and streaming video);
  • E*Trade (for on-line securities trading);
  • InsWeb (for the establishment of an on-line insurance brokerage marketplace);
  • Lehman Brothers (for the formation of E-Bond - a joint venture providing on-line bond trading capabilities); and
  • Microsoft (for CarPoint, Microsoft’s on-line automobile purchase service); and
  • Morningstar (for on-line ratings of mutual funds).
  • Cognotec and American Express Bank (for on-line foreign exchange trading);
    
    
• Fujitsu’s webTV joint venture with Microsoft. We represented Fujitsu in its joint venture with Microsoft for the formation of WebTV KK, and the establishment of a new on-line network in Japan. The transaction involved the establishment of a broad relationship between Fujitsu and Microsoft, and the negotiation of terms for Fujitsu’s supply of on-line content, ISP and hosting services.

Life Sciences

Morrison & Foerster has one of the world’s premier life science practices combining exceptional expertise and experience.  The Tokyo office represents some of the leading participants in the biotechnology, pharmaceutical, and medical device and equipment industries in Japan.

Examples of recent life sciences transactions on which we have advised in Tokyo include:

Mergers and Acquisitions: 

• Astellas' $535 million acquisition of Agensys.  We represented Astellas Pharma Inc. in its $535 million acquisition of Agensys Inc, a Santa Monica based biotech firm.  The acquisition is Astellas' largest since its formation through the merger of Fujisawa Pharmaceutical and Yamanouchi Pharmaceutical.
  
  
• Fujisawa’s $8 billion merger with Yamanouchi. We represented Fujisawa Pharmaceutical in international aspects of its $8 billion merger with Yamanouchi Pharmaceutical.  The merger integrated Japan’s 3rd and 5th largest pharmaceutical companies to create Astellas Pharma Inc. and represents the largest pharmaceutical merger in Japan to date.
  
  
• Sankyo's $ 7 billion merger with Daiichi.  We represented Sankyo in the international aspects of its multi-billion dollar merger with Daiichi Pharmaceutical. The merger integrated Japan's 3rd and 7th largest pharmaceutical companies to create Daiichi Sankyo, Japan's second largest pharmaceutical company.
  
  
• Omron Healthcare's acquisition of Colin Medical Technology. We are representing Omron Healthcare,  a subsidiary of Omron Corp., in its proposed acquisition of all of the shares of Colin Medical from The Carlyle Group.  Colin Medical is a leading manufacturer of blood pressure and vital signs monitors for medical professionals and related equipment. 
  
  
• Zeon’s sale of Biomune animal vaccine business. We represented Zeon in its sale of its recombinant and conventional animal vaccine U.S. subsidiary, Biomune, to Ceva Santé Animale, an animal health company based in France.
  
  
• Terumo’s acquisition of Mission Medical. We represented Terumo Corporation in its acquisition of the remaining 78% of the outstanding shares of Mission Medical Inc. that Terumo did not already own.

Development, Licensing, and Manufacturing:

• Asahi Kasei collaboration and license agreement. We represented Asahi Kasei in its proposed collaboration and license agreement with respect to proprietary sleep hypnotic compounds.
  
  
• Atrix Laboratories supply agreement with Sosei. We represented Atrix Laboratories in its manufacturing and supply agreement and license agreement with Sosei Co., Ltd.
  
  
• Chiron Corporation research agreement with Taisho. We represented Chiron Corporation in its negotiation of a research agreement with Taisho Pharmaceutical Co., Ltd., for certain drug compounds.
  
  
• Kaken Pharmaceutical global collaboration agreement with Elitra. We represented Kaken Pharmaceutical in its global collaboration agreement with Elitra Pharmaceuticals relating to the research, development and commercialization of small molecule antifungal agents.
  
  
• Kaken Pharmaceutical consulting services agreement with Parexel. We represented Kaken Pharmaceutical in its consulting services agreement with Parexel International relating to marketing authorizations in the European Union and the United States.
  
  
• Kawasumi Laboratories’ development and supply agreement with RadioMed. We represented Kawasumi Laboratories in its prostate brachytherapy development and supply agreement with RadioMed.
  
  
• Kirin’s license agreement with Human Genome Sciences. We represented Kirin Brewery in its license agreement with Human Genome Sciences relating to the development and marketing of an anti-cancer drug in Asia.
  
  
• Kirin’s development and marketing agreement with Corixa. We represented Kirin Brewery in its development and marketing agreement with Corixa Corporation relating to an anti cancer vaccine.
  
  
• Kirin’s clinical research and license agreements with Rockefeller University and others. We represented Kirin Brewery in its clinical research agreement with Rockefeller University and its patent license with Indiana University’s Advanced Research & Technology Institute and the Ludwig Maximilians-Universitat Munich for certain growth factor technologies.
  
  
• Sankyo’s alliance with a major U.S. pharmaceutical company. We represented Sankyo Co. in an alliance with a major U.S. pharmaceutical company, including the spin-off of that company’s R&D subsidiary, an investment by Sankyo in that R&D subsidiary, and a series of R&D agreements between Sankyo and that R&D subsidiary for the development of new diabetes compounds in one of Sankyo’s strategic focus areas.
  
  
• Kowa’s license agreement with BioStratum. We represented Kowa in its license agreement with BioStratum relating to the manufacture and sale of pyridoxamine in Japan, Taiwan, Korea and China.
  
  
• Maruishi Pharmaceuticals’ supply agreements with Baxter and others. We represented Maruishi Pharmaceuticals in global manufacturing, supply and distribution arrangements with regard to Sevoflurane, a leading inhalant anesthesia, including its license agreement with Baxter International, its supply and license agreement with Abbott Laboratories and its license and manufacturing agreement with Central Glass.
  
  
• Mochida Pharmaceutical’s joint development agreement with 3M. We represented Mochida Pharmaceutical in its joint development agreement with 3M relating to certain imiquimod topical formulations for the Japanese market.
  
  
• Fujitsu Kyushu Systems Engineering’s investment in Gene Networks. We represented Fujitsu Kyushu Systems Engineering in its investment in Gene Networks, Inc., which is engaged in gene network analysis and discovery.

Entertainment and Media

Tokyo’s Technology Transactions group also has significant experience in entertainment and media matters.

The group’s clients in these areas include producers, creators, licensors, licensees, and other acquirers of content ranging from major motion picture and animation properties to mobile telephone ringtones, video game developers and distributors, wireless infrastructure providers, and site developers and operators.

Examples of recent entertainment and media-related transactions on which the Firm’s Tokyo office has advised include:

• Sega’s acquisition of KUSH and Sale of Virtual Concepts to Take-Two. We represented Sega in its acquisition of US sports video game developer KUSH, the integration of KUSH with Sega’s Virtual Concepts subsidiary, and the subsequent sale of Virtual Concepts to Take-Two. 
  
  
• Amana’s sale of its US business to Getty Images. We Represented Amana, a leading Japanese online photo stock company, in the sale of its U.S. and European operations to Getty Images.
  
  
• Warner Brothers Online licenses of movie content. We represented Warner Brothers Online in the licensing of certain of its animated characters and movie content for distribution via Japan’s wireless network operators.
  
  
• Index’s Acquisition of Shenzhen Skyinfo Telecom. We represented Index, a leading Jasdaq-listed wireless value-added service provider, in its acquisition of Shenzhen Skyinfo Telecom, China’s 3rd largest mobile content provider.
  
  
• Sega’s entrance into the China online gaming market. We represented Sega in its entrance into the China online gaming market through licenses with CNC Broadband Entertainment for the CTRacer massively multiplayer online (MMO) game and with T2 for the Shenmue Online MMO role-playing game. 
  
  
• Yamaha international licensing of music data. We have represented Yamaha in its international licensing arrangements regarding music data for use as mobile telephone ringtones.
  
  
• Star Channel.  We represented Star Channel, a Japanese joint venture created to serve the Japanese market with film and other programming, in connection in a variety of matters related to licensing of video content.
  
  
• Fuji Television Network. We represented Fuji Television Network, Inc., in numerous matters in the international exploitation of its domestic programming.
  
  
• Kadokawa Shoten Publishing. We represented Kadokawa Shoten Publishing Co., Ltd. in the international exploitation of its authors.

Our IP group is also very active in advising on global and Japan-specific privacy and data security issues, and assists a broad range of US, European and Japanese multinationals on data protection, privacy and similar issues, including on compliance issues resulting from Japan’s planned implementation of new legislation for the protection of personal information next year.