Hiroshi Suga

Practice
Hiroshi Suga handles intellectual property rights (IP) related matters, antitrust matters, M&A/corporate matters, corporate disputes, and various legal matters in consultation with a broad range of manufacturers and IT businesses.

In the IP area, he represented the defendant in the “Ichitaro Case”, the first case in which the IP High Court of Japan called its Grand Panel, and won the case. He handles many litigations and domestic and/or international disputes, and advises clients in IP licensing matters, establishment of IP and/or information management of inter-group systems.

In the antitrust law area, he handles civil litigation, responding to JFTC investigations and reporting violations of the Anti-Monopoly Law to the JFTC. He also assists manufacturing clients in creating effective compliance assurance systems.

Mr. Suga represented the defendant in the “Yu Pack” civil litigation case, in which an injunction was sought against the defendant for alleged predatory pricing. He also represented a US-based personal computer manufacturer in a case involving retail price maintenance. Both clients were ultimately able to avoid being subject to a court injunction and/or an official JFTC order. He also represented various Japanese clients in the following cases: auto-parts international cartel cases (in one of which the client successfully had the investigation terminated while submitting documents in accordance with the subpoena); a bid-rigging case in connection with digital radios for fire and rescue services; and a bid rigging case (criminal and administrative case) in connection with Snow-Melting Equipment Engineering Works for Hokuriku Shinkansen (super-express). Other representations in which he was involved include a cartel case involving medicine wholesalers and a merger filing between two listed companies involved in the business of two-wheeled vehicle batteries.

He often advises clients on competition law matters that involve aspects of intellectual property law. He also has wide-ranging experience with litigation and non-contentious case procedures relating to disputes between shareholders.

Examples of his recent transactions/cases include:

• 2020 Sumitomo Bakelite Co., Ltd. - Tender offer for Kawasumi Laboratories, Inc.
  
• 2015 – 2017 Success in Patent Infringement Litigation
  
• 2015 Successful Settlements in Patent Disputes regarding Network Business
  
• 2015 Successful Settlements in Patent Infringement Litigation regarding Message Exchange System
  
• 2014 Successful Settlement of a Patent Infringement Litigation (on behalf of Plaintiff/Patentee)
  
• 2013 Successful defense against a Case of Seeking Revocation of the JPO Decision of dismissal of motion to invalidation of Patent
  
• 2012 Successful defense against a lawsuit concerning patent infringement (Appellate court)
  
• 2011 Winning lawsuit on patent infringement case becomes final and conclusive.
  
• 2011 Successful defense against a lawsuit concerning patent infringement (court of first instance)
  
• 2011 N&A successful in IP High Court cancellation of JPO trial decision (concerning a patent)
  
• 2009 Winning lawsuit at the IP High Court on rescission case of JPO trial decision
  
• 2008 Double transfer of Von Dutch copyrights case
  
• 2005 – 2007 “Peter Rabbit” Copyright Mark Case
  
• 2005 Winning the first Grand Panel Case of the IP High Court (IP High Court, September 30, 2005) ("Ichitaro" Case)
  
• 2004 – 2006 Victory of “Peter Rabbit” Trademark Revocation for Non-Use Cases (Determination of Last-Minutes Use)
  
• 2003 – 2004 Patent Infringement Litigation (the First Case of a Help Function Icon)
  
• 2003 – 2004 Victory in Preliminary Injunction Case for Patent Infringement (Patent regarding a Roman character and Kana conversion)
  
• 2003 – 2004 Victory in Patent Infringement Litigation (Case of Patent regarding Shadowing Font)
  
• 2003 – 2004 Victory in a Preliminary Injunction Case for Patent Infringement (Patent regarding an arrow mark made based on parameters)
  
• 2003 – 2004 Patent Infringement Litigation (the First Case of a Help Function Icon)
  
• 2000 – 2004 “Peter Rabbit” Unfair Competition Injunction Case (Injunction against Registered Trademark)
  

Professional Experience
1993-2007       Asahi Law Offices (International Division).
1998-1999       Masuda & Ejiri (Asahi Law Offices, New York Office)
2001                 Partner, Asahi Law Offices (International Division)
2007-2021       Partner, Nishimura & Asahi Law Offices
2010-2014       Outside Director, JustSystems Corporation
2022-present  DT Legal Japan

Professional Qualification
Admitted in Japan (1993 Dai-ni Tokyo Bar Association)

Education
The University of Tokyo (LL.B., 1991)
The University of Chicago Law School (LL.M., 1998)

Languages
Japanese and English

Awards
The Legal 500 Asia-Pacific 2021
Top attorneys in Japan: Best Lawyers - 2021 edition

Representative Publications
Practical Law Global Guide 2019: IP in business transactions - Japan (Co-author, October 2019)
The Legal 500: Intellectual Property Country Comparative Guide (Japan Chapter) (Co-author, July 2017)
Practical Checkpoints regarding System Development Contract Based on Important Court Decisions (Co-author, Kaisha Homu A2Z Vol. 2016.09)
Model Articles of Incorporation for Good Kaisha (Limited Liability Company) - 8 Types by Purpose of Use
Amendment of Unfair Competition Prevention Act regarding Criminal Penalties for Trade Secret Misappropriation (Jurist No. 1488, January 2016)
Practical Checkpoints regarding Joint R&D Agreement and Confidentiality Agreement (Kaisha Homu A2Z Vol. 2015.08)
Categorization of Court Cases regarding the Unfair Competition Prevention Act - How to Attack Using an Unregistered IP Right - (Co-author, Business Law Journal No. 65, August 2014)
NDA (Confidentiality Agreement) (Business Law Journal No. 58 (January 2013))
Measures against Patent Trolls/NPEs in the US - Influence by Amendment of US Patent Law - (Co-author, Business Houmu, December 2012)
Practical Measures in the Case of a Leak of Proprietary Information (Business Law Journal No. 54, September 2012)
Kaisha-ho (Companies Act) Taikei Vol. 1 (System of Companies Act/Outlines of Companies/Incorporation) (Co-author, Seirin-Shoin 2008)
Intergroup Organizational Restructuring and Handling of Trade Secrets and License Agreements (Co-author, Business Houmu, October 2006)
Change of Anti-Monopoly Law Practice in Business Restructuring and M&A Matters (Business Research, February 2004)
International e-Commerce Business and Legal Issues (Co-author, CCH 2001)
Unknown Pitfalls of US Antitrust Criminal Cases - Plea Bargaining and Amnesty (Leniency) Program (Co-author, International Legal Strategy Vol. 8-3