What has been your most memorable case to date, and why does it stand out?
This was a non-SEP infringement litigation that achieved a global settlement through coordinated actions filed across five jurisdictions. Beyond my role as lead counsel for the Japanese proceedings, I participated in numerous global counsel meetings. Through this experience, I learned the critical importance of guiding clients with unparalleled practical experience and an international perspective when managing cross-border patent disputes.
You are an expert in SEP law. What are your biggest concerns about the SEP/FRAND landscape in Japan right now?
The IP High Court’s Grand Panel decision from a decade ago characterised SEPs as patents subject to abuse, which has hindered the recognition of the strategic importance of SEPs at both the national and corporate levels. Moreover, IoT implementers have yet to embrace the concept that proactively addressing FRAND licensing is crucial for maintaining their competitive edge in core business domains.
Following this, you previously told IAM that it was essential for firm employees to understand the risks associated with this area of patent law. How do you nurture your team’s knowledge on SEP/FRAND issues?
SEP/FRAND issues stand out among IP matters as the field with the most rapidly evolving landscape of global court decisions and national policy developments. These issues are also unique in that they straddle both patent and business domains. Consequently, comprehensive textbooks are scarce, and any such resources would quickly become obsolete. Recognising these distinctive characteristics, I prioritise on-the-job training for developing expertise in this area.
Italy has banned ChatGPT over GDPR compliance concerns. What impact do you expect generative AI to have on trade secrets, particularly in light of the Samsung leak via ChatGPT?
The importance and value of integrating generative AI into business operations, including development activities, continues to grow. It is therefore essential to invest in developing and constantly update explicit confidentiality management policies, while maintaining continuous approaches to employee education and training.
What is the key to a successful licensing strategy, and how do you measure its success?
Among numerous factors, I would emphasise that success ultimately depends on focused engagement with counterparties and taking proactive steps. Even in non-SEP cases, delay tactics rarely produce favourable results. Although there are no objective metrics for measuring the degree of success in outcomes, I believe success fundamentally depends on how effectively we can commit to delivering on the business unit’s expectations.
How have client demands shifted over the course of your career, and how have you adapted your approach to manage these?
Evolving demands have substantially broadened my practice beyond litigation work to encompass the development of clients’ IP strategies, management briefings, government advocacy and lobbying activities. Coming from a business background, I have found this expansion to be quite natural; in fact, it has allowed me to bridge my business and legal experience while creating a distinctive value proposition for my practice.
As a partner at Sonderhoff & Einsel, what three key characteristics make an effective IP leader?
I believe that success requires not only staying current with the rapidly evolving landscape of IP practices both domestically and internationally, but also understanding business fundamentals and making meaningful contributions to the industry by sharing one’s knowledge and insights.
How has your role at the Ministry of Economy, Trade and Industry contributed to your professional development?
Through my involvement in the ministry’s SEP Study Group since 2013 and my work as an appointed government committee member in 2020 and 2022, I have gained numerous learning opportunities. These experiences have enabled me to acquire broad insights into IP strategy.
Last year we saw the first-ever patent pool merger. Do you think there’s room for more consolidation in this field, and if so, why?
Yes, there’s room for more consolidation due to the need for more streamlined, efficient and comprehensive licensing solutions. In particular, as more implementers experience the challenges of bilateral negotiations, there is a growing demand for patent pools that offer enhanced efficiency and broader coverage.
How do you predict the semiconductor industry could evolve over the next 12 months, and what steps are you taking to prepare?
I expect continued expansion of investments in tech sectors that are propelled by AI, electric vehicles and the IoT. Consequently, I anticipate a rise in cross-border joint development and production projects. Based on such insights, our team is preparing to deliver agile strategic guidance on cross-border trade secret protection.