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David Case

Asiapaclaw > About Us > David Case

David Case is a highly experienced intellectual property, commercial transactions and disputes lawyer. David has spent his entire 20+ year legal career practicing in New York City and Tokyo representing U.S., Japanese and other multinational companies in a wide variety of cross border intellectual property and commercial transactions, mergers and acquisitions, joint ventures, venture capital related investments and commercial disputes. Prior to becoming an attorney, David spent one year on the JET Programme (Chiba) and worked for another four years in sales in the IT industry in Japan . David is now based near Silicon Valley where he grew up. Having spent most of his adult life in Tokyo, David is fluent speaking and reading Japanese and a native English speaker.

INDUSTRY RECOGNITION

David has been ranked as a leading Intellectual Property Attorney, as a leading International Disputes Attorney, and as a leading Foreign Expert in Japan continuously since 2008 to 2019 by leading legal ranking journals such as Chambers Global, Chambers Asia Pacific, Legal 500 Asia Pacific, Intellectual Property Magazine, World IP Review, and Intellectual Asset Management

FIRM EXPERIENCE

Asia Pacific Advisory (d/b/a Asia Pacific Law)
Founder, April 2019 – current

 

Orrick, Herrington & Sutcliffe LLP, California and Tokyo
March 2013 – March 2019; Equity Partner

 

White & Case LLP, New York and Tokyo
October 1998 – March 2013; Equity Partner and Associate
Summer 1997; Summer Associate in New York City

ADMISSIONS

New York Bar (1999 to current)
California Bar (2020 to current)
Washington Bar (2020 to current)
Oregon Bar (2019 – current)

EXPERIENCE

David regularly advises client legal and business teams on legal and commercial issues with respect to all forms of U.S., Japan and cross-border intellectual property, information technology and corporate transactions.  In particular, David regularly advises clients on legal and commercial terms for licensing, acquiring, jointly developing and divesting all forms of intellectual property, including technologies protected by patent, copyright, and trade secret as well as brands, logos and registered trademarks.  Industries include consumer electronics, information technology, software, medical devices, and life sciences.

 

During his career, David has also lead the negotiation of hundreds of corporate transactions including agreements for equity investments, share purchases, convertible notes. SAFEs, KISSs, investor rights, the establishment of virtual and corporate joint ventures, revenue shares, and other similar arrangements.

 

Having worked in and around the IT industry for the last 30 years, David has also lead the negotiation and drafting of hundreds of information technology related transactions, including traditional proprietary and open source software license and development transactions, SaaS platform and cloud services license, e-commerce collaboration and monetization platforms, API and data licenses, IT system development, operation and maintenance service arrangements, machine learning and artificial intelligence software services, natural language processing services, outsourcing and hosting, hardware procurement, IoT, AR/VR, block chain, and high speed frequency trading systems.  While working in New York, David was seconded to Deutsche Bank on two occasions to handle legal negotiations for their IT related licensing, procurement and operations teams.

 

In the context of corporate transactions, David has lead and managed teams of associates and paralegals conducting due diligence, and reviewing, drafting and negotiating transaction agreements for joint venture, supply and M&A transactions.

In corporate risk matters, David has lead teams of associates and paralegals in conducting investigations involving alleged product liability and safety incidents, tax evasion, unauthorized political contributions, sexual harassment, and embezzlement, and in civil litigations, arbitrations and all forms of intellectual property related disputes.

 

David has also actively represented U.S., Japanese and other multinational clients in litigation brought in the U.S. and Japan, including patent, copyright, trade secret misappropriation and trademark litigations, wrongful termination, unfair competition and antimonopoly claims, product liability claims, and foreign corrupt practice matters.

 

David has also represented clients in commercial arbitrations in Japan and has been selected to be an arbitrator in JCAA arbitrations.  In the summer of 2018, David served on the Committee for the Consideration of International Arbitrations with Foreign Counsel organized by the Ministry of Justice (外国法事務弁護士等による国際仲裁代理に関する検討会, http://www.moj.go.jp/housei/gaiben/housei07_00039.html )

ASSOCIATIONS

Japan Society of Northern California

 

Licensing Executive Society (2006 to current)

 

American Chamber of Commerce in Japan (previous Board of Governors (2010-11), Chair of the Intellectual Property Committee (2008-19) and Co-Chair of the Privacy Law Task Force (2004-06)

 

International Association for the Protection of Intellectual Property of Japan (currently serving on the Editorial Committee for the Japanese and English language journals of the Journal of the Japanese Group A.I.P.P.I.) (2003-2019)

 

Associate of the Institute by the Chartered Institute of Arbitrators

EDUCATION

UC Berkeley School of Information, Artificial Intelligence, Certificate Program, 2019

 

Syracuse University College of Law, J.D., 1998, magna cum laude, Order of the Coif

 

St. Mary’s College of California, B.S., Economics, 1990

 

University College London, Economics, 1989

RECOGNITION

  • Chambers Global, Intellectual Property: International, Japan, and Litigation: International, Japan, 2008-2019; “Foreign Expert, USA/Japan, Intellectual Property, 2019
  • Chambers Asia Pacific, Intellectual Property: International, Japan, 2008-2019 and Dispute Resolution: International, Japan, 2008-2019
  • Legal 500 Asia Pacific, Intellectual Property: International, Japan, 2012-2017 and Dispute Resolution: International, Japan 2013-2017
  • Intellectual Property: International, Japan, and Litigation: International, Japan, 2008-2018;
  • Foreign Expert, USA/Japan, Intellectual Property, 2018
  • Included in World IP Review – Leaders List (2016-2019)
  • Intellectual Asset Management, Leading Lawyer for Japan: Foreign, 2015
  • Best Lawyers, Intellectual Property Law, 2019 Edition

Publicly Disclosed Significant M&A Transactional Matters (clients in bold) and Experience

  • Represent major Japanese chemical manufacturer in connection with review and interpretation of multi-decade joint venture and intellectual property license agreements with a U.S. partner.
  • Represent lead undisclosed Japanese venture fund investor in $35 million Series B financing of Frequency Therapeutics (regenerative therapies)(all IP matters)(2018-19)
  • Represent private equity backed Japanese pharma client in the acquisition of intellectual property and commercialization rights from innovative companies based in the U.S. and Israel including Merz Pharma, Alpha Tau, Orgenesis, Vessl, and other public and non-public companies (2016-19)
  • Major Japanese manufacturer’s divesture of its general partnership interest in Integral Accumulator GmbH & Co. KG Freudenberg Sealing Technologies GmbH & Co. KG. (all IP matters) (2018)
  • Represent major Japanese power company in its acquisition of technology rights from Witricity under its patent, trade secret, copyright and trademark right to design and manufacture electric vehicle charging stations.
  • Major Japanese manufacturer’s  design and supply of components to Rolls Royce for use in jet engines.
  • Acquisition of ISOLITE GmbH by Hitachi Chemical for €100m (all IP matters)(2017)
  • Formation of global heating and air conditioning JV between Johnson Controls and Hitachi with $2.8bn in sales, the matter included the transfer of more than 2,000 patents and related technology and 400 trademarks (all IP matters)(2015)
  • Petro Rabigh, $9bn petro-chemical joint venture between Sumitomo Chem and Saudi Aramco (all IP matters)(2008-12)
  • Acquisition of Fisher & Paykel Appliances by Haier for $766 million (all IP matters)(2012)
  • Acquisition of Hitachi 3.5” HDD business by Toshiba (all IP matters)(2012)
  • Acquisition of Sanyo Appliances by Haier (all IP matters)(2010)
  • Acquisition of Abbott rapid diagnostics business by Inverness Medical (all IP matters)(2005)

Publicly Disclosed Significant Commercial and Criminal Litigation Matters (clients in bold)

  • Successfully represented European electric heater manufacturer in wrongful death suit in Japan.  Completely absolved with no liability (2014).
  • Successfully represented foreign manufacturer in alleged trade secret theft and violation of non-compete by senior executive in Japan (Tokyo Dist. Ct, 2013).
  • Successfully represented as co-counsel a team of individuals accused of criminal tax evasion and money laundering in Japan involving winnings from horse racing exceeding USD$100 million.  Completely absolved and no charges brought after one year of interrogation and negotiation.
  • Represented multiple medical device manufacturers in connection with product defect and product safety investigations and regulatory actions (catheter and heart stent, lasik eye procedure) (Japan Consumer. Affairs Min., 2010 – 2014) (Confidential).
  • Served as arbitrator on a three arbitrator tribunal in a commercial arbitration administered by the Japan Commercial Arbitration Association (2015-2017)
  • Represented multiple consumer product manufacturers in connection with product defect and product safety investigations and regulatory actions (lithium batteries, cookware, vacuum cleaners, heaters) (Japan Consumer. Affairs Min., 2006 – 2018) (Confidential).
  • Served as lead counsel in a commercial arbitration administered by the Japan Commercial Arbitration Association (2015-2017) concerning the failure of a manufacturing joint venture and a theft of trade secrets.
  • In Re Vitamins Antitrust Litigation (Takeda, antitrust) (D.C. 2003).

Publicly Disclosed Significant IP Litigation Matters (clients in bold)

  • Intellectual Ventures v. Toyota (and many other defendants) (patent infringement) (DE 2016-18)(I represent NSK, a tier 1 supplier to Toyota.
  • Intellectual Ventures v. Honda (and many other defendants) (patent infringement) (DE 2016-18)(I represent NSK, a tier 1 supplier to Honda.
  • Intellectual Ventures v. Ricoh Corp., (patent infringement) (DE 2013-2016).
  • Multiple patent infringement suits brought by non-practicing entities venued in the US against JVCKenwood (2012 to 2018).
  • Freescale Semiconductor v. Panasonic Corp., JVC Kenwood and Funai (patent infringement)(2008).
  • Successfully represented Louisville Slugger against the Japan Bat Association to defeat a suspension order issued by the JBA to prevent LS from having its bats used at the national “Koshien” tournament (2007).
  • Learning Network Inc v. Discovery Communications  (MD 2001)(trademark litigation).
  • Novo Nordisk A/S v. Becton Dickinson and Eli Lilly, (patent infringement) (SDNY 1999).

PUBLIC SPEAKING

  • Legal Mentor, S6IX Kamiyama Accelerator 2020 (https://www.in-kamiyama.jp/en/diary/31541/)
  • Speaker, “Investing in Regenerative Medicine in Japan” (Total Access Japan, May 2018)
  • “Simulated International Arbitration and Mediation Event” (Co-hosted by Orrick, Ministry of Justice and CIArb, May 2018)
  • Speaker, “Standard-Essential Patent (SEP) and Intellectual Property Related Issues in the Age of IoT (Internet of Things)” (Global Business Knowledge Supply, February 2018)
  • Speaker, “Cryptocurrencies and ICO’s” (Total Access Japan, February 2018)
  • Speaker, “Advanced Licensing Considerations for 2018” (Orrick Library Seminar Series, January 2018)
  • Speaker, “Intellectual Property and Best Practices for IP Protection” (Okinawa Institute of Science and Technology, November 2017)
  • Speaker, “Document Management Seminar: Responding to Intellectual Property Litigation in the Global Era” (Deloitte Financial Advisory Seminar, October 2017)
  • Speaker, “Investment in America: Indiana in the Spotlight” (Cross-border M&A Seminar, October 2017)
  • Speaker, “Fund Manager’s Guide: Investing in the Tech Space” (Orrick Tokyo – Hong Kong Seminar, September 2017)
  • Speaker, “Preparation for the Introduction of Class-Action Litigations in Japan – a US – Japan Comparison” (The Board of Director Training Institute of Japan (BDTI) seminar, January 2017)
  • Speaker, “Intellectual Property and Best Practices for Protection” (Okinawa Institute of Science and Technology, November 2016)
  • Speaker “Corporate Management and Intellectual Property Strategy in the Chemical Sector” (Japan Foods & Biotechnology Intellectual Property Rights Center, October 2016)
  • Speaker, “Artificial Intelligence Developments – Emerging Seattle Innovation Comes to Japan” (Tokyo, July 2016)
  • Speaker, Seattle Innovation Meetup, “Accessing the $100 Billion War Chest: Strategic Partnerships, Investments & M&A with Japanese Companies for U.S. Startups,” Seattle (March, 2016).
  • Speaker, Orrick with Innovation Finders Capital, “Innovation Finding for Japanese Companies,” Osaka (February, 2016).
  • Speaker, Orrick with Innovation Finders Capital, “Innovation Finding for Japanese Corporation,” Tokyo (November, 2015).
  • Speaker, Strategies for Global IP Litigation and Licensing 2015, Tokyo and Osaka (September 15 and 17, 2015).
  • Speaker, Orrick Seminar “M&A Involving Technology Companies in Silicon Valley and Beyond” (September, 2015).
  • Speaker, Global IP & Innovation Summit, Shanghai, “ITC Litigation and Licensing” (September, 2015).
  • Speaker, Orrick’s Trade Secret Seminar Series – Fourth Session, “A Defendant’s Perspective in a Trade Secret Case” (May, 2015).
  • Speaker, Orrick’s Trade Secret Seminar Series – Third Session, “Litigations from the perspective of a plaintiff: issues and strategies” (January, 2015).
  • Speaker, Strategies for Global IP Litigation and Licensing 2014, Osaka and Tokyo (September 10 and 11, 2014).
  • Speaker, “How Cross-Border Patent and Trade Secret Litigation May Affect Chinese Companies” (MIP China International IP Forum, Beijing, June, 2014).
  • Orrick’s Trade Secret Seminar Series – Second Session, “Cross-border Protection of Trade Secrets Involving the U.S., Japan and China” (June 5, 2014).
  • Orrick’s Trade Secret Seminar Series – First Session, “Comparison of Key Aspects of US and Japanese Trade Secret Law and Protection Measures for Both the U.S. and Japan” (March 7, 2014).
  • Speaker, “An Overview of Current Issues Relating to SEPs and FRAND Obligations – Potential Solutions to the Threats of PAEs; Political and Regulatory Efforts by Congress, the FTC, and State Attorneys General,” Seminar hosted by the Institute of Intellectual Property (IIP) (November 6, 2013) (two-hour presentation and Q&A session in Japanese).
  • Speaker, Strategies for Global IP Litigation and Licensing 2013, Osaka and Tokyo (October 23 and October 24, 2013).
  • Speaker, “Patent Trolls: An Outside Counsel View on Efficient and Effective Representation,” Seminar hosted by Temple University, Japan Campus (October 22, 2013).
  • Speaker, “What Japanese Companies Need to Know About the United States’ Attorney-Client Privilege and Work Product Doctrine,” Seminar hosted by UBIC (September 12, 2013).
  • Speaker, “Maintaining IP Freedom,” (ACCJ Entrepreneurs Forum, February 22, 2013).
  • Speaker, “Antitrust Issues in Licensing Intellectual Property,” (IP Licensing Seminar co-organized by Japan In-House Counsel Network (JICN), May 17, 2011).
  • Guest Lecturer, Legal Issues Relating to the Use of Open Source Software, addressed legal and engineering departments of major semiconductor manufacturer, June 2010.
  • Speaker, Current Intellectual Property and Regulatory Issues Involving Collaborative Content Creation conference, (American Chamber of Commerce, September 8, 2008).
  • Guest Lecturer, “Approaches of U.S. and U.K. Companies to Better Protect, Manage and Exploit Their Patents, Trade Secrets and Other Intellectual Property Assets,” (The Waseda University Nano, IT and Bio IP Management and Strategy Lecture Series – Advanced Course for Industry Professionals, February 2007, three-hour presentation and Q&A session in Japanese).
  • Speaker and panelist, “The Overview of Arbitration Law of Japan,” (Asia Pacific Dispute Resolution Summit organized by Asia Law & Practice, June 29, 2006).
  • Speaker and panelist, “The Future of Intellectual Property Oriented Study – Between Engineering and Management Policy” (Waseda University, June 17th and 18th, 2006, presentation and panel discussion in Japanese).
  • Host, American Chamber of Commerce in Japan – Executive Webcast Series 2006-2007, “Law & Policy,” streamed by ITV Japan (6 segments).
  • Keynote Speaker at the seminar, “Distribution of Digital Contents and Its Problems,” co-sponsored by Institute of Intellectual Property and Copyright Research and Information Center, “Licensing Digital Contents to Licensees, Agents and Business Partners in the U.S.” (one-hour presentation in Japanese), October 8, 2004.

BOOKS AND PUBLICATIONS

  • Co-author, “Recent U.S. Federal Court Decisions Involving Standard Essential Patents and Considerations for International ADR – Japan as a Possible ADR Forum for Resolving International SEP Disputes” (JCA Journal 740, February 2019)
  • Quoted in “Ground Zero: Digital Currencies in Asia” (WatersTechnology, November 2017)
  • Co-author, “A Study of Best Practices for Licensing Standard Essential Patents (SEPs) in Anticipation of Patent Dispute in the Internet of Things (IoT)” (JCA Journal, N.723, September 2017)
  • Co-author, “An Overview of Civil Remedies for Protection of Trade Secrets in the U.S.” (A.I.P.P.I. No.9, September 2016)
  • Co-author, “The International Comparative Legal Guide to: Product Liability 2016” (Global Legal Group 14th Edition, May 2016)
  • Co-author, “Investigation/Research of Legal Systems and Practices Regarding Trade Secret and Confidential Information Management – Trade secret and confidential information management by multinationals located in Asia -” (Intellectual Property Management, Vol. 65 No. 10 (No. 778), October 2015)
  • Interview, “Trade Secret Protection by Using Forensics and Lawyers” (Business Law Journal, July 2015)
  • Author, “Recent Legislative and Judicial Measures Aimed at Patent Assertion entities (Patent Trolls) in the U.S.” (Chizaiken Forum Vol. 97, January 2014)
  • Author, US Trademark 100, book published by the Japan Trademark Association, September 2011, English and Japanese, 440 pages (available in book stores and online retailers, including Amazon.co.jp) (a book highlighting the 100 most influential court decisions in U.S. trademark law).
  • Co-author, “Measures Taken against Counterfeit and Pirated Goods at Japanese Customs,” (Apparel, September 2010).
  • Co-author, “Preemptive Strike! Recent Changes in U.S. Case Law Make It Easier for Companies to Use Declaratory Judgment Actions to Increase Their Chances of Successfully Fending off Patent Trolls,” (The Lawyers, October 2008, with William S. Coats).
  • Co-author, “Chapter 2: Licensing,” (Tax Strategies for Intellectual Property, January 2008, with Mika Suzuki).
  • Co-Author, “Japan Product Liability and Consumer Product Safety Laws,” (International Comparative Legal Guide to: Product Liability, 2007, 2008, 2009, 2010 with Yuji Ogiwara).
  • Author, “The Reaction of U.S. Industry to the Employee Invention Remuneration Cases, and Remuneration Policies of Select U.S. Companies and Universities,” (Journal of the Japanese Group A.I.P.P.I, May 2004, Japanese edition, and July 2004, English edition).
  • Author, “Use of Experts In Patent Litigations,” (International Legal Strategy, July 2003).
  • Author, “Companies Face Possible Fair Remuneration Claims From Employee Inventors With Japanese Patents,” (Asian IP, May 2003; and BNA’s World IP Report June 2003).
  • Author, “Common Mistakes Made By Licensors In Administering Click-Wrap Agreements,” (Syracuse University Law And Technology Journal, Spring 2003;The Computer & Internet Lawyer, August 2002; Journal of the Japanese Group A.I.P.P.I, June 25, 2002, Japanese translation; and Intellectual Property Today, October 2002).
  • Co-Author, “Music, The Internet, and the Music Industry,” (Practicing Law Institute, 670 PLI Vol. 1, September 2001, with I. Fred Koenigsberg and Stefan Mentzer).
  • Co-author, “Personal Jurisdiction by Virtue of Establishing a Web site,” (Practicing Law Institute, 489 PLI/Pat 15, September 1997, assisted David Bender in researching and writing article).