Maxwell A.Fox (Mac)

Partner

Tokyo + 81.3.6800.1876

One of the few Japanese speaking U.S. litigators based in Japan, Mac Fox handles intellectual property infringement litigation, licensing, and counseling matters and represents clients ranging from electronics manufacturers to life sciences companies. He practiced in Los Angeles for nearly a decade before relocating to Tokyo in 2006. Mac has litigated cases throughout the U.S. and has experience before the International Trade Commission and Federal Circuit. He also has represented clients in commercial disputes and has experience in litigation related to cartel investigations.

Mac's recent experience includes defending Japanese companies in multipatent cases involving telecommunications and network security technology, litigations involving technology relating to chipsets used in mobile handsets, and patent infringement litigation involving technology used in LCD and DLP projectors. He also has represented branded pharmaceutical companies in enforcing their patent rights through ANDA litigation under the Hatch-Waxman Act.

Mac frequently speaks on IP law and has lectured to the Japan Patent Attorneys Association and to the Chung Hwa Research Institute in Taiwan. He has guest lectured as part of an IP law course at Keio University. In 2015, he was invited to participate in a mock oral argument before the chief judge of the Federal Circuit Court of Appeals at a symposium in Tokyo celebrating the 10th anniversary of the creation of Japan's Intellectual Property High Court.

He is a member of the Daini Tokyo Bar Association, American Bar Association, and American Intellectual Property Law Association and has served as a master of the Tokyo IP American Inn of Court.

Experience

  • Daikin defends against patent infringement claims involving its fluoropolymer products, obtains inter partes review of asserted patents in USPTO and stay of litigationJones Day is representing Daikin Industries, Ltd. and Daikin America, Inc. in a patent infringement suit brought by Chemours Company FC, LLC in U.S. District Court in Delaware.
  • NEC Display Solutions defends against attempt to bar importation of LED displaysJones Day is defending NEC Display Solutions (both the Japanese parent and a U.S. subsidiary) against allegations brought by Ultravision Technologies, LLC (“Ultravision”) that certain of NEC Display Solutions' modular LED display panels and related components infringe two patents allegedly owned by Ultravision.
  • Major Japanese electronics manufacturer defends patent infringement claims involving mobile handsetsJones Day is defending a Japanese electronics manufacturer against allegations by Koninklijke KPN N.V. that certain mobile handsets infringe KPN's U.S. Patent No. 6,212,662, entitled Method and Devices for the Transmission of Data with Transmission Error Checking.
  • Major Japanese electronics manufacturer defends patent infringement claims involving softwareJones Day is defending a Japanese electronics manufacturer against allegations by Uniloc USA, Inc. that certain software infringes Uniloc's U.S. Patent No. 8,571,194, entitled System and Method for Initiating a Conference Call.
  • The following represents experience acquired prior to joining Jones Day.

    Defended one of the world's largest OEM notebook computer manufacturers in a six-patent dispute. The case settled following more than seven years of litigation in the Northern District of California and appeals before the United States Court of Appeals for the Federal Circuit and the United States Supreme Court, in which the High Court ruled 9-0 in favor of the client on the issue of patent exhaustion.

    Represented a leading telecommunications company in connection with the negotiation of FRAND licenses for 4G/LTE standard essential patents.

    Defended a Japanese electronics company in a multipatent infringement action involving technology on telecommunications network security.

    Advised a Japanese technology company in connection with intellectual property rights issues related to early stage formation of standard setting organizations.

    Defended a Japanese company in litigation in the District of Delaware involving communication management technology.

    Assisted a purchaser of a major electronics company in conducting IP and other due diligence in connection with the acquisition.

    Represented a Japanese innovative pharmaceutical maker as plaintiff in ANDA litigation against several generic manufacturers of drugs for the treatment of benign prostatic hyperplasia.

    Advised a Japanese branded drug maker in connection with ANDA litigation and IPR petitions adverse to multiple generic manufacturers in a case involving a cholesterol drug.

    Advised a pharmaceutical company in connection with pre-ANDA litigation diligence.

    Advised Japanese and U.S. companies in connection with the effort to obtain U.S. regulatory approval and funding for the development and sale of a new antiviral drug.

    Advised a Japanese consumer products company regarding patent clearance issues related to the launch of a new product in the United States market.

    Advised a Japanese automobile parts manufacturer in connection with a U.S. Department of Justice investigation into alleged criminal price-fixing cartel activity.

    Represented an LCD manufacturer in responding to a multinational governmental investigation and related civil litigation involving allegations of cartel activity and other anticompetitive acts.

    Defended a Japanese maker of digital displays in a patent infringement case in the Northern District of Illinois, where the subject technology related to digital signage and advertising.

    Lead counsel in a three-patent infringement action in the Northern District of California involving computer peripheral devices. The case settled after a claim construction ruling in which the court adopted each of the constructions that were advocated at the Markman hearing.

    Represented one of the world's largest manufacturers of liquid crystal display panels as both plaintiff and defendant in multipatent infringement litigation in the Northern and Central Districts of California, the District of New Jersey, and the Eastern District of Texas.

    Represented a video game maker as plaintiff in multipatent infringement litigation against several competitors in the Eastern District of Texas.

    Advised a Japanese athletic equipment company in patent and technology licensing negotiations with an American nonprofit organization.

    Represented a manufacturer of heavy construction equipment in renegotiation of a patent license.

    Speaking Engagements

    • September 2018
      米国連邦刑事企業捜査と社内調査・米国国際貿易委員会(ITC)の訴訟-それらの傾向と対策
    • May 2018 (Day 2)
      ジョーンズ・デイ ライフサイエンスセミナー:医薬品、医療機器、ビッグデータ、IoT -ライフサイエンス企業が2018年に直面している法的問題 -
    • March 2018
      Legal Enhancement Expert Program Academy:米国特許訴訟における最新事情
    • October 2017
      財)知財登録協会:当事者系レビュー
    • September 27, 2017
      AIPPI Seminar 2017
    • September 2017
      AIPPI JAPANセミナー:米国特許訴訟の最新情報
    • June 2017
      ジョーンズ・デイ ライフサイエンスセミナー:ライフサイエンス企業の米国における事業活動に関連する判例法の展開
    • October 2016
      米国特許侵害訴訟セミナー
    We use cookies to deliver our online services. Details of the cookies and other tracking technologies we use and instructions on how to disable them are set out in our Cookies Policy. By using this website you consent to our use of cookies.