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.
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.
Seminari e convegni
- September 2018
- 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
- September 27, 2017
AIPPI Seminar 2017
- September 2017
- June 2017
- October 2016
- University of California, Berkeley, Boalt Hall School of Law (J.D. 1998; Senior Articles Editor, Executive Board Member, Berkeley Journal of International Law; Associate Editor, Berkeley Technology Law Journal; Recipient, Japan Foundation Fellowship); Dartmouth College (A.B. cum laude 1994)
- Japan (as a Gaikokuho Jimu Bengoshi [licensed foreign law specialist]), California, U.S. Supreme Court, U.S. Court of Appeals for the Federal Circuit, and U.S. District Courts for the Eastern, Northern, Southern, and Central Districts of California
Chambers Asia/Global: "a wonderful lawyer who knows what he's doing and is very committed to what his clients ask of him," "entrepreneurial and a sharp litigator," recognized for his "fluent Japanese, high responsiveness and amazing practicality"
Listed numerous times in:
Best Lawyers in Japan
Managing IP: "IP Star"
IAM Patent 1000 — The World's Leading Patent Practitioners
Legal 500 Asia Pacific