Tetsuya Yaguchi is a registered patent attorney in Japan who specializes advices on countermeasure against third-party patents, patent exploitation, patent licensing and patent litigation in electronic device industries.
Prior to joining the firm in 2017, he was a Senior Director of Business Development at Acacia Research Group LLC in the business of patent licensing. He was involved in reviewing licensing strategies based on patent portfolios owned by partner companies, negotiations for patent licensing and patent litigations in Japan and the U.S. in technology areas of semiconductors, mobile terminals and related devices. Previously, he worked for the Intellectual Property Division at Hitachi, Ltd. from 1998 to 2004, and at Renesas Electronics Corporation from 2004 to 2014, including 3 years of 2011 to 2014 where he experienced U.S. residential works as a Director of Intellectual Property in Silicon Valley. During the period, he was involved in various projects regarding patent exploitation owned by the company, countermeasures against third-party patents, patent licensing and patent litigations in the semiconductor field.
Through his nearly 20 years of IP works in the companies, he has been involved in more than 20 patent licensing negotiations with Japanese and foreign companies, including technical discussions on patent infringement and validity, and license negotiations for terms and conditions. With respect to patent litigations, he has directed outside Japanese and U.S. attorneys, and also experienced many patent litigations as a corporate patent attorney to collaborate with legal and business departments of the companies. In addition, as a patent attorney himself, he acted as a representative in patent infringement litigation and trials for patent invalidation before the court and patent office.
The practical experiences he has gained in license negotiations and patent litigations are the basis for know-how he brings to his current practice. Currently at Kilpatrick Townsend, he is practically using his experiences to assist clients in the following main works and technical areas.
• Countermeasure against third party's patents:
Prior art search, Invalidity analysis against third party's patents, Clearance works, etc.
• Patent exploitation for client companies:
Infringement analysis against competitors' products, Evaluation for validity of patents and Review of strategy on the premise of patent exploitation, etc.
• Patent litigation:
Prior art search and invalidity analysis against patents in litigation, Correspondence support with U.S. attorneys on behalf of client Japanese companies, etc.
• Patent licensing:
Review of patent licensing strategies, license negotiation on behalf of client companies, etc.
PRIMARY TECHNICAL AREAS
• Semiconductors:
Circuits, Devices, Manufacturing processes, Packaging, Manufacturing equipment, etc.
• Mobile devices and related technologies:
Batteries, LCDs, OLEDs, Contactless charging, Camera modules, Communication technologies, etc.
• Other technology areas:
Medical devices, 3D printers, Power tools, Knitted shoes, Vehicle seats, Air bags, etc.
Tsukuba University, M.E. (1998)
Chiba University, B.E. (1996)
• Countermeasure against third party's patents:
Prior art search, Invalidity analysis against third party's patents, Clearance works, etc.
• Patent exploitation for client companies:
Infringement analysis against competitors' products, Evaluation for validity of patents and Review of strategy on the premise of patent exploitation, etc.
• Patent litigation:
Prior art search and invalidity analysis against patents in litigation, Correspondence support with U.S. attorneys on behalf of client Japanese companies, etc.
• Patent licensing:
Review of patent licensing strategies, license negotiation on behalf of client companies, etc.
PRIMARY TECHNICAL AREAS
• Semiconductors:
Circuits, Devices, Manufacturing processes, Packaging, Manufacturing equipment, etc.
• Mobile devices and related technologies:
Batteries, LCDs, OLEDs, Contactless charging, Camera modules, Communication technologies, etc.
• Other technology areas:
Medical devices, 3D printers, Power tools, Knitted shoes, Vehicle seats, Air bags, etc.
Japan Patent Attorneys Association (1993)
Licensing Executives Society Japan