HIBIYA PARK LAW OFFICES

Partner

Hiroshi Kamiyama

◆ Practice Areas

◆ Education

1981Graduated from Kyoto University, Faculty of Science
1998Passed the National Bar Exam
2000Admitted as Attorney at Law and Patent Attorney

◆ Experience

1981Joined Fujitsu Ltd. and worked on projects designing versatile Operating Systems for mainframes
1990Joined Nomura Research Institute Ltd. and engaged in business consultation on strategic use of information
2003 to dateHibiya Park Law Offices
2006 thru 2009Director, Japan Patent Attorneys Association
2004 thru 2010, 2012 thru 2014Visiting professor, Kanazawa Institute of Technology
2014 thru 2015Vice President, Japan Patent Attorneys Association

◆ Professional Affiliations

  • 2002 to dateMember, Exploratory Committee, International Association for the Production of Intellectual Property of Japan (AIPPI Japan)
  • 2004Member, Research Committee regarding trend of obtaining patents of software-related technologies, SOFTIC
  • 2005 thru 2006Member, Research and Study Committee regarding software-related patents, Software Information Center (SOFTIC)
  • 2006Member, Research and Study Committee regarding Latest Trend of OSS (Open Source Software) Licenses, Software Information Center (SOFTIC)
  • 2006Chairman, the Task Force Committee of Trade Practice and Agreement for Improvement of the Reliability of Information Systems, METI
  • 2006 thru 2009Member, GPL Best Practice Working Group, Information-technology Promotion Agency, JAPAN (IPA)
  • 2007 thru 2008Member, the Committee of prevention of illegal importation under the Unfair Competition Prevention Law, METI
  • 2007Member, Central Research Institute of Intellectual Property, Japan Patent Attorneys Association
  • 2008Member, Expert committee on Intellectual Property System in Digital-Internet Age, established under Strategic Council on Intellectual Property
  • 2009Member, Consortium of Improvement of agreement for development of Information Systems, Software Information Center (SOFTIC)
  • 2009Chairman, Committee of Subcontracting Transactions in Information Service Industry, METI
  • 2010Member, Committee of Internal Arrangements and Procedures for Firms to Comply Act against Delay in Payment of Subcontract Proceeds, Etc. to Subcontractors, Small and Medium Enterprise Agency of Japanese Government
  • 2010 thru 2012Member, Legal Working Group on OSS (Open Source Software) Licenses, Information-technology Promotion Agency (IPA)
  • 2010 thru 2011Member, Policy Council of Policy on Small and Medium – sized Enterprises, METI
  • 2012 thru 2013Member, Committee based on Customs Law, Ministry of Finance Customs and Tariff Bureau
  • 2014Member, Expert committee on the use of cloud computing in financial firms, The Center for Financial Industry Information Systems (FISC)
  • 2015to date Member, the Committee on the use of outsourcing in financial firms, The Center for Financial Industry Information Systems (FISC)
  • 2015thru 2016 Member, the Committee of Litigation System for Intellectual Property,Intellectual Property Strategy Headquarters of Japanese Government
  • 2017Member, Committee based on Customs Law, Ministry of Finance Customs and Tariff Bureau
  • 2017An Independent Director of Yume no Machi Souzou Iinkai Co., Ltd.
  • 2018Member, Expert committee on Open API in financial firms, The Center for Financial Industry Information Systems (FISC)

◆ Other Memberships

(Japanese) NPO法人エンターテインメント・ロイヤーズ・ネットワーク 監事

◆ Writings

  • “Basic Knowledge for Compliance with OSS License” INTELLECTUAL PROPERTY MANAGEMENT Vol.68 No.5 No.809(2018)
  • “Textbook of IT agreement” Published by NikkeiBP, Inc.(2017)
  • “Practice of Preparation for Shareholders’ Meeting for Year 2015 and Anticipated Questions and Planed Answers”
    Published by Chuokeizai-sha, Inc. (2015) (Co-author)
  • “Don’t be deceived by cleverly drafted IT agreements”
    Published by Nikkei BP, Inc. (2013)
  • “Study of RokurakuⅡ case (Supreme Court, Judgment of January 20,2011)・Maneki TV case (Supreme Court, Judgment of January 18,2011)”
    Published by Shojihomu (NBL No.947, 2011)
  • “Senmonsosho Taikei, vol.2 Litigation of Intellectual Property Right Infringement”
    Published by Seirinshoin Co., Ltd. (2010) (Co-author)
  • “Practice of Drafting Agreements on System Development”
    Published by Chuokeizai-sha, Inc. (Business Homu Vol.8 No.7, 2008 thru Vol.9 No.1, 2009)
  • “Guidebook of Intellectual Property Terms”
    Published by Seibunsha Co., Ltd. Publishers (2006) (Co-author)
  • “New Corporate Law Q&A” Published by Seibunsha Co., Ltd. Publishers (2005) (Co-author)
  • “Situations of court precedents in Japan and the United States regarding Exhaustion Doctrine and Repair/Reproduction argument”
    Published by Japan Patent Attorneys Association (Patent June, 2005) (Co-author)
  • “Litigations about employee’s inventions – what we should learn through a series of decisions of the court?”
    Published by Zeimukeiri Kyokai Co., Ltd. (Right Now! June, 2004)
  • “More complicated contents business – various rights sought through cases”
    Published by Zeimukeiri Kyokai Co., Ltd. (Right Now! October, 2003)
  • “Handbook for management and strategies of intellectual property” Published by Softbank Publishing Co., Ltd. (2002) (Co-author)

◆ Seminars/Lectures

Worked as speaker for seminars and lectures at the request of clients, publishing companies, and seminar-hosting companies 4 to 6 times a year for the past 15 years.

・Lecturer for numerous legal seminars on software and system development, such as the “IT Legal Affairs Leadership Development Course” held by Nikkei Business Publications.

・Instructor for IT Practical Research Workshop at the Legal Training and Research Institute of Japan.

・Lecturer for study groups and seminars on open source software (OSS).

・Speaker for lectures and legal affairs seminars on intellectual property held at the Japan Chamber of Commerce and Industry, Itojuku among other forums.

・Training instructor at the Japan Patent Attorneys Association.

◆ Representative Engagements

Disputes on System Development Contracts

  • Counsel to SURUGA bank in a lawsuit where SURUGA bank claimed compensation for damages against IBM Japan, won the decision (7.4 billion yen at district court level, 4.2 billion yen at high court level).
  • Counsel to a user (a manufacturer) in a lawsuit claiming compensation for damages (3.9 billion yen) against a vendor.
  • Counsel to a user (a service provider) in civil mediation claiming compensation for damages (1.1 billion yen) against a vendor.
  • Counsel to a vendor in a lawsuit where a user (a manufacturer) claimed compensation for damages (1.2 billion) against the vendor.

Disputes Regarding Intellectual Property Rights

  • Counsel to an individual inventor in a lawsuit against Apple for patent infringement by iPod, won the decision ordering compensation of 340 million yen.
  • Counsel to Money Forward in a patent infringement lawsuit filed by the FinTech company freee against Money Forward, won the decision.
  • Counsel to a pachinko slot machine manufacturer in a patent infringement lawsuit filed by the manufacturer against another manufacturer, won a decision ordering compensation of 7.4 billion yen. The compensation amount is the highest among patent infringement lawsuits in Japan.
  • Counsel to a recycled manufacturer in a lawsuit disputing whether its recycled ink cartridge for ink jet printer infringes patents.
  • Counsel to Microsoft in a lawsuit disputing a case of patent infringement on the Microsoft word processing program Word, won the decision.
  • Counsel to a PC manufacturer in a lawsuit disputing a case of patent infringement on Microsoft Windows OS, won the decision.
  • Counsel to a US semiconductor manufacturer in a patent infringement lawsuit filed by that U.S. semiconductor manufacturer against a Japanese semiconductor manufacturer.
  • Counsel to Microsoft in a trial case disputing whether a Windows license agreement violated the Antimonopoly Act.
  • Counsel to a plaintiff in a lawsuit disputing whether comparison advertising of chewing gum possessing cavity prevention effects violated the Unfair Competition Prevention Act, won a decision that comparison advertising is illegal.

International Arbitration

  • Counsel to a Japanese company (a semiconductor-related manufacturer) in an international arbitration case where a U.S. company claimed approximately 20 billion yen as compensation for damages against the Japanese company.
  • Counsel to a Taiwanese company (an automobile-related manufacturer) in an international arbitration case where a Japanese company claimed 1.2 billion yen as compensation for damages against the Taiwanese company.