Overview
Maxwell (Mac) A. Fox focuses his practice on intellectual property infringement litigation, licensing and counseling matters. Based in Tokyo, Japan, Mac is a practicing foreign registered lawyer (Gaiben) advising Japanese organizations 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 represents branded pharmaceutical companies in enforcing their patent rights through ANDA litigation under the Hatch-Waxman Act.
Click here to read Mac’s full biography in Japanese.
One of the few Japanese speaking experienced US litigators, he has experience before the International Trade Commission and Federal Circuit. Mac represents clients in an array of industries, including electronic manufacturers to life sciences. He represents clients in commercial disputes, as well as in litigation related to cartel investigations.
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 also guest lectured as part of an IP law course at Keio University.
While in law school, Mac served as a senior articles editor and executive board member of the Berkeley Journal of International Law. He was also an associate editor for the Berkeley Technology Law Journal.
Results
- Defended Ricoh USA, Inc. in a series of patent infringement cases in the Eastern District of Pennsylvania involving allegations of infringement of 19 separate US patents on technology related to office and production printers*
- Defended NEC Corporation in five separate cases brought by WSOU Investments, LLC in the Western District of Texas, alleging infringement of patents related to networking, software, and wireless communications technologies*
- Represented NEC Corporation in a litigation brought by Far North Patents, LLC in the Eastern District of Texas, in which the plaintiff is accusing NEC’s telecommunications network management systems of infringing ten patents covering an array of networking related technologies*
- Represented NEC Display Solutions (both the Japanese parent and a US subsidiary) against allegations brought by Ultravision Technologies, LLC that certain of NEC Display Solutions’ modular LED display panels and related components infringe two patents allegedly owned by Ultravision*
- Defended Daikin Industries, Ltd. and Daikin America, Inc. in a patent infringement suit brought by Chemours Company FC, LLC in US District Court in Delaware*
- Represented a Japanese electronics manufacturer against allegations by Koninklijke KPN N.V. that certain mobile handsets infringe KPN’s US Patent No. 6,212,662, entitled Method and Devices for the Transmission of Data with Transmission Error Checking*
- Represented a major Japanese electronics manufacturer against allegations by Uniloc USA, Inc. that certain software infringes Uniloc’s US Patent No. 8,571,194, entitled System and Method for Initiating a Conference Call*
- 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 US companies in connection with the effort to obtain US 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 US market*
- Advised a Japanese automobile parts manufacturer in connection with a US 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*
*Matter handled prior to joining McDermott.
Recognitions
Community
- Daini Tokyo Bar Association, member
- American Bar Association, member
- American Intellectual Property Law Association, member
- Tokyo IP American Inn of Court, member
Credentials
Education
University of California, Berkeley, Boalt Hall School of Law, JD, 1998
Dartmouth College, AB, History and Asian Studies, cum laude, 1994
Admissions
Japan (as a Gaikokuho Jimu Bengoshi [licensed foreign law specialist])
California
Courts/Agencies
US Supreme Court
US Court of Appeals for the Federal Circuit
US District Court for the Eastern District of California
US District Court for the Northern District of California
US District Court for the Southern District of California
US District Court for the Central District of California
Languages
English
Japanese
