David E. Case
Partner
Artificial Intelligence, Corporate and Business Transactions, Emerging Companies and Venture Capital, FinTech, Cryptocurrencies, and Blockchain, Intellectual Property Transactions and Due Diligence, Japan, Life Sciences, Mergers and Acquisitions, Private Equity, Technology
Silicon Valley (Menlo Park)
(408) 512-2229
David E. Case is an experienced intellectual property and venture capital attorney admitted in the States of CA, NY, WA and OR. David represents U.S., Japanese and multinational private and public companies in a wide variety of cross border intellectual property and venture capital transactions, joint ventures, revenue share arrangements, and M&A transactions. He works closely with clients to understand, appreciate and anticipate their business and legal needs to provide practical and efficient solutions.
David has been ranked as a leading attorney in Asia and Japan continuously between 2008 to 2019 by leading legal ranking journals such as Chambers Global, Chambers Asia Pacific, Legal 500 Asia Pacific, Intellectual Property Magazine, World IP Review, and Intellectual Asset Management.
Prior to joining Rimon, David was an equity partner at international law firms White & Case LLP and Orrick LLP practicing in New York City, Tokyo, Japan and Silicon Valley.
David lived 22 years in Tokyo and is fluent speaking and reading Japanese. As a result, he deeply understands Japanese business practices, and combines his legal expertise with an understanding of cultural differences between the West and Japan.
SELECTED EXPERIENCE
Intellectual Property
- Representation of a JP publicly traded life sciences client in connection with the transfer of all IP relating to a specific drug program as a contribution-in-kind in a reverse merger involving a wholly owned subsidiary and a NASDAQ traded company.
- Representation of a JP electronics company in connection with multiple patent portfolio divestures, including enforcement revenue share arrangements.
- Representation of a growth stage life sciences innovator in connection with contract manufacturing arrangement for its COVID test cartridges and assays.
- Representation of a JP based life sciences company in connection with the acquisition from Pennsylvania University of license rights to novel patent methods for treating skin ailments.
- Representation of a US based publicly traded chemical manufacturing company in connection with settlement and unwinding of failed joint development arrangement that involved the exchange of trade secret information and issuance of equity.
- Representation of a JP based aerospace parts manufacturer and supplier in connection with a pricing dispute with General Electric.
Venture Capital
- Conversion of a growth stage US based life science company from a DE LLC to a DE C-Corp.
- Representation of a US/JP based start-up in connection with the negotiation and drafting of a Series Seed Preferred equity investment, including the share purchase, voting rights, and investor rights agreements and other related agreements – the transaction had a pre-money valuation of $12.5MM and post valuation of $15.5MM.
- Representation of the founders of a US/JP based venture fund an accelerator for life science start-ups. The fund is comprised of a Japan K.K. and WY based LLC.
- Representation of the founders in formation of a Delaware C-Corp to act as global holding company for an e-commerce platform using tokens and vouchers for buying goods and services from platform vendors and “gifting’ celebrities and influencers. Formation including establishing multiple LLCs to hold shares of the Dec C-Corp, restricted share issuances, issuance of warrants and creation of an ESOP.
- Representation of a investment fund angel investment into a recently founded life sciences company based in the US.
- Representation of a JP based life sciences company in the negotiation of investment into an early-stage medical device company developing a treatment for eye disease.
M&A Transactions
- Representation of a major Japanese chemical manufacturer in connection with review and interpretation of multi-decade joint venture and intellectual property license agreements with a U.S. partner.
- Representation of a led undisclosed Japanese venture fund investor in $35 million Series B financing of Frequency Therapeutics (regenerative therapies) (all IP matters) (2018-19)
- Representation of a private equity backed Japanese pharma client in the acquisition of intellectual property and commercialization rights from innovative companies based in the U.S. and Israel including Merz Pharma, Alpha Tau, Orgenesis, Vessl, and other public and non-public companies (2016-19)
Commerical and Criminal Litigation
- Successful representation of a foreign manufacturer in alleged trade secret theft and violation of non-compete by senior executive in Japan (Tokyo Dist. Ct, 2013).
- Successful representation as co-counsel a team of individuals accused of criminal tax evasion and money laundering in Japan involving winnings from horse racing exceeding USD$100 million. Completely absolved and no charges brought after one year of interrogation and negotiation.
- Served as arbitrator on a three arbitrator tribunal in a commercial arbitration administered by the Japan Commercial Arbitration Association (2015-2017)
- Served as lead counsel in a commercial arbitration administered by the Japan Commercial Arbitration Association (2015-2017) concerning the failure of a manufacturing joint venture and a theft of trade secrets.
- In Re Vitamins Antitrust Litigation (Takeda, antitrust) (D.C. 2003).
IP Litigation
- Intellectual Ventures v. Toyota (and many other defendants) (patent infringement) (DE 2016-18) (I represent NSK, a tier 1 supplier to Toyota.
- Intellectual Ventures v. Honda (and many other defendants) (patent infringement) (DE 2016-18) (I represent NSK, a tier 1 supplier to Honda.
- Intellectual Ventures v. Ricoh Corp., (patent infringement) (DE 2013-2016).
- Multiple patent infringement suits brought by non-practicing entities venued in the US against JVCKenwood (2012 to 2018).
- Freescale Semiconductor v. Panasonic Corp., JVC Kenwood and Funai (patent infringement) (2008).
- Successful representation of Louisville Slugger against the Japan Bat Association to defeat a suspension order issued by the JBA to prevent LS from having its bats used at the national “Koshien” tournament (2007).
- Learning Network Inc v. Discovery Communications (MD 2001) (trademark litigation).
- Novo Nordisk A/S v. Becton Dickinson and Eli Lilly, (patent infringement) (SDNY 1999).
Recent Speaking Engagements
- Legal Mentor, S6IX Kamiyama Accelerator 2020 (https://www.in-kamiyama.jp/en/diary/31541/)
- Speaker, “Investing in Regenerative Medicine in Japan” (Total Access Japan, May 2018)
- “Simulated International Arbitration and Mediation Event” (Co-hosted by Orrick, Ministry of Justice and CIArb, May 2018)
- Speaker, “Standard-Essential Patent (SEP) and Intellectual Property Related Issues in the Age of IoT (Internet of Things)” (Global Business Knowledge Supply, February 2018)
- Speaker, “Cryptocurrencies and ICO’s” (Total Access Japan, February 2018)
- Speaker, “Advanced Licensing Considerations for 2018” (Orrick Library Seminar Series, January 2018)
- Speaker, “Intellectual Property and Best Practices for IP Protection” (Okinawa Institute of Science and Technology, November 2017)
- Speaker, “Document Management Seminar: Responding to Intellectual Property Litigation in the Global Era” (Deloitte Financial Advisory Seminar, October 2017)
- Speaker, “Investment in America: Indiana in the Spotlight” (Cross-border M&A Seminar, October 2017)
- Speaker, “Fund Manager’s Guide: Investing in the Tech Space” (Orrick Tokyo – Hong Kong Seminar, September 2017)
- Speaker, “Preparation for the Introduction of Class-Action Litigations in Japan – a US – Japan Comparison” (The Board of Director Training Institute of Japan (BDTI) seminar, January 2017)
Recent Publications
- Co-author, “Recent U.S. Federal Court Decisions Involving Standard Essential Patents and Considerations for International ADR – Japan as a Possible ADR Forum for Resolving International SEP Disputes” (JCA Journal 740, February 2019)
- Quoted in “Ground Zero: Digital Currencies in Asia” (WatersTechnology, November 2017)
- Co-author, “A Study of Best Practices for Licensing Standard Essential Patents (SEPs) in Anticipation of Patent Dispute in the Internet of Things (IoT)” (JCA Journal, N.723, September 2017)
Other Speaking Engagements
- Speaker, “Intellectual Property and Best Practices for Protection” (Okinawa Institute of Science and Technology, November 2016)
- Speaker “Corporate Management and Intellectual Property Strategy in the Chemical Sector” (Japan Foods & Biotechnology Intellectual Property Rights Center, October 2016)
- Speaker, “Artificial Intelligence Developments – Emerging Seattle Innovation Comes to Japan” (Tokyo, July 2016)
- Speaker, Seattle Innovation Meetup, “Accessing the $100 Billion War Chest: Strategic Partnerships, Investments & M&A with Japanese Companies for U.S. Startups,” Seattle (March, 2016).
- Speaker, Orrick with Innovation Finders Capital, “Innovation Finding for Japanese Companies,” Osaka (February, 2016).
- Speaker, Orrick with Innovation Finders Capital, “Innovation Finding for Japanese Corporation,” Tokyo (November, 2015).
- Speaker, Strategies for Global IP Litigation and Licensing 2015, Tokyo and Osaka (September 15 and 17, 2015).
- Speaker, Orrick Seminar “M&A Involving Technology Companies in Silicon Valley and Beyond” (September, 2015).
- Speaker, Global IP & Innovation Summit, Shanghai, “ITC Litigation and Licensing” (September, 2015).
- Speaker, Orrick’s Trade Secret Seminar Series – Fourth Session, “A Defendant’s Perspective in a Trade Secret Case” (May, 2015).
- Speaker, Orrick’s Trade Secret Seminar Series – Third Session, “Litigations from the perspective of a plaintiff: issues and strategies” (January, 2015).
- Speaker, Strategies for Global IP Litigation and Licensing 2014, Osaka and Tokyo (September 10 and 11, 2014).
- Speaker, “How Cross-Border Patent and Trade Secret Litigation May Affect Chinese Companies” (MIP China International IP Forum, Beijing, June, 2014).
- Orrick’s Trade Secret Seminar Series – Second Session, “Cross-border Protection of Trade Secrets Involving the U.S., Japan and China” (June 5, 2014).
- Orrick’s Trade Secret Seminar Series – First Session, “Comparison of Key Aspects of US and Japanese Trade Secret Law and Protection Measures for Both the U.S. and Japan” (March 7, 2014).
- Speaker, “An Overview of Current Issues Relating to SEPs and FRAND Obligations – Potential Solutions to the Threats of PAEs; Political and Regulatory Efforts by Congress, the FTC, and State Attorneys General,” Seminar hosted by the Institute of Intellectual Property (IIP) (November 6, 2013) (two-hour presentation and Q&A session in Japanese).
- Speaker, Strategies for Global IP Litigation and Licensing 2013, Osaka and Tokyo (October 23 and October 24, 2013).
- Speaker, “Patent Trolls: An Outside Counsel View on Efficient and Effective Representation,” Seminar hosted by Temple University, Japan Campus (October 22, 2013).
- Speaker, “What Japanese Companies Need to Know About the United States’ Attorney-Client Privilege and Work Product Doctrine,” Seminar hosted by UBIC (September 12, 2013).
- Speaker, “Maintaining IP Freedom,” (ACCJ Entrepreneurs Forum, February 22, 2013).
- Speaker, “Antitrust Issues in Licensing Intellectual Property,” (IP Licensing Seminar co-organized by Japan In-House Counsel Network (JICN), May 17, 2011).
- Guest Lecturer, Legal Issues Relating to the Use of Open Source Software, addressed legal and engineering departments of major semiconductor manufacturer, June 2010.
- Speaker, Current Intellectual Property and Regulatory Issues Involving Collaborative Content Creation conference, (American Chamber of Commerce, September 8, 2008).
- Guest Lecturer, “Approaches of U.S. and U.K. Companies to Better Protect, Manage and Exploit Their Patents, Trade Secrets and Other Intellectual Property Assets,” (The Waseda University Nano, IT and Bio IP Management and Strategy Lecture Series – Advanced Course for Industry Professionals, February 2007, three-hour presentation and Q&A session in Japanese).
- Speaker and panelist, “The Overview of Arbitration Law of Japan,” (Asia Pacific Dispute Resolution Summit organized by Asia Law & Practice, June 29, 2006).
- Speaker and panelist, “The Future of Intellectual Property Oriented Study – Between Engineering and Management Policy” (Waseda University, June 17th and 18th, 2006, presentation and panel discussion in Japanese).
- Host, American Chamber of Commerce in Japan – Executive Webcast Series 2006-2007, “Law & Policy,” streamed by ITV Japan (6 segments).
- Keynote Speaker at the seminar, “Distribution of Digital Contents and Its Problems,” co-sponsored by Institute of Intellectual Property and Copyright Research and Information Center, “Licensing Digital Contents to Licensees, Agents and Business Partners in the U.S.” (one-hour presentation in Japanese), October 8, 2004.
Other Publications
- Co-author, “An Overview of Civil Remedies for Protection of Trade Secrets in the U.S.” (A.I.P.P.I. No.9, September 2016)
- Co-author, “The International Comparative Legal Guide to: Product Liability 2016” (Global Legal Group 14th Edition, May 2016)
- Co-author, “Investigation/Research of Legal Systems and Practices Regarding Trade Secret and Confidential Information Management – Trade secret and confidential information management by multinationals located in Asia -” (Intellectual Property Management, Vol. 65 No. 10 (No. 778), October 2015)
- Interview, “Trade Secret Protection by Using Forensics and Lawyers” (Business Law Journal, July 2015)
- Author, “Recent Legislative and Judicial Measures Aimed at Patent Assertion entities (Patent Trolls) in the U.S.” (Chizaiken Forum Vol. 97, January 2014)
- Author, US Trademark 100, book published by the Japan Trademark Association, September 2011, English and Japanese, 440 pages (available in book stores and online retailers, including Amazon.co.jp) (a book highlighting the 100 most influential court decisions in U.S. trademark law).
- Co-author, “Measures Taken against Counterfeit and Pirated Goods at Japanese Customs,” (Apparel, September 2010).
- Co-author, “Preemptive Strike! Recent Changes in U.S. Case Law Make It Easier for Companies to Use Declaratory Judgment Actions to Increase Their Chances of Successfully Fending off Patent Trolls,” (The Lawyers, October 2008, with William S. Coats).
- Co-author, “Chapter 2: Licensing,” (Tax Strategies for Intellectual Property, January 2008, with Mika Suzuki).
- Co-Author, “Japan Product Liability and Consumer Product Safety Laws,” (International Comparative Legal Guide to: Product Liability, 2007, 2008, 2009, 2010 with Yuji Ogiwara).
- Author, “The Reaction of U.S. Industry to the Employee Invention Remuneration Cases, and Remuneration Policies of Select U.S. Companies and Universities,” (Journal of the Japanese Group A.I.P.P.I, May 2004, Japanese edition, and July 2004, English edition).
- Author, “Use of Experts in Patent Litigations,” (International Legal Strategy, July 2003).
- Author, “Companies Face Possible Fair Remuneration Claims from Employee Inventors with Japanese Patents,” (Asian IP, May 2003; and BNA’s World IP Report June 2003).
- Author, “Common Mistakes Made by Licensors in Administering Click-Wrap Agreements,” (Syracuse University Law and Technology Journal, Spring 2003; The Computer & Internet Lawyer, August 2002; Journal of the Japanese Group A.I.P.P.I, June 25, 2002, Japanese translation; and Intellectual Property Today, October 2002).
- Co-Author, “Music, The Internet, and the Music Industry,” (Practicing Law Institute, 670 PLI Vol. 1, September 2001, with I. Fred Koenigsberg and Stefan Mentzer).
- Co-author, “Personal Jurisdiction by Virtue of Establishing a Web site,” (Practicing Law Institute, 489 PLI/Pat 15, September 1997, assisted David Bender in researching and writing article).
MEMBERSHIPS
- Japan Society of Northern California
- American Chamber of Commerce in Japan (previous Board of Governors (2010-11), Chair of the Intellectual Property Committee (2008-19) and Co-Chair of the Privacy Law Task Force (2004-06)
- International Association for the Protection of Intellectual Property of Japan (currently serving on the Editorial Committee for the Japanese and English language journals of the Journal of the Japanese Group A.I.P.P.I.) (2003-2019)
- Associate of the Institute by the Chartered Institute of Arbitrators
AWARDS AND RECOGNITION
- Chambers Global, Intellectual Property: International, Japan, and Litigation: International, Japan, 2008-2019; “Foreign Expert, USA/Japan, Intellectual Property, 2019
- Chambers Asia Pacific, Intellectual Property: International, Japan, 2008-2019 and Dispute Resolution: International, Japan, 2008-2019
- Legal 500 Asia Pacific, Intellectual Property: International, Japan, 2012-2017 and Dispute Resolution: International, Japan 2013-2017
- Intellectual Property: International, Japan, and Litigation: International, Japan, 2008-2018;
- Foreign Expert, USA/Japan, Intellectual Property, 2018
- Included in World IP Review – Leaders List (2016-2019)
- Intellectual Asset Management, Leading Lawyer for Japan: Foreign, 2015
- Best Lawyers, Intellectual Property Law, 2019 Edition
News, Events, & Insights
- AERKOMM and Nasdaq-Listed IX Acquisition Corp. Announce Merger Agreement and US $35 Million Private Placement
News April 4, 2024
- Capital A International, Owner of the Iconic AirAsia Brand, to be Publicly Listed in the U.S. through Business Combination with Aetherium Acquisition Corp
News February 29, 2024
- Rimon PC Strengthens Intellectual Property Bench and Launches Japan Practice with McDermott, Will & Emery Attorneys
News November 30, 2023
- Recent Rimon Partner Additions David E. Case and Hayk Mamajanyan Extensively Covered by the Press
News July 21, 2023
- Rimon PC Expands Venture Capital Bench with addition of New Partners in California
News June 26, 2023
