ShogoAsaji

Of Counsel

Tokyo + 81.3.6744.1612

Shogo Asaji is an intellectual property lawyer and litigator whose practice covers the United States and Japan. He is one of a select number of U.S. lawyers in Japan who has an engineering background, bilingual capability in Japanese and English, and experience handling multimillion dollar, global patent disputes.

Shogo's practice focuses on intellectual property litigation, adversarial licensing, patent analysis, and IP counseling. He represents clients in litigation before U.S. courts and the International Trade Commission (ITC) and in administrative proceedings before the United States Patent and Trademark Office (USPTO). He assists pharmaceutical companies in Hatch-Waxman/ANDA cases. Shogo also prepares legal opinions and licenses and has experience prosecuting U.S. patent applications and advises on contract and business disputes.

In addition, Shogo counsels non-Japanese companies on patent matters in Japan, including litigation, invalidation proceedings at the Japan Patent Office (JPO), customs proceedings, IP licensing and purchase negotiations, and responding to warning letters. Shogo has handled matters in various technology areas involving light emitting diodes (LEDs), transistors, semiconductors and semiconductor manufacturing, data storage, databases, networks, wireless communications including UMTS and 3G, liquid-crystal displays (LCDs), DVDs, digital projectors, user interface technology, polymers, small molecules, growth hormones, antibodies, antiviral drugs, vaccines, fire retardant chemicals, organic solvents, insulin injection devices, software, and business methods.

Shogo practiced in New York before moving to Tokyo. Prior to becoming a lawyer, he worked as an executive for a mid-sized Japanese company. Shogo is bilingual in Japanese and English. He grew up in Switzerland and France and has working knowledge of French.

Shogo is the co-hiring and pro bono coordinator of the Tokyo Office.

Experience

  • Japanese wire manufacturer and its U.S. subsidiary defend against alleged patent infringement regarding wire technologyJones Day secured a final judgment of non-infringement and invalidity in favor of a Japanese wire manufacturer and its U.S. subsidiary in a patent infringement case related to coil wire technology in the Central District of California.
  • Kyowa Hakko Kirin and BioWa successfully enforce patent rights on antibody technologyJones Day, on behalf of Japanese life sciences company Kyowa Hakko Kirin Company, Limited ("KHK") and its wholly-owned U.S. subsidiary, BioWa, successfully settled a patent infringement suit over three of KHK's patents that underlie KHK's award-winning POTELLIGENT® technology capable of producing therapeutic antibodies with dramatically improved potency and efficacy.
  • Kyowa Hakko Kirin defeats competitors in Patent Trial and Appeal Board challenge of patents on antibody technologyOn October 23, 2017, the Patent Trial and Appeal Board ("PTAB") issued a trio of decisions, unanimously declining to institute inter partes review ("IPR") of three patents owned by a Japanese pharmaceutical company represented by Jones Day, Kyowa Hakko Kirin Co., Ltd.
  • Akebia obtains favorable preliminary decision in invalidity proceedings at JPOJones Day's client Akebia Therapeutics, Inc. received a preliminary trial decision in connection with a patent invalidation proceeding at the Japan Patent Office.
  • The following represents experience prior to joining Jones Day.

    Smartphone Litigation (Tokyo District Court, Japan IP High Court, and Japan Patent Office). Member of team that successfully asserted an user-interface patent and defended against assertions of declared standards-essential patents in Japan as part of a high profile global dispute.

    Toshiba Corp. v. Imation Corp., et al. (Western District of Wisconsin). Represented Toshiba Corp. in enforcing patents covering DVD technology against disc manufacturers and sellers. The jury found infringement.

    AAA/ICDR Arbitration(New York). Represented a Japanese heavy equipment manufacturer in an ICDR arbitration against a U.S. aircraft leasing company.

    Albemarle Corp. v. Kaneko Chemical Co., Ltd. (Tokyo District Court, Japan IP High Court, and Japan Patent Office). Represented Albemarle Corp. for a patent infringement case against a Japanese chemical company.

    Seoul Semiconductor Co. v. Nichia Corporation et al. (Eastern District of Texas). Represented Nichia Corp. against assertions of infringement of short-wavelength laser diode and LED patent. The case settled shortly after the Markman hearing.

    Nishiyama v. Oracle Corp. (Japan Patent Office). Obtained an opinion of noninfringement for Oracle Corp. at the JPO after patentee sought an advisory opinion of infringement by the client's in-memory data grid product.

    Portable Music Player Litigation (Tokyo Customs Office, Japan). Defeated petition for import ban of U.S. client's portable music players based on allegations of patent infringement.

    Lund LLC v. Fujitsu Computer Systems Corp. et al. (Eastern District of Texas). Represented Fujitsu is a patent infringement lawsuit brought by an individual inventor against Fujitsu’s laptop computers. The case settled.

    Compression Labs Incorporated v. Fujitsu Computer Products of America et. al. (Eastern District of Texas). Represented Fujitsu in a patent infringement lawsuit concerning JPEG/MPEG compression technologies.

    Seiko Epson Corp. v. Plus Vision Corp. (District of Oregon). Represented Plus Vision in a patent infringement lawsuit related to projection displays using DLP technology.

    TAP Pharmaceutical Products, Inc., et al. v. Owl Pharmaceuticals, L.L.C., et al. (Northern District of Ohio). Represented co-plaintiff Takeda Chemical Industries in ANDA litigation relating to sustained-release formulations for treating prostate cancer. The district court found infringement and the Court of Appeals for the Federal Circuit affirmed the district court's judgment.

    In re '639 Patent Litigation (District of Massachusetts). Represented plaintiff GlaxoSmithKline in ANDA litigation against generic manufacturers of a NSAID in trial and on appeal.

    University of Rochester v. G.D. Searle Co., Inc. et al. (Western District of New York). Represented G.D. Searle and Pharmacia in a billion dollar patent infringement suit relating to G.D. Searle and Pharmacia’s Celebrex®. The district court granted summary judgment in favor of the clients and the Federal Circuit affirmed.

    DepoMed, Inc. v. Bristol-Myers Squibb Co. (Northern District of California). Represented Bristol-Myers Squibb in a patent and trade secret case involving extended release formulation for diabetes drug Glucophage®. The case settled.

    Novo Nordisk A/S et al. v. Becton Dickinson & Co. (Southern District of New York). Represented Becton Dickinson in a patent infringement lawsuit alleging infringement of several patents relating to insulin injection systems. The jury returned a verdict in favor of the client.

    Speaking Engagements

    • March 2018
      Legal Enhancement Expert Program Academy:米国特許訴訟における最新事情
    • September 27, 2017
      AIPPI Seminar 2017
    • September 2017
      AIPPI JAPANセミナー:米国特許訴訟の最新情報
    • June 2017
      ジョーンズ・デイ ライフサイエンスセミナー:ライフサイエンス企業の米国における事業活動に関連する判例法の展開
    • May2017
      ジョーンズ・デイEUセミナー: 欧州における各法分野の最新動向と留意点
    • October 2016
      米国特許侵害訴訟セミナー
    • April 2016
      AIPPI JAPANセミナー:米国特許訴訟の最新情報
    • April 8, 2016
      Recent Case Law Concerning FRAND Licensing & Standard Essential Patents (SEPs)
    • April 7, 2016
      Recent Case Law Concerning FRAND Licensing & Standard Essential Patents (SEPs)
    • September 2015
      ジョーンズ・デイ米国訴訟セミナー:米国訴訟において日本の企業が留意すべき事項
    • May 2015
      ジョーンズ・デイ米国訴訟セミナー:米国訴訟において日本の企業が留意すべき事項
    • December 2014
      AIPPI JAPANセミナー:米国特許訴訟の最新情報
    • December 12, 2014
      AIPPI Seminar 2014
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