ShogoAsaji

Of Counsel

(T) + 81.3.6744.1612

Shogo Asaji is an IP lawyer and litigator, whose practice covers both the United States and Japan. His practice focuses on intellectual property litigation, adversarial licensing, patent analysis, and IP counseling. He represents clients in infringement litigation before U.S. courts and the ITC and in administrative proceedings before the USPTO. He assists pharmaceutical companies in Hatch-Waxman/ANDA cases. Shogo also prepares legal opinions, engages in licensing negotiations, and has experience prosecuting U.S. patent applications. He advises on international contract and business disputes as well.

Shogo also counsels U.S. and non-Japanese companies on patent matters in Japan, including litigation, customs proceedings, invalidation proceedings at the Japan Patent Office, IP licensing and purchase negotiations, obtaining legal opinions, and responding to warning letters. He recently assisted a major U.S. electronics and computer company in the Japanese front of a global, multijurisdictional patent litigation. Shogo has handled matters involving LEDs, transistors, semiconductor manufacturing equipment and processes, data storage devices, databases, networks, wireless communications, universal mobile telecommunications systems (UMTS), liquid crystal displays, DVDs, digital projectors, user interface technology, nonsteroidal anti-inflammatory drugs, COX-2 inhibitors, growth hormones, antibodies, antiviral drugs, vaccines, polymer tablets and microcapsules, fire retardant chemicals and polymers, organic cleaning 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 and has resided in Switzerland and France. Shogo is bilingual in Japanese and English and has working knowledge of French.

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

Experience

Japanese wire manufacturer and its U.S. subsidiary defend against alleged patent infringement regarding wire technology
Jones 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 technology
Jones 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 technology
On 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 JPO
Jones 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.

Additional Publications

  • March 2018Jones Day Talks Technology: Autonomous Vehicles─Ethical Issues Confronting In-House Counsel
  • December 2017Jones Day Talks Technology: Artificial Intelligence ... Real Legal Issues
  • November 2017Jones Day Talks Technology: Autonomous Vehicles: Who's Leading the Way?
  • November 2017Legal Issues Related to the Development of Automated, Autonomous, and Connected Cars
  • October 2017Report Details Success of Japan's New Patent Opposition System
  • June 2017ジョーンズ・デイ・アラート:米国連邦最高裁、特許裁判地の射程について判断
  • February 2016Japan Strengthens Deterrence Measures Against Trade Secret Infringement

Speaking Engagements

  • September 27, 2017AIPPI Seminar 2017
  • April 8, 2016Recent Case Law Concerning FRAND Licensing & Standard Essential Patents (SEPs)
  • April 7, 2016Recent Case Law Concerning FRAND Licensing & Standard Essential Patents (SEPs)
  • December 12, 2014AIPPI Seminar 2014
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