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Shogo Asaji

Partner
Tokyo, 81 3 3214 6522
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Shogo Asaji is a partner in the firm’s Intellectual Property Group. His practice focuses on intellectual property litigation, licensing and patent analysis in both Japan and the United States. Mr. Asaji represents clients in patent infringement litigation before U.S. district courts, the U.S. Court of Appeals for the Federal Circuit and the International Trade Commission, and reexamination proceedings before the U.S. Patent and Trademark Office. He assists pharmaceutical companies in ANDA cases brought under the Hatch-Waxman Act. Mr. Asaji also prepares legal opinions of counsel and assists with licensing negotiations. He has experience prosecuting U.S. patent applications in the fields of mechanical and electrical arts. He also advises with respect to international contract and other business disputes.

Mr. Asaji also counsels U.S. and European companies with respect to patent matters in Japan, including litigation before the Tokyo District Court and the Customs Office, invalidation proceedings at the Japan Patent Office (JPO), licensing and purchase negotiations, obtaining of legal opinions of counsel, responding to warning letters and conducting prior art searches. He draws upon his bicultural, linguistic, legal and technical skills, and works with leading local counsel to bridge cultural and jurisprudential differences so that clients obtain advice more effectively. Recent examples of his work include the representation of a U.S. company in a $100 million patent infringement proceeding relating to portable music players before the Tokyo District Court and the Tokyo Customs Office, the filing of multiple petitions for invalidity with the JPO, and a patent infringement lawsuit on behalf of a U.S. chemical company.

Examples of technologies Mr. Asaji has worked with include light-emitting diodes, transistors, semiconductors, semiconductor manufacturing equipment and processes, data storage devices, networks, database management systems, wireless communications including; universal mobile telecommunications system (UMTS), liquid crystal displays (LCDs), plasma display panels, DVD discs, digital projectors, touch pads, user interface technology, digital rights management, non-steroidal anti-inflammatory drugs, COX-2 inhibitors, growth hormones, vaccines, polymer tablets and microcapsules, fire retardant chemicals, organic cleaning solvents and insulin injection devices, as well as various business methods. Prior to joining Morrison & Foerster, Mr. Asaji was an associate at a IP boutique firm and a Wall Street law firm, practicing several years in New York before moving to Tokyo.

Mr. Asaji has been named to the Best Lawyers list for Japan in the area of intellectual property since 2010 edition.

Mr. Asaji received a B.S.M.E. in mechanical engineering, cum laude, and a B.A. in economics, cum laude, from Tufts University, M.A. from Johns Hopkins University, a J.D. from American University, and a LL.M. degree in international and comparative law (with distinction) from Georgetown University Law Center. While in law school, Mr. Asaji served as a judicial intern to Judge Robert H. Hodges, Jr., at the U.S. Court of Federal Claims in Washington, D.C., and was a member of The Administrative Law Journal of American University. He was also a national semi-finalist and regional winner of the American Intellectual Property Law Association’s Giles Sutherland Rich Memorial Moot Court Competition, and recipient of the best brief award at the North American Regional Round of the Manfred Lachs Space Law Moot Court Competition.

Prior to becoming a lawyer, Mr. Asaji worked as an executive for a mid-sized Japanese company. Mr. Asaji has resided in Japan, the United States, Switzerland and France and speaks Japanese, French and English.

Mr. Asaji is admitted to practice in the State of New York, and before the U.S. Court of Appeals for the Federal Circuit and various U.S. district courts, as well as in Japan as a Gaikokuho-Jimu-Bengoshi (registered foreign lawyer). He is also a member of the Daini Tokyo Bar Association.

Smartphone Litigation
Member of team that successfully asserted a UI patent and defended against assertions of declared standards-essential patents.
Toshiba Corp. v. Imation Corp. et al.
(Western District of Wisconsin). Represented plaintiff in enforcing patents covering DVD technology against disc manufacturers and sellers. The jury found infringement.
Nishiyama v. Oracle Corp.
(JPO). Obtained an opinion of non-infringement 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.
TAP Pharmaceutical Products, Inc. et al. v. Owl Pharmaceuticals, L.L.C. et al.
(Northern District of Ohio). Represented co-plaintiff Takeda Chemical Industries, Ltd., 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 GlaxoSmithKline in ANDA litigation against generic manufacturers of a NSAID.
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