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Assad H. Rajani

Assad H. Rajani

Associate

Silicon Valley
T: +1 650.319.4560
F: +1 650.319.4960


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Legal Services

Education

  • University of California, Berkeley School of Law (Boalt Hall)
    JD, 2007
  • Syracuse University
    BA, (Quadruple Major with Honors), 2004

Bar Admission(s)

  • California
  • US Court of Appeals for the Federal Circuit
  • US District Court for the Northern District of California
  • US District Court for the Central District of California
  • US District Court for the Eastern District of California
  • US District Court for the Southern District of California
  • US District Court for the Eastern District of Texas

Assad Rajani focuses his practice on IP litigation and counseling for a wide range of high-tech and life sciences clients. Assad has litigated cases in federal district court, on appeal at the Federal Circuit, and before the US Patent Office. He has been involved in all phases of patent litigation, including pre-filing investigations, taking and defending depositions, drafting briefs on case dispositive issues, performing infringement and validity analyses, working with inventors and experts, and trial preparation. He has successfully represented clients in trials in the Eastern District of Texas and District of Massachusetts. 

Assad also counsels clients regarding the protection and enforcement of IP rights in government contracts and conducts IP due diligence for mergers and acquisitions. In addition, Assad represents clients in general commercial litigation matters.

Assad is an active member of the Legal Aid Society of San Mateo. He regularly serves as pro bono counsel in guardianship cases and in landlord-tenant disputes.

Representative High-Technology Matters

  • Arendi S.A.R.L. v. Google Inc., Motorola Mobility LLC (D. Delaware). Defending Google and Motorola in a patent infringement suit involving computerized handling of contact information.
  • Broadband iTV, Inc. v. Time Warner Cable, Inc. (D. Hawaii, Fed. Cir.). Defending Time Warner in a patent infringement suit involving converting, navigating, and delivering video-on-demand content.  The court granted Time Warner summary judgment of invalidity under 35 U.S.C. § 101. 
  • Callidus Software Inc. v. Versata (D. Delaware, Fed. Cir.). Defended Callidus in a patent infringement suit involving enterprise incentive compensation software and cross asserting Callidus’ patents. Successfully instituted CBM Review challenging the validity of all of Versata’s asserted business method patents and reversed the district court’s denial of a stay pending CBM Review.
  • Callidus Software v. Xactly Corp. (C.D. California). Represented Callidus in enforcing its patents and asserting business tort and breach of contract claims. The case settled in mediation on terms favorable to Callidus.
  • SSL v. Citrix. (E.D. Texas, Fed. Cir.). Represented SSL in a patent infringement suit involving end-to-end encryption technology. A jury trial ended with a $10 million damages award and a $5 million enhancement for willful infringement in SSL’s favor, which was affirmed on appeal.

  • Symantec v. StorageCraft. (D. Utah). Represented Symantec in a trade secret misappropriation and breach of contract suit involving storage management software.

 

Representative Life Sciences Matters

  • Cephalon Inc. v. Fresenius Kabi USA, LLC (D. Delaware). Represents Cephalon in an ANDA litigation involving liquid formulations of bendamustine hydrochloride.
  • AAT Bioquest v. TEFLabs Inc. (N.D. California). Represents AAT Bioquest in enforcing its patents relating to a calcium ion indicator against a direct competitor. AAT Bioquest prevailed on summary judgment of no invalidity and no inequitable conduct. The parties proceeded to trial on damages
  • Elan Pharmaceuticals v. Alzheimer’s Institute of America. (N.D. California). Defended Elan Pharmaceuticals in a patent infringement suit involving Alzheimer’s disease assays and transgenic mice. Elan obtained an early dismissal with prejudice

  •  Amgen Inc. v. Teva Pharmaceuticals Ltd. (E.D. Pennsylvania). Represented Amgen in a enforcing its patents related to granulocyte colony stimulating factor. The case settled on terms favorable to Amgen.

  • Amgen Inc. v. F. Hoffman La-Roche Ltd. (D. Massachusetts, Fed. Cir.). Represented Amgen in enforcing its U.S. erythropoietin patents against Roche. The jury rendered a verdict in Amgen’s favor on both infringement and validity for each of the asserted patents-in-suit and the Court entered final judgment and a permanent injunction in Amgen’s favor.

Speaking Engagements

A Primer on Supplemental Examination and Derivation Proceedings Under AIA, Practising Law Institute Advanced Patent Prosecution Workshop, 2013

Preventing the Kiss and Tell: Protecting Trade Secrets in Collaborations, Association of Corporate Counsel San Francisco Bay Area, February 28, 2012

Injunctions: The World after eBay v. MercExchange, Practising Law Institute Conference on Patent Litigation, October 2009

Publications

Patents, Trademarks, Copyrights, and Trade Secrets for In-House Counsel, Fourth Edition, Association of Corporate Counsel, October 2012

A New Patent Bargain in India? Judicial Balancing of the Public Interest Factor, North American South Asian Bar Association IP Section Newsletter, 2008

Foreword, Berkeley Technology Law Journal, 2007

Davidson & Associates v. Jung - (Re)interpreting Access Controls, Berkeley Technology Law Journal, 2006