Lawyer Bio : Behrooz Shariati

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Behrooz Shariati

Silicon Valley

Behrooz Shariati is an experienced IP litigation attorney whose practice focuses on representation of public and private companies in patent infringement litigation, licensing, counseling in technical areas including software, hardware, networking, communications, semiconductor manufacturing processes, and mechanical technologies related to the electronics industry.
 
He has represented companies in dozens of cases related to patent infringement claims in federal and state courts.
 
He also has assisted clients in negotiating complex license agreements.
 
In addition, Behrooz brings more than 15 years of industry and business experience as a systems programmer, application programmer, technical consultant, project leader, customer support manager, development manager, and vice president for R&D for high-technology companies.
 
Outside of the office Behrooz is a licensed private pilot, a certified scuba diver and holds an international Class B parachuting license.   
 
Representative Cases
 
Any result the lawyer or law firm may have achieved on behalf of clients in other matters does not necessarily indicate similar results can be obtained for other clients.
 
  • Represented a technology company in a patent infringement action regarding 20 patents relating to field-programmable gate arrays (FPGA) and other related technologies.
  • Represented a semiconductor manufacturer as lead counsel in a patent infringement claim involving DDR memory technology. The case was settled on favorable terms.
  • Defended a leading maker of Ethernet technology in a patent infringement case regarding power-over-Ethernet technology.
  • Represented a life sciences company in filing a patent infringement suit involving bio-pharmaceutical delivery systems.
  • Represented an international manufacturer in enforcing patents related to 4-stroke and other engines used in portable power equipment, such as generators and water pumps.
  • Defended a client in a patent infringement lawsuit involving multiple patents in the area of video compression (MPEG). The jury returned a verdict of non-infringement. Case was subsequently settled on terms favorable to client prior to appeal.
  • Represented a client in a patent infringement lawsuit involving Ethernet data transmission and high performance computer graphics technologies. The case was settled on favorable terms to the client.
  • Defended a tech company against a former programmer asserting ownership of software developed during the former employee's tenure with the company. The case was dismissed following a bench trial, and costs were awarded to the client.
  • Defended an Ethernet technology company in a patent infringement lawsuit involving five patents relating to Ethernet switching and network security technologies. As a result of a favorable Markman ruling, the plaintiff withdrew one patent and a jury verdict of non-infringement was obtained on three of the four remaining patents. The jury awarded minimal damages on the remaining patent. The case subsequently settled on terms favorable to the client.
  • Represented a major toy company in successfully recovering a Web domain name from an adult website operator. This was one of the first cases brought after the Federal trademark anti-dilution law (15 U.S.C. Section 1125 (c)) came into effect.
  • Represented a client in a patent infringement lawsuit involving multi-processor cache updating technology. The case was settled on terms favorable to the client.
  • Represented a tech client in a patent infringement lawsuit involving file replication technology. The case was settled on terms favorable to client.
  • Defended a software maker in a patent infringement lawsuit regarding computer virus scanning software. The case settled one week into a jury trial on terms favorable to the client.
  • Defended a semiconductor manufacturer in a patent infringement lawsuit regarding power conversion technology. Plaintiff stipulated to a summary judgment of non-infringement after receiving a Markman ruling favorable to the company. The Court of Appeals for the Federal Circuit upheld the District Court's claim construction.
  • Defended a software company in a patent infringement lawsuit relating to computer virus scanning technologies. The company obtained summary judgment of non-infringement and the case was subsequently settled after an appeal to the Federal Circuit.
  • Represented a company in a patent infringement suit covering automated updating and version control technology. On the eve of trial, the case was settled on terms favorable to client.
  • Represented a consumer electronics company in a patent infringement lawsuit involving the DVI standard. The case was settled in favor of the company shortly before trial. However, a dispute arose over the settlement agreement shortly thereafter. The settlement agreement was litigation and a favorable ruling for the client was obtained regarding interpretation of the settlement agreement.
  • Defended a tech company in patent infringement lawsuit involving "north bridge and south bridge" chips for interfacing CPU and other peripherals in PCs. The client obtained summary judgment regarding one patent related to AGP fast-write standard. The case was subsequently settled on terms favorable to the client.
 Reported Decisions
 
  • Broadcom Corporation v. Intel Corporation, Civil Action No. 5:01-cv-00302-DF
  • Woltz v. Copart, Inc. et al., Civil Action No. 3:94-cv-03629-VRW; Woltz v. Copart, Inc., 1994 WL 507631 (N.D. Cal. 1994)
  • Lucent Technologies v. Extreme Networks, et al., Civil Action No. 1:03-cv-00508-JJ
  • Hasbro, Inc. v. Internet Entertain, et al., Civil Action No. 2:96-cv-00130-WLD
  • Hewlett-Packard Company v. Intergraph Corporation, Civil Action No. 3:03-cv-02517-MJJ
  • Legato Systems, Inc. v. Network Specialists, Inc., Civil Action No. 5:03-cv-02286-JW
  • Trend Micro, Inc. v. McAfee Associates, et al., Civil Action No. 5:97-cv-20438-RMW
  • Pioneer Magnetics v. Micro Linear Corporation, et al., Civil Action No. 2:95-cv-08307-LGB
  • Hilgraeve, Inc. v. Network Associates, Inc., Civil Action No. 2:00-cv-74497-NG
  • Novadigm, Inc. v. Marimba, Inc., Civil Action 5:97-cv-20194-JW
  • Resonate, Inc. v. Alteon Web Systems, Civil Action 4:00-cv-03307-CW; Resonate Inc. v. Alteon Websystems, Inc., 338 F.3d 1360 (Fed. Cir. 2003)
  • Silicon Image, Inc. v. Genesis Microchip, et al., Civil Action No. 3:01-cv-00266-REP; Silicon Image, Inc. v. Genesis Microchip, Inc., 271 F.Supp.2d 840 (E.D. Va. 2003); Silicon Image, Inc. v. Genesis Microchip, Inc., 176 Fed.Appx. 109 (Fed. Cir. 2006)
  • Via Technologies, Inc. v. Intel, Civil Action No. 3:02-04693-MJJ

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Professional Activities

Admitted to the bar 1994, California. Admitted to practice before the U.S. Patent and Trademark Office; the U.S. Court of Appeals for the Federal Circuit; and the Federal Court in the Eastern District of Texas.

Education

B.S., Computer Science, North Carolina State University;
 
J.D., Magna cum laude, Western State University College of Law, Irvine Salutatorian. 

Prior Legal Experience

Partner, Intellectual Property Litigation Group, Jones Day Silicon Valley, Palo Alto, CA, 2006-2012; Partner, Intellectual Property Group, McDermott Will and Emery, LLP, Palo Alto, CA, 2001-2005; Associate, Intellectual Property Group, Wilson Sonsini Goodrich and Rosati, Palo Alto, CA, 1995-2001; Certified Law Clerk, Law Office of Ronald D. Davis, Huntington Beach, CA.

Prior Business Experience

Vice President, Research and Development, Legal Information Systems Group, G.S.C., Irvine, CA, 1994-1995; Development Manager, Legal Software Group, StenoCAT, Irvine, CA, 1990-1993; National Customer Support Manager, StenoCAT, Irvine, CA, 1985-1990; Application Programmer, PDS, Albany, NY, 1984-1985; Systems Programmer, PDS, Albany, NY, 1983-1984; Application Programmer, CGS, Raleigh, NC, 1980-1983.

Publications

Co-Author (with Steven D. Lee), “Pleading Confusion: ‘Iqbal’ and ‘Twombly’ have resulted in several infringement complaint standards among the federal district courts,” The Recorder, January 2013.

Presentations

Intellectual Property Roundtable, California Lawyer (Daily Journal publication), February 2013.

“The Exhausted Patent: How far does a patent license reach and what does that mean for patent owners and licensees?” Jones Day MCLE University, Jan. 2010, San Francisco.

“How to Save Money and Improve Business Practices By Managing Electronic Documents”, Oct. 2008, Palo Alto, California.

Additional Information

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