Michael Shimokaji

Attorney Profile

Top Rated Intellectual Property Attorney in Irvine, CA

Shimokaji IP
 | 8911 Research Drive, Irvine, CA 92618
Phone: 877-317-0767
Fax: 949-870-3310
Selected to Super Lawyers: 2018 - 2019
Licensed Since: 1980
Practice Areas:
  • Intellectual Property
Attorney Profile

Mr. Shimokaji is a shareholder in the law firm of Shimokaji IP, located in Irvine, California. The firm is engaged in intellectual property litigation, patent monetization, and the procurement of patent rights domestically and abroad.

Mr. Shimokaji specializes in the medtech industry and, over the last 30 years, has also supported clients in industries as diverse as aerospace, apparel, chemicals, computer software, and telecommunications. His expertise includes infringement litigation, and patent and trademark portfolio development. He has lectured for local and national organizations in the US, as well as abroad, on various intellectual property topics.

He was a co-chair for the patent litigation committee of the American Intellectual Property Law Association, and co-chair for the patent committee of the National Asian Pacific American Bar Association. He served for three years on the Executive Committee for the California State Bar Intellectual Property Section, and another three year term on the California State Bar Federal Courts Committee.

Mr. Shimokaji has been a member of the editorial board for The Journal of the Association of University Technology Managers. He has been a member of the Steering Committee for the California Minority Counsel Program. He was a founding director of the Orange County Japanese-American Lawyers Association and has served as an instructor in the paralegal program at the University of California, Irvine.

He is the author of articles that include "Inducement and Contributory Infringement Theories to Regulate Pre-Patent Issuance Activity" 37 IDEA 571 (1997); "Type of Use Determines Whether Use of Web Content Will Be Infringing" L.A. Daily Journal, August 22, 2002; and "Cease and Desist Letters May Contain Some Hidden Perils" L.A. Daily Journal, February 27, 2003; "Contingency Defense in Patent Lawsuits" L.A. Daily Journal, August 1, 2006; "Putting Designs to the Test" L.A. Daily Journal, October 30, 2008; "Mind Over Matter" Los Angeles Lawyer, April 2009.

Following graduation from the University of California, Irvine with a bachelor's degree in chemistry, Mr. Shimokaji received his Juris Doctorate degree from Southwestern University School of Law. In law school, Mr. Shimokaji was an executive editor for the school's law review. He has served as a judicial extern for the Honorable Robert M. Takasugi, Judge, United States District Court. Mr. Shimokaji is admitted to the California Bar and the United States Patent and Trademark Office.

 

 

 

 
Practice Areas
Lawyer Practice Area Pie Chart

Intellectual Property (100%): Patents, Trademarks

Focus Areas

Patents, Trademarks

Selections

Selected to Super Lawyers for 2 yearsbottom-image

Super Lawyers: 2018 - 2019

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White Papers

  • PATENT CLAIM INFRINGEMENT CHARTS - WHAT ARE THEY & WHY YOU NEED THEM - If you are considering initiating a patent infringement lawsuit, or getting ready to defend against one, you will hear the term "claim chart." A claim chart is a tool to evaluate potential patent infringement. It is a tool used by attorneys representing a patent owner considering the possibility of filing suit against an infringer. It is also used by attorneys representing an alleged patent infringer.

  • (2017) - Firm publications

  • DO YOUR PATENT INFRINGEMENT DAMAGES JUSTIFY THE COSTS OF BRINGING A LAWSUIT? - The American Intellectual Property Law Association (AIPLA) reports that for patent infringement lawsuits where $1M to $10M is at risk the cost to go to trial is about $2M. Just getting through discovery costs about $1M. Given the high costs of patent litigation, a patent owner needs to evaluate the amount of possible recovery before instituting a patent infringement lawsuit. If the amount of possible recovery - without regard to the likelihood of proving infringement — does not exceed the litigation costs, there may not be sufficient justification to bring a lawsuit.

  • LEVERAGING DESIGN PATENTS TO INCREASE VALUE IN YOUR MEDICAL DEVICE PATENT PORTFOLIO - Medical device companies rely primarily on utility patents to increase the value of their patent portfolio, as well as defend against patent infringement claims. But in designing medical devices, much attention is given to how a device looks aesthetically - from the perspective of a doctor and a patient. Rightly so - no one wants to use an ugly-looking medical device. A design patent, according to the patent statute, covers an "ornamental design for an article of manufacture." According to the US Patent & Trademark Office (USPTO), a design "consists of the visual characteristics embodied in or applied to an article." Further, according to the USPTO, the design can "relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation."

  • About Michael Shimokaji

    Admitted: 1980, California

    Professional Webpage: http://www.shimokaji.com/people/lawyers_michaelashimokaji.ht...

    Honors/Awards:

    • Minority-Owned Law Firm Award for Outstanding Client Service, California Minority Counsel Program

    Bar/Professional Activity:

    • United States Patent and Trademark Office
    • California State Bar Federal Courts Committee
    • California
    • Orange County Japanese-American Lawyers Association, Founding Director
    • California Minority Counsel Program, Steering Committee, Member
    • National Asian Pacific American Bar Association, Patent Committee, Co-Chair
    • California State Bar Intellectual Property Section, Executive Committee
    • American Intellectual Property Law Association, Patent Litigation Committee, Co-Chair

    Scholarly Lectures/Writings:

    • Author, "Type of Use Determines Whether Use of Web Content Will Be Infringing" L.A. Daily Journal, August 22, 2002
    • Southwestern University School Law Review, Executive Editor
    • Author, "Mind Over Matter" Los Angeles Lawyer, April 2009
    • Author, "Putting Designs to the Test" L.A. Daily Journal, October 30, 2008
    • Author, "Contingency Defense in Patent Lawsuits" L.A. Daily Journal, August 1, 2006
    • Author, "Cease and Desist Letters May Contain Some Hidden Perils" L.A. Daily Journal, February 27, 2003
    • The Journal of the Association of University Technology Managers, Editorial Board, Member
    • Author, "Inducement and Contributory Infringement Theories to Regulate Pre-Patent Issuance Activity" 37 IDEA 571 (1997)
    • Instructor in the paralegal program at the University of California, Irvine

    Representative Clients:

    • Boeing, ChevronTexaco, Clorox, Honeywell, IBM, Lenovo, Qualcomm, Taco Bell, TCL, University of CA, Xerox  

    Newsletters:

    • Firm newsletters

    Educational Background:

    • University of California, Irvine with a bachelor's degree in chemistry

    Industry Groups

    • Life Science
    • Medical Device
    • Medtech
    Find Me Online
    Office Location for Michael Shimokaji

    8911 Research Drive
    Irvine, CA 92618

    Phone: 877-317-0767

    Fax: 949-870-3310

    Michael Shimokaji:

    Last Updated: 1/28/2019

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