Overview

Rajesh C. Noronha is a special counsel in the Intellectual Property Practice Group in the firm's Washington D.C. office.

Areas of Practice

Rajesh focuses his practice on patent and trademark litigation and on counseling clients in numerous areas of science and technology, including the chemical, electronic, mechanical, pharmaceutical and computer fields. He also has extensive experience in intellectual property licensing, portfolio development and management, and electronic discovery.

Experience

Experience

Raj has litigated high-stakes patent cases in district courts throughout the United States, before the International Trade Commission, and on appeal before the United States Court of Appeals for the Federal Circuit and the United States Supreme Court. 

  • FastShip, LLC v. United States, No. 12-484C (United States Court of Federal Claims).  Represented plaintiff Naval Architect firm against Navy for patent infringement by Littoral Combat Ship (LCS) Freedom class.  The case went through full-blown discovery including Court inspections of Fincantieri Marinette Shipyard in Marinette, Wisconsin, and Carderock in West Bethesda, Maryland.  Conducted two-week trial against the Justice Department in the United States Court of Federal Claims.  Obtained Judgment that USS Freedom (LCS-1) infringed with its patented lifting stern, which was affirmed by the Federal Circuit.  Recovered damages in the form of royalties of approximately $12.36 million.  Also awarded more than $1.23 million in costs and more than $7.40 million in attorneys’ fees in a rare award under 28 U.S.C. § 1498.  
  • Halo Electronics, Inc. v. Pulse Electronics, Inc., No. 14-1513 (United States Supreme Court).  Appellate counsel for respondent Pulse on issue of willful patent infringement and enhancement of damages. The Supreme Court abrogated In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007) (en banc) ending the Seagate regime for enhancement of damages.  Halo Electronics, Inc. v. Pulse Electronics, Inc. et al., 136 S. Ct. 1923 (2016).  The issue was remanded for further proceedings, where Pulse was found to have not committed willful infringement and damages were not enhanced.
  • Halo Electronics, Inc. v. Pulse Electronics, Inc., No. 2:07-CV-00331-PMP-PAL (D. Nevada 2013 and Nos. 2013-1472, 2013-1657 (Fed. Cir. 2014-2016): Post-trial and appellate counsel for defendants in patent infringement case concerning transformers for printed circuit boards. District court's judgment affirmed in part, vacated in part, and remanded. Halo Electronics, Inc. v. Pulse Electronics, Inc. et al., 831 F.3d 1369 (Fed. Cir. 2016).  Remand on enhanced damages issue from the U.S. Supreme Court and Federal Circuit was resolved in favor of defendants, with no enhancement of damages.
  • A.R. Arena Products, Inc. v. Grayling Industries, Inc., United States District Court for the Northern District of Ohio. Representation of plaintiff in action for patent infringement related to bulk shipping containers.
  • Akzenta Paneele + Profile GmbH and W. Classen GmbH & Co., KG v. Brown-West, L.L.C. d/b/a Carpet One Floor & Home, Shaw Industries Group, Inc. and Välinge Innovation AB (f/k/a Välinge Aluminium AB), United States District Court for the Eastern District of Texas. Representation of defendant in a patent infringement action concerning mechanical locking systems for floor panels.
  • Anthurium Solutions, Inc. v. MedQuist Inc., et al., United States District Court for the Eastern District of Texas. Defense of a leading provider of medical transcription technology and services against allegations of infringement of a United States patent covering a system for automatic electronic document processing.
  • AOL LLC and Platform-A, Inc. v. Advertise.com, Inc., United States District Court for the Eastern District of Virginia. Defense of a leading provider of online marketing solutions in an action alleging trademark infringement and unfair competition.
  • Avocet Sports Technology, Inc. v. Implus Footcare, LLC, et al., United States District Court for the Northern District of California. Representation of defendant accused of infringing a United States patent covering pressure measurement devices with a selective pressure threshold crossings accumulator.
  • Carl Zeiss Vision International GmbH v. Signet Armorlite, United States District Court for the Southern District of California. Representation of plaintiffs in an action against a competitor alleging infringement of a United States patent covering progressive lens technology.
  • Galderma Research & Development v. Hon. David Kappos, United States District Court for the District of Columbia. Representation of patentee in an action seeking recalculation of patent term adjustment for a patent directed to the treatment of dermatological disorders.
  • General Components, Inc. v. Micron Technology, Inc., United States District Court for the Eastern District of Virginia. Representation of defendant in a patent infringement action concerning minimum dead volume fittings.
  • Georgetown University v. Hon. David Kappos, United States District Court for the District of Columbia. Representation of patentee in an action seeking recalculation of patent term adjustment for a patent directed to peripheral-type benzodiazepine receptor expression level as an index of organ damage and regeneration.
  • Golden Hour Data Systems, Inc. v. emsCharts, Inc., United States District Court for the Eastern District of Texas. Representation of a defendant in a patent infringement action concerning an integrated emergency medical transportation database system, resulting in a judgment for defendant of inequitable conduct by the plaintiff, which rendered the patent at issue unenforceable.
  • Golden Hour Data Systems, Inc. v. emsCharts, Inc. et. al., United States Court of Appeals for the Federal Circuit. Representation of appellee in appeal of decision in patent infringement action concerning integrated emergency medical transportation database system.
  • IP Cleaning S.p.A. and FAIP North America, Inc. v. Annovi Reverberi S.p.A., United States District Court for the Western District of Wisconsin. Defense of a leading supplier of high pressure pump technology against allegations of infringement of a United States patent covering a pressure washer coupling assembly.
  • Napasol AG v. Cosmed Group, Inc., United States District Court for the Northern District of Iowa. Representation of counterclaim plaintiff and patentee Cosmed in patent infringement case concerning steam pasteurization equipment and methods.
  • National Student Clearinghouse v. Avow Systems, Inc., United States District Court for the Eastern District of Virginia. Representation of patentee in a declaratory judgment action involving a patent directed to electronic document management and delivery.
  • Penguin Brands, Inc. v. Implus Footcare, LLC, United States District Court for the Southern District of New York. Representation of defendant in a patent infringement action concerning universal cleat products.
  • Rembrandt Data Technologies, LP v. AOL, LLC, et al., United States District Court for the Eastern District of Virginia. Defense of a regional provider of telephone and related services in an action alleging violation of four patents covering modems used in certain dial-up communication systems.
  • Schindler Elevator Corp., et al. v Otis Elevator Co., United States District Court for the Southern District of New York. Representation of plaintiffs in an action against a competitor alleging infringement of a United States patent covering destination dispatch systems in elevator installations.
  • Sepracor, Inc. v. Breath Ltd., United States District Court for the District of Massachusetts. Representation of plaintiff in a Paragraph IV infringement case relating to a generic version of levalbuterol.
  • Sepracor, Inc. v. Dey, L.P., United States District Court for the District of Delaware. Representation of plaintiff in a Paragraph IV infringement case relating to a generic version of levalbuterol.
  • Välinge Innovation AB v. Pergo AG, Pergo AB, and Pergo LLC, United States District Court for the District of Delaware. Representation of plaintiff in a patent infringement action concerning mechanical locking systems for floor panels.

Raj also routinely counsels clients in handling their intellectual property to optimize their business objectives, including activities related to patent prosecution, licensing, due diligence and commercial agreements.

  • Representation of European investment bank in the patent due diligence and negotiations for a US$38.5 million series B funding of progressive multiple sclerosis drug.
  • Representation of biotechnology company which specializes in drug delivery and food/beverage technologies, as counsel in an appeal to the US Court of Appeals for the Federal Circuit following reexamination of a patent directed to nanoemulsion concentrates for dispersing non-polar actives into polar solvents.
  • Representation of a world-renowned medicinal chemist regarding preparation and prosecution of  pharmaceutical compound and method patents directed to soft anticholinergic analogs and related licensing of the same in the US, and to a major Asian pharmaceutical company.
  • Representation of privately held clinical-stage pharmaceutical development company regarding patent prosecution, counseling and diligence concerning ophthalmic drugs and novel drug delivery to the eye, including a successful phase II cyclodextrin nanoparticle eye drop product to treat diabetic macular edema (DME).
  • Representation of a global branded pharmaceutical company regarding patent prosecution, counseling and enforcement efforts, including Orange Book listing of patents and related counseling, including analysis of paragraph IV certifications and participation in related litigation.
  • Representation of a New York-based client in a patent due diligence and freedom-to-operate investigation of food industry technology valued at US$150 million.
  • Representation of a patent holder (with qualified French counsel) in product seizure operations in France and related patent infringement litigation proceedings in the High Court of Paris.
  • Representation (with qualified foreign counsel) of a major European patent holder in a product import monitoring and patent enforcement campaign covering the US, Canada, France and the United Kingdom.
  • Representation of an early-stage biotechnology company in global patent legal matters directed to biocatalytic technologies in the water, energy and chemical industries.
  • Representation of a global financial services company in patent due diligence issues arising in connection with high-value pharmaceutical investments.

* Includes some matters prior to joining Sheppard Mullin

Honors

Honors

Washington D.C., Rising Star, Super Lawyers, 2014, 2015

Insights

Articles

  • Co-author, "Coordinating Litigation and Re-Examination," The Recorder, June 1, 2012
  • "False Patent Marking: No Competitive Injury Is Currently Required," Intellectual Property Litigation, Winter 2011
  • "European Court of Justice Rules that Communications Between In-House Counsel and its Client are Not Entitled to Privilege," Legalink Newsletter, 2010
  • "Willful Infringement Remains Issue in Patent Cases," The National Law Journal, 2009

Speaking Engagements

  • "Recent Developments in Chemical, Pharmaceutical and Biotech Patent Practice," 2015-2021
  • "US Post-Grant Review Procedures," May 2018
  • “Virtual Patent Marking -- An Underutilized Tool,” December 2014
  • "Practice Points for Terminal Disclaimers and Double-Patenting Rejections," March 2014
  • "Recent Notable Decisions and Trends in Post-Grant Proceedings," March 2014
  • "Recent Notable Decisions of the Court of Appeals for the Federal Circuit," November 2014

Memberships

Memberships

Member, American Intellectual Property Law Association

Member, Litigation and Intellectual Property Sections, Virginia State Bar

Member, Litigation and Intellectual Property Law Sections, District of Columbia Bar

Board of Governors, The John Carroll Society

Education

J.D., Catholic University, Columbus School of Law, 2005

B.S.E., University of Pennsylvania, School of Engineering & Applied Science, 2002

Clerkships

  • Judicial Law Clerk to Chief Judge Sue L. Robinson of the U.S. District Court for the District of Delaware

Admissions

  • District of Columbia
  • New Jersey
  • Pennsylvania
  • Virginia
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