Ali Tehrani

Counsel

Overview

Ali Tehrani is an intellectual property counsel in Crowell & Moring's Washington, D.C. office. His practice focuses on IP litigation in district court cases, at the appellate level before the U.S. Court of Appeals for the Federal Circuit, in post-grant proceedings at the U.S. Patent and Trademark Office (USPTO), and in International Trade Commission (ITC) proceedings.

Ali has successfully represented and counseled numerous clients in high-stakes IP disputes.  He and a team of Crowell lawyers represent MRSI Systems, LLC and recently won the first-ever bench trial on the issue of IPR estoppel, held before Chief Judge Saylor of the U.S. District Court for the District of Massachusetts. After winning the bench trial, the team secured a case dispositive summary judgment of invalidity against the sole asserted patent, which Chief Judge Saylor held to be directed to a patent-ineligible abstract idea.

Also representing Siemens in a multi-forum IP dispute involving Positive Train Control technology, Ali and a team of Crowell lawyers successfully defeated a preliminary injunction that was sought against Siemens.  The Crowell team later won a jury verdict of willful infringement and a $15 million damages award.  Other recent successes include winning a contempt proceeding, resulting in an award of damages and attorneys’ fees for Arlington Industries.       

In conjunction with his litigation practice, Ali also regularly counsels clients on:

  • Joint development and collaboration agreements.
  • IP rights in Artificial Intelligence systems and Digital Transformation.
  • Internet-of-Things (IoT) and cyber security.
  • IP portfolio development and management.
  • Trade secrets protection and misappropriation matters.
  • IP ownership rights.
  • IP due diligence in mergers and acquisitions.
  • Patent (non-)infringement or (in-)validity opinions.
  • Data rights and patent rights in government contracts.
  • Regulatory and legislative policy.

Prior to joining the firm, Ali worked in-house for a major Fortune 500 company. He received his law degree from The George Washington University Law School, where he studied patent law under the former chief judge of the Federal Circuit and the former deputy general counsel of the USPTO. Ali also holds an LL.M. in IP law and policy.

Ali also has an active pro bono practice. He has successfully represented a mother in a Hague Convention custody case at the district court and on appeal. Most recently, he represented a charter school for African-American and Latino children in an IP dispute.

Career & Education

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    • Bellevue College, A.A.S., computer science, 2005
    • University of Washington, B.A., political science, 2006
    • University of Washington School of Law, LL.M., 2009
    • The George Washington University Law School, J.D., 2013
    • Bellevue College, A.A.S., computer science, 2005
    • University of Washington, B.A., political science, 2006
    • University of Washington School of Law, LL.M., 2009
    • The George Washington University Law School, J.D., 2013
    • District of Columbia
    • Maryland
    • U.S. Court of Appeals for the Federal Circuit
    • U.S. Court of Appeals for the D.C. Circuit
    • Maryland Court of Appeals
    • U.S. District Court for the District of Maryland
    • District of Columbia
    • Maryland
    • U.S. Court of Appeals for the Federal Circuit
    • U.S. Court of Appeals for the D.C. Circuit
    • Maryland Court of Appeals
    • U.S. District Court for the District of Maryland
  • Professional Activities and Memberships

    • Federal Circuit Bar Association
    • PTAB Bar Association
    • American Intellectual Property Law Association
    • International Trademark Association
    • American Bar Association

    Professional Activities and Memberships

    • Federal Circuit Bar Association
    • PTAB Bar Association
    • American Intellectual Property Law Association
    • International Trademark Association
    • American Bar Association
    • German
    • German

Representative Matters

Representative Industries

Ali has represented a wide range of domestic and international clients across a variety of industries, including:

  • Computer software, cloud computing, and mobile applications
  • Cryptographic systems
  • Consumer electronics
  • Electrical products and fittings
  • Automated high-precision, high-speed die bonding and epoxy dispensing systems
  • Automotive systems
  • Positive Train Control systems
  • Defense systems
  • Telecommunication services
  • Ecommerce and consumer products
  • Banking and investments
  • Health care, insurance, and reinsurance
  • Thermoplastic materials
  • Medical devices, pharmaceuticals, and nutritional supplements
  • Hotels and hospitality services
  • Fashion and films / motion pictures

District Courts

Significant Recent Wins

  • Palomar Technologies, Inc. v. MRSI Systems, LLC, No. 18-cv-10236 (D. Mass.): Won case dispositive summary judgment of invalidity, holding that the asserted patent is directed to a patent-ineligible abstract idea. Won also first-ever bench trial on the issue of IPR estoppel, holding MRSI is not estopped from asserting key prior art references. Representing MRSI in patent infringement action relating to automated, high-precision, high-speed die bonding systems used in telecom / datacom (data center), aerospace & defense, medical devices, computers and peripherals, and industrial applications.
  • Siemens Mobility, Inc. v. Westinghouse Air Brake Technologies Corporation, No. 16-cv-00284 (D. Del.): Won a jury trial and a $15 million damages award for Siemens in a wide-ranging, multi-forum IP dispute involving Positive Train Control technology. 
  • Arlington Industries, Inc. v. Bridgeport Fittings, Inc., No. 06-cv-1105 (M.D. Pa.): Won summary judgment of infringement and summary judgment of damages close to $1.1 million for Arlington Industries in patent infringement action involving electrical connectors.
  • Arlington Industries, Inc. v. Bridgeport Fittings, Inc., No. 02-cv-0134 (M.D. Pa.): Won contempt proceeding and obtained judgment of infringement with damages in the amount of over $2.3 million for Arlington Industries in patent infringement action involving electrical connectors.

Ongoing Representative Engagements

  • Palomar Technologies, Inc. v. MRSI Systems, LLC, No. 18-cv-10236 (D. Mass.): Representing MRSI in patent infringement action involving automated, high-precision, high-speed die bonding systems used in telecom / datacom (data center), aerospace & defense, medical devices, computers and peripherals, and industrial applications. 
  • MRSI Systems, LLC v. Palomar Technologies, Inc., No. 19-cv-02344 (S.D. Cal.): Representing MRSI in patent infringement action involving die, wire, and wedge bonder systems.
  • LifeNet Health v. RTI Surgical, Inc., No. 1:18-cv-00146 (N.D. Fla.): Representing LifeNet in patent infringement action involving composite bone graft and soft tissue graft technology. 
  • Cellular Dynamics International, Inc. et al. v. Lonza Walkersville, Inc., No. 17-cv-02713 (D. Md.): Representing Lonza in patent infringement action involving induced pluripotent stem cells (iPSCs).

Prior Representative Engagements

  • InnoBrilliance, LLC v. Rekor Recognition Systems, Inc., No. 8:19-cv-02334 (S.D. Cal.): Successfully represented Rekor in patent infringement action involving license plate recognition systems. 
  • The Regents of the University of California v. St. Jude Medical, LLC, No. 16-cv-06210 (N.D. Cal.): Successfully represented The Regents in medical device patent infringement action involving radiofrequency ablation catheters and pulmonary vein isolation procedures.
  • The Regents of the University of California v. Boston Scientific Corporation, No. 16-cv-06266 (N.D. Cal.): Successfully represented The Regents in medical device patent infringement action involving radiofrequency ablation catheters and pulmonary vein isolation procedures.
  • The Regents of the University of California v. AtriCure, Inc., No. 16-cv-06506 (N.D. Cal.): Successfully represented The Regents in medical device patent infringement action involving radiofrequency ablation catheters and pulmonary vein isolation procedures.
  • Arlington Industries, Inc. v. PlyGem Holdings, Inc. et al., No. 16-cv-00069 (N.D. Cal.): Successfully represented Arlington Industries in patent infringement action.
  • DataMotion Texas, LLC v. Citigroup, Inc., No. 15-cv-01721 (E.D. Tex.): Successfully represented Citigroup in patent infringement action involving cryptographic security systems.
  • Spark Networks USA, LLC v. Smooch Labs, Inc., No. 14-cv-9027 (S.D.N.Y.): Successfully represented Spark (owner of JDate) in patent and trademark infringement action against defendant (owner of the smartphone application JSwipe).
  • Secure Axcess, LLC v. U.S. Bank National Association, No. 13-cv-717 (E.D. Tex.): Successfully represented U.S. Bank and T. Rowe Price against patent infringement allegations.

Patent Trial and Appeal Board

  • RTI Surgical, Inc. v. LifeNet Health, Nos. IPR20019-00569, -00573 (PTAB): Representing patent owner LifeNet Health in IPR proceedings involving composite bone graft and soft tissue graft technology.
  • Bridgeport Fittings, Inc. v. Arlington Industries, Inc., No. PGR2018-00005 (PTAB): Won by obtaining denial of institution on all petitioned grounds for patent owner Arlington Industries in post-grant proceeding involving electrical connector technology.
  • St. Jude Medical, LLC v. The Regents of the University of California, Nos. IPR2017-01338, -01339 (PTAB): Won by obtaining dismissal of petitions for patent owner The Regents in IPR proceedings involving technology related to pulmonary vein isolation.
  • T. Rowe Price Investment Services, Inc. v. Secure Axcess, LLC, No. CBM2015-00027 (PTAB):  Successfully instituted a Covered Business Method Review on behalf of T. Rowe Price.

International Trade Commission

  • Certain Vehicular Smart Watch Systems, Related Software, Components Thereof, and Products Containing the Same, Inv. No. 337-TA-932 (ITC):  Won by obtaining complainant’s voluntary dismissal in ITC and district court for General Motors Company and OnStar in patent infringement case involving a smartwatch-based mobile app for controlling vehicle security and diagnostics functions.
  • Certain Carburetors and Products Containing Such Carburetors, Inv. No. 337-TA-1123 (ITC):  Successfully represented MTD Products in ITC proceeding involving hand-held outdoor equipment.
  • Certain Radio Frequency Microneedle Dermatological Treatment Devices and Components Thereof, Inv. No. 337-TA-1112 (ITC):  Successfully represented Lumenis and Pollogen in ITC proceeding involving radio frequency skin treatment devices.        

Appellate Courts

  • Bridgeport Fittings, Inc. v. Arlington Industries, Inc., No. 2015-1616, -1617 (Fed. Cir. Mar. 17.2016): Won consolidated appeals for Arlington Industries from inter partes reexaminations, affirming the validity of two patents involving electrical connector technology.
  • Arlington Industries, Inc. v. Bridgeport Fittings, Inc., No. 2014-1633 (Fed. Cir. Aug. 10, 2015): Won affirmance of the district court’s claim construction, judgment of patent infringement, contempt of injunction, and award of attorneys’ fees for Arlington Industries. 
  • Better Food Choices, LLC v. Weight Watchers International, Inc., No. 2015-1304 (Fed. Cir. Nov. 9, 2015): Won affirmance of the district court's dismissal of plaintiff's patent infringement action for Weight Watchers. 
  • Arlington Industries, Inc. v. Bridgeport Fittings, Inc., No. 2013-1357 (Fed. Cir. Jul. 17, 2014): Won dismissal of an untimely interlocutory appeal for Arlington Industries.
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