| RAJIV P. PATEL |
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| Emphasis |
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Patent Counseling |
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Patent Analysis |
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Patent Prosecution |
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Patent Reexamination / Litigation |
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IP/Patent Licensing |
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IP/Patent Audits |
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IP/Patent Due Diligence |
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| Profile |
With extensive experience in patent procurement, disputes, and transactions, Mr. Patel is frequently retained to develop and execute patent strategies for clients.
In patent procurement matters, Mr. Patel creates patent strategies and counsels, prepares and prosecutes patents in a wide range of electrical, mechanical and software technologies. He advises companies on strategic uses of patent reissue proceedings and actively prosecutes such proceedings. He also partakes in appeals before the Board of Patent Appeals and Interferences. In addition, Mr. Patel develops and executes global patent strategies involving patent procurement in Europe, Canada, Australia, Japan, Korea, China, Taiwan, Brazil and India.
In patent dispute matters, Mr. Patel is active in reexamination and litigation proceedings in technology areas that include solid-state memories, electronic gaming, Internet technologies, and media and entertainment.
In patent transaction matters he is involved with negotiations of patent and intellectual property ("IP") licenses, and leads IP due diligence and audit matters for mergers & acquisitions, venture funding, initial public offerings, private equity financings, and securitizations.
In addition to his law practice, Mr. Patel was an Adjunct Professor of Law at the University of California, Hastings College of the Law where he taught a patents course. Mr. Patel was a faculty member of Law Seminars International and The Continuing Education Bar of the State Bar of California. Presently, he is on the faculty of Practising Law Institute and chairs two patent programs (1) Advance Patent Prosecution and (2) Patent Reexamination and Litigation Crossover Proceedings. In addition, Mr. Patel has authored a number of articles in the field of patent law.
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| Education |
Franklin Pierce Law Center, J.D. and M.IP., 1995 Rutgers University, B.S., in electrical engineering, with high honors, 1989
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| Admitted to Practice |
Member of the State Bar of California and registered in the U.S. Patent and Trademark Office. |
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| Additional Information |
Patent Strategy and Portfolio Development
- Created patent strategy and developing patent portfolio for $500 million plus product line for a peripherals company.
- Restructured existing portfolio of 100-plus patents for a devices company to align patent portfolio with re-directed business strategy.
- Created patent strategy and advised on patent portfolio for on-line auction company. Patent portfolio sold for over $750,000.
- Sample Patents (Electrical / Electronics):
- U.S. Patent No. 7,058,907 Reduction of Cross-Talk Noise in VLSI Circuits
- U.S. Patent No. 6,246,294 Supply Noise Immunity Low-Jitter Voltage-Controlled Oscillator Design
- U.S. Patent No. 6,052,033 Radio Frequency Amplifier System and Method
- U.S. Patent No. 5,991,296 Crossbar Switch with Reduced Voltage Swing and No Internal Blocking Path
- U.S. Patent No. 5,948,083 System and Method for Self-Adjusting Data Strobe
- Sample Patents (Consumer / Mechanical Products):
- U.S. Patent No. 6,813,372 Motion and Audio Detection Based Webcamming and Bandwidith Control
- U.S. Patent No. 6,246,016 Optical Detection System, Device, and Method Utilizing Optical Matching
- U.S. Patent No. 5,835,852 Integrated Electronic Communication Device and Clip
- Sample Patents (Computer Architecture / Software):
- U.S. Patent No. 6,389,405 Processing System for Identifying Relationships Between Concepts
- U.S. Patent No. 6,275,622 Image Rotation System
- U.S. Patent No. 6,055,629 Predicting Branch Instructions in a Bunch Based on History Register Updated Once
- U.S. Patent No. 5,995,955 System and Method for Expert System Analysis Using Quiescent and Parallel Reasoning and Set Structured Knowledge Representation
Patent IP Transactions (Representative Matters)
- Led intellectual property audit for Fortune 500 communication company's intellectual property in wireless technology and advised on intellectual property issues in context of tax framework.
- Led intellectual property audit for electronic gaming company and developed intellectual property management structure for company.
- Conducted numerous intellectual property due diligence for high-technology investments by venture capital companies.
- Conducted numerous intellectual property due diligence on behalf of target companies or acquirer companies in high-technology merger and acquisition matters.
Patent Litigation (Representative Cases)
- Reunion.com and GoodContacts Ltd. v. Plaxo, Inc. - patent litigation involving social media and contact management technology.
- Akamai Technologies, Inc. v. Speedera Networks, Inc. - patent litigation involving Internet content delivery services.
- Planet Bingo, LLC v. GameTech International, Inc. - patent litigation involving casino style games on electronic devices.
- GameTech International, Inc. v. Bettina Corporation - patent litigation involving electronic gaming.
- SanDisk Corporation v. Lexar Media, Inc. - patent litigation involving flash memory consumer products.
- ICTV, Inc. v. Worldgate Communications, Inc. - advised on patent litigation strategy in interactive television market.
Teaching Experience
- Program Chair; Practising Law Institute course on "Advanced Patent Prosecution"
- Program Chair; Practising Law Institute course on "Reexamination and Patent Litigation Crossover Proceedings".
- Faculty Member; Practising Law Institute courses on "Fundamentals of Patent Prosecution," and "Patent Law for the Non-Specialist".
- Speaker; ITechLaw India session on "Global Patent Prosecution Strategy".
- Adjunct Professor of Law at University of California, Hastings College of the Law (2001 to 2006).
Publications
- "Developing a Patent Strategy - A Checklist for Getting Started", 2003-2008.
- "International Patent Strategy", www.fenwick.com, 2006-2007.
- "An Introduction to U.S. Patent Prosecution," Fundamentals of Patent Prosecution, Practising Law Institute, 2005-2008.
- "Challenging (or Strengthening) Patents in the U.S. Using Patent Reexamination", ITechLaw Association Asian Conference, Mumbai, India, 2008.
- "Patent Reexamination and the Crossover with Litigation", Practising Law Institute, 2007-2008.
- "Software Escrows as Part of an Intellectual Property Strategy," ITechLaw Association First Asian Conference, Bangalore, India, 2005
- "Underutilized Patent Reexaminations Can Improve Business Strategy," Daily Journal, Vol. 110, No. 75, April 19, 2004.
- "Software Outsourcing Offshore – Business and Legal Issues Checklist," SHG Software 2004 Conference, 2004
- "A Strategic Look at the Final Rejection," Advanced Patent Prosecution Workshop, Practising Law Institute, 2003 - 2006.
- "Think Value, Not Cheap, For Long-Term Success," Succeeding with New Realities, TiEcon 2003, Published by TiE Silicon Valley 2003.
- "The Intellectual Property Audit," Building and Enforcing Intellectual Property Value, An International Guide for the Boardroom 2003, Published by Globe White Page 2002.
- "Patent Portfolio Strategy for Start-Up Companies: A Primer," Patent Strategy and Management, Vol. 3, No. 7, Nov. 2002.
- "Potent Portfolio," Daily Journal, Vol. 106, No. 244, Dec. 15, 2000.
- "Own Idea," Daily Journal, Vol. 105, No. 10, Jan. 15, 1999.
- "Disclose Lite," Daily Journal, Vol. 103, No. 55, Mar. 21, 1997.
Organization and Community Participation
- Board Member, ITechLaw Association
- Dean's Leadership Council for Franklin Pierce Law Center
- Dean's Committee for Rutgers University, School of Engineering
- American Intellectual Property Law Association
- TiE ("The Indus Entrepreneurs"/"Talent, Ideas, Enterprise")
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| Representative Clients |
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Adap.tv |
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Canon Research Americas, Inc. |
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Compuware Corporation |
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Logitech, Inc. |
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Magma Design Automation, Inc. |
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Palm, Inc. |
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Sipro Lab Telecom, Inc. |
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Vibrant Media Inc. |
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