FENWICK

In patent procurement matters, Mr. Patel creates patent strategies and counsels, prepares and prosecutes patents in areas such as integrated circuit design, mobile, media and gaming, and medical device and analytics technologies. He advises companies on strategic uses of patent reissue proceedings and actively prosecutes such proceedings. He also appears 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 infrastructure, electronic commerce, 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 in corporate transactions in industries such as clean technology and social media.

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. Presently, he is on the faculty of Practising Law Institute and chairs the Advanced Patent Prosecution program.

Mr. Patel has been recognized as a Northern California "Super Lawyer" in the area of Intellectual Property each year since 2006.

Patent Strategy and Portfolio Development

• Served as in-house patent counsel role for large electronics industry company, managing patent portfolio and instructing outside counsel
• 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 Bandwidth 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 projects for high-technology investments by venture capital companies and for targets and acquirers in merger and acquisition matters

Patent Litigation (Representative Cases)

• Nomadix v. Hewlett-Packard Company et al. - patent litigation involving Internet protocol network redirection
• 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
• Litigation and reexamination crossover matters – advised on and led ex parte and inter partes reexaminations in litigation context
• Reexamination patent defense – advised on and led defense of patents in reexamination, including highly visible electronic commerce patent at U.S. Patent and Trademark Office

Teaching Experience

• Program Co-Chair; ITechLaw India Conference
• 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"
• Adjunct Professor of Law at University of California, Hastings College of the Law

Publications

• "Eighteen Months Later: How Bilski has Impacted Process Patents," 2011
• "Seven Sins – IP Mistakes Technology Start Ups Should Avoid," 2010
• "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, University of New Hampshire School of Law
• Board Member (past), ITechLaw Association
• American Intellectual Property Law Association
• TiE ("The Indus Entrepreneurs"/"Talent, Ideas, Enterprise")
• Coach (Soccer and Baseball)