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Rajiv P. Patel

Chair, Intellectual Property

Partner, Intellectual Property  

Mountain View 650.335.7607

Overview

Rajiv has extensive experience advising companies on setting business-focused intellectual property strategies. In guiding companies, Rajiv starts with understanding a company’s business strategy relative to its industry and long-term direction. From here Rajiv works with the company to identify key innovations that drive the business strategy. He frames an appropriate IP strategy so that the company can articulate a sound IP story to customers, investors and potential acquirers.

Rajiv’s experience is based on over 23 years of advising companies in the Silicon Valley from just founded startups to mature companies seeking re-direction or a re-set on their IP strategy. Rajiv’s experiences have included developing early IP strategies and patent portfolios for numerous technology and life science companies such as Palm, GoPro, Twitter, Venmo and Merck. Rajiv’s experience includes an “in-house” counsel role for a Fortune 500 tech company where he managed outside counsel and a budget for protecting over 1000 patent assets. His experience also includes advising companies on patent acquisition and divestitures, asserting and defending patents involved in patent litigation, and re-structuring patent portfolios in a wide range of technology fields.

Rajiv also has practical industry experience. Prior to law, Rajiv was an engineer for IBM. Rajiv has been recognized by the Daily Journal as a top 25 IP Portfolio Manager in California. He also has been recognized for his skills by Intellectual Asset Management, Chambers and Northern California Super Lawyers. Rajiv was an adjunct professor at the University of California, Hastings College of the Law. He is an Advisory Board member and former Board of Trustees member for the University of New Hampshire School of Law.

In his spare time Rajiv enjoys the hiking, backpacking and camping with his family. He also follows his favorite childhood sports teams – New York Giants, New York Mets and the Rutgers Scarlet Knights, as well as his local favorite teams – San Francisco Giants, Oakland A’s, San Jose Sharks, San Francisco 49ers and Golden State Warriors.

Representative Experience:

Patent Strategy and Portfolio Development

  • Served as in-house patent counsel for a large electronics industry company; managed portfolio and budget and directed 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 sold for over $750,000 for an online auction company

Patent IP Transactions (Representative Matters)

  • Led intellectual property audit for a 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 an 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 v. Plaxo: patent litigation involving social media and contact management technology
  • Akamai Technologies v. Speedera Networks: patent litigation involving Internet content delivery services
  • Planet Bingo v. GameTech International: patent litigation involving casino style games on electronic devices
  • GameTech International v. Bettina Corporation: patent litigation involving electronic gaming
  • SanDisk Corporation v. Lexar Media: patent litigation involving flash memory consumer products
  • ICTV v. Worldgate Communications: advised on patent litigation strategy in interactive television market
  • District Court Litigation and Patent Office Litigation crossover matters: advised on and led ex parte and inter partes reexamination and inter partes review proceedings in litigation context; led Amazon 1-click patent reexamination defense

Teaching Experience:

  • Program Co-Chair; ITechLaw India Conference 2009-2012
  • 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,” Fenwick & West, 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, 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
  • “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, November 2002
  • “Potent Portfolio,” Daily Journal, December 15, 2000
  • "Own Idea," Daily Journal, January 15, 1999
  • "Disclose Lite," Daily Journal, March 21, 1997

Organization and Community Participation:

  • Board Advisor, University of New Hampshire School of Law
  • Life Member, South Asian Bar Association
  • Board Member (past), ITechLaw Association
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