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Rajiv P. Patel

Chair, Patent

Partner, Intellectual Property  

Mountain View 650.335.7607

Overview

Rajiv Patel chairs the firm’s Patent Group. With clients, he also often serves in the role of defacto in-house patent counsel. In this role he helps companies develop and manage patent strategy, portfolio development, and patent prosecution. He also guides them in patent transaction and patent pre-litigation counseling and strategy. Further in this role he has helped companies strategically manage their patent budgets. Rajiv also has served as a temporary in-house patent counsel for a Fortune-500 electronics company where he oversaw their 1000+ asset patent portfolio, while managing outside counsel and annual budget.

Rajiv’s areas of expertise include complex software that include data analytics, financial transactions, image processing, and networked security. He also has experience with electrics, and semiconductors, consumer electronics, mechanical technologies, and medical software and devices.

Rajiv also is active with advising companies on patent disputes. He has led numerous ex parte and inter parte reexaminations, as well as inter parte review (IPR) proceedings representing third-parties and patent owners. Rajiv also has worked on district court patent litigation matters, including advising on Patent Office / District Court cross forum strategies. Amongst his experiences has been defense of Amazon’s one-click patent in reexamination.

Rajiv was a former Adjunct Professor of Law at the University of California, Hastings College of the Law and is a program chair for Practising Law Institute patent programs such as Advanced Patent Prosecution Seminar and Post Grant Proceedings Seminar.

Rajiv has been recognized as a Northern California "Super Lawyer" in the area of Intellectual Property each year since 2006. Intellectual Asset Management magazine named him to the IAM Patent 1000: The World’s Leading Patent Practitioners. The Daily Journal has named Rajiv as one of the "Top Intellectual Property Attorneys" in California.

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 kids’ favorite teams – San Francisco Giants, San Jose Sharks and Golden State Warriors.

Representative Experience:

Patent Strategy and Portfolio Development

  • Served as in-house patent counsel role for 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 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
  • 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," 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
  • "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 Advisor, University of New Hampshire School of Law
  • Life Member, South Asian Bar Association
  • Board Member (past), ITechLaw Association
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