Naveen ModiNaveenModi

Partner, Intellectual Property

naveenmodi@paulhastings.com

Washington, D.C.+1 202 551 1990

Naveen Modi is the co-chair of the Intellectual Property Practice at Paul Hastings, overseeing the firm’s Global Intellectual Property practice consisting of more than 100 attorneys.

Naveen’s practice covers all aspects of high stakes IP-related legal work, including litigation before federal district courts, the U.S. International Trade Commission and federal appeals courts; post-grant proceedings, interferences and derivation proceedings before the Patent Trial and Appeal Board (PTAB); arbitrations; and due diligence and client counseling. He has led “bet-the-company cases” involving patents, trademarks, trade secrets and copyright issues. He has represented both companies accused of infringement and those whose IP has been infringed in a wide range of technical areas, including electronics, software, business methods, medical devices, chemicals, pharmaceuticals and biotechnology.

Representation of a variety of companies in IP matters over the years, including Acorda, Applied Materials, Alkermes, AT&T, Boeing, Boehringer Ingelheim, BioMarin Pharmaceutical, Boston Scientific, Capital One, Canon, Chevron, Corelogic, Daiichi Sankyo, eBay, Eisai, Eli Lilly, Fitbit, Google, Helsinn, HTC, Illumina, Insys, JSR, L''Oréal, Medtronic, Merck, Mitek, Opinion Lab, PayPal, Samsung, SAP, Snap, Taiwan Semiconductor Manufacturing Company (TSMC), TikTok, Uber, Walgreen, Wintek and Zimmer Biomet.
Representation of Google in numerous post-grant proceedings, including inter partes review and post-grant review.
Infineum USA L.P. v. Chevron Oronite LLC. Representation of Chevron in district court litigation in Delaware, in IPRs, and appeals to Federal Circuit and Supreme Court involving oil lubrication technology.
Evrythng Limited v. Avery Dennison. Representation of Evrythng in litigations in New York and Massachusetts and in IPRs involving software and patent, trademark, trade secret and breach of contract issues.
Exactech, Inc. v. Zimmer Biomet et al. Representation of Zimmer Biomet in litigations in California and Florida involving medical devices and patent, trade secret, copyright infringement and breach of contract issues.
Liqwd, Inc. v. L''Oréal USA, Inc. Representation of L''Oréal in litigations in Delaware and California involving hair products and patent, trade secret, and breach of contract issues.
Elm 3DS Innovations, LLC v. Samsung Electronics Co., LTD. Representation of Samsung in a patent litigation in Delaware and IPRs involving semiconductor technology.
University of Western Australia v. Academisch Ziekenhuis Leiden. Representation of BioMarin in Federal Circuit Appeals.
Advanced Marketing Systems LLC v. Walgreen Co. Representation of Walgreen in a patent litigation in Texas and CBMs involving software.
Rothschild Mobile Imaging Innovations, LLC v. Mitek Systems, Inc. Representation of Mitek in patent litigation in Delaware and IPRs involving software.
Back Bay Medical Inc. v. Covidien Holding Inc. Representation of Covidien (now part of Medtronic) in a patent litigation in California involving medical devices.
Parallel Networks, LLC v. SAP America, Inc. (D. Del.), Aloft Media, LLC v. SAP AG (E.D. Tex.), and com, Inc. v. SAP AG (E.D. Pa.). Representation of SAP in patent litigations involving software.
TPK Touch Solutions, Inc. v. Wintek Electro-Optics Corporation. Representation of Wintek in a patent litigation in California and IPRs involving touch panels.
In re Certain Semiconductor Chips and Products Containing the Same, 337-TA-753 (ITC) and In re Certain Semiconductor Chips Having Synchronous Dynamic Random Access Memory Controllers, 337-TA-661 (ITC). Representation of Rambus in patent infringement cases in the ITC involving semiconductor devices.
Medtronic, Inc. v. Guidant Corp. and Guidant Corp. v. St. Jude Medical, Inc. Representation of Guidant (now part of Boston Scientific) in patent infringement cases in Delaware involving medical devices.
Supinski v. Cohen. Representation of Zimmer in a patent interference involving medical devices.
Rambus Inc. v. International Business Machines Corp. Representation of Rambus in a patent interference dispute before the Board of Patent Appeals and Interferences and in California involving semiconductor devices.
Lalonde v. Li and Prutchi v. Lofgren. Representation of Boston Scientific in patent interferences involving medical and semiconductor devices.

Band 1 – Intellectual Property: Litigation, District of Columbia
Chambers USA
Band 1 – Intellectual Property: Patent Prosecution, District of Columbia
Chambers USA
Band 1 – Intellectual Property: Patent Trial and Appeal Board, Nationwide
Chambers USA
Intellectual Property, Nationwide
Chambers USA
Intellectual Property: Patent
Chambers Global
Benchmark Litigation Star, Benchmark Litigation
500 Leading Litigators in America
Lawdragon
Leading Lawyer, Intellectual Property — Patents: Litigation
Legal 500
Dispute Resolution — Appellate: Courts of Appeals
Legal 500
Intellectual Property — Patents: Litigation (International Trade Commission)
Legal 500
Post Grant Proceedings Attorney of the Year
LMG Life Sciences Awards
IP Star
LMG Life Sciences
Practitioner of the Year — PTAB
Managing Intellectual Property
Outstanding IP Litigator of the Year — PTAB
Managing Intellectual Property
IP Star
Managing Intellectual Property
IP MVP
Law360
Legal Lion
Law360
Global Leaders
IAM
Leading Patent Practitioner
IAM Patent 1000
Outstanding 50 Asian Americans in Business
Washington D.C.
Super Lawyer
George Mason University School of Law Alumni Association Scholarship

“The Increasing Importance of Diversity and Inclusion in the Legal Profession, Especially in Today’s Challenging Times,” Intellectual Property Magazine, Co-Author
APRIL 28, 2020
“Use of PTAB Decisions in District Court Litigation,” IPWatchdog, Author
SEPTEMBER 18, 2016
“Five Years In: The AIA’s Effects on Patent Litigation (Perspective),” Bloomberg BNA Big Law Business, Co-Author
SEPTEMBER 8, 2016
“Some Federal Circuit Guidance on Procedural Safeguards for PTAB,” Law360, Co-Author
JUNE 30, 2016
“Federal Circuit Provides Guidance on the APA’s Procedural Safeguards for PTAB Proceedings,” Lexology, Co-Author
JUNE 16, 2016
“PTAB Provides Guidance on AIA Estoppel Provisions,” Managing Intellectual Property, Co-Author
OCTOBER 28, 2015
“Quick Fixes Implemented, New Rules on the Way for PTAB Trial Practice,” Lexology, Co-Author
APRIL 1, 2015
“Fifteen Months of Contested Proceedings Under the America Invents Act: Lessons Learned,” BNA’s Patent, Trademark & Copyright Journal, Co-Author
FEBRUARY 7, 2014
“Mechanisms and Strategies for Challenging Patents at the USPTO in the Wake of the America Invents Act,” Intellectual Property Today, Co-Author
April 2012

Member
Advisory Council, U.S. Court of Appeals for the Federal Circuit
Member
GW’s IP Advisory Council (IPAC)
Past-President & Member
PTAB Bar Association
Member
Federal Circuit Bar Association
Member
American Intellectual Property Law Association

“Berkeley/GW Law Roundtable on the Recent USPTO Post-Grant Rules Package,” Speaker
JUNE 6, 2023
“Patent Litigation Variation: The PTAB vs. ITC vs. District Court,” IPWatchdog Studios Patent Litigation Masters, Ashburn, VA, Speaker
MAY 16, 2023

“GW PTAB Roundtable,” Washington, D.C., Speaker
SEPTEMBER 29, 2022
PTAB, Federal Circuit Bar Association 2022 Bench & Bar Conference, Sea Island, GA, Speaker
JUNE 18, 2022
“JAMS IP Cross Border Disputes Roundtable,” Speaker
SEPTEMBER 29, 2021
“2021 Patent Trial and Appeal Board Bench & Bar,” AIPLA, Speaker
AUGUST 5, 2021
“Patent Law and the Life Sciences,” New York University School of Law, Guest Lecturer
MARCH 31, 2021
2020 Spring Meeting, AIPLA, Speaker
MAY 5, 2020
“Patent Law and the Life Sciences,” New York University School of Law, Guest Lecturer
APRIL 15, 2020
“USPTO Post-Grant Patent Proceedings,” George Washington University, Guest Lecturer
MARCH 31, 2020
“Enhancing Diversity & Including in IP Law & Beyond,” Federal Circuit Bar Association, Washington, D.C., Speaker
MARCH 5, 2020
2020 Winter Meeting, ACPC (Association of Corporate Patent Counsel), Austin, TX, Speaker
JANUARY 27, 2020
“Discussion with Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO,” PTAB Bar Association Annual Conference, Moderator Sept. 23-25,
2020
“Recent Developments & Trends at the PTAB,” HsinChu, Taiwan & Seoul, Korea, Speaker
December 2019
“The Role of the Courts in Patent Law & Policy,” Georgetown-Berkeley Annual Patent Conference, Washington, D.C., Speaker
NOVEMBER 15, 2019
Thought Leader Summit, PTAB Bar Association, Alexandria, VA., Opening Remarks,
NOVEMBER 14, 2019
“Panel on PTO and PTAB Trends & Policy,” Federal Circuit Bar Association’s Global Fellows Series, Washington, D.C., Speaker
OCTOBER 3, 2019
“Post-Grant Practice Roundtable Discussion,” George Washington University, Washington, D.C., Speaker
SEPTEMBER 12, 2019
“Panel on the International Trade Commission (ITC), PTAB, and the District Court – Through the AIA Lens,” Federal Circuit Bar Association - Bench & Bar Conference, Colorado Springs, CO, Speaker
June 2019
“Recent Developments & Trends in Litigation and Post-Grant Proceedings,” Tokyo, Japan & Seoul, Korea, Speaker
May 2019
“Regional Patent Drafting Workshop,” World Intellectual Property Organization (WIPO), Riyadh, Saudi Arabia, Speaker Apr. 7-11,
2019
PTAB Bar Association Annual Conference, Washington, D.C., Moderator Mar. 14-15,
2019
“Panel on Diversity,” PTAB Bar Association, Washington, D.C., Speaker
NOVEMBER 14, 2018
“Post-Grant Practice Roundtable Discussion,” George Washington University, Washington, D.C., Speaker
SEPTEMBER 28, 2018
“Panel on the Recent Patent Cases at the Supreme Court: Practical Implications on PTAB Practice Following SAS Institute Inc. v. Iancu,” South Asian Bar Association of North America (SABA), Washington, D.C., Speaker
MAY 15, 2018
PTAB Bar Association Annual Conference, Washington, D.C., Speaker Mar. 22-23,
2018
“Oil States and SAS,” Federal Circuit Bar Association, Speaker
NOVEMBER 9, 2017
“The America Invents Act on Trial - Congressional Civil Justice Academy,” Washington, D.C., Speaker
OCTOBER 27, 2017
“Post-Grant Practice Roundtable Discussion,” George Washington University, Washington, D.C., Speaker
SEPTEMBER 28, 2017
“USPTO Post-Grant Patent Trials,” Practicing Law Institute New York, NY, Speaker
SEPTEMBER 25, 2017
“PTAB Broadside Chat Webinar with Chief Judge Ruschke Celebrating PTAB’s Fifth Anniversary,” Participant
SEPTEMBER 12, 2017
Bench & Bar Conference, Federal Circuit Bar Association, Coeur D’Alene, ID, Speaker
June 2017
“Lex Machina Webinar – The Future of Law: Winning New Business with Legal Analytics,” Speaker
APRIL 20, 2017
“2017 AIPLA Mid-Winter Institute,” Ft. Lauderdale, FL, Speaker
February 2017
“Post-Grant Proceedings Update,” South Asian Bar Association of North America (SABA), Washington, D.C., Speaker July 13-16,
2017
“PTAB Bar Association Inaugural Conference,” Washington, D.C., Moderator Mar. 1-3,
2017
“Post-Grant Proceedings Update,” South Asian Bar Association of Washington, DC (SABA-DC), Washington, D.C., Speaker
OCTOBER 5, 2016
“Recent Developments in Post Grant Proceedings at the Patent Trial and Appeal Board,” IP Strategy Innovation Summit, Boston, MA, Speaker
SEPTEMBER 28, 2016
“2016 Patent Litigation Study: Insights on the Annual Review,” New York, NY, Moderator
JUNE 22, 2016
“PTAB Best Practices for Patentees,” AIPLA Webinar, Speaker
FEBRUARY 18, 2016
National Asian Pacific American Bar Association (NAPABA) 2015 Annual Convention, New Orleans, LA, Speaker
NOVEMBER 6, 2015
“Challenging Patents: Lessons Learned from Post-Issuance Proceedings and Litigation Strategies,” IP Strategy Innovation Summit, Boston, MA, Speaker
OCTOBER 29, 2015
“IPR-CBM Roundtable Discussion,” George Washington University, Washington, D.C., Speaker
OCTOBER 13, 2015
“A New Era of Patent Litigation,” Tokyo, Japan, Speaker
OCTOBER 9, 2015
“Successfully Mitigating Litigation Risks,” U.S. Litigation Forum 2015, Seoul, Korea, Speaker
OCTOBER 6, 2015
“Past, Present, and Future of Post-Grant Proceedings at the PTAB,” AIPLA Webinar, Speaker
JUNE 10, 2015
“The PTO and the Courts,” Stanford Law School, Stanford, CA, Speaker
APRIL 17, 2015
“Post-Grant Proceedings Update,” South Asian Bar Association of Washington, D.C. (SABA-DC), Speaker
JANUARY 28, 2015
“Post-Grant Proceedings Under the AIA: Lessons Learned & Best Practices,” Asian Pacific American Bar Association of Silicon Valley (APABA-SV), Palo Alto, CA, Speaker
SEPTEMBER 18, 2014
“Post-Grant Proceedings Under the America Invents Act: Lessons Learned and Strategies to Consider,” Tokyo, Japan, Speaker
JULY 1, 2014
“The Patent and Trademark Agency: Substantive Patent Rulemaking via Adjudication,” American University, Speaker
MARCH 27, 2014
“Lessons Learned from Post-Grant Proceedings Under the America Invents Act,” South Asian Bar Association of Washington, D.C. (SABA-DC), Speaker
JANUARY 30, 2014
“National Workshop on Patent Drafting and the Use of the Patent System,” Bangkok, Thailand, World Intellectual Property Organization (WIPO), Speaker June 23-27,
2014
“Webinar: Recent Federal Circuit Cases Affecting Practice Before the USPTO Patent Trial and Appeal Board,” Speaker
DECEMBER 5, 2013
“AIA in Practice: Charting New Paths in Post-Grant Proceedings,” Boston, MA, Speaker
OCTOBER 8, 2013
“Intangible, Invisible, Invaluable: Building IP Assets in a Changing World,” North American South Asian Bar Association (NASABA) Convention, Speaker
June 2013
“Advanced Patent Workshops,” Ahmedabad and Hyderabad, India, World Intellectual Property Organization (WIPO), Speaker Nov. 12-16,
2013
“Mechanisms to Challenge Patents & Applications,” North American South Asian Bar Association (NASABA) Convention, Speaker
June 2012
“Understanding U.S. Patent Reform & How It May Impact Your Business,” Cambridge, MA, Speaker
May 2011
“Patent Drafting Workshop,” World Intellectual Property Organization (WIPO), Windhoek, Namibia, Speaker
October 2010
“Patent Drafting Workshop,” World Intellectual Property Organization (WIPO), Addis Ababa, Ethiopia, Speaker
December 2008
“The Effect of KSR on Issues of Written Description & Enablement,” 2008 Licensing Executive Society International Conference, Speaker
May 2008
“Patent Drafting Workshop,” World Intellectual Property Organization (WIPO), Harare, Zimbabwe, Speaker
September 2007
“Inequitable Conduct,” 9th Annual Utah IP Summit, Utah, Speaker
2007
“Patent Drafting Workshop,” World Intellectual Property Organization (WIPO), Colombo, Sri Lanka, Speaker Jan. 28-Feb. 1, 2013)

Intellectual Property

Intellectual Property

International Arbitration

International Arbitration

Supreme Court & Appellate Litigation

Supreme Court & Appellate Litigation

Life Sciences & Healthcare

Life Sciences & Healthcare