Image: Naveen Modi

Naveen Modi

Partner, Litigation Department
Washington, D.C.
2050 M Street NW
Washington, D.C. 20036
United States

Fax: 1(202) 551-0490

Overview

Naveen Modi is the Global Vice Chair of the Intellectual Property group at Paul Hastings, overseeing the firm's Global Intellectual Property group consisting of more than 100 attorneys. He also serves as the head of the firm's 

.

Mr. Modi's practice includes all aspects of patent-related work, including litigation (U.S. district court and U.S. International Trade Commission), post-grant proceedings, interferences, client counseling, appeals, and opinions. Having been involved in well over 500 post-grant proceedings, including inter partes review (IPR), post-grant review (PGR), covered business method (CBM) review, and ex parte and inter partes reexamination proceedings, Mr. Modi is one of the foremost experts in challenging and defending patents before the United States Patent and Trademark Office under the America Invents Act, including its Patent Trial and Appeal Board (PTAB). Mr. Modi has been involved in the most PTAB proceedings of any practitioner in the United States.

Mr. Modi has been nationally recognized for his expertise in post-grant proceedings. Chambers USA recognized him as an expert in this area, noting that he "earns effusive praise from clients, who describe him as 'a brilliant litigator.' One source reports: 'Naveen understands all of the rules and subtleties of IPR proceedings better than anyone I've ever worked with.'" Managing Intellectual Property also recognized him as Outstanding IP Litigator of the Year for PTAB. It also named him as an IP Star, noting that he "has developed a significant reputation for his post-grant proceeding practice" and that "[a] top competitor said: 'Naveen is probably the country's leader in patent trials before the Patent Trial and Appeal Board. He is simply the most brilliant attorney I've worked with.'" One peer added he "would trust him with the crown jewels."  Mr. Modi has been recommended by Legal 500 "for his notable experience in post-grant proceedings." Law360 has recognized him as a "Legal Lion" and "IP MVP" for his work defending Acorda in the highly publicized IPRs filed by a hedge fund run by Kyle Bass. Financial Times has also "highly commended" his work in connection with these IPRs. Mr. Modi was also recognized as a "Legal Lion" for his work for Boehringer Ingelheim  on IPRs where, as Law360 noted, the PTAB "invalidated 'a key patent' for AbbVie Inc.'s top selling drug . . . Humira." In addition Mr. Modi was recognized by Law360  as a  "Legal Lion" for his work for Google. His team successfully obtained four wins at the PTAB, convincing the board to invalidate three of Blackberry Ltd.'s patents related to smartphone technology. Mr. Modi and his team also secured a win for Google and LG Electronics at the Federal Circuit. LMG Life Sciences recognized Mr. Modi as an IP Star and awarded him the Post Grant Proceedings Attorney of the Year at the LMG Life Sciences Awards.

IAM Patent 1000 has recognized Mr. Modi as one of the World's Leading Patent Professionals. The publication has described the "PTAB Trial Guru's" deeply impressive personality as "fair, honest, one of the hardest workers and a genteel guy."  Mr. Modi has also been named as one of only 6 "highly recommended" individuals for post-grant proceedings. IAM Patent 1000 has also previously recognized him as a leading patent practitioner, noting that "[h]e's just incredibly high quality- a hard worker with a wonderful temperament." It noted that "[p]eople think the world of the 'calm and collected' Modi, 'an incredibly thoughtful guy who presents great strategic options tailored to the business goals of his clients.'"

Mr. Modi's practice encompasses a range of technical areas, including electronics, semiconductor devices, networking, software, business methods, medical devices, and pharmaceuticals.

Mr. Modi teaches courses on appellate practice, including Federal Circuit Practice, at George Mason University School of Law, and he has lectured nationally and internationally in seminars relating to patent procurement and enforcement. Prior to joining Paul Hastings, Mr. Modi was a partner in the Intellectual Property group of an international law firm. He was also a member of the George Mason Law Review and served as a Writing Fellow.

Mr. Modi devotes a portion of his time to serving the bar and pro bono matters. He currently serves as the Immediate Past-President for the PTAB Bar Association. He successfully represented an individual in his request for asylum before the Immigration Court.

Accolades and Recognitions

  • Ranked by Chambers USA

  • Recommended by Legal 500

  • LMG Life Sciences Awards, Post Grant Proceedings Attorney of the Year

  • LMG Life Sciences, IP Star

  • Managing Intellectual Property, Outstanding IP Litigator of the Year- PTAB

  • Managing Intellectual Property, IP Star

  • Law360, IP MVP

  • Law360, Legal Lion

  • IAM Patent 1000, Leading Patent Practitioner

  • Outstanding 50 Asian Americans in Business

  • Washington D.C. Super Lawyer

  • Received the George Mason University School of Law Alumni Association Scholarship

Education

  • George Mason University School of Law, J.D., magna cum laude, 2001

  • George Mason University, B.S., Electrical Engineering, with high distinction, 1998

Speaking Engagements

  • Moderator, PTAB Bar Association Annual Conference, September 23-25, 2020

  • Speaker, 2020 Spring Meeting, AIPLA, May 5, 2020

  • Speaker, 2020 Winter Meeting, ACPC (Association of Corporate Patent Counsel), Austin, TX, January 27, 2020

  • Speaker, Georgetown-Berkeley Annual Patent Conference: The Role of the Courts in Patent Law & Policy, Washington, D.C., November 15, 2019

  • Opening Remarks, PTAB Bar Association: Thought Leader Summit, Alexandria, VA, November 14, 2019

  • Speaker, Post-Grant Practice Roundtable Discussion, George Washington University, Washington, D.C., September 12, 2019

  • Moderator, PTAB Bar Association Annual Conference, Washington, D.C., March 14-15, 2019

  • Speaker, Post-Grant Practice Roundtable Discussion, George Washington University, Washington, D.C., September 28, 2018

  • Speaker, Panel on the Recent Patent Cases at the Supreme Court: Practical Implications on PTAB Practice Following SASInstitute Inc. v. Iancu, South Asian Bar Association of North America (SABA), Washington, D.C., May 15, 2018

  • Speaker, PTAB Bar Association Annual Conference, Washington, D.C., March 22-23, 2018

  • Speaker, Federal Circuit Bar Association Webinar - Oil States and SAS, November 9, 2017

  • Speaker, The America Invents Act on Trial - Congressional Civil Justice Academy, Washington, D.C., October 27, 2017

  • Speaker, Post-Grant Practice Roundtable Discussion, George Washington University, Washington, D.C., September 28, 2017

  • Speaker, Practising Law Institute - USPTO Post-Grant Patent Trials, New York, NY, Sep. 25, 2017

  • Participant, PTAB Broadside Chat Webinar with Chief Judge Ruschke Celebrating PTAB's Fifth Anniversary, September 12, 2017

  • Speaker, Post-Grant Proceedings Update, South Asian Bar Association of North America (SABA), Washington, D.C., July 13-16, 2017

  • Speaker, Federal Circuit Bar Association - Bench & Bar Conference, Coeur D'Alene, ID, June 2017

  • Speaker, Lex Machina Webinar - The Future of Law: Winning New Business with Legal Analytics, April 20, 2017

  • Moderator, PTAB Bar Association Inaugural Conference, Washington, D.C., March 1-3, 2017

  • Speaker, 2017 AIPLA Mid-Winter Institute, Ft. Lauderdale, FL, February 2017

  • Speaker, Post-Grant Proceedings Update, South Asian Bar Association of Washington, DC (SABA-DC), Washington, D.C., October 5, 2016

  • Speaker, Recent Developments in Post Grant Proceedings at the Patent Trial and Appeal Board, IP Strategy Innovation Summit, Boston, MA, September 28, 2016

  • Moderator, 2016 Patent Litigation Study: Insights on the Annual Review, New York, NY, June 22, 2016

  • Speaker, PTAB Best Practices for Patentees, AIPLA Webinar, February 18, 2016

  • Speaker, NAPABA 2015 Annual Convention, New Orleans, LA, November 6, 2015

  • Speaker, Challenging Patents: Lessons Learned from Post-Issuance Proceedings and Litigation Strategies, IP Strategy Innovation Summit, Boston, MA, October 29, 2015

  • Speaker, IPR-CBM Roundtable Discussion, George Washington University, Washington, D.C., October 13, 2015

  • Speaker, A New Era of Patent Litigation, Tokyo, Japan, October 9, 2015

  • Speaker, Successfully Mitigating Litigation Risks, U.S. Litigation Forum 2015, Seoul, Korea, October 6, 2015

  • Speaker, Past, Present, and Future of Post-Grant Proceedings at the PTAB, AIPLA Webinar, June 10, 2015

  • Speaker, The PTO and the Courts, Stanford Law School, Stanford, CA, April 17, 2015

  • Speaker, Post-Grant Proceedings Update, South Asian Bar Association of Washington, DC (SABA-DC), January 28, 2015

  • Speaker, Post-Grant Proceedings Under the AIA: Lessons Learned & Best Practices, APABA-SV, Palo Alto, CA, September 18, 2014

  • Speaker, Post-Grant Proceedings Under the America Invents Act: Lessons Learned and Strategies to Consider, Tokyo, Japan, July 1, 2014

  • Speaker, The Patent and Trademark Agency: Substantive Patent Rulemaking via Adjudication, American University, March 27, 2014

  • Speaker, Lessons Learned from Post-Grant Proceedings Under the America Invents Act, South Asian Bar Association of Washington, DC (SABA-DC), January 30, 2014

  • Speaker, Webinar: Recent Federal Circuit Cases Affecting Practice Before the USPTO Patent Trial and Appeal Board, December 5, 2013

  • Speaker, WIPO-CII Advanced Patent Workshops, Ahmedabad and Hyderabad, India, World Intellectual Property Organization (WIPO), November 12-16, 2013

  • Speaker, AIA in Practice: Charting New Paths in Post-Grant Proceedings, Boston, MA, October 8, 2013

  • Author, "Use of PTAB Decisions in District Court Litigation," IPWatchdog, September 18, 2016

  • Coauthor, "Five Years In: The AIA's Effects on Patent Litigation (Perspective)," Bloomberg BNA Big Law Business, September 8, 2016

  • Coauthor, "Some Federal Circuit Guidance on Procedural Safeguards for PTAB," Law360, June 30, 2016

  • Coauthor, "Federal Circuit Provides Guidance on the APA's Procedural Safeguards for PTAB Proceedings," Lexology, June 16, 2016

  • Coauthor, "PTAB Provides Guidance on AIA Estoppel Provisions," Managing Intellectual Property, October 28, 2015

  • Coauthor, "Quick Fixes Implemented, New Rules on the Way for PTAB Trial Practice," Lexology, April 1, 2015

  • Coauthor, "Fifteen Months of Contested Proceedings Under the America Invents Act: Lessons Learned," BNA's Patent,Trademark & Copyright Journal, February 7, 2014

  • Coauthor, "Mechanisms and Strategies for Challenging Patents at the USPTO in the Wake of the America Invents Act," Intellectual Property Today, April 2012

Involvement

  • Served as a law clerk to the Honorable Alvin Anthony Schall at the U.S. Court of Appeals for the Federal Circuit, 2002-2003

  • Worked as an engineer with Lockheed Martin Federal Systems, Raytheon Systems Company, and Hughes Aircraft, 1997-1999

  • Immediate Past-President, PTAB Bar Association  

  • Member, Federal Circuit Bar Association

  • Member, American Intellectual Property Law Association

Recent Representations

  • Amneal Pharmaceuticals LLC v. Alkermes Pharma Ireland Limited. Representation of Alkermes in IPR case involving drug for treating alcohol and opioid abuse.

  • Liqwd, Inc. v. L'Oreal USA, Inc., (D. Del.). Representation of L'Oreal USA in patent litigation involving hair products.

  • Zimmer Biomet Holdings, Inc. v. Four Mile Bay, LLC (N.D. Ind.). Representation Zimmer Biomet in patent litigation and IPRs involving medical devices.

  • University of Western Australia v. Academisch Ziekenhuis Leiden. Representation of BioMarin in Federal Circuit Appeals.

  • Elm 3DS Innovations, LLC v. Samsung Electronics Co., LTD. (D. Del.). Representation of Samsung in a patent litigation and IPRs involving semiconductor technology.

  • Advanced Marketing Systems LLC v. Walgreen Co. (E.D. Tex.). Representation of Walgreen in a patent litigation and CBMs involving software.

  • Rothschild Mobile Imaging Innovations, LLC v. Mitek Systems, Inc. (D. Del.). Representation of Mitek in patent litigation and IPRs involving software.

  • Representation of various companies, including Acorda, AT&T, Boehringer Ingelheim, Corelogic, Covidien, eBay, Fitbit, Google, Helsinn, Insys, Mitek, Opinion Lab, PayPal, Samsung, and Zimmer, in post-grant proceedings, including inter partes review and post-grant review.

  • Back Bay Medical Inc. v. Covidien Holding Inc. (C.D. Cal.). Represented Covidien in a patent litigation involving medical devices.

  • Parallel Networks, LLC v. SAP America, Inc. (D. Del.), Aloft Media, LLC v. SAP AG (E.D. Tex.), and elcommerce.com, Inc. v. SAP AG (E.D. Pa.). Representation of SAP in a patent litigation involving software.

  • TPK Touch Solutions, Inc. v. Wintek Electro-Optics Corporation (N.D. Cal.). Representation of Wintek in a patent litigation 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 a patent infringement case involving semiconductor devices.

  • Medtronic, Inc. v. Guidant Corp. (D. Del.) and Guidant Corp. v. St. Jude Medical, Inc. (D. Del.). Representation of Guidant in patent infringement cases involving medical devices.

  • Supinski v. Cohen (B.P.A.I.). Representation of Zimmer in a patent interference involving medical devices.

  • Rambus Inc. v. International Business Machines Corp. (N.D. Cal.). Representation of Rambus in a patent interference case involving semiconductor devices.

  • Lalonde v. Li (B.P.A.I.) and Prutchi v. Lofgren (B.P.A.I.). Representation of Boston Scientific in patent interferences involving medical and semiconductor devices.

Practice Areas

Litigation
Patent Office
Patent Litigation
Internet of Things
Appellate Litigation
ITC Section 337 Investigations
Technology
Intellectual Property
Life Sciences and Healthcare
Artificial Intelligence

Languages

영국사람

Admissions

Virginia Bar
District of Columbia Bar
United States Patent & Trademark Office

Education

George Mason University School of Law, J.D. 2001
George Mason University, B.S.E.E. 1998

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