Naveen Modi

Partner, Litigation Department

Washington, D.C.

T 1(202) 551-1990

F 1(202) 551-0490

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

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 300 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 has significant experience 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). In fact, in 2015, Mr. Modi was involved in more PTAB proceedings than any other practitioner in the United States.

Mr. Modi has been nationally recognized for his significant experience in post-grant proceedings. Chambers USA recognized him 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 in addition to being awarded 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 six “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 Vice President for the PTAB Bar Association. He successfully represented an individual in his request for asylum before the Immigration Court.

Experience

Liqwd, Inc. v. L’Oreal USA, Inc. (D. Del.). Representing L’Oreal USA in patent litigation involving hair products.
Zimmer Biomet Holdings, Inc. v. Four Mile Bay, LLC (N.D. Ind.). Representing Zimmer Biomet in patent litigation and IPRs involving medical devices.
University of Western Australia v. Academisch Ziekenhuis Leiden. Representing BioMarin in Federal Circuit Appeals.
Elm 3DS Innovations, LLC v. Samsung Electronics Co., LTD. (D. Del.). Representing Samsung in a patent litigation and IPRs involving semiconductor technology.
Advanced Marketing Systems LLC v. Walgreen Co. (E.D. Tex.). Representing 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.). Represented SAP in patent litigation involving software.
TPK Touch Solutions, Inc. v. Wintek Electro-Optics Corporation (N.D. Cal.). Represented 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). Represented 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.). Represented Guidant in patent infringement cases involving medical devices.
Supinski v. Cohen (B.P.A.I.). Represented Zimmer in a patent interference involving medical devices.
Rambus Inc. v. International Business Machines Corp. (N.D. Cal.). Represented Rambus in a patent interference case involving semiconductor devices.
Lalonde v. Li (B.P.A.I.) and Prutchi v. Lofgren (B.P.A.I.). Represented Boston Scientific in patent interferences involving medical and semiconductor devices.

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

Speaking Engagements and Publications

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 SAS Institute 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, Practicing Law Institute—USPTO Post-Grant Patent Trials, New York, NY, September 25, 2017
Participant, PTAB Boardside 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

Professional and Community 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
Vice President and Director, PTAB Bar Association
Member, Federal Circuit Bar Association
Member, American Intellectual Property Law Association

Education

George Mason University School of Law, J.D., magna cum laude, 2001
George Mason University, B.S., Electrical Engineering, with high distinction, 1998

Rankings & Awards

Recognized as the Post-Grant Firm of the Year by IAM Magazine
Paul Hastings was recognized as the Post-Grand Firm of the Year at Intellectual Asset Management's inaugural Global IP Awards. The award recognizes the achievements of the firm's Patent Trial and Appeal Board (PTAB) Team, which practices before the US Patent & Trial Office. Over the past year, the team's accomplishments include numerous post-grant proceeding victories for technology and life sciences clients - four of which were affirmed by the Court of Appeals for the Federal Circuit.
January 30, 2019

Recognized as LMG Life Sciences Stars for 2018
Paul Hastings was recognized in the 2018 edition of LMG Life Sciences, with Highly Recommended rankings for General Patent Litigation and Hatch-Waxman Branded Litigation. LMG Life Sciences selected seven individual lawyers as "Life Sciences Stars," including Eric Dittmann, Gary Giampetruzzi, Naveen Modi, Joseph O’Malley, Chad Peterman, Preston Ratliff, and Bruce Wexler. Earlier this year, LMG Life Sciences honored the firm with the LMG Life Sciences award for Hatch-Waxman Litigation Firm of the Year – Branded.
October 12, 2018

Recognized by Chambers USA 2018
Chambers USA 2018: America’s Leading Lawyers for Business listed the firm in 45 research areas and named 112 firm lawyers to its rankings of leading lawyers and law firms in the United States.
May 15, 2018

Recognized as Law360 Practice Group of the Year in Life Sciences
Paul Hastings was named as a Practice Group of the Year in Life Sciences by Law360. The article noted Paul Hastings’ undefeated track record in life sciences cases at the Patent Trial and Appeal Board, including victories on behalf of Acorda Therapeutics, which won four inter partes reviews against Kyle Bass’ Coalition for Affordable Drugs. Law360 also highlighted the representation of Galena Biopharma in a civil-only settlement resolving investigations regarding Galena’s past promotional practices for Abstral, a rapid onset opioid product. The winners were chosen from nearly 750 submissions, and are recognized as "firms that racked up victories in litigation and closed the big deals to make their mark among clients and throughout the legal industry."
February 01, 2018

Recognized as LMG Life Sciences Stars for 2017
Paul Hastings was recognized in the 2017 edition of LMG Life Sciences, with Highly Recommended rankings for General Patent Litigation and Hatch-Waxman Branded Litigation. LMG Life Sciences selected seven individual lawyers as "Life Sciences Stars," including Joseph O’Malley, Bruce Wexler, Gerald Flattmann, Naveen Modi, Chad Peterman, Eric Dittmann, and Gary Giampetruzzi.
October 06, 2017

Patexia 2017 Intelligence Report — Most Active in Inter Partes Reviews

Patexia, Inc. acknowledged Naveen Modi as the most active attorney representing petitioners and patent owners in inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB). Patexia noted that Naveen's workload of 240 cases is the most among the 5,000 attorneys who have worked on IPRs since 2012.

September 19, 2017

Paul Hastings IP Practice Honored in IAM Patent 1000

Intellectual Asset Management highlighted Paul Hastings' IP practice in IAM Patent 1000: The World's Leading Patent Professionals. The guide ranked the firm's practices Nationwide as well as in New York and Washington, DC.

Paul Hastings partners were ranked in California: Yar Chaikovsky; New York: Joseph O'Malley; Gerald Flattmann; Preston Ratliff; Bruce Wexler; Samuel Waxman; Washington DC: Naveen Modi; Blair Jacobs; Joseph Palys; and Allan Soobert; and in Japan: Hiroyuki Hagiwara.

Paul Hastings attorneys were also recognized in IAM's Nationwide tables: Yar Chaikovsky and Blair Jacobs were recommended for International Trade Commission litigation; Jacobs was recommended for his experience in Federal Circuit appellate litigation; and Naveen Modi and Joseph Palys were both recognized for their strength in post-grant proceedings.

Preston Ratliff was also noted in the IAM Strategy 300, which recognizes individuals for their work in protecting intellectual property as a key business asset.

June 06, 2017

Recognized by Chambers USA 2017
Chambers USA 2017: America’s Leading Lawyers for Business named 46 of the firm’s practice areas and 112 individuals to its ranking of leading lawyers and law firms in the United States.
June 05, 2017

Recognized as LMG Life Sciences Stars for 2016
Paul Hastings was recognized in the 2017 edition of LMG Life Sciences, with Highly Recommended rankings for General Patent Litigation and Hatch-Waxman Branded Litigation. LMG Life Sciences selected six individual lawyers as "Life Sciences Stars," including Joseph O’Malley, Bruce Wexler, Gerald Flattmann, Gary Giampetruzzi, Naveen Modi, and Eric Dittmann.
November 30, 2016

Recognized at the 2016 LMG Life Sciences Awards

Paul Hastings was recognized with multiple LMG Life Sciences Awards. Bruce Wexler was named “General Patent Litigator of the Year – New York” and Naveen Modi was recognized as “Post Grant Proceedings Attorney of the Year.”

The Life Sciences Patent Litigation practice also won awards for two Hatch-Waxman Impact Cases of the Year, including Helsinn Healthcare SA et al. v. Teva Pharmaceuticals USA Inc. et al., a win resolving a long-running patent dispute over Aloxi®, a drug used to treat chemotherapy-induced nausea and vomiting. The Paul Hastings team representing Helsinn was led by Joseph O’Malley. The firm was also honored for its work on behalf of Eli Lily in Sanofi-Aventis US LLC et al. v. Eli Lilly & Co., where Bruce Wexler led the team representing Eli Lily in litigation regarding the marketing of Basaglar®, its insulin glargine drug product. The case was settled in late 2015, with the press reporting Eli Lilly’s ability to launch the drug.

September 16, 2016

Shortlisted for four 2016 LMG Life Sciences Awards

The Firm was shortlisted in four categories for the 2016 LMG Life Sciences Awards, which will be held on September 14 in New York.

Joseph O’Malley was nominated in the “Hatch-Waxman Litigator of the Year – Branded” category, Bruce Wexler was nominated in the “General Patent Litigator of the Year - New York” category, Naveen Modi was nominated in the “Post Grant Proceedings Attorney of the Year” category, and the Firm was nominated in the “Hatch-Waxman Litigation Firm of the Year – Branded” category.

July 27, 2016

Recognized by Chambers USA 2016
Chambers USA 2016: America’s Leading Lawyers for Business named 47 of the firm’s practice areas and 112 individuals to its ranking of leading lawyers and law firms in the United States.
June 08, 2016

Paul Hastings IP Practice Honored in 2016 IAM Patent 1000
Intellectual Asset Management highlighted Paul Hastings' IP practice in its IAM Patent 1000: The World’s Leading Patent Professionals 2016. The guide ranked the firm’s Nationwide, New York, Washington, D.C., and Georgia IP practices; and partners Yar Chaikovsky, Gerald Flattmann, Blair Jacobs, Robin McGrath, Naveen Modi, Joseph O'Malley, Joseph Palys, Preston Ratliff, Samuel Waxman, and Bruce Wexler were recognized as leading lawyers.
May 27, 2016

Managing IP 2016 North America Awards
Naveen Modi was named Outstanding IP Litigator of the Year – PTAB at Managing IP's 2016 North America Awards. Additionally, Paul Hastings was shortlisted in the US Life Sciences IP Litigation Firm of the Year, Patent Contentious Northeast Firm of the Year, and PTAB Firm of the Year categories.
March 18, 2016

Law360 MVP Awards 2015: Intellectual Property
Gerald Flattmann and Naveen Modi were named as MVP award winners by Law360 in the Intellectual Property category. Law360 reviewed more than 850 submissions, selecting attorneys with “successes in high-stakes litigation, record-breaking deals and complex global matters” as this year’s MVP award winners.
November 09, 2015

Paul Hastings IP Practice Honored in 2015 IAM Patent 1000
Intellectual Asset Management highlighted Paul Hastings' IP practice in its IAM
Patent 1000: The World’s Leading Patent Professionals 2015. The guide ranked the firm’s Nationwide, New York, and Washington, D.C. IP practices; and partners Yar Chaikovsky, Gerald Flattmann, Blair Jacobs, Naveen Modi, Joseph O'Malley, Steven Park, Jeff Randall, Preston Ratliff, Allan Soobert, and Bruce Wexler were recognized as leading lawyers.
June 17, 2015

Managing IP's 2015 IP Stars
Yar Chaikovsky, Gerald Flattmann, Blair Jacobs, Chris Kennerly, Naveen Modi, Joseph O'Malley, and Bruce Wexler were named 2015 IP Stars by Managing Intellectual Property magazine. Nationwide, the firm's Intellectual Property practice was ranked in the Bio/Life Sciences, Copyright, and Patent Contentious categories. In New York, the firm was ranked Highly Recommended in the Patent Contentious category, and in California, the firm was ranked Recommended in the Copyright and Patent Contentious categories.
May 15, 2015

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