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
news
insights
events
rankings
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.