Naveen Modi

Partner, Litigation Department

Washington, D.C.

Phone: 1(202) 551-1990

Fax: 1(202) 551-0490

Overview

Naveen Modi is the Global Co-Chair of the Intellectual Property group at Paul Hastings, overseeing the firm’s Global Intellectual Property group consisting of more than 100 attorneys.

Mr. Modi’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.

Mr. Modi has lectured nationally and internationally on IP law, including in Africa, India, Korea, Japan, Saudi Arabia, Sri Lanka, Taiwan, and Thailand. He helped develop and has been teaching a course on Federal Circuit Practice at the George Mason University School of Law for over a decade. Prior to joining Paul Hastings, Mr. Modi was a partner in the Intellectual Property group of an international law firm. He clerked for the Honorable Alvin Anthony Schall at U.S. Court of Appeals for the Federal Circuit. In law school, he served as a Writing Fellow and member of the George Mason Law Review. Before pursuing a legal career, Mr. Modi was an engineer with Lockheed Martin Federal Systems, Raytheon Systems Company, and Hughes Aircraft. Mr. Modi graduated from George Mason University School of Law, magna cum laude, and also holds a B.S. in electrical engineering from George Mason University, with high distinction.

Mr. Modi devotes a portion of his time to serving the legal community, the bar, and the public on pro bono matters. He currently serves on the Federal Circuit’s Advisory Council and GW’s IP Advisory Council (IPAC). He served as the Past‑President for the PTAB Bar Association, an association he helped form. He represents individuals in immigration matters, including current representation of a priest of a local temple in his naturalization proceeding, and past representation of a Nepali-based family in their request for asylum before the Immigration Court.

Mr. Modi has been widely recognized over the years for his significant and deep experience in IP law. IAM Patent 1000 has recognized Mr. Modi as "a top strategist, extremely articulate presenter and all-round thought leader." It has noted that "[h]e’s just incredibly high quality – a hard worker with a wonderful temperament’" and 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.’" Chambers USA has ranked him in Band 1, noting that "[h]e is very strategic and does an excellent job of mapping out a strategy that fully integrates substantive arguments with procedural nuances," that "[h]e explains complex issues very well, and is very responsive to questions and requests," and that "[h]e is an amazing litigator who presents very well."

Mr. Modi has been especially recognized for his appellate experience. He has led over 100 appeals at the U.S. Court of Appeals for the Federal Circuit and has been involved in all aspects of the appellate process, including briefing and oral argument. Law360 recognized him as an Intellectual Property MVP in 2019 for racking up nine wins at the Federal Circuit, having successfully represented clients such as Google and Samsung. The Legal 500 also has recognized Mr. Modi as a "key lawyer" for appeals.

In addition, 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 PTAB. He helped build and lead the firm’s Patent Office practice. He has 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. He has been nationally recognized for his expertise in post-grant proceedings, including for having been involved in more PTAB proceedings than any other practitioner in the United States:

Chambers USA recognized Mr. Modi 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 recognized Mr. Modi 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."
The Legal 500 noted that Mr. Modi is "by far the country’s leading expert on post-grant proceedings. Naveen’s even temperament is only exceeded by his thoughtful strategies and encyclopedic knowledge of practice before the PTAB."
Law360 recognized Mr. Modi 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 Law 360 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.
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 named him as one of only six "highly recommended" individuals for post-grant proceedings. It has noted that "Modi is one of, if not the most prolific PTAB attorney in the country and knows just about all there is to know about challenging and defending patents under the AIA."

Recognitions

Ranked in Band 1 by Chambers USA
The Legal 500's Leading Lawyer for Intellectual Property - Patents: Litigation
The Legal 500's Dispute Resolution - Appellate: Courts of Appeals
The Legal 500's Intellectual Property - Patents: Litigation (International Trade Commission)
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 Global Leaders
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

Representations

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.

news

Recognitions

insights

Engagement & Publications

Speaker, JAMS IP Cross Border Disputes Roundtable, Sept. 29, 2021
Speaker, 2021 Patent Trial and Appeal Board Bench & Bar, AIPLA, Aug. 5, 2021
Guest Lecturer, Patent Law and the Life Sciences, New York University School of Law, Mar. 31, 2021
Moderator, Discussion with Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, PTAB Bar Association Annual Conference, Sept. 23-25, 2020
Speaker, 2020 Spring Meeting, AIPLA, May 5, 2020
Coauthor, "The Increasing Importance of Diversity and Inclusion in the Legal Profession, Especially in Today’s Challenging Times," Intellectual Property Magazine, Apr. 28, 2020
Guest Lecturer, Patent Law and the Life Sciences, New York University School of Law, Apr. 15, 2020
Guest Lecturer, USPTO Post-Grant Patent Proceedings, George Washington University, Mar. 31, 2020
Speaker, Enhancing Diversity & Including in IP Law & Beyond, Federal Circuit Bar Association, Washington, D.C., Mar. 5, 2020
Speaker, 2020 Winter Meeting, ACPC (Association of Corporate Patent Counsel), Austin, TX, Jan. 27, 2020
Speaker, Recent Developments & Trends at the PTAB, HsinChu, Taiwan & Seoul, Korea, Dec. 2019
Speaker, Georgetown-Berkeley Annual Patent Conference: The Role of the Courts in Patent Law & Policy, Washington, D.C., Nov. 15, 2019
Opening Remarks, PTAB Bar Association: Thought Leader Summit, Alexandria, VA., Nov. 14, 2019
Speaker, Panel on PTO and PTAB Trends & Policy, Federal Circuit Bar Association’s Global Fellows Series, Washington, D.C., Oct. 3, 2019
Speaker, Post-Grant Practice Roundtable Discussion, George Washington University, Washington, D.C., Sept. 12, 2019
Speaker, 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, June 2019
Speaker, Recent Developments & Trends in Litigation and Post-Grant Proceedings, Tokyo, Japan & Seoul, Korea, May 2019
Speaker, Regional Patent Drafting Workshop, World Intellectual Property Organization (WIPO), Riyadh, Saudi Arabia, Apr. 7-11, 2019
Moderator, PTAB Bar Association Annual Conference, Washington, D.C., Mar. 14-15, 2019
Speaker, Panel on Diversity, PTAB Bar Association, Washington, D.C., Nov. 14, 2018
Speaker, Post-Grant Practice Roundtable Discussion, George Washington University, Washington, D.C., Sept. 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., Mar. 22-23, 2018
Speaker, Federal Circuit Bar Association Webinar- Oil States and SAS, Nov. 9, 2017
Speaker, The America Invents Act on Trial - Congressional Civil Justice Academy, Washington, D.C., Oct. 27, 2017
Speaker, Post-Grant Practice Roundtable Discussion, George Washington University, Washington, D.C., Sept. 28, 2017
Speaker, Practicing Law Institute – USPTO Post-Grant Patent Trials, New York, NY, Sept. 25, 2017
Participant, PTAB Broadside Chat Webinar with Chief Judge Ruschke Celebrating PTAB’s Fifth Anniversary, Sept. 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, Apr. 20, 2017
Moderator, PTAB Bar Association Inaugural Conference, Washington, D.C., Mar. 1-3, 2017
Speaker, 2017 AIPLA Mid-Winter Institute, Ft. Lauderdale, FL, Feb. 2017
Speaker, Post-Grant Proceedings Update, South Asian Bar Association of Washington, DC (SABA-DC), Washington, D.C., Oct. 5, 2016
Speaker, Recent Developments in Post Grant Proceedings at the Patent Trial and Appeal Board, IP Strategy Innovation Summit, Boston, MA, Sept. 28, 2016
Author, "Use of PTAB Decisions in District Court Litigation," IPWatchdog, Sept. 18, 2016
Coauthor, "Five Years In: The AIA’s Effects on Patent Litigation (Perspective)," Bloomberg BNA Big Law Business, Sept. 8, 2016
Coauthor, "Some Federal Circuit Guidance on Procedural Safeguards for PTAB," Law360, June 30, 2016
Moderator, 2016 Patent Litigation Study: Insights on the Annual Review, New York, NY, June 22, 2016
Coauthor, "Federal Circuit Provides Guidance on the APA’s Procedural Safeguards for PTAB Proceedings," Lexology, June 16, 2016
Speaker, PTAB Best Practices for Patentees, AIPLA Webinar, Feb. 18, 2016
Speaker, National Asian Pacific American Bar Association (NAPABA) 2015 Annual Convention, New Orleans, LA, Nov. 6, 2015
Speaker, Challenging Patents: Lessons Learned from Post-Issuance Proceedings and Litigation Strategies, IP Strategy Innovation Summit, Boston, MA, Oct. 29, 2015
Coauthor, "PTAB Provides Guidance on AIA Estoppel Provisions," Managing Intellectual Property, Oct. 28, 2015
Speaker, IPR-CBM Roundtable Discussion, George Washington University, Washington, D.C., Oct. 13, 2015
Speaker, A New Era of Patent Litigation, Tokyo, Japan, Oct. 9, 2015
Speaker, Successfully Mitigating Litigation Risks, U.S. Litigation Forum 2015, Seoul, Korea, Oct. 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, Apr. 17, 2015
Coauthor, "Quick Fixes Implemented, New Rules on the Way for PTAB Trial Practice," Lexology, Apr. 1, 2015
Speaker, Post-Grant Proceedings Update, South Asian Bar Association of Washington, D.C. (SABA-DC), Jan. 28, 2015
Speaker, Post-Grant Proceedings Under the AIA: Lessons Learned & Best Practices, Asian Pacific American Bar Association of Silicon Valley (APABA-SV), Palo Alto, CA, Sep. 18, 2014
Speaker, Post-Grant Proceedings Under the America Invents Act: Lessons Learned and Strategies to Consider, Tokyo, Japan, July 1, 2014
Speaker, National Workshop on Patent Drafting and the Use of the Patent System, Bangkok, Thailand, World Intellectual Property Organization (WIPO), June 23-27, 2014
Speaker, The Patent and Trademark Agency: Substantive Patent Rulemaking via Adjudication, American University, Mar. 27, 2014
Speaker, Lessons Learned from Post-Grant Proceedings Under the America Invents Act, South Asian Bar Association of Washington, D.C. (SABA-DC), Jan. 30, 2014
Coauthor, "Fifteen Months of Contested Proceedings Under the America Invents Act: Lessons Learned," BNA’s Patent, Trademark & Copyright Journal, Feb. 7, 2014
Speaker, Webinar: Recent Federal Circuit Cases Affecting Practice Before the USPTO Patent Trial and Appeal Board, Dec. 5, 2013
Speaker, Advanced Patent Workshops, Ahmedabad and Hyderabad, India, World Intellectual Property Organization (WIPO), Nov. 12-16, 2013
Speaker, AIA in Practice: Charting New Paths in Post-Grant Proceedings, Boston, MA, Oct. 8, 2013
Speaker, Intangible, Invisible, Invaluable: Building IP Assets in a Changing World, North American South Asian Bar Association (NASABA) Convention, June 2013
Speaker, Patent Drafting Workshop, World Intellectual Property Organization (WIPO), Colombo, Sri Lanka, Jan. 28-Feb. 1, 2013
Speaker, Mechanisms to Challenge Patents & Applications, North American South Asian Bar Association (NASABA) Convention, June 2012
Coauthor, "Mechanisms and Strategies for Challenging Patents at the USPTO in the Wake of the America Invents Act," Intellectual Property Today, Apr. 2012
Speaker, Understanding U.S. Patent Reform & How It May Impact Your Business, Cambridge, MA, May 2011
Speaker, Patent Drafting Workshop, World Intellectual Property Organization (WIPO), Windhoek, Namibia, Oct. 2010
Speaker, Patent Drafting Workshop, World Intellectual Property Organization (WIPO), Addis Ababa, Ethiopia, Dec. 2008
Speaker, The Effect of KSR on Issues of Written Description & Enablement, 2008 Licensing Executive Society International Conference, May 2008
Speaker, Patent Drafting Workshop, World Intellectual Property Organization (WIPO), Harare, Zimbabwe, Sep. 2007
Speaker, Inequitable Conduct, 9th Annual Utah IP Summit, Utah, 2007

Involvement

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