Naveen Modi is a 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 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 200 post-grant proceedings, including inter partes review, post-grant review, covered business method 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.
Mr. Modi has been nationally recognized for his expertise in post-grant proceedings. Managing Intellectual Property, 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.’”
IAM Patent 1000 also recognized him as a leading patent practitioner, noting that “[h]e’s just incredibly high quality – a hard worker with a wonderful temperament.’”
His practice encompasses a range of technical areas, including electronics, semiconductor devices, networking, software, business methods, medical devices, and pharmaceuticals.
As the above cases illustrate, PTAB decisions have affected district court cases in different ways. Determining whether the use of a PTAB decision is likely to be permitted or will have any effect requires a multifactorial analysis that considers at least the nature of the PTAB outcome (e.g., final or preliminary), factors contributing to that outcome (e.g., whether they were based on the merits of the case), and potential drawbacks attached to the requested use (e.g., jury confusion). Additional considerations might include, for example, the level of sophistication of the technology already being considered by the jury, which might factor into a court’s analysis of the likelihood of jury confusion. Parties seeking to rely on PTAB decisions in district court should consider these factors. The AIA has only been in place for five years and the law in this area will continue to develop over the next several years.