Mind + Muscle

technical minds + legal muscle

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Sterne Kessler Goldstein Fox
Nirav N. Desai

Mind + Muscle

Nirav N. Desai

Director

 

Mr. Desai is a director in the firm's Litigation and Electronics Groups and focuses on patent litigation and general intellectual property strategy. He has been involved in various matters before district and appellate courts, as well as the International Trade Commission in Section 337 actions. Mr. Desai has experience with a wide range of technologies in all phases of litigation including case management and strategy, taking and defending fact and expert depositions, pre-trial and jury trial practice, and critical motions briefing. Mr. Desai also has experience counseling clients in intellectual property strategy, including patent portfolio development and analysis, licensing, infringement, validity, and freedom to operate opinions, and preparation and prosecution of patent applications.

At the College of William and Mary law school, Mr. Desai was a member of the William and Mary Law Review and was selected as a State Scholar. He also served as a judicial extern to the Honorable James E. Bradberry, U.S. Magistrate Judge for the Eastern District of Virginia and as a student law clerk at Earle Hale and Associates for two years while in law school. Mr. Desai earned his undergraduate degree in Computer Science from the University of Virginia School of Engineering and Applied Sciences, where he also undertook pre-medical studies.

Prior to attending law school, Mr. Desai worked for Noblis, Inc. (formerly Mitretek Systems) as a senior technical lead in their Center for Criminal Justice Technology. While at Noblis, Inc. Mr. Desai served as a software engineer and systems analyst in the area of biometric information systems for various government agencies, including the  U.S. Department of Justice and the FBI. Mr. Desai specialized in software development for fingerprint matcher subsystems, developing front-end latent fingerprint matcher software for use on a variety of back-end automated fingerprint identification system platforms.

Additionally, Mr. Desai is a contributing author of Patent Office Litigation, Second Edition, published in 2017, the book provides a fresh and comprehensive exploration of patent office litigation proceedings, including how the proceedings interact with other aspects of patent procurement and enforcement, while delivering practical analysis and advice. This second edition of Patent Office Litigation is the follow up to the first version of the book that was published in 2012 by Thomson Reuters Westlaw that focused on the contested proceedings that were introduced under the America Invents Act that year.

  • Jury trial verdict of non-infringement in a telecommunications patent infringement action in the District of Delaware
  • Defended an RFID hardware and software vendor in patent infringement action in the District of Minnesota
  • Represented a patent holder in an infringement action involving computer networking devices in the Eastern District of Texas
  • Represented a patent holder in an infringement action involving mobile stray voltage detection in the District of New Jersey
  • Represent a patent holder in an IPR involving transistor optimization in digital integrated circuits before the Patent Trials and Appeal Board
  • Represented a patent holder in an infringement action involving RFID hardware and software in the Eastern District of Virginia
  • Represented a patent holder in an infringement action involving telephone and wireless billing software in the Southern District of Indiana
  • Represented a patent holder in an infringement action involving portable touch screen computing devices in the Eastern District of Texas
  • Defended a genetic diagnostics laboratory in patent infringement action in the District of Utah
  • Defended a medical imaging software vendor in patent infringement action in the Southern District of California
  • Defended a pharmaceutical company in an action before the ITC
  • Defended a pharmaceutical company in ANDA litigation in the District of New Jersey
  • Defended a pharmaceutical company in ANDA litigation in the District of Delaware
  • U.S. and foreign patent application matters across various arts, including software, electrical, and mechanical engineering and various fields including telecommunications, e-commerce, wireless devices, RFID, power control systems, controller assemblies, medical devices, Internet and business method patents
  • Portfolio analysis of patents covering Voice over IP technology
  • Portfolio analysis of patents covering RFID technology
  • Patent portfolio counseling for medical devices company

 

  • Representative Matters
      • Jury trial verdict of non-infringement in a telecommunications patent infringement action in the District of Delaware
      • Defended an RFID hardware and software vendor in patent infringement action in the District of Minnesota
      • Represented a patent holder in an infringement action involving computer networking devices in the Eastern District of Texas
      • Represented a patent holder in an infringement action involving mobile stray voltage detection in the District of New Jersey
      • Represent a patent holder in an IPR involving transistor optimization in digital integrated circuits before the Patent Trials and Appeal Board
      • Represented a patent holder in an infringement action involving RFID hardware and software in the Eastern District of Virginia
      • Represented a patent holder in an infringement action involving telephone and wireless billing software in the Southern District of Indiana
      • Represented a patent holder in an infringement action involving portable touch screen computing devices in the Eastern District of Texas
      • Defended a genetic diagnostics laboratory in patent infringement action in the District of Utah
      • Defended a medical imaging software vendor in patent infringement action in the Southern District of California
      • Defended a pharmaceutical company in an action before the ITC
      • Defended a pharmaceutical company in ANDA litigation in the District of New Jersey
      • Defended a pharmaceutical company in ANDA litigation in the District of Delaware
      • U.S. and foreign patent application matters across various arts, including software, electrical, and mechanical engineering and various fields including telecommunications, e-commerce, wireless devices, RFID, power control systems, controller assemblies, medical devices, Internet and business method patents
      • Portfolio analysis of patents covering Voice over IP technology
      • Portfolio analysis of patents covering RFID technology
      • Patent portfolio counseling for medical devices company

       

  • Admissions
      • District of Columbia

      • Virginia

      • United States Court of Appeals for the Federal Circuit

      • United States District Court for the Eastern District of Virginia

  • Education
    • J.D., The College of William and Mary

    • B.S., Computer Science, University of Virginia

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