Natu J. Patel

Natu J. Patel, M.S., M.B.A., D. Engr

Admitted to practice in California and Missouri.
Admitted to practice before the United States Patent & Trademark Office (USPTO).
J.D., Southwestern University School of Law, December 1996
Moot Court Competition: Best Writer - Alternate Finalist; Best Oralist - Alternate Finalist
Recipient: American Jurisprudence Award - Legal Research & Writing
M.B.A. (Finance), University of Southern California (USC), 1982
Degree of Engr., (Industrial & Systems Eng.) University of Southern California (USC), 1979
Part time faculty - Taught undergraduate and graduate engineering courses
M.S., (Mechanical Engineering), California State University, 1979
Contributor, Chapter 8 on “Patents” by Laurence H. Pretty, Competitive Business Practices - CEB (2002)

PREVIOUSLY ASSOCIATED WITH

WANG & PATEL, P.C. - Civil & Intellectual Property Litigation Firm
CHRISTIE, PARKER & HALE, LLP (approximately 80 lawyers) - Intellectual Property Law Firm
ARMSTRONG TEASDALE, LLP (Approx. 250 attorneys) - Civil & Intellectual Property Law Firm
THE BUSCH FIRM, P.C. - Transacational Law Firm

EXPERIENCE SUMMARY

Natu Patel specializes in Patent, Trademark and Copyright Law, Trade Secret Law, complex business litigation, and real estate and business transactions. He has successfully litigated matters involving intellectual property issues, business disputes, conflicts of interest, and misappropriation of trade secrets, protection of proprietary rights, and other related matters.

As a lead counsel, he has represented various plaintiffs and defendants in patent, copyright, trade secrets, and trademark infringement cases. He has successfully obtained or defended Temporary Restraining Orders to seize infringing products, and Preliminary/Permanent Injunctions. Technologies involved in these cases ranged from simple mechanical products and connector technology to complex high technology products dealing with controllers and computers to video games.

Mr. Patel is very well versed with the civil and federal court system. He has coordinated and participated aggressively in raiding various businesses with the help of United States Marshals and subsequently obtained permanent injunctions and consent judgment against these businesses prohibiting them from selling counterfeit goods. He has also defended clients in federal courts, whose businesses were raided by the large corporation accusing them of copyright, trademark and trade dress infringement.

Mr. Patel has a wide variety of experience in Patent, Trademark & Copyright Prosecution, Intellectual Property Litigation, Intellectual Property Counseling & Transactions and Civil Litigation & Trials. He has also assisted people in need by contributing his time and efforts in handling Pro Bono activities.

PATENT, TRADEMARK & COPYRIGHT PROSECUTION

Mr. Patel has experience in many aspects of Engineering, Product Design and Manufacturing of high technology products. He has served a wide array of clients as a patent attorney in both prosecution and litigation. On the technical side, Mr. Patel has prosecuted a variety of patents and trademarks before the United States Patent and Trademark Office (USPTO). He has handled office actions and filed over 70 patent applications in various arts including mechanical, bio-medical, software, e-commerce, electrical engineering, business methods and other Internet related inventions. Mr. Patel has handled and resolved a variety of intellectual property issues including inventorship, assignments, conflicts of interest, trade secrets, protection of proprietary rights, amendments and office actions. He has also dealt extensively with senior counsel of multi-national Fortune 100 corporations regarding patent filings, opinions on patent validity, and overall patent strategy issues. He has also prosecuted several trademark and service mark applications in various industries such as retail, food, medicine, healthcare, insurance, real estate, financial services, hotels, grocery chains, winery and brokerage.

Mr. Patel is very familiar with the reissuance as well as re-examinations of patents. As a lead counsel, he has filed several patent re-examination petitions with the USPTO in two leading cases to invalidate Plaintiff’s patents based on undisclosed prior art. In one case, the New Jersey District Court administratively dismissed the patent infringement case pending the outcome from the USPTO as soon as the Reexamination Petitions on three United States patents were filed.

INTELLECTUAL PROPERTY LITIGATION

Mr. Patel has been very successful in utilizing his prosecution experience to his advantage in developing strong litigation strategies to achieve the clients’overall objectives. His attitude of managing intellectual property litigation with a focus on substantive rather than procedural issues has helped him develop strong client confidence and make patent litigation more economically manageable for the clients. On the litigation side, Mr. Patel has handled and is very familiar with copyright, trademarks and patent litigation related issues.

In October 2002, he argued before the United States Court of Appeals for the Federal Circuit in Washington, D.C. in the high profile action, Northrop Grumman Corp. v. Intel Corp, 3Com Corp., et al. He has represented both plaintiffs and defendants in patent litigation cases in various federal courts all across the United States.

He has handled patent litigation involving simple mechanical products and connector technology as well as complex high technology products dealing with controllers and computers. As a lead counsel, Mr. Patel also defended a large Delaware corporation, headquartered in California, in a patent infringement case against a Texas corporation in the Western District of Texas.

Mr. Patel, as a co-counsel, formulated the strategies, conducted the critical depositions, and participated in the Markman Hearing in August 2004 with a leading New York intellectual property law firm. Mr. Patel spearheaded and undertook significant investigation on Plaintiff’s patents and related prior art and challenged the validity of plaintiff’s patents by filing five separate re-Examination petitions with the United StatesPatent and Trademark Office in July 2004.

Mr. Patel is very familiar with the issues and the strategies surrounding the handling of the cases with the United States International Trade Commission (USITC).

Mr. Patel successfully defended a cancellation proceeding in the United States Patent and Trademark Office’s Trademark Trial and Appeal Board in which the complainant sought to cancel the client’s trademark on the grounds of abandonment.

Mr. Patel also fought very aggressively to stop the infringement of a successful trademark for a reputable international client and settled the case successfully.

Mr. Patel has also been extensively involved in representing and defending clients in a variety of copyright infringement litigations. He has successfully obtained seizure orders, conducted seizures of illegal goods with governmental authorities, and obtained preliminary injunctions from the federal courts. He recently defended and successfully settled a case on behalf of an overseas client who was a defendant against a global media company. This copyright infringement litigation involved a conflict between copyright and patent laws because 25 U.S. design patents, which were the subject of the lawsuit, also included some copyrighted characters. The case was successfully settled.

Mr. Patel further represented a Chinese shoe manufacturer against a well known U.S. shoe manufacturing company. It involved issues surrounding trademark/ trade dress infringement and invalidity of an U.S. patent. After loosing at the district court on a Motion to Dismiss Counterclaim for patent invalidity, Mr. Patel appealed the case to the Ninth Circuit. The case was subjected to mediation at the Ninth Circuit, which finally resolved the case amicably between the parties.

INTELLECTUAL PROPERTY COUNSELING &TRANSACTIONS

Mr. Patel has extensive experience in infringement investigations, opinions on patent validity, re-examination, invalidity, right-to-use studies, and overall patent litigation strategy.

He has managed various intellectual property issues involving high technology/ Internet clients including filing several trademark registration applications, resolving conflicts between domain names and trademarks (domestic and foreign), providing research and opinion on infringement relating to international trademark issues (Benelux and Germany), researching and advising client on Community Trademark Application (CTM) for rights in Europe, and drafting and recording various patent assignments, License Agreements for patents as well as service marks, Letter of Intent for Technology Transfer Agreements, Protection of Proprietary Information and Joint Development Agreement.

Mr. Patel has also worked aggressively with clients in identifying issues, technical as well as legal, and negotiating and finalizing agreements such as Joint Development Agreements.

He also participated and spearheaded closing of a sale of amajor high technology company and advising client on a patent sale agreement that was a substantial portion of the sale.

Mr.Patel has dealt with CEOs/ Presidents of major companies in counseling on legal strategies and intellectual property matters andhas been involved in various cyber-squatting, e-signature, and other Internet and computer law related issues.

He has also counseled clients on patent infringement related issues including alternative product designs, licensing and cross-licensingarrangements.

CIVIL LITIGATION & TRIAL EXPERIENCE

Although Mr. Patel focuses his practice on Intellectual Property Prosecution and Litigation, he has also managed several cases involving complex civil litigation issues.

Most notably, as a lead counsel, he conducted and won a four-week trial that involved a variety of international issues relating to letters of credit and included over 400 exhibits and several Taiwanese witnesses from overseas. In spite of a strong defense and a very well known expert on the opposing side, Mr. Patel was able to convince the judge to pierce the corporate veil and win on alter ego claims.

Mr. Patel represented a bio-medical company in Silicon Valley, California in a trade secret misappropriation matter against its primary competitor. After much protracted litigation, Mr. Patel filed another complaint against the competitor for copyright infringement, which finally led to the settlement of the case among the parties. A Preliminary Injunction was finally obtained in the client’s favor, which enjoined the competitor from using the client’s trade secrets and soliciting its employees.

Mr. Patel also successfully represented a high technology software development client in a shareholder dispute. Additionally, Mr. Patel also represented a family owned corporation involved in a reverse merger to re-gain the ownership of the corporation for his client in the face of various securities issues.

PRO BONO LITIGATION ACTIVITIES

Mr. Patel, on a pro-bono basis, has volunteered in the Domestic Violence program sponsored by the Los Angeles Superior Court and has helped many battered women in obtaining Temporary Restraining Orders.

He also recently represented an individual in a highly contested divorce proceeding involving critical issues of foreign property ownership and possible fraud allegations against the other spouse. Furthermore, Mr. Patel was also involved in overturning a collection judgment entered and recorded after five years based on certain allegedly fraudulent practices.