NATU J. PATEL

PARTNER

NATU J. PATEL

  • 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)  

  • Recognition by Super Lawyers- 2012, 2013, 2014, and 2015

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. - Transactional 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 States Patent 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 losing 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 a major 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 and has 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-licensing arrangements.

 

 

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:  

1. As first chair, conducted and won a four-week trial that involved international issues relating to letters of credit, custom practices in China & Taiwan, and alter ego; included over 400 exhibits and several witnesses from Taiwan; obtained bench warrant from the court to compel the testimony of certain witnesses involved in the fraud; conducted a noteworthy cross & re-cross examination of defendant's expert witness, who was a 25 years practicing lawyer, graduated from Harvard and a renowned author on international Letters of Credit & financial transactions.

2. Represented a leading bio-technology company based in Silicon Valley in a trade secret misappropriation matter against its primary competitor, which was aggressively defended by two insurance defense law firms over multitude of discovery, deposition & procedural related issues; defended and took several depositions of the president of the defendant corporation and other key witnesses; successfully obtained a Temporary Restraining Order and partial Preliminary Injunction in our client's favor, which enjoined the competitor from misappropriating trade secrets and soliciting clients employees; finally, obtained a Permanent Injunction against all defendants. 

3. Represented property owner plaintiffs against real estate brokers and seller for fraud, breach of fiduciary duty, and rescission for defendants' misrepresentation of square footage in a multi-million dollar real estate purchase transaction. Successfully resolved difficult issues of dual forums (court action and arbitration) by joining the two proceedings and litigating them in one action in the superior court. 

4. Represented plaintiff trustees against adjacent landowners for the faulty construction of a drainage pipe, which caused nuisance and other property damages to plaintiff's land; aggressively conducted written discovery; took depositions of city employees and other construction/engineering witnesses; successfully opposed summary judgment motion; obtained easements from two defendant landowners. Matter currently pending. 

5. Represented franchise defendants in an employment class action case regarding various wage and hour violations; filed demurrer and aggressively conducted discovery; took depositions; successfully reached terms of class action settlement and obtained dismissal of franchise defendants. 

6. Currently involved in the federal court against the United States Department of Agriculture to challenge certain penalties imposed by the USDA on a major tobacco manufacturer. 

7. Acted as a mediator in various corporate, contractual, real estate, and other business-related litigation cases. 

8. Represented a corporation in a hotly contested reverse merger case; successfully spearheaded the case to obtain a favorable settlement. 

9. Successfully represented a plaintiff corporation against a member of the board of directors in a dispute involving the right to repurchase shares of the corporation as well as the valuation of the shares. The case involved complex financial issues including interpretation of the term “net worth” in light of accounting and valuation standards. 

10. Represented a 35-40 member medical group on formation matters, and provided counseling with respect to deficiencies involved in a prior issuance of certain shares. The counseling included amending the articles of incorporation, issuing new shares, and obtaining appropriate shareholder and board authorizations. Also assisted in dissolving the group. 

11. Filed actions on behalf of plaintiffs and defendants on matters involving defamation and invasion of privacy in a business context. Also filed court papers to immediately and effectively close down a website engaged in improper defamation of a corporate client. 

12. Conducted one week jury trial in a medical malpractice against the physicians and the hospital. 

13. In connection with representation of a shareholder of a large Wisconsin-based corporation involving holding companies and several affiliated companies, reviewed shareholder agreements and other corporate documents for provisions relating to preemptive rights, repurchase rights, rights of first refusal, etc. Counseled shareholder in structuring her holdings/transfers in her marriage dissolution so as to optimize her assets while simultaneously complying with the contractual and corporate provisions. 

14. Represented parties in various partnership disputes including (A) a plaintiff-physician in a partnership dispute involving a medical group. Aggressively conducted written discovery; took depositions of medical group defendants and other witnesses; obtained amicable resolution through settlement; (B) plaintiff in a highly contentious law-firm partnership dispute involving compensation, partnership bonus and other issues; filed numerous motions and even obtained terminating sanctions on defendant's cross-complaint; (C) defendant regarding certain software and computer-based services with allegations including conversion, breach of fiduciary duty, embezzlement, etc. 

15. Litigated several contractual dispute cases involving corporate and other agreements. 

16. Provided counseling to several physicians on their employment agreements, covenants not to compete, and confidentiality agreements. 

17. Represented defendants in several employment discrimination and retaliation cases in federal and state courts. 

18. Obtained class certification in an employment class action case relating to various wage and hour violations by defendant corporation; successfully defeated defendant's motion for summary judgment. 

19. Drafted several corporate governance documents for various clients, including articles of incorporation, bylaws, minutes of meetings, shareholder consents, shareholder agreements, buyout agreements, asset purchase agreements, license and non-confidentiality agreements, etc. 

 

 

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.
 

© 2016 by The Patel Law Firm

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