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Nirav N. Desai

Director
Nirav N. Desai

Nirav N. Desai is a director in Sterne Kessler's Trial & Appellate and Electronics Practice Groups. He specializes in simplifying complex matters—inside the courtroom and out—and solving problems in the process. Nirav is experienced in a full-range of intellectual property issues, with a particular focus on patent litigation and counseling clients in general intellectual property strategy. An accomplished litigator, Nirav has served as lead counsel in district court litigation matters around the country and has  been involved in matters before district courts, appellate courts, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB), and the U.S. International Trade Commission (USITC) in Section 337 actions.

Nirav’s considerable experience in post-grant proceedings before the PTAB includes serving as lead counsel and counsel in over 25 PTAB proceedings, representing clients, from  innovative startups to billion-dollar companies, in some of their toughest cases. In parallel district court and PTAB proceedings, Nirav relies on his deep experience in both venues to craft a unified, cross-forum strategy that maximizes the strengths of each proceeding while mitigating the pitfalls.

Drawing on his interdisciplinary academic and legal training, Nirav has successfully represented companies of all sizes in both the high tech and life sciences industries. From consumer electronics and software to pharmaceuticals and medical devices, Nirav helps companies develop robust global IP strategies that maximize return on IP investment. Recently Nirav has helped clients develop global IP protection and enforcement campaigns, including in the UK, Germany, France, China, Japan, and India. Closer to home, Nirav has represented electronics, software, and consumer products companies in non-practicing entity and business to business patent, trademark, and licensing disputes in district court, the PTAB, and before the USITC.

In the life sciences arena, Nirav has litigated and counseled clients in the pharmaceutical, medical devices, and genetic diagnostics industries. An active ANDA litigator, he has represented generic companies in Paragraph IV disputes involving blockbuster drugs, such as Abilify® (aripiprazole), Seroquel® (quetiapine fumarate), Daliresp® (roflumilast), Invokana® (canagliflozin), Jardiance® (empagliflozin), Staxyn® (vardenafil), and Brilinta® (ticagrelor) among others.

Further, Nirav is a trusted advisor to many clients providing counsel on patent portfolio development and licensing in a wide range of industry spaces, including artificial intelligence, digital healthcare, RFID and real time locations systems, software applications, medical devices, and consumer products.

Prior to his legal career, Nirav was a software engineer at Noblis, Inc. (formerly Mitretek Systems) in the company’s Center for Criminal Justice Technology, as where he specialized in developing biometric information systems for various government agencies, including the U.S. Department of Justice and the FBI. Notably, he worked with the FBI to develop their Universal Latent Workstation, a platform-independent latent fingerprint matching software application distributed to federal, state, and local law enforcement agencies for use with a variety of back-end automated fingerprint identification system (AFIS) platforms.

Nirav received his J.D. from William and Mary Law School, where he 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. Nirav earned his B.S. in engineering computer science from the University of Virginia School of Engineering and Applied Sciences, where he also undertook pre-medical studies.

Born in Washington, DC, Nirav grew up in Northern Virginia and is active in the local community, volunteering with the Capital Area Food Bank and other charitable organizations.

Achievements

  • Super Lawyers, "Rising Star - Washington, DC" (2017-2014)

Representative Matters

  • Assist a major consumer products company to develop a global IP protection and enforcement campaign, taking action in the US, UK, Germany, France, and China
  • Jury trial verdict of non-infringement in a telecommunications patent infringement action in the District of Delaware
  • Defend an RFID hardware and software vendor in patent infringement action in the District of Minnesota
  • Represent a patent holder in an infringement action involving computer networking devices in the Eastern District of Texas
  • Represent 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 Trails and Appeal Board
  • Represent a patent holder in an infringement action involving RFID hardware and software in the Eastern District of Virginia
  • Represent a patent holder in an infringement action involving telephone and wireless billing software in the Southern District of Indiana
  • Defend a genetic diagnostics laboratory in patent infringement action in the District of Utah
  • Defend a medical imaging software vendor in patent infringement action in the Southern District of California
  • Defend a pharmaceutical company in ANDA litigation in the District of New Jersey
  • Defend a pharmaceutical company in ANDA litigation in the District of Delaware
  • Defend a pharmaceutical company in an action before the ITC
  • Assist various technology companies with licensing and contract issues, including joint development agreement, non-disclosure agreement, and software in- and out-licensing
  • 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, real time location system, and medical device technology, among others

Thought Leadership

Past Events

Contact Information

Phone Number

Education

J.D.
William and Mary Law School
B.S.
Computer Science
University of Virginia

Admissions

District of Columbia
U.S. Court of Appeals for the Federal Circuit
U.S. District Court for the Eastern District of Virginia
Virginia

Languages Spoken

Hindi
Gujarati