Pranay K. Pattani
Services
Industries
Pranay is the founder at The Pattani Law Group. He excels at simplifying and solving intricate legal issues involving complex technologies.
For over 15 years, Pranay has strategically procured, enforced and defended, and monetized clients’ intellectual property rights.
On the procurement front, Pranay has drafted hundreds of patent applications and thousands of office action responses. He works closely with inventors to identify and refine patentable subject matter. Pranay’s strategies of collaborating with Examiners to facilitate compact prosecution, resulting in issuance of claims having desired scopes, has been recognized and appreciated by clients, peers, and the USPTO. His management leads to cost-effective global protection of clients’ core technologies and recognition of the same as international standards.
On the enforcement and defense front, Pranay achieves favorable results:
- On behalf of a client accused of infringing a patent, Pranay architected the case to successfully invalidate the patent in an inter partes review (IPR) proceeding. The patent had previously survived three separate reexamination attempts at the USPTO and also obtained a $20M judgment in a district court (TXED) against another defendant. On appeal by Patent Owner, the CAFC issued a Rule 36 decision affirming invalidity of the patent.
- On behalf of a client accused of infringing 3GPP standard essential patents worth billions of dollars, Pranay led multiple discussions with Patent Owner’s engineers and counsel to debate merits of the accused infringement. He architected multiple IPR petitions directed to invalidating Patent Owner’s critical standard essential patents. Pranay also architected infringement charts to counter assert the client’s patents. These efforts contributed to facilitating a favorable settlement.
On the monetizing front, Pranay helps clients structure, negotiate, and close various types of intellectual property transactions. He formulates and executes licensing strategies based on detailed technical and legal positions. Pranay successfully licensed a portfolio including 4000+ assets to generate over $15M in revenues in about 18 months. This involved managing outside litigation counsel in executing formulated litigation strategies and managing prosecution counsel to achieve issuance of commercially viable claims. Pranay regularly evaluates patent acquisition proposals presented to clients and conducts due diligence analyses to evaluate target company assets to advise on potential acquisition of the target company.
Prior to practicing law, Pranay was a lead engineer at Motorola, where he oversaw design and implementation of circuitry in mobile devices from early schematic concepts through product launch and into maintenance of line support. He was selected to serve as a Technical Reviewer on Motorola’s Patent Committee, with responsibilities including evaluating invention disclosures and acting as a liaison between inventors and in-house counsel regarding feasibility of the submitted disclosures.
Outside of work, Pranay is an avid golfer and tennis player. He enjoys traveling with the family to explore new destinations and learn about different cultures. Pranay performs 50 hours of pro bono work annually.
Education
Catholic University of America, Columbus School of Law
B.S., Electr. & Comp. Eng., 2003
Rutgers, the State University of New Jersey, Honors
Admissions
Texas
Virginia
District of Columbia
USPTO
Court of Appeals for the Federal Circuit
Miscellaneous
Pranay is fluent in Hindi, Gujarati, and Marathi