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 global 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 products 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 from all over the world develop global IP protection and enforcement campaigns, including in the U.S., UK, India, the European Union, the Nordics, and the Far East. 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 pharma 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 industries, including artificial intelligence, digital healthcare, RFID and real-time locations systems, software applications, medical devices, and consumer products.

Before his legal career, Nirav was a software engineer at Noblis, Inc. (formerly Mitretek Systems) in the company’s Center for Criminal Justice Technology, 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, where he now lives with his wife and two daughters.

  • 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 RFI
    D 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 Distr
    ict 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

 

  • Super Lawyers, “Rising Star – Washington, DC” (2017-2014)
  • World Intellectual Property Review (WIPR), “WIPR Leaders” (2024)

  • J.D., William & Mary Law School
  • B.S., Computer Science, University of Virginia

  • District of Columbia
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the Eastern District of Virginia
  • United States Patent & Trademark Office
  • Virginia

  • Hindi
  • Gujarati

Speaking Engagement

Understanding the Semiconductor Intellectual Property (SIP) Business Process

Bangalore, India, January 13, 2024 9:00 AM - 10:20 AM EST

Speaking Engagement

15th Global IP Convention

New Delhi, India, January 7, 2024

Speaking Engagement

The Anatomy of a Deal: Green Energy Licensing Basics

Alexandria, VA, USPTO, May 17, 2023 1:30 PM - 2:30 PM EST

Speaking Engagement

2023 Focus on Pharma

Washington, DC, April 14, 2023 8:30 AM - 6:00 PM EST

Webinar

Global IP Forum: Driving IP Value – From Boardroom to Court Room

Virtual, November 22, 2021 11:00 AM - 2:00 PM EST

Speaking Engagement

International IP Skills Summit (IIPSS)

Hyderabad, India, Hyatt Place Hyderabad, February 26, 2020 12:00 AM - 11:59 PM EST

Speaking Engagement

The Sedona Conference’s Patent Conference: Promoting Invention, Entrepreneurship, Economic Growth, and Job Creation

Washington, DC, Covington & Burling LLP, January 17, 2019

Speaking Engagement

Cambridge IP Summit

Cambridge, United Kingdom, The Tamburlaine Hotel, October 16, 2018 8:00 AM - 5:30 PM EST

Speaking Engagement

2018 ABA Section of Dispute Resolution Spring Conference

Washington, D.C., April 5, 2018

EGA Legal Affairs Forum

March 27, 2015

Related News & Insights

From Nirav N. Desai

In the News

August 26, 2024

Patent Injunction Bill Has Potential to Reshape Disputes

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July 8, 2024

Five Sterne Kessler Attorneys Honored as 2024 WIPR Leaders by World Intellectual Property Review

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November 22, 2023

Coming to America: Funding for Small Innovators Seeking Patents to Enter the US

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August 2, 2023

A Look At US Injunctive Relief Trends Amid UPC Chatter

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March 24, 2023

Why the UPC Will Be Rewarding for US Businesses

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In the News

September 15, 2022

Novartis Tells FDA Skinny Labels Won't Work With $3.5B Drug

Law360

In the News

March 31, 2022

EU Unified Patent Court Spurs Delight and Fear for Experts

Law360

PTAB Strategies and Insights

May 27, 2020

PTAB Strategies and Insights - May 2020

Multiple Authors

Articles

May 27, 2020

Should USPTO Be Able to Make New Law Without Rulemaking?

Sterne, Kessler, Goldstein & Fox Multiple Authors

Client Alert

April 3, 2020

PTAB Due Date Extensions Available Under CARES Act Amid COVID-19 Outbreak

Nirav N. Desai

In the News

May 14, 2019

5 Things We’ve Learned In 5 Years Since Octane Fitness

Law360

In the News

April 11, 2018

Imperium In Rarefied Air With $7M Patent Atty Fee Award

Law360

Articles

February 21, 2018

Exclusion of Evidence at the PTAB - Does it ever happen?

Sterne, Kessler, Goldstein & Fox Multiple Authors

PTAB Strategies and Insights

February 14, 2018

PTAB Strategies and Insights - February 2018

Multiple Authors

In the News

April 27, 2017

Fee Awards Loom Large in Patent Law 3 Years After Octane

Law360

Books and Chapters

February 17, 2017

Patent Office Litigation - Second Edition 2017

Thomson Reuters Westlaw Multiple Authors

Client Alert

September 30, 2016

Patent Rights in the U.S.: Is the Pendulum Finally Swinging Back to Center?

Nirav N. Desai

In the News

May 31, 2016

Fed. Circ. Says PTAB Correctly Axed Eveready Battery Patent

Law360

Articles

April 29, 2016

Octane Fitness, Two Years On: How It Has Impacted District Courts’ Award of Attorneys’ Fees in Patent Cases

Washington Legal Foundation Nirav N. Desai, Lauren A. Watt

Articles

February 25, 2016

ANDA Access Negotiations May Affect Attorney Fee Liability

Law360 Nirav N. Desai

Articles

February 4, 2016

Patent Reform And The New Insurance Market That May Follow

Law360 Nirav N. Desai

Articles

August 12, 2015

The Interplay Between Advertising Injury Insurance and IP

Law360 Nirav N. Desai

Books and Chapters

January 1, 2012

Patent Office Litigation

Thomson Reuters Westlaw Multiple Authors