Concentration

All areas of intellectual property law, including patent litigation, patent portfolio development and management and technology licensing

Summary

Samir Bhavsar’s law practice covers all areas of intellectual property law, with an emphasis on patent litigation, patent portfolio development and management and technology licensing. He is experienced in a wide range of technologies and industries, including telecommunications, electronics and semiconductor devices, software and financial services.

Mr. Bhavsar has experience in all aspects of patent infringement litigation, including pre-suit investigations, discovery, Markman proceedings, summary judgment proceedings and appeals to the Court of Appeals for the Federal Circuit. He has litigated patent infringement cases in the Eastern District of Texas, the District of Delaware, the Southern District of New York and the Western District of Wisconsin.

Mr. Bhavsar helps clients of all sizes develop a valuable patent portfolio through strategic patent mining, preparation and prosecution. He analyzes and categorizes patent portfolios for clients to identify strengths, weaknesses and gaps in their portfolios and to identify patent assertion opportunities. He also advises clients on issues relating to IP risks. For example, he performs studies to assess the validity of patents and to determine non-infringement positions of clients confronted with patents.

Mr. Bhavsar’s technology experience is extensive and diverse. His telecommunications background includes optical networks, wireless networks, wireline networks and Internet enabling technologies. His electronics background includes semiconductor device design and manufacturing, integrated circuit design and manufacturing, radio frequency (RF) systems and devices, antenna technology, digital signal processing and analog-to-digital conversion techniques. In the software field, he advises clients involved in developing object-oriented programming applications, cloud-computing technologies, electronic commerce applications, supply chain management systems, image and audio processing techniques, Web tools and business-to-business solutions. His financial services background includes electronic trading platforms, insurance products, investment services, banking services and asset management products.

Mr. Bhavsar also drafts and negotiates agreements directed to the licensing and ownership of technology assets. He regularly performs IP due diligence studies and offers advice regarding intellectual property issues that arise in initial public offerings, mergers, acquisitions, credit facilities and other corporate transactions. He also analyzes patents relating to competitive technologies to support in-bound and out-bound licensing efforts.

Mr. Bhavsar was previously Chief Patent Counsel to a provider of all-optical processors and subsystems for high-capacity networks.

Representative Engagements

• National Banking Institution – multiple patent litigation defenses regarding electronic payment processes and network security; development and management of a worldwide patent portfolio
• International Wireless Handset Manufacturer – patent litigation defense regarding antenna technology
• Large telecommunications company – defense of over 40 patent infringement lawsuits in which the client was awarded a summary judgment of noninfringement that was sustained on appeal to the Federal Circuit
• International retail company – patent litigation defense regarding RFID technology in which plaintiff stipulated to noninfringement following favorable Markman order, which was sustained on appeal to the Federal Circuit
• International financial services company – patent litigation regarding electronic trading technology in which client settled on favorable terms
• International software company – patent litigation defense regarding identity and access management technology in which plaintiff stipulated to noninfringement following favorable Markman order, which was sustained on appeal to the Federal Circuit
• International provider of milking systems and dairy farm equipment - development and management of a worldwide patent portfolio; advise on licensing; patent litigation defense regarding dairy equipment technology
• International software company – advice on licensing, patent procurement, patent portfolio categorization, and IP support for corporate transactions
• International online retail company – patent procurement in the areas of cloud computing and electronic commerce
• International financial services company – development and management of a worldwide patent portfolio directed to financial services and electronic gaming applications; advice on licensing and litigation
• International networking company – advice on licensing, patent procurement, and patent portfolio categorization
• International semiconductor company – patent procurement and licensing in the areas of electronic and semiconductor products
• Start-up semiconductor company – patent procurement in the areas of semiconductor products and manufacturing
• Start-up wireless supply chain provider – development and management of a patent portfolio directed to wireless mobility and tracking using RFID technology; advice on licensing
• Optical networking company – development and management of a worldwide patent portfolio directed to all-optical processors and subsystems for high-capacity networks

Publications, Speeches and Presentations

• “How to Categorize Your Patent Portfolio,” Managing Intellectual Property, March 2004
• “Federal Circuit Further Clarifies Disclosure Standard for ‘Means Plus Function’ Patent Claims,” Baker Botts IP Report, January 2004

Speeches and Presentations

• “Challenging Damages: The Entire Market Value Rule,” Intellectual Property Student Association, University of Michigan Law School, Ann Arbor, September 2010
• “Divided Infringement: How Far Does the Infringement Net Reach?” Intellectual Property Student Association, University of Michigan Law School, Ann Arbor, September 2009
• “Seagate Revisited: Trends Over the Last Two Years,” Baker Botts Client CLE, Dallas, June 2009
• “Strategies for Patent Claim Drafting,” Baker Botts CLE, April 2009
• “Quanta v. LG Electronics: Supreme Court Readdresses the Patent Exhaustion Doctrine,” Intellectual Property Student Association, University of Michigan Law School, Ann Arbor, October 2008
• “Intellectual Property 101,” Texas Minority Counsel Program, Intellectual Property CLE Track, Houston, October 2008
• Moderator, “Best Practices for Implementing a Diversity Program,” Dallas Bar Association Minority Participation Committee, Dallas, September 2008
• “Patent Cases at the U.S. Supreme Court: Keeping the Federal Circuit in Check,” Intellectual Property Student Association, University of Michigan Law School, Ann Arbor, September 2007
• Moderator, “Diversity in the Legal Profession,” Dallas Bar Association Minority Participation Committee, Dallas, July 2007
• “Inducement of Infringement and Joint Infringement Claims,” 11th Annual Advanced Patent Law Institute, Austin, October 2006
• “Introduction to Intellectual Property,” North Texas Global Telecommunications Society, Dallas, April 2005
• “Hot Topics in Software Licensing,” IP Licensing Nuts & Bolts 2005, Lighthouse Seminar Group, Atlanta, March 2005
• “Getting Smart About Intellectual Property,” IEEE Student Professional Awareness Conference, Texas Tech University, Lubbock, March 2005