Biography

Abhishek Bapna is Counsel in the Firm's Litigation department. His practice focuses on patent litigation in federal district courts and the International Trade Commission (ITC), as well as post-grant proceedings in the U.S. Patent and Trademark Office. His experience encompasses a broad spectrum of technologies, including consumer electronics, networking devices, biomedical devices, vehicle safety and telematics systems, and vehicle multimedia systems.

Representative Experience

  • Defending endodontic equipment manufacturer against allegations of infringement of patents directed to designs of endodontic instruments. (D.N.M).  Case is proceeding toward trial.
  • Representing leading medical device manufacturer in assertion of a patent directed to ultrasonic surgical devices. (S.D. Ohio). Following a favorable claim construction ruling, the Court granted client’s motion for summary judgment of infringement and lack of available non-infringing alternatives. The Court also denied defendants’ motion for summary judgment of invalidity. Case is proceeding toward trial with issues limited to validity and damages.
  • Defended leading medical device manufacturer against allegations of infringement of numerous patents directed to advanced bipolar electrosurgical devices. (D. Mass.).  Obtained stipulations of dismissal of several of the patents prior to trial.  Court found all asserted claims of remaining patents not infringed after a two-week bench trial, resulting in significant victory for our client.
  • Defended endodontic equipment manufacturer against allegations of infringement of patents directed to methods of making nickel titanium endodontic instruments. (E.D. Tenn./PTAB).  In separate inter partes (“IPR”) and post grant review (“PGR”) proceedings initiated after the district court action was filed, the PTAB found all challenged claims of two related patents unpatentable on multiple grounds. The Federal Circuit affirmed the IPR unpatentability decision. The Patent Owner withdrew its initial appeal of the PGR unpatentability decision, resulting in a final judgment that all challenged claims of the second patent were also unpatentable.
  • Defended leading mobile device manufacturer against allegations of infringement of patents directed to operating systems and hardware for touchscreens. (ITC).  Obtained final determination of non-infringement and/or invalidity of each asserted patent.
  • Defended leading foreign automobile manufacturer against allegations of infringement of over 25 patents directed to safety, telematics, and multimedia systems. (E.D. Tex./PTAB).  Obtained grant of writ of mandamus by Federal Circuit ordering E.D. Tex. to transfer case to E.D. Mich. Filed multiple petitions for IPR and the PTAB found over 100 patent claims unpatentable. Obtained dismissal of all claims thereafter.
  • Defended dental supply company against allegations of trade secret misappropriation in Tennessee state court.  Obtained dismissal of all claims.
Admissions
  • U.S. Patent and Trademark Office
  • U.S. District Court, Southern District of New York
  • U.S. Court of Appeals, Federal Circuit
  • New York
  • New Jersey
Languages
  • Hindi
Professional Activities

MEMBER: New York Intellectual Property Law Association, Asian American Bar Association of New York

Publications
  • Co-Author, "Federal Circuit: ITC Did Not Err in Denying Non-Respondent’s Petition to Rescind Exclusion Order Based on Invalidity GroundsLaw Journal Newsletters, The Intellectual Property Strategist, (September 2020)
  • Co-Author, "Federal Circuit Finds District Court Erred in Analysis of Motivation to Combine Prior Art References, Yet Affirms Ultimate Conclusion of Non-obviousness Due to the Lack of a Reasonable Expectation of Success" Law Journal Newsletters, The Intellectual Property Strategist, (July 2019)
  • Co-Author, "Federal Circuit Remands for Further Proceedings to Determine Whether RPX’s Petitions for IPR Were Time Barred For Failing to Identify Its Client As a ‘Real Party in Interest’" Law Journal Newsletters, The Intellectual Property Strategist,(September 2018)
  • "U.S. Patent and Trademark Office Strategic Objectives," A. Bapna, P. Thurlow; The New York Intellectual Property Law Association Bulletin (March 2010)
  • "New Standard Contractual Clauses for Data Transfers Out of EU Raise Concerns," A. Bapna, G. Chen, M. Paez; Bloomberg BNA's International World Communications Regulation Report (August 1, 2010)