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Kayvan B. Noroozi's headshot
Kayvan B. Noroozi's headshot

Kayvan B. Noroozi

Trial Lawyer

Kayvan has successfully litigated complex matters against a number of the world’s largest companies.

BIO

"Kayvan Noroozi is 'highly experienced at trial, before the Federal Circuit and in inter partes review proceedings.' His profound expertise on SEPs and Section 101 has been instrumental to many of his successes on behalf of industry leaders."

IAM 300
Kayvan’s practice focuses on complex commercial litigation, with a particular emphasis on patent litigation. Kayvan represents intellectual property owners before the district courts, the International Trade Commission, the Federal Circuit, and the Patent Trial and Appeal Board. His clients include operating companies, private equity funds, institutional patent holders, and litigation finance funds. His matters routinely place him opposite the world’s largest companies and law firms.

Through a combination of client advocacy and legal publications, Kayvan has had an influential impact in re-balancing patent law and policy toward protecting intellectual property.

Kayvan has briefed and argued numerous cases before the Federal Circuit, where he has helped to shape the contours of § 101. He was the principal author of the winning briefing in Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018) (precedential), which upheld the subject matter eligibility of software graphical user interface patents, and fully affirmed the district court’s judgment. The decision has been widely cited by courts and policy makers, including by the Patent and Trademark Office in a memorandum to patent examiners.

Kayvan has also represented patent owners in dozens of inter partes review proceedings before the PTAB, where his work has also resulted in significant precedents. Kayvan obtained the first decision to deny institution of a second petition brought by a new petitioner under General Plastic. See NetApp Inc. v. Realtime Data LLC, IPR2017-01195 (PTAB Oct. 12, 2017) (Paper 9). The PTAB subsequently adopted the rule of NetApp v. Realtime Data as binding precedent. See Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00062, -00063, -00084, Paper 11 (PTAB Apr. 2, 2019).

In total, Kayvan has obtained fifteen decisions denying IPR institutions in full. Kayvan has also persuaded the PTAB to fully grant multiple motions to amend, resulting in one hundred and eleven amended claims. At the time, the Board had only granted four other such motions in more than 2,800 proceedings.

In addition, Kayvan has repeatedly obtained Final Written Decisions upholding the patentability of all challenged claims. In Dell et al. v. Realtime Data, IPR2016-01002, for instance, the Board’s Final Written Decision noted that petitioners’ allegations could not be accepted in light of the "plethora" of contrary cross-examination admissions obtained from petitioners’ expert. IPR2016-01002, Paper 71 at 17.

Before the trial courts, Kayvan has tried several jury cases to verdict. In Core Wireless v. LG Electronics, he obtained the first award of enhanced damages in a case involving declared standard essential patents. See 2:14-cv-912 (E.D. Tex.), Dkt. 47. The district court’s enhancement order emphasized cross-examination testimony obtained by Kayvan in which LG’s corporate representative admitted that "after thorough review of the patents-in-suit he concluded that the patents are novel and non-obvious." 2:14-cv-912, Dkt. 47 at 2.

In numerous other district court actions, Kayvan has helped to obtain significant licensing agreements from Google, AT&T, Verizon, Microsoft, Apple, Hewlett-Packard, and Amazon.com. In each instance, the defendants took a license only days or weeks before trial.

Kayvan is also a recognized writer and speaker on intellectual property law and policy. With Prof. Richard A. Epstein, he is the author of Why Incentives for "Patent Holdout" Threaten to Dismantle FRAND, and Why It Matters, 32 Berkeley Tech. L. J. 1381. Even prior to its publication, the article achieved a significant policy impact at the U.S. Department of Justice. In March 2018, the head of the DOJ’s Antitrust Division, Mr. Makan Delrahim, widely cited to Epstein & Noroozi in announcing a policy shift that commentators have called "radical" and "abrupt." Among other points, Mr. Delrahim cited to Epstein & Noroozi for the observation that the longstanding disfavor toward the injunctive remedy in the context of FRAND-committed standard-essential patents has been misguided and "can cause great harm to consumers." Kayvan has also been invited to speak at the Hoover Institution at Stanford University, and is a regular invitee to Hoover’s Working Group on Intellectual Property, Innovation, and Prosperity.

Kayvan began his career as an appellate clerk to Judge Jerry E. Smith of the Fifth Circuit Court of Appeals, and previously practiced at Irell & Manella.
 

CLERKSHIPS

Hon. Jerry E. Smith, Fifth Circuit Court of Appeals
 

DISTINCTIONS

Selected by Super Lawyers as a Southern California "Rising Star" in intellectual property litigation from 2014-2018.

EDUCATION

    University of Chicago Law School (J.D., with Honors)
    • 2009 Research assistant to Prof. Richard Epstein
    • John M. Olin Fellow in Law and Economics
    • Thomas R. Mulroy Prize for Excellence in Appellate Advocacy

    University of California, Berkeley (B.A., Economics), 2005

    Sciences Po (International Diploma)

ADMISSIONS

    State Bar of California

    Northern District of California

    Eastern District of Texas

NEWS

Noroozi Discusses Serial IPRs and Recent PTAB Precedents with Law360

Serial IPR challenges had become a fixture of PTAB practice until the PTAB's decision in Realtime v. NetApp, in which the Board ruled in favor of Noroozi PC's client Realtime Data and refused to institute a follow on petition because another party had previously brought a similar challenge to the same patent.

Noroozi Discusses DOJ's Stance on SEPs with Law360

The conflicting views on standard essential patents expressed by the Department of Justice, Federal Trade Commission, and certain district court judges has become the subject of widespread interest in the patent community.

Noroozi PC Secures Another Complete Victory Against Dell, HP, And Others

On May 25, 2018, the Patent Trial and Appeal Board ("PTAB") issued a final written decision upholding all claims of Realtime Data's U.S. Patent 9,054,728. The decision sided against Dell, EMC, HP, HP Enterprise, Teradata, and Veritas, each of which was represented by major law firms.

Law.com Writes: "Noroozi Has Pulled Off Another Upset Special"

On May 15, 2018, the Patent Trial and Appeal Board ("PTAB") issued a final written decision upholding all challenged claims of Realtime Data's U.S. Patent 7,415,530. The decision emphasized that Petitioners' allegations could not be "reconcile[d]" with the cross-examination admissions of their expert witness.

Full Federal Circuit Denies LG’s Petition For Rehearing En Banc

In a unanimous decision issued on May 3, 2018, the full Federal Circuit denied LG's request that the court reconsider, en banc, its precedential decision in Core Wireless v. LG, 800 F.3d 1356 (Fed. Cir. 2018). LG had argued that the decision was "entirely inconsistent" with the Supreme Court's decision in Alice v. CLS Bank, and created a "sweeping exception" to that case.

PTAB Denies Institution of Commvault IPR In Full

On April 10, 2018, the Patent Trial and Appeal Board ("PTAB") issued a decision in which it fully denied institution of an inter partes review challenge filed by Commvault Systems, Inc. against U.S. Patent 9,054,728, belonging to Realtime Data LLC.

Noroozi PC Fully Defeats Unified Patents IPR At Institution

On March 27, 2018, the Patent Trial and Appeal Board fully denied institution of an inter partes review challenge brought by Unified Patents against Noroozi PC's client, Realtime Data. Citing numerous "deficiencies" in the Unified Patents petition, the Board found the petition inadequate to warrant further consideration. The patent at issue, U.S. Patent 8,717,204, is directed to accelerated transmission of data using data compression and decompression.
 

Assistant Attorney General Extensively Cites Epstein & Noroozi In Announcing Major Policy Shift

The Assistant Attorney General of the United States for the Antitrust Division, Makan Delrahim, recently announced a significant policy shift in the DOJ's view of potential antitrust concerns with respect to standard-essential patents and FRAND commitments.

Noroozi PC Again Recognized As "Skilled In The Art"

In recognition of the firm's recent victory against Apple, ALM has featured the firm in its "Skilled in the Art" IP briefing for the second time in two months.

Noroozi PC Obtains Five Wins In Five Days

On Monday, March 19, Noroozi PC obtained its fifth victory in five consecutive business days. The Patent Trial and Appeal Board issued a decision fully denying institution of an inter partes review challenge brought by Commvault Systems, Inc. against U.S. Patent 7,415,530, belonging to Realtime Data LLC.

PTAB Fully Rejects Hindsight-Driven IPR

On March 15, 2018, the Patent Trial and Appeal Board fully denied institution of an inter partes review challenge brought by Commvault Systems, Inc. against U.S. Patent 9,116,908, belonging to Realtime Data LLC.

PTAB Denies Adverse Judgment Request Post-Arthrex

On March 14, 2018, the PTAB denied a request for adverse judgment brought by petition Commvault Systems, Inc. with respect to certain claims of U.S. Patent 8,717,204, owned by Realtime Data LLC. CBM2017-00061, Paper 18. Commvault had filed a petition for Covered Business Method Review ("CBM"), challenging all thirty claims of the '204 patent.

PTAB Grants Motion To Amend In Full, Rejecting Ten Obviousness Combinations

On March 13, 2018, the Patent Trial and Appeal Board ("PTAB") issued a final written decision in Apple v. Realtime Data, IPR2016-01737, in which it fully granted Realtime Data's motion to amend with respect to fifty-five substitute claims.

ALM Features Noroozi PC As "Skilled in the Art"

In recognition of the firm's significant wins before the Federal Circuit and Patent Trial and Appeal Board last week, ALM has featured Noroozi PC in its "Skilled in the Art" IP briefing.

Noroozi PC Obtains Fourth IPR Non-Institution In Full Against NetApp

On January 25, 2018, the Patent Trial and Appeal Board entered a decision fully denying institution of an inter partes review challenge brought by NetApp against Realtime Data's U.S. Patent 7,161,506.

Noroozi PC Secures Full Affirmance At Federal Circuit For Conversant

In a precedential and detailed decision issued on January 25, 2018, the Federal Circuit affirmed all aspects of a judgment of infringement and not invalidity in favor of Noroozi PC’s client, Conversant Wireless Licensing S.a.r.l.

Noroozi PC Defeats CBM In Full, Trims Down IPR

On January 18, 2018, the Patent Trial and Appeal Board (PTAB) issued a decision fully refusing to institute a Covered Business Method (CBM) challenge brought by Commvault Systems against a data compression patent owned by Noroozi PC's client, Realtime Data. CBM2017-00061, Paper 10.

Noroozi PC Obtains Non-Institution In Full For Realtime Data

For the third time in the past month, Noroozi PC has obtained a denial of institution as to all claims on all grounds for Realtime Data LLC. The latest decision pertains to an inter partes review petition brought by NetApp, Inc. against Realtime's U.S. Patent 9,054,728. 

Noroozi PC Secures Significant IPR Win For Realtime Data

On October 31, 2017, the Patent Trial and Appeal Board upheld the validity of all claims of U.S. Patent 9,116,908, rejecting an inter partes review challenge brought by Petitioners Dell, HP, Oracle, Riverbed, Echostar, Teradata, Hughes Networks, and Veritas. 

Court Enhances LG’s Liability for Willful Infringement

On November 2, 2016, Judge Gilstrap issued an order enhancing damages against LG and entering final judgment for Noroozi PC’s client, Core Wireless Licensing S.a.r.l.

Core Wireless Obtains Willful Infringement Verdict Against LG

On September 16, 2016, a jury in the Eastern District of Texas found that LG has willfully infringed two telecommunications patents owned by Noroozi PC’s client, Core Wireless S.a.r.l., a division of Conversant Intellectual Property Management. The jury awarded a running royalty of 6 cents per unit.

ANALYSIS

Law.com Quotes Noroozi Regarding Upcoming Supreme Court Decision

In a conversation with Law.com's Scott Graham, Kayvan Noroozi discussed the Supreme Court's upcoming decision in Dex-Media v. Click-to-Call Technologies.

Noroozi Discusses IPR Estoppel and Serial Petitions With Law360

In an interview with Law360.com, Kayvan Noroozi discussed the current landscape of estoppel and serial petitions in inter partes review proceedings before the PTAB.

Noroozi Comments on PTAB Precedential Panel Formation With Bloomberg Law

In an interview with Bloomberg Law, Kayvan Noroozi commented on the creation and impact of the PTAB's Precedential Opinions Panel.

Noroozi Discusses Recent PTAB Precedential Decisions With Bloomberg Law

In an interview with Bloomberg Law, Kayvan Noroozi discussed the impact of the Patent Trial and Appeal Board's recent precedential decisions in Valve Corp. v. Elec. Scripting Prods. and NHK Spring v. Intri-Plix.

Noroozi Discusses Recent Federal Circuit Decision with Law360

In an interview with Law360.com, Kayvan Noroozi discussed the Federal Circuit's watershed decision in RPX v. AIT, and its potential impact on inter partes review proceedings going forward. Read more at Law360.com.

Epstein & Noroozi Article Continues Policy Impact

On June 4, 2018, legal news site Law360.com published an analysis of the DOJ’s recent policy shift as to the application of antitrust scrutiny to owners of declared standard-essential patents subject to FRAND commitments.

Will the Supreme Court Hold IPRs Constitutional?

In a piece published in Law360, I explore the arguments and merits at play in Oil States Energy v. Greene's Energy, in which the Supreme Court will decide whether inter partes review is unconstitutional under the "public rights" exception to Article III.

Ten Years After iPhone, Is Apple Moving Away from Steve Jobs' Winning Formula?

In a piece published in Investor's Business Daily, I give a personal perspective on the iPhone, the drivers of its success, and why Apple's battle with Qualcomm signals a troubling shift for the company and Apple’s costumers.

Why Incentives for "Patent Holdout" Threaten to Dismantle FRAND, and Why It Matters

Richard Epstein and I have published an updated version of our article discussing the FRAND bargain, and why systematic misunderstandings and biases driving American courts' application of FRAND presents notable dangers that extend far beyond the realm of licensing standard-essential patents.

Is Antitrust A Proper Tool For Setting Patent Policy?

I was honored to speak at an event hosted by the Hoover Institution at Stanford University, in conjunction with Global Competition Review, regarding the intersection of antitrust and IP law. My esteemed co-panelists, including Mark Lemley, provided a variety of insights as to the role that antitrust should play in setting IP policy. 

Carnegie Mellon Vs. Marvell: With $1.7 Billion At Stake, Who Should Win, And Will They Settle?

My analysis of the merits of the pending issues in the Carnegie Mellon v. Marvell case was published on Seeking Alpha, here. My earlier analysis of the case, discussing its potential impact on $MRVL shares, can be read below as well as here on Seeking Alpha.

Carnegie Mellon v. Marvell: A $1.7 Billion Question Remains Unanswered

On August 4, 2015, the Federal Circuit issued its long-awaited opinion in Carnegie Mellon University v. Marvell Technology Group, Ltd., et al., deciding key issues in a multi-billion dollar patent litigation matter.

EEOC v. Abercrombie & Fitch: When Corporate Image Conflicts with Title VII, Title VII Trumps

For decades, Abercrombie & Fitch built a multi-billion dollar clothing business through advertisements showcasing practically nude men and women—a remarkable feat of irony. That success demonstrated that Abercrombie’s true product has been a particular lifestyle image. As Abercrombie’s founder, Mike Jeffries, admitted in 2006, that image rested on exclusion.

SCOTUS Saves Raisins, Gives Away the Farm

In Horne v. Dep't of Agriculture, the Supreme Court recently held that the Department of Agriculture's confiscation of significant percentages of raisin growers' crops, without compensation, violated the Takings Clause of the Fifth Amendment. The decision has been hailed as a victory for property rights and a rebuke to governmental overreach.

Teva v. Sandoz: SCOTUS Tells Federal Circuit to Raise Its Standards (Of Review)

It would appear axiomatic that a change in the applicable standard of review should make a significant and systematic impact on reversal rates. Empirical evidence validates that hypothesis as a whole: after the Federal Circuit held in 1998 that it would review district court claim constructions in patent cases entirely de novo,[1] the Federal Circuit's reversal rate on claim construction shot from roughly 20% to over 40%.[2]

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EDUCATION

    University of Chicago Law School (J.D., with Honors)
    • 2009 Research assistant to Prof. Richard Epstein
    • John M. Olin Fellow in Law and Economics
    • Thomas R. Mulroy Prize for Excellence in Appellate Advocacy

    University of California, Berkeley (B.A., Economics), 2005

    Sciences Po (International Diploma)

ADMISSIONS

    State Bar of California

    Northern District of California

    Eastern District of Texas