Babak S. Sani

Partner
Services: Intellectual Property; Patent Counseling & Prosecution; Acquisition Due Diligence; Licensing; Transactional Intellectual Property
Industries: Semiconductors & Electronics; Technology & Software; Telecommunications

Babak Sani focuses his practice on intellectual property law with emphasis on the evaluation and analysis of patents and other IP assets in the contexts of licensing, technology transfers, acquisitions and litigation. He counsels clients on risks and opportunities presented by patent portfolios that often include international rights and involve global markets.

Mr. Sani has conducted patent license negotiations on behalf of or adverse to some of the largest corporations in the electronics industry including AMD, Ericsson, Fairchild Semiconductor, Freescale, Fujitsu, HTC, Hitachi, SK hynix, IBM, Infineon, Intel, LSI Logic, Motorola, NEC, Nanya Technology, NXP Semiconductor, Seiko Epson, Sharp, Texas Instruments, Toshiba, and Xerox. This aspect of his practice has also involved non-practicing entities including Conversant IP, IP Value, Longitude Licensing, Round Rock Research, RPX, among others, as well as several patent brokers and auctioneers.

A seasoned patent prosecutor, Mr. Sani has handled reexaminations and reissues at the USPTO and directed oppositions abroad. He has developed international portfolios for some of the world’s leading companies in semiconductor memories, mobile media devices, graphics processors and discrete power devices, as well as for smaller start-up companies in the telecommunications industry. Over the years, he has drafted and procured hundreds of patents in a variety of technologies, including analog and digital integrated circuits, semiconductor devices and processing, microprocessors, telecommunications, image processing and consumer electronics.

Prior to joining the firm, Mr. Sani held engineering and managerial positions in the semiconductor industry for more than six years. His engineering career primarily focused on the design of analog and digital integrated circuits for telecommunication applications, working as a circuit designer and project manager, first at Exar Corporation and then at Sierra Semiconductor (now PMC Sierra).

Mr. Sani is a member of the firm’s Executive Committee. He is an adjunct professor at the University of California Hastings College of the Law where he teaches international patent law. Mr. Sani has been recognized by Super Lawyers magazine as a Northern California “Super Lawyer” from 2006 to 2015. He was named a 2013, 2014 and 2015 “IP Star” by Managing Intellectual Property magazine. Mr. Sani is fluent in Farsi.

Professional & Community Activities
American Bar Association
American Intellectual Property Law Association
Bar Association of San Francisco
Institute of Electrical and Electronics Engineer

Education
University of California, Hastings College of the Law, J.D. (1992)
Santa Clara University, M.S., Electronics and Communications (1986)
University of California, Berkeley, B.S., Electrical Engineering and Computer Science (1983)

Bar Admissions
California (1992)

Admissions
U.S. Patent and Trademark Office (1993)

Intellectual Property counsel to NewPort Communications
Served as lead IP counsel to the founders of NewPort Communications (NewPort), a venture-backed start-up company, to devise and execute an IP strategy for the company. NewPort was later acquired by Broadcom Corporation for $1.24B, with Broadcom asserting NewPort’s patents in subsequent litigation.

International enforcement for Apple Inc.
Assisted Apple, Inc. (Apple) in a successful enforcement campaign in Europe by obtaining quick and powerful utility models in Germany. Working closely with German associates the effort resulted in manufacturers joining Apple’s licensing program within a few months.

Patent license negotiations for electronics company
Represented a large foreign-based manufacturer of consumer electronics goods in protracted patent license negotiations against the dominant corporation in a multi-billion dollar electronics industry. Facing a much larger and formidable team of lawyers and technical experts we were able to achieve an unprecedented negotiated settlement resulting in payments of well over a hundred million dollars to our client.

 

The Patent Market: How to Strengthen and Maximize the Value of Your Portfolio, 2016 Patent Law Forum, October 28, 2016, Tokyo, Japan

The Patent Market: How to Strengthen and Maximize the Value of Your Portfolio, Intellectual Property Law Seminar, October 25, 2016, Shanghai, China

The Utility of Utility Models: What, When and How, August 2011

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Babak Sani focuses his practice on intellectual property law with emphasis on the evaluation and analysis of patents and other IP assets in the contexts of licensing, technology transfers, acquisitions and litigation. He counsels clients on risks and opportunities presented by patent portfolios that often include international rights and involve global markets.

Mr. Sani has conducted patent license negotiations on behalf of or adverse to some of the largest corporations in the electronics industry including AMD, Ericsson, Fairchild Semiconductor, Freescale, Fujitsu, HTC, Hitachi, SK hynix, IBM, Infineon, Intel, LSI Logic, Motorola, NEC, Nanya Technology, NXP Semiconductor, Seiko Epson, Sharp, Texas Instruments, Toshiba, and Xerox. This aspect of his practice has also involved non-practicing entities including Conversant IP, IP Value, Longitude Licensing, Round Rock Research, RPX, among others, as well as several patent brokers and auctioneers.

A seasoned patent prosecutor, Mr. Sani has handled reexaminations and reissues at the USPTO and directed oppositions abroad. He has developed international portfolios for some of the world’s leading companies in semiconductor memories, mobile media devices, graphics processors and discrete power devices, as well as for smaller start-up companies in the telecommunications industry. Over the years, he has drafted and procured hundreds of patents in a variety of technologies, including analog and digital integrated circuits, semiconductor devices and processing, microprocessors, telecommunications, image processing and consumer electronics.

Prior to joining the firm, Mr. Sani held engineering and managerial positions in the semiconductor industry for more than six years. His engineering career primarily focused on the design of analog and digital integrated circuits for telecommunication applications, working as a circuit designer and project manager, first at Exar Corporation and then at Sierra Semiconductor (now PMC Sierra).

Mr. Sani is a member of the firm’s Executive Committee. He is an adjunct professor at the University of California Hastings College of the Law where he teaches international patent law. Mr. Sani has been recognized by Super Lawyers magazine as a Northern California “Super Lawyer” from 2006 to 2015. He was named a 2013, 2014 and 2015 “IP Star” by Managing Intellectual Property magazine. Mr. Sani is fluent in Farsi.

Professional & Community Activities
American Bar Association
American Intellectual Property Law Association
Bar Association of San Francisco
Institute of Electrical and Electronics Engineer

Education
University of California, Hastings College of the Law, J.D. (1992)
Santa Clara University, M.S., Electronics and Communications (1986)
University of California, Berkeley, B.S., Electrical Engineering and Computer Science (1983)

Bar Admissions
California (1992)

Admissions
U.S. Patent and Trademark Office (1993)

Intellectual Property counsel to NewPort Communications
Served as lead IP counsel to the founders of NewPort Communications (NewPort), a venture-backed start-up company, to devise and execute an IP strategy for the company. NewPort was later acquired by Broadcom Corporation for $1.24B, with Broadcom asserting NewPort’s patents in subsequent litigation.

International enforcement for Apple Inc.
Assisted Apple, Inc. (Apple) in a successful enforcement campaign in Europe by obtaining quick and powerful utility models in Germany. Working closely with German associates the effort resulted in manufacturers joining Apple’s licensing program within a few months.

Patent license negotiations for electronics company
Represented a large foreign-based manufacturer of consumer electronics goods in protracted patent license negotiations against the dominant corporation in a multi-billion dollar electronics industry. Facing a much larger and formidable team of lawyers and technical experts we were able to achieve an unprecedented negotiated settlement resulting in payments of well over a hundred million dollars to our client.

 

The Patent Market: How to Strengthen and Maximize the Value of Your Portfolio, 2016 Patent Law Forum, October 28, 2016, Tokyo, Japan

The Patent Market: How to Strengthen and Maximize the Value of Your Portfolio, Intellectual Property Law Seminar, October 25, 2016, Shanghai, China

The Utility of Utility Models: What, When and How, August 2011

CONTACT ME

Eighth Floor, Two Embarcadero Center
San Francisco, California, 94111
415 273 4751

DISCLAIMER


While we are pleased to have you contact us by telephone, surface mail, electronic mail, or by facsimile transmission, contacting Kilpatrick Townsend & Stockton LLP or any of its attorneys does not create an attorney-client relationship. The formation of an attorney-client relationship requires consideration of multiple factors, including possible conflicts of interest. An attorney-client relationship is formed only when both you and the Firm have agreed to proceed with a defined engagement.

DO NOT CONVEY TO US ANY INFORMATION YOU REGARD AS CONFIDENTIAL UNTIL A FORMAL CLIENT-ATTORNEY RELATIONSHIP HAS BEEN ESTABLISHED.

If you do convey information, you recognize that we may review and disclose the information, and you agree that even if you regard the information as highly confidential and even if it is transmitted in a good faith effort to retain us, such a review does not preclude us from representing another client directly adverse to you, even in a matter where that information could be used against you.

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CONTACT US

DISCLAIMER

While we are pleased to have you contact us by telephone, surface mail, electronic mail, or by facsimile transmission, contacting Kilpatrick Townsend & Stockton LLP or any of its attorneys does not create an attorney-client relationship. The formation of an attorney-client relationship requires consideration of multiple factors, including possible conflicts of interest. An attorney-client relationship is formed only when both you and the Firm have agreed to proceed with a defined engagement.

DO NOT CONVEY TO US ANY INFORMATION YOU REGARD AS CONFIDENTIAL UNTIL A FORMAL CLIENT-ATTORNEY RELATIONSHIP HAS BEEN ESTABLISHED.

If you do convey information, you recognize that we may review and disclose the information, and you agree that even if you regard the information as highly confidential and even if it is transmitted in a good faith effort to retain us, such a review does not preclude us from representing another client directly adverse to you, even in a matter where that information could be used against you.

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