EDUCATION

  • J.D. Intellectual Property Law, Whittier Law School, Costa Mesa, California.  Graduated 05/2008.
  • B.S. Electrical Engineering, Illinois Institute of Technology, Chicago, Illinois.  Graduated 12/1999.
  • M.A., Clinical Psychology with emphasis in Marriage & Family Therapy , Pepperdine University, Irvine, California.  Expected 05/2018.
    Note: In addition to Marriage & Family Therapy, applications of clinical psychology include jury selection, witness preparation and examination, and trial presentation and strategy.

ADMISSIONS

  • Admitted to practice in California (Bar No. 261371) and Illinois (ARDC No. 6298472).
  • Registered to practice before the United States Patent and Trademark Office (Reg. No. 60271).
  • Admitted to Central and Southern U.S. District Courts for the State of California.
  • Eligible for Admission by Motion to practice in 36 states including New York, Texas, and Washington, D.C.

EXPERIENCE

Attorney, Law Offices of Athar A. Khan, Irvine, California.  (03/2014 - present)

Family Law:

  • Dissolutions (Divorces), Custody and Visitation, Restraining Orders, and Prenuptial and Postnuptial Agreements.

Intellectual Property: Leveraged law firm experience and background at technology companies, to provide broad-based, holistic counseling to startup companies.

  • Advised clients regarding patents and other forms of intellectual property, as well as requirements for patentability, and successful leveraging and monetization of intellectual property.
  • Advised clients on a broad array of contractual matters, including non-disclosure and ownership of intellectual property rights.
  • Assisted clients focus on opportunities for market disruption based on current products, projected market direction, while avoiding patent positions of other entities.

Volunteer Trial Attorney, City Attorney of Los Angeles, Los Angeles, California.  (03/2014 - 9/2014)
Represented the People of the State of California as a trial attorney prosecuting misdemeanors before the Superior Court of Los Angeles.

  • First chair trial experience in all phases of jury trials, including pre-trial/402 procedures, evidentiary motions including 1538.5 motions to suppress evidence, jury selection (voir dire), opening statements, witness examination, closing arguments, and advocating for sentencing recommendations.
  • Selected for inclusion in a six-month Volunteer Trial Attorney Training Program comprising a five-week immersive training program showcasing the latest advances in substantive law, and best practices in pre-trial strategy, witness preparation, and trial practice.
    Discovery, depositions and witness preparation.

Associate Attorney, McDermott, Will & Emery, LLP., Irvine, California.  (10/2011 - 04/2013)
Assisted clients in procuring patent protection for inventions in software, electrical, and mechanical technologies.

  • Prepared invalidity and infringement contentions.
  • Performed due diligence, including invalidity, infringement, and design-around analysis.
  • Worked with, and prepared Expert Witnesses for trial.
  • Advised clients regarding patents, extent of patent protection, and requirements for patentability.
  • Prepared, filed, and prosecuted patent applications before the USPTO.
  • Worked with inventors to obtain invention disclosures with an eye to novelty and non-obviousness.

Associate Attorney, McAndrews, Held & Malloy, Ltd., Chicago, Illinois.  (09/2008 - 10/2011)
Represented clients on matters relating to electrical, software, and mechanical technologies.  Experience includes patent litigation and prosecution, due diligence, and portfolio management.

  • Invalidity and infringement analysis, and preparation of claim charts.
  • Discovery, depositions and witness preparation.
  • Patent portfolio audit and analysis.
  • Patent prosecution for software and electrical inventions.
  • Requests for Reexamination.
  • Trademark prosecution and enforcement.

Principal Engineering Systems Analyst, Broadcom Corporation, Irvine, California.  (11/2000 - 04/2008)
Increased productivity by analyzing and streamlining business processes for Legal and Engineering departments.  Responsible for enterprise-wide backups, antivirus, data search, and Active Directory domain administration.

  • Awarded the title of “Principal” in recognition of work excellence.
  • Saved $200K+ by repurposing computing equipment within company.
  • Projects: Virtual environments, terminal computing, workflow/process design, contract processing and management software design, and repurposing computer equipment.

Summer Associate, McAndrews, Held & Malloy, Ltd., Chicago, Illinois.  (05/2007 - 08/2007)

  • Drafted Utility Patent Applications, and Responses to Office Actions.
  • Developed non-infringement and invalidity arguments
  • Researched inventorship and inequitable conduct issues

Summer Associate, Wang, Hartmann & Gibbs, P.C., Newport Beach, California.  (06/2006 - 08/2006)

  • Analyzed patent claims, prosecution file histories, and prior art.
  • Legal research and memoranda.
  • Drafted “Proper Use” product disclaimer.

IT Support Specialist, Rockwell Electronic Commerce, Wood Dale, Illinois.  (12/1999 - 11/2000)

  • Provided Windows/Unix technical support to Executive Staff & 1000+ end-users.
  • Reduced support costs by introducing system images and implementing a company-wide antivirus solution.

Engineering Apprentice, Charles Industries, Ltd., Rolling Meadows, Illinois.  (12/1997 - 12/1999)

  • First apprentice in company’s history to be included in profit-sharing program.
  • Projects: CAD data manipulation, real-time monitoring of concealed load coils, and modem speed testing.

PUBLICATIONS

  • Symantec Antivirus Corporate Edition.  ISBNs: 1931836817 & B000079Y5B.
  • Compaq ProLiant Systems Technologies.  ISBN: B000079Y5H.
  • Sun Solaris 9 Administration Guides.  ISBNs: B000079Y5L, B000079Y5V & B000083F6H.
  • ABA Report on the Federal Circuit’s Rehearing En Banc of Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co.

LANGUAGES

  • Fluent in Urdu.
  • Working knowledge of basic Hindi and Punjabi.

FAMILY LAW LITIGATION

Case Names Intentionally not Listed.

  • Subject Matter: Child custody and visitation, spousal support, and child support.

CRIMINAL PROSECUTION

People of the State of California v. Tyson Christopher Johnson, No. 3MP05179 (Super. Ct. L.A. County, 2014).

  • Client: People of the State of California.
  • Subject Matter: Hit and run case involving expert testimony on the reliability of cross-racial eyewitness identification.

People of the State of California v. Claudia Yolima Torres, No. 3MP09426. (Super. Ct. L.A. County, 2014).

  • Client: People of the State of California.
  • Subject Matter: Driving under the influence of alcohol or drugs case involving refusal to submit to chemical test.

People of the State of California v. Mark James Fierro, No. 4MP01654 (Super. Ct. L.A. County, 2014).

  • Client: People of the State of California.
  • Subject Matter: Driving under the influence of alcohol or drugs case involving a motion to suppress evidence.

People of the State of California v. Walter Morales, No. 4MP00831 (Super. Ct. L.A. County, 2014).

  • Client: People of the State of California.
  • Subject Matter: Driving under the influence of alcohol or drugs case involving a motion regarding the propriety of conducting separate prosecutions for a misdemeanor and vehicle code infractions.

CRIMINAL DEFENSE

Case Names Intentionally not Listed.

  • Subject Matter: [Coming soon]

CIVIL LITIGATION

Broadcom Corporation v. SiRF Technologies.

  • Client: Broadcom Corporation.
  • Court : U.S. District Court for the Central District of California.
  • Subject Matter : Patent dispute involving GPS receivers, false advertising, and unfair competition.

Hill-Rom Services, Inc. et al v. Stryker Corporation.

  • Client: Stryker Corporation.
  • Court : U.S. District Court for the Western District of Wisconsin & U.S. District Court for the Southern District of Indiana.
  • Subject Matter : Patent dispute involving electrical and mechanical technologies relating to hospital beds.

Novatel Wireless, Inc. et al v. Franklin Wireless Corp et al.

  • Client: ZTE Corporation, which was named as a co-defendant.
  • Court : U.S. District Court for the Southern District of California.
  • Subject Matter : Patent dispute involving the architecture and functionality of mobile wireless hotspots.

B. B. Graham & Co., Inc. v. Know Your Options, Inc.

  • Client: Know Your Options, Inc.
  • Court : U.S. District Court for the Central District of California.
  • Subject Matter : Trademark dispute involving likelihood of confusion, informational/mere slogans, laches, estoppel, silence, and generic marks.

MacNeil Automotive Products, Ltd. v. Winfield Consumer Products, Inc.

  • Client: Winfield Consumer Products, Inc.
  • Court : U.S. District Court for the Northern District of Illinois.
  • Subject Matter : Patent dispute involving thermoforming techniques for custom-made automotive floor mats, and patterns and fluid collection reservoirs therein. 

Negotiated Data Solutions, Inc. v. Apple, Inc. et al.

  • Client: HTC Corporation, which was named as a co-defendant.
  • Court : U.S. District Court for the Eastern District of Texas.
  • Subject Matter : Patent dispute involving computing devices with USB functionality.

TECHNOLOGIES

  • Machine learning algorithms
  • Location-based services
  • Social networking
  • Data collection, manipulation, analysis, and extrapolation
  • Mobile computing technologies
  • Satellite systems
  • Operating systems
  • Data backup systems
  • Cloud-based technologies
  • Distributed file systems
  • Anti-virus systems
  • Virtual computing environments
  • Databases
  • Server-based technologies
  • Remote computing technologies
  • Hospital beds
  • GPS receivers
  • USB technology
  • Stents
  • Garden appliances
  • Business methods
  • User interfaces
  • Networking protocols
  • Surgical robots
  • Thermoforming
  • Hospital beds
  • Railway train wheels

Copyright © 2013 Athar A. Khan.  All Rights Reserved.