Houtan K. Esfahani

Partner

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Houtan K. Esfahani

Partner

+1 202 408 4106 +1 202 408 4106
houtan.esfahani@finnegan.com houtan.esfahani@finnegan.com

901 New York Avenue, NW
Washington, DC 20001-4413

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Houtan K. Esfahani brings together a unique blend of litigation and trial experience as well as technical expertise that clients demand for high-stakes intellectual property matters. He has nearly 30 years of patent litigation and trial experience before U.S. district courts and the U.S. International Trade Commission (ITC). Houtan is registered to practice before the U.S. Patent and Trademark Office (USPTO) and has served on the firm’s management committee.

Recognized by The Legal 500 U.S. for his patent practice, Houtan focuses on litigation and client counseling, advising clients on intellectual property matters related to high technology.

Houtan has led high-profile patent litigations and advised clients on intellectual property matters spanning a vast array of complex and emerging technical subject matters involving semiconductors, artificial intelligence (AI), telecommunications, wireless communications, smartphones, Internet-of-Things (IoT), blockchain coding, and a wide variety of technologies related to consumer and industrial electronics.

Due to his expertise in telecommunications, Houtan often represents clients in the telecommunications industry in litigations and licensing matters related to standard essential patents (SEP). He also participates in the FRAND Licensing Standard Committee of Licensing Executives Society (LES), which is chartered with developing guidelines for licensing standard essential patents on fair, reasonable, and non-discriminatory (FRAND) terms.

Before joining Finnegan, Houtan worked for almost a decade as an electrical and software engineer in the telecommunications industry for the research and development unit of the Bell Telephone System (formerly AT&T Bell Laboratories). As an electrical and software engineer, he designed and implemented complex, large-scale telecommunication systems for deployment throughout the United States.

Drawing on his hands-on experience in the telecommunications industry, Houtan brings together a distinct combination of legal and technical talent that gives clients an upper hand in high-stakes intellectual property matters. Houtan is also at the forefront of intellectual property issues relating to emerging technologies, such as AI, blockchain coding, IoT, and cloud computing.

Houtan regularly teaches courses on patent law tailored to high technology in the electrical and computer fields.

Experience

Represented defendants MediaTek Inc. and MediaTek USA Inc. in a standard essential patent (SEP) suit relating to WiFi semiconductors. The case was successfully settled.

2:21-cv-00318, E.D. Tex., Judge Gilstrap

Represented plaintiff Sol IP Inc. in a standard essential patent (SEP) suit relating to 5G, 4G LTE, and WiFi semiconductors. The case was successfully settled.

6:21-cv-00270, W.D. Tex., Judge Albright

Represented complainant SIPCO in an investigation involving wireless mesh communication technologies in industrial automation products of Emerson Electric, Analog Devices, and Tadiran Batteries.

337-TA-1131, ITC, Judge Lord

Represented respondents Toyota Motor Corporation (Japan) and its U.S. subsidiaries in a patent infringement case involving graphics circuit processor (GPU) technologies in Toyota vehicles.

337-TA-984, ITC, Judge Pender

Represented defendant TouchType, Inc. (“SwiftKey”) in a patent suit relating to mobile touchscreen keyboard technology. The case was successfully dismissed.

3:14-cv-02448, S.D. Cal., Judges Sammartino, Skomal

Represented respondent HTC Corp. in an investigation involving certain circuitry used in smartphone technology, including radio-frequency modulators and front ends.

337-TA-885, ITC, Judges Essex, Lord, Shaw

Represented respondents Telefonaktiebolaget LM Ericsson and Ericsson Inc. in a patent infringement case involving cellular communications technology brought by Adaptix, Inc., a subsidiary of Acacia Research Corp.

337-TA-871, ITC, Judges Essex, Gildea

Represented complainant HTC Corp. in an investigation involving certain user interface features in Apple’s iPhones, iPads, and iPod Touches.

337-TA-808, ITC, Judge Gildea

Represented defendants MediaTek Inc. and MediaTek USA Inc. in a standard essential patent (SEP) suit relating to WiFi semiconductors. The case was successfully settled.

2:21-cv-00318, E.D. Tex., Judge Gilstrap

Represented plaintiff Sol IP Inc. in a standard essential patent (SEP) suit relating to 5G, 4G LTE, and WiFi semiconductors. The case was successfully settled.

6:21-cv-00270, W.D. Tex., Judge Albright

Represented complainant SIPCO in an investigation involving wireless mesh communication technologies in industrial automation products of Emerson Electric, Analog Devices, and Tadiran Batteries.

337-TA-1131, ITC, Judge Lord

Represented respondents Toyota Motor Corporation (Japan) and its U.S. subsidiaries in a patent infringement case involving graphics circuit processor (GPU) technologies in Toyota vehicles.

337-TA-984, ITC, Judge Pender

Represented defendant TouchType, Inc. ("SwiftKey") in a patent suit relating to mobile touchscreen keyboard technology. The case was successfully dismissed.

3:14-cv-02448, S.D. Cal., Judges Sammartino, Skomal

Represented respondent HTC Corp. in an investigation involving certain circuitry used in smartphone technology, including radio-frequency modulators and front ends.

337-TA-885, ITC, Judges Essex, Lord, Shaw

Insights

Lecture

Patent Resources Group Advanced Courses (PRG) Patent Resources Group Advanced Courses (PRG)

April 7-12, 2019

Sarasota

Lecture

Patent Resources Group Advanced Courses

April 15-20, 2018

New Orleans

Lecture

Patent Resources Group Advanced Courses Patent Resources Group Advanced Courses

October 15-20, 2017

Indian Wells

Lecture

Patent Resources Group Advanced Courses Patent Resources Group Advanced Courses

April 2-7, 2017

Orlando

News

Media Mention

Fed. Circ. Won't Rehear Nokia-InterDigital 3G Patent Spat Fed. Circ. Won't Rehear Nokia-InterDigital 3G Patent Spat

January 10, 2013

Law360

Press Release

Federal Circuit Rules in Favor of Finnegan Client InterDigital in Appeal from ITC Case Involving 3G Cellular Telephones Federal Circuit Rules in Favor of Finnegan Client InterDigital in Appeal from ITC Case Involving 3G Cellular Telephones

August 1, 2012

Professional Activities

American Bar Association
American Intellectual Property Law Association (AIPLA)
Eta Kappa Nu (HKN)
Institute of Electrical and Electronics Engineers (IEEE)
Tau Beta Pi

Admissions and Education

Admissions

U.S. Patent and Trademark Office
District of Columbia
New York

U.S. Court of Appeals, Federal Circuit

Education

Rutgers University School of Law: J.D., 1994

Columbia University: M.S., Electrical Engineering, with honors, 1987

Columbia University: B.S., Electrical Engineering, with honors, 1986

Houtan's Practices

AI + Finnegan: AI + Patent
Appeals, Issues, and Legal Strategy: Federal Circuit and Supreme Court Appeals
Diligence, Licensing, and Opinions: Licensing, Pooling, and Other Transactions; Opinions and Counseling; Standard Essential Patents (SEPs)
Global IP Enforcement, Litigation, and Trials: Federal Circuit and Supreme Court Appeals; ITC Section 337 Investigations and Trials; Patent Litigation and Trials; Pretrial Strategies; Standard Essential Patents (SEPs)
Prosecution and Portfolio Management: Patent Drafting and Prosecution

Houtan's Industries

AI, Electronics, and Information Technology: Artificial Intelligence (AI) and Machine Learning (ML); Augmented Reality/Virtual Reality (AR/VR); Electrical and Computer Technology; Electronic Devices and Components; Robotics
Communications: Internet of Things (IoT)
Consumer Goods and Services: Consumer Products
Transportation and Logistics: Automotive and Smart Mobility Tech