Mr. Pandit’s practice focuses on patent litigation, where his experience includes jury trials, mediations, International Trade Commission Investigations, and Federal Circuit appeals. Mr. Pandit has litigated cases on a diverse range of technologies, including telecommunications, E-911, location based services, board games, children’s tricycles, credit card systems, do-not-call lists, vehicle tracking systems, snake anti-venoms, and wireless power management and interference. While Mr. Pandit has litigated in a number of venues around the country, he appears most frequently in the Eastern District of Texas, District of Delaware, and the Eastern District of Virginia.
Mr. Pandit is registered to practice before the U.S. Patent and Trademark Office, and has filed post-grant requests (including ex parte reexaminations and Inter Partes Reviews) of patents asserted in litigation matters in which he represents alleged infringers. Earlier in his career, Mr. Pandit used his background in Electrical Engineering to prepare and prosecute patent applications and draft opinions of counsel.
Outside the context of litigation, Mr. Pandit has represented clients with intellectual property issues related to bankruptcy proceedings and mergers and acquisitions. Most notably, in a prior position, Mr. Pandit represented a client in a $500 million acquisition of an open-source virtualization company. Through this and other representations, Mr. Pandit has acquired substantial experience with open-source copyright issues, trade secrets, standards setting bodies, and FRAND issues. Mr. Pandit also represented Grand Central Communications until it was purchased by Google, where its services are now known as Google Voice.
Mr. Pandit has also served as the de facto in-house IP counsel for a telecommunications company, where he supervised outside counsel for both patent prosecution and litigation. In doing so, Mr. Pandit worked directly with the General Counsel and Chief Technology Officer to supervise and guide strategy related to the company’s patent prosecution and litigation. Additionally, Mr. Pandit handled typical in-house duties, including reviewing intellectual property related contract issues, billing issues, press-releases, and best practices.
Mr. Pandit enjoys mentoring younger attorneys and law students, and has served as a Clinical Adjunct Professor at the University of Maryland Law School, where he taught a Patent Law Clinic.
Mr. Pandit currently serves on the Advisory Board of a health care technology company.
Prior to entering the legal field, Mr. Pandit worked at the National Institutes of Health in the Laboratory of Cellular and Molecular Neurophysiology, where he researched and wrote on signaling modalities between neurons and glial cells in the nervous system. In 2002, Mr. Pandit co-authored the article, “Astrocytes in Adult Rat Brain Express Type 2 Inositol 1,4,5-Trisphosphorate Receptors.” (Glia, May 10, 2002).
Mr. Pandit received his B.S.E.E. from the George Washington University in 2001 and his J.D. from the Catholic University of America Columbus School of Law in 2006. Mr. Pandit is admitted to practice in the District of Columbia, Virginia, the U.S. District Court for the Eastern District of Texas, the U.S. District Court for the Eastern District of Virginia, and the U.S. Court of Appeals for the Federal Circuit. He is also registered to practice before the United States Patent and Trademark Office.
Representative Engagements
- Cassidian Communications, Inc. v. microDATA GIS, Inc., et al., E.D.Tex., 2:12-cv-162 (before Judge Gilstrap, on behalf of microDATA GIS, Inc. and TeleCommunication Systems, Inc.) – After a five day trial, obtained a jury verdict of invalidity and non-infringement in a case involving 9-1-1 call routing technology.
- TracBeam, L.L.C. v. T-Mobile US, Inc., E.D.Tex., 6:14-cv-678 (on behalf of Defendant) – Represent Defendant in suit involving commercial and 9-1-1 location based services technology. The case is currently pending.
- Certain Antivenom Compositions and Products Containing the Same, 337-TA-903 (on behalf of one of the Respondents) – settled favorably before trial.
- TracBeam, L.L.C. v. AT&T Inc. et al., E.D.Tex., 6:14-cv-680 (on behalf of MetroPCS Communications, Inc. and MetroPCS Wireless, Inc.) – Represented defendants in a suit involving commercial and 9-1-1 location based services technology. The case was dismissed without prejudice.
- Levine v. Samsung Telecommunications America, LLC, et al., E.D.Tex., 2:09-cv-372 (on behalf of Cellco Partnership d/b/a Verizon Wireless) – Represented one of several defendants in a suit involving navigation technology on mobile devices. Settled favorably before trial.
- TeleCommunication Systems, Inc. v. Alfred B. Levine, E.D.Tex., 2:11-cv-430 (before Judge Gilstrap) – Represented the Declaratory Judgment Plaintiff in a suit involving navigation technology on mobile devices. Settled favorably before trial.
- Tendler Cellular of Texas, LLC v. MetroPCS Communications, Inc., et al., E.D.Tex., 6:11-cv-178 and 6:11-cv-619 (on behalf of MetroPCS Communications, Inc. and MetroPCS Wireless, Inc.) – Represented defendants in a patent case involving navigation functionality of mobile devices. Settled favorably before trial.
- Traffic Information, LLC v. Yahoo! Inc. et al., E.D.Tex., 2:09-cv-246 (on behalf of The American Automobile Association, Inc. and RM Acquisition, LLC d/b/a Rand McNally & Company) – Represented defendants in a patent case involving location based services related to mobile devices. Settled favorably before trial on behalf of six defendants.
- Traffic Information, LLC v. Huawei Technologies, Co., Ltd. et al., E.D.Tex., 2:10-cv-145 (on behalf of MetroPCS Wireless, Inc. and Cellular USA Inc.) – Represented defendants in a patent case involving location based services related to mobile devices. Settled favorably before trial on behalf of six defendants.
- Traffic Information, LLC v. Cricket Communications, Inc. et al., E.D.Tex., 2:10-cv-226 (on behalf of Cricket Communications, Inc. and Networks In Motion, Inc.) – Represented defendants in a patent case involving location based services related to mobile devices. Settled favorably before trial on behalf of six defendants.
- Smart Trike USA, LLC v. Heinz Kettler GmbH, et al., New Jersey, Civil Action No. 2:10-cv-02063 (FSH) (on behalf of Plaintiff / Counterclaim-Defendant) – Representing U.S. tricycle distributor in declaratory judgment action for non-infringement, invalidity, and unenforceability against patent holder of four patents related to the steering mechanisms in tricycles. Case settled favorably after four days of trial.
- In re Certain Modified Vaccinia Ankara (MVA) Viruses and Vaccinations made therefrom, ITC, Inv. No. 337-TA-550 (on behalf of Complainant) – Provided litigation support in this hotly contested patent infringement case brought in the International Trade Commission, which ultimately led to a settlement with the accused infringers, who agreed to vacate the market for the patented small pox vaccines.
- Gryphon Networks Corp. v Contact Center Compliance Corp., D. Mass., 1:10-cv-10258 (on behalf of Contact Center Compliance Corp.) – Represented defendant in a suit involving a national do-not-call list.
Other Publications
Lecturer, Patent Prosecution And Litigation, University of Maryland Technology Development Center (November 2008).
