Joining The Eclipse Group as Trial Partner in April of 2009, Shekhar Vyas’ highly specialized career emphasizes over sixteen years of patent prosecution, opinion work, IP analysis, client counseling and litigation, in the fields of electrical engineering, computer software, compression technologies, medical technology, and telecommunications. His most recent post was as a Partner in Fish and Richardson’s San Diego office, as well as serving as in-house counsel.
Shekhar’s experience encompasses advising client executives, in-house counsel, and engineering staff on IP strategy at various stages of litigation and trial, to include conducting pre-suit investigations and managing multiple teams of attorneys through all aspects of discovery and trial. He has successfully prepared and prosecuted various patent applications in a wide range of technologies relating to hardware and software, filed reissue and re-examinations, in addition to overseeing numerous settlement agreements.
Shekhar’s advisory practice includes serving as counsel for small to large clients on patent portfolio strategy, management, and optimization. Specific counseling issues include assessing claim scope of existing patents, identifying patents for possible acquisition, performing infringement and validity analyses, responding to licensing demands, and drafting license agreements.
He has represented clients, such as Microsoft and Intel, before multiple District Courts around the country, as well as the United States Courts of Appeal for the Federal Circuit, and the International Trade Commission.
He currently serves as an Entrepreneur in Residence (EIR) and sits on the committee for the Grant Access Portal for CONNECT, a San Diego regional non-profit organization with member support from the research community, private sector, and government whose purpose is to educate the San Diego region on how to commercialize local research-based discoveries.
In addition, Shekhar participates on multiple committees within the San Diego chapter of the MIT Enterprise Forum. He is an active supporter of the San Diego Sports Innovators, as well as both of the annual entrepreneurial challenges sponsored by San Diego State University and the University of California San Diego, and serves as a Redcoat on the Holiday and Poinsettia Bowls. Shekhar also acts as lead with regard to the firm’s sponsorship of and participation in the southern California chapter of the Tech Coast Angels and has served as a guest speaker on trademark and patent law at the University of San Diego.
- B.S., Electrical Engineering, George Washington University, Washington, DC, 1995 [Eta Kappa Nu]
- J.D., St. John’s University, School of Law, Jamaica, NY, 1999
- Member, American Bar Association
- Member, Federal Bar Association
- Member, San Diego County Bar Association
- Entrepreneur in Residence, CONNECT (San Diego)
- International Trade Commission
- U.S. Patent and Trademark Office
- U.S. Court of Appeals for the Federal Circuit
- U.S. District Court for the Southern District of California
- U.S. District Court for the District of Delaware
- U.S. District Court for the Eastern District of Texas
- Multimedia Patent Trust and Alcatel-Lucent v. Microsoft (S.D. Cal. 2008). Defended Microsoft against video compression patent asserted by MPT and worked on ten patent counterclaims filed by Microsoft against Alcatel-Lucent. Jury returned a verdict of no infringement and awarded no damages to MPT. Opposing Counsel: Kirkland and Ellis
- Lucent v. Microsoft (S.D. Cal. 2006). Defended Microsoft against three speech compression patents in multi-patent case brought by Lucent. Lucent dismissed two of the speech patents before trial. Court granted summary judgment of no infringement on the third speech patent, which was affirmed by the Federal Circuit. Opposing Counsel: Kirkland and Ellis
- Toshiba Corporation v. Juniper Networks, Inc et al.(D. Del. 2005). Represented Juniper against Toshiba in assertion of four patents related to router technology. Case won on summary judgment and upheld on appeal. Opposing Counsel: Oblon, Spivak, McClelland, Maier, and Neustadt, P.C.
- Intel v. Broadcom (D. Del. 2003). Represented Intel in asserting five patents against Broadcom wherein jury returned verdict for Broadcom on two patents, after which Judge granted Intel’s motion for new trial and case settled. Opposing Counsel: McDermott, Will, and Emory and Wilson Sonsini, LLP
- Bellcore v. FORE Systems (D. Del. 2001). Defended FORE against four ATM and Ethernet patents. Bellcore dismissed two patents prior to trial. After favorable Markman ruling on the two remaining patents, court entered final judgment of no infringement for FORE. Named top defense victory by National Law Journal in 2000. Federal Circuit affirmed one patent and reversed and remanded the other. Case settled after remand. Opposing Counsel: Finnegan, Henderson, Farabow, Garrett, and Dunner, LLP