Daniel A. Prati

Partner
Norton Rose Fulbright US LLP

Daniel A. Prati

Daniel A. Prati

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Biography

Daniel Prati is a partner in the Houston office. His practice is focused on intellectual property, with an emphasis on:

  • Patent litigation in the fields of electronics, telecommunications, computer software, biomedical devices, optics and semiconductors
  • Copyright litigation

Daniel has experience handling many aspects of patent litigation in district court and the ITC, including discovery (document collection/production, written discovery, and depositions), infringement contentions, invalidity contentions, claim construction briefing, technical tutorials, summary judgment briefing, expert reports, mediation, settlement negotiation, and drafting settlement agreements. Daniel  has represented clients in the Southern, Eastern, Western, and Northern Districts of Texas, the District of Delaware, the Northern District of California, the Eastern District of Virginia, District of Minnesota, the Northern District of Illinois, and the ITC. Daniel has represented a wide variety of litigation clients, ranging from large multinational corporations to companies with fewer than 20 employees.

Daniel has experience preparing and filing petitions for Inter Partes Review and CBM Patent Review.  Daniel successfully argued for a petitioner at the USPTO, resulting in the invalidation of all claims under review.

Daniel has experience with transactional IP-related matters, including conducting IP due diligence and negotiating and drafting IP licenses, development agreements, purchase agreements, and assignments.

Prior to law school, Daniel was a project engineer and designed downhole tools for the oil services sector.  Daniel has more than four years of technical experience designing analog and digital circuits, laying out printed circuit boards, and writing firmware and software.


Professional experience

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JD, U.C. Berkeley Boalt Hall School of Law, 2009
BS, magna cum laude, Electrical Engineering, Texas A&M University, 2002

At U.C. Berkeley, Daniel served as the Senior Annual Review Editor for the Berkeley Technology Law Journal.

Daniel is admitted to practice law in the State of Texas and is a registered patent attorney with the United States Patent and Trademark Office.

  • Texas State Bar
  • US Patent & Trademark Attorney
  • Defended multiple technology companies in a patent infringement suit (Delaware)
  • Represented wireless technology company in multiple patent infringement investigations before the ITC
  • Defended multiple clients in copyright infringement suits
  • Advised large pharmaceutical company in $30M Joint Venture
  • Advised large retailer on $8M acquisition
  • Represented twenty co-defendants in a patent infringement lawsuit relating to telecommunication technology (Eastern District of Texas)
  • Defended a national airline in a patent infringement case regarding online internet software (Eastern District of Texas)
  • Defended a networking and communications equipment manufacturer in a patent infringement case regarding IP gateways (District of Delaware)
  • Defended an insurance company in a patent infringement case regarding online billing software (Northern District of Illinois)
  • Defended software manufacturers in a patent infringement case regarding digital rights management (Eastern District of Texas)
  • Defended several software companies in a patent infringement case regarding database management (Western District of Texas)
  • Represented a pharmaceutical company in asserting a patent related to prescription vitamins (Western District of Texas)
  • Represented large corporation in asserting a patent related to the automotive industry (Eastern District of Michigan)
  • Represented an infant bedding manufacturer in asserting a patent (District of Minnesota)
  • Texas Rising Star, intellectual property, Thomson Reuters, 2013 - 2019
  • Note, In re Seagate Technology LLC: A Clean Slate for Willfulness, 23 Berkeley Tech. L.J. 47 (2008)
  • Houston IP Inn of Court
  • Houston Intellectual Property Association
  • American Intellectual Property Law Association (AIPLA)
  • Spanish