Naresh Kannan

Naresh chairs Barclay Damon’s Patents & Prosecution Practice Area and co-leads its Technology, Communications & Networking Technology, and Emerging Technologies Teams. A former scientist, engineer and inventor, he brings research and development and product management experience at science and technology organizations, including AT&T Bell Laboratories, to a patent practice encompassing litigation, prosecution and counseling.

Naresh’s litigation experience includes district court cases and contested proceedings before the Patent Trial and Appeal Board, including inter partes reviews. He also prepares and prosecutes patent applications before the US Patent & Trademark Office, files international patent applications and coordinates patent prosecution in other countries with local counsel. His counseling work addresses freedom to operate, patent and technology landscapes, the patentability of new products, intellectual property portfolio management and IP licensing agreements. He has also assisted clients as embedded and seconded in-house patent counsel, including a global consumer-health business and a semiconductor innovation company.

His work spans biomedical, chemical, electrical, optical, computer, software and mechanical technologies. In life sciences and materials, his experience includes vascular devices, glucometry, biomolecular testing, endoscopes, polymer coatings, composite materials, synthetic latex and detergents. His work with electronic and connected technologies includes semiconductor devices and processing, smart wearables, lidar, photonics, broadband mobile networks and the internet of things.

Naresh has also worked with technologies involving robotics, drones, 3D printing, nanotechnology, cloud and quantum computing, financial technologies, process automation, big data, cybersecurity, blockchain and voice control. Other areas in his experience include agricultural technologies, recycling machines, musical instruments, furniture and archery.

Beyond his practice, Naresh serves on Barclay Damon’s Opportunity, Inclusion & Belonging Partner Committee and is the partner for those initiatives in the firm’s Albany office.

Patent Trial and Appeal Board (PTAB) Proceedings

• Successfully invalidated medical-device patents asserted by a competitor in district court litigation.
• Defended patents on wireless-networking technology against invalidity challenges by the defendant in related district court litigation.
• Defended medical-device patents owned by a leading health care company against invalidity challenges raised by a competitor.
• Successfully obtained a reversal of an examiner’s rejections in a photonics-based invention.

Federal Court Patent Litigation

• Defended a global consumer-health company in patent infringement litigation over medical devices involving polymer chemistry.
• Represented a global medical and healthcare company in enforcing patents on pharmaceutical-delivery devices.
• Defended a leading manufacturer of security products in patent-infringement litigation over wireless security systems.

Patent Preparation & Prosecution and IP/Patent Counseling

• Handled biomedical matters involving glucometry, interventional radiology, ultrasonic probes, endoscopes, oncology devices, and disease detection.
• Handled chemical technology matters involving polymer chemistry, cleaning compositions, chemical vapor deposition, and mass spectrometry.
• Handled electrical and optical matters involving semiconductor devices, photonics systems, fiber-optic transceivers and cables, quartz crystal microbalances, sensors and actuators, motion-sensor lighting, liquid crystal displays (LCD), electric motors, and nuclear detectors.
• Handled computer and software matters involving artificial intelligence, machine learning, the Internet of Things, cloud computing, process automation, blockchain, cryptocurrency, quantum computing, logistics systems, document-translation systems, virtual-machine technology, and distributed server systems.
• Handled mechanical matters involving archery crossbows, offshore platform design, oil pipeline management, window sash technology, bed and furniture systems, mattresses and cushions, musical instruments, and product packaging.

• Albany Law School, JD, Summa Cum Laude
• Cornell University, BS, Applied and Engineering Physics

• New York
• US Patent and Trademark Office

• Best Lawyers: Ones to Watch in America®: Communications Law, 2024–2025; Litigation – Intellectual Property, 2023–2025; Patent Law, 2024–2025
• Selected to Super Lawyers Upstate New York Rising Stars: Intellectual Property Litigation, 2022–2024
• New York State Bar Association, Empire State Counsel Honoree, 2018