Khan, Omar

Omar A. Khan

Omar A. Khan is an accomplished trial and appellate attorney with extensive experience representing life sciences and technology-focused clients in complex and high-stakes intellectual property matters. Mr. Khan’s courtroom experience includes jury and bench trials in district courts throughout the country, PTAB proceedings, ITC proceedings, and domestic and international arbitrations. He has also argued and won cases in multiple courts of appeals, including the Ninth and Federal Circuits.

During his career, Mr. Khan has successfully litigated some of the largest and most important “bet-the-company” intellectual property trial and appellate matters for leaders in the biotechnology, medical devices, diagnostics, genomics, pharmaceuticals, computer hardware and software, networking, telecommunications and financial services industries.

Mr. Khan regularly publishes and speaks on a wide variety of intellectual property topics and developments, including as a guest lecturer at Columbia, NYU and University of Michigan. He also has an extensive pro bono practice, which includes serving on the Board of Directors of The Bronx Defenders and on the Pro Bono Panel of the US Court of Appeals for the Second Circuit.

Professional Activities

Mr. Khan is a member of the Federal Circuit Bar Association, where he was Vice Chair of the Pro Bono Committee and continues to serve on the Pro Bono, PTO and Amicus Committees. He is also active in the New York Intellectual Property Law Association, where he serves on the Programs and Patent Litigation Committees, and in the Intellectual Property Owners Association, where he serves on the Pharmaceutical & Biotechnology Issues committee.

In addition, Mr. Khan is a member of the firm's New York Hiring Committee, Diversity Committee, Associate Committee, and Senior Associate Committee, and he is also a co-chair of the firm's New York summer associate program. He also frequently speaks and presents on issues ranging from discovery to trial and appellate advocacy, as part of the firm's litigation training and legal development programs.

Past Experience

Prior to joining WilmerHale, Mr. Khan served as a law clerk to the Honorable William C. Bryson of the US Court of Appeals for the Federal Circuit and the Honorable Naomi Reice Buchwald of the US District Court for the Southern District of New York.

Mr. Khan also served as a Patent Examiner in the United States Patent and Trademark Office from 2001 to 2003, focusing on applications for patents directed to medical devices, diagnostics and, other biotechnology.

Pro Bono

Mr. Khan has an extensive pro bono practice, with a particular focus on veterans, disability and civil rights matters, and has won numerous awards for his pro bono work, including from the Federal Circuit Bar Association, the New York State Bar Association and MFY Legal Services. He has acted as counsel or co-counsel to The Bronx Defenders, MFY Legal Services, Disability Rights New York, New York Lawyers for the Public Interest and the National Veterans Legal Services Program. He has also been appointed pro bono counsel, including by the Second, Sixth and Ninth Circuits, to represent indigent prisoners and defendants in civil appeals raising various habeas and civil rights issues, including issues of ineffective assistance of counsel, retaliation, due process and equal protection.

As vice chair of the Pro Bono Committee of the Federal Circuit Bar Association, Mr. Khan coordinated the association's pro bono efforts relating to veterans and PTO appeals to the Federal Circuit. Mr. Khan also represents veterans and their spouses in Federal Circuit appeals relating to their claims for disability benefits. For his veterans work and contributions to the Pro Bono Committee, Mr. Khan has been awarded the Pro Bono Advocacy Award and the Pro Bono Leadership Award by the Federal Circuit Bar Association.

Mr. Khan is co-counsel with The Bronx Defenders, specifically the Family Defense Practice, in multiple matters defending Bronx parents who are at risk of losing custody of their children because they have marginal resources or employment, have unstable housing, or suffer from mental illness or addiction. Mr. Khan and his co-counsel at Bronx Defenders work together to provide legal defense services with the goal of preventing the dissolution of families and the resulting destabilization of children's lives, families and communities in the process.

Mr. Khan coached teams of middle school students for the Thurgood Marshall Junior Mock Trial competition, held annually at the Bronx Supreme Court and involving more than 1,000 students competing on behalf of 20 middle schools from the Bronx, Manhattan, Queens and Westchester County. He coached the St. Ignatius Loyola team that won the competition in 2010 and was featured in the New York Daily News for the victory.

Mr. Khan also represented various public interest organizations advocating for individuals with disabilities and filed amicus briefs in state and federal appellate courts on their behalf, for which he received the Pro Bono Partner in Justice Award from MFY Legal Services.

Experience

  • Biotechnology / Medical Devices

    • Summary judgment invalidating the key patent asserted against our clients, multiple medical device and diagnostics companies. The judge ultimately entered a final judgment as to that patent, stayed the remainder of the claims and closed the cases.
    • Favorable outcome for our client, a Brazilian biotechnology and clean energy company, when the Northern District of Georgia granted our motion to compel arbitration, denied plaintiffs' motion for preliminary injunction and stayed the case pending arbitration
    • Dismissal of all asserted patents in EDTex action brought against our client, a manufacturer of microarray scanning instruments
    • Summary judgment of all patent infringement claims, resulting in highly favorable eve-of-trial settlement of remaining breach of contract claim in action brought against our client, a DNA microarray manufacturer
    • Dismissal of all patent infringement claims in action brought against our client, a manufacturer of blood glucose meters
    • Summary judgment of all patent infringement claims, resulting in highly favorable eve-of-trial settlement of remaining non-patent claims in action brought against our client, a genetic testing and diagnostic tools company
    • Obtained temporary restraining order preventing competitor from launching competing product and achieved highly favorable settlement of contract dispute over rights to biomarkers relating to oncology companion diagnostics
  • Telecommunications / Mobile Devices

    • One of the largest plaintiff's jury verdicts in patent litigation history, following a two-week jury trial in infringement action brought by our client, a major networking equipment company
    • Highly favorable eve-of-trial settlement, after prevailing on all key claim construction arguments in NDTex action brought against our client, a major smartphone manufacturer
    • Dismissal of all asserted patents, after prevailing on all key claim construction arguments, in action brought against our client, a video and broadband services divisions of diversified telecommunications company
    • Highly favorable settlement resulting in dismissal of EDTex action brought against our client, a smartphone manufacturer
  • Computer Hardware / Semiconductor Devices

    • Termination of ITC investigation and finding of no violation following seven-day trial in Section 337 action initiated against our client, a major semiconductor company
    • Dismissal of all asserted patents, after prevailing on all key arguments in claim construction in EDTex action brought against our client, a major semiconductor company
    • Termination of ITC investigation and finding of no violation in Section 337 action initiated against our clients, two major computer and tablet manufacturers
    • Highly favorable settlement, after prevailing on all key arguments in claim construction in EDTex action brought against our client, a major semiconductor company
  • Financial Services

    • Dismissal of all asserted patents on § 101 grounds, in action brought against our client, an insurance company
    • Dismissal of all but one of the asserted patents on § 101 grounds, in action brought against our clients, an insurance company
    • Dismissal of asserted patents on invalidity grounds, in action brought against our clients, the commercial retail and credit card divisions of large multinational bank
    • Highly favorable settlement that reflected a discount for our client's attorney fees and resulted in dismissal of EDTex and DDel actions brought against our client, the credit card division of large multinational bank

Recognition

  • New York "Super Lawyer" for intellectual property litigation matters in the October 5, 2014; October 4, 2015; October 2, 2016; and October 2, 2017 issues of The New York Times Magazine
  • New York "Rising Star" for intellectual property litigation matters in the October 6, 2016 issue of The New York Times Magazine
  • New York State Bar Association’s "Empire State Counsel" award in 2015
  • Federal Circuit Bar Association’s "Pro Bono Leadership Award" in 2012
  • Federal Circuit Bar Association’s "Pro Bono Advocacy Award" in 2011
  • MFY Legal Services’ "Pro Bono Partner in Justice Award" in 2010
  • WilmerHale’s "Volunteer Appreciation Award" in 2011

Insights & News

Credentials

  • Education

    • JD, Columbia Law School, 2006

      Columbia Law Review, James Kent Scholar
    • MS, Electrical Engineering, Johns Hopkins University, 2003

      Honors, Tau Beta Pi

    • BS, Biomedical Engineering, Johns Hopkins University, 2001

      Honors, Tau Beta Pi

  • Admissions

    • New York

    • United States Supreme Court

  • Clerkships

    • The Hon. William C. Bryson, US Court of Appeals for the Federal Circuit, 2008 - 2009

    • The Hon. Naomi Reice Buchwald, US District Court for the Southern District of New York, 2007 - 2008

Credentials