Shabbi S. Khan

Partner

Shabbi Khan serves as a co-chair for the Artificial Intelligence (AI), Automation, and Robotics group within Foley & Lardner’s Manufacturing Sector and is a registered patent attorney and member of the Electronics Practice Group within the firm’s Intellectual Property (IP) department.

Shabbi provides strategic advice on all aspects of IP strategy and enforcement, technology transactions, and licenses. His practice has primarily focused on strategic patent portfolio development, counseling, and management including preparation and prosecution of patent applications, patent infringement analysis, and validity analysis primarily in the fields of AI and machine learning, computer software including cloud and SaaS-based technologies, robotics, medical devices, digital therapeutics, and AI in health care. Shabbi’s technical experience and background, together with his patent prosecution and litigation experience, allows him to quickly understand clients’ technology and products, and prepare high-quality, litigation-ready patents that are aligned with their business objectives.

Shabbi’s practice offers deep experience and a specialty in AI and he helps clients navigate AI-related business and legal issues, including counseling on copyright infringement issues stemming from the use and training of AI models and providing guidance on the operational implementation of AI solutions. As part of his AI practice, Shabbi counsels companies on technology agreements, such as master service agreements, joint development and collaboration agreements, vendor agreements, and technology use and service agreements with a specific eye towards AI related issues and data monetization considerations.

Shabbi also performs buy-side IP due diligence during a merger or acquisition or a financing transaction involving venture capital or private equity. Shabbi also advises technology companies undergoing due diligence or preparing for an upcoming transaction.

Representative Experience

  • Advised clients on AI related concerns including the use of generative AI at work
  • Prepared corporate policies relating to the use of AI and prepared checklists and toolkits for companies relating to deployment of AI solutions
  • Conducted legal due diligence for transactions involving an investment in or acquisition of AI technology companies
  • Developed patent portfolios for emerging tech companies in a variety of technical areas including:
  • AI and machine learning
    • Medical devices
    • Enterprise Software Solutions
    • Software-related medical device technologies
    • Biotechnology, including data and image processing, analysis, and learning
    •  Gaming
    •  Robotics
    • Computer engineering, architecture, and networking
    • Internet of Things (IoT), devices, and applications
    • Data management and storage
    • Virtual Reality (VR), Augmented Reality (AR), and Mixed Reality (MR) technologies
    • Security, cryptography and encryption
    • Wireless, mobile, and related telecommunications systems