David is a Partner in the Firm's Intellectual Property Litigation Group in Edwards Wildman's Boston office. David has extensive experience in complex patent litigation. He has defended major pharmaceutical companies in Hatch-Waxman litigations involving pharmaceutical compounds, formulations and methods of use. David's patent litigation practice covers a wide variety of technologies ranging from complex pharmaceuticals and electronics to simple mechanical devices like staplers and beverage crates. In addition to his patent litigation experience, David has advised clients regarding patent validity and potential infringement, and assisted clients to design around existing patents. David has also represented clients in arbitration and mediation proceedings.
David is a registered patent attorney licensed to practice and argue before the United States Patent and Trademark Office.
•Represented major retailer in patent and trademark infringement suit at trial and on appeal to the Federal Circuit. Won summary judgment of on trademark infringement and unfair competition claims and obtained affirmance on appeal. Secured stipulation of dismissal for one of the asserted patents before trial based on favorable claim construction. After appeal secured stipulated dismissal of a second of the asserted patents based on Federal Circuit's claim construction and won summary judgment finding a third of the asserted patents invalid as obvious and/or not infringed.Accentra, Inc. and WorkTools, Inc. v. Staples, Inc., C.D.Cal. 07-CV-5862; Fed. Cir. 2012-1237, -1264.
•Represented pharmaceutical company in Hatch-Waxman litigation regarding formulation of blood thinner used to treat heparin induced thrombocytopenia (HIT). The validity of the patent was upheld after a lengthy bench trial.Mitsubishi Chemical Corp. v. Barr Laboratories, Inc., Case No. 1:07-CV-11614 (JGK), 718 F. Supp.2d 382 (S.D.N.Y. 2010);aff'd 2011 WL 3288394 (Fed. Cir. Aug. 2, 2011).
•Represented pharmaceutical company in Hatch-Waxman in several litigations in which client asserted that multiple defendants infringed seven patents directed to compositions and methods of using a popular oral anti-diabetic. Cases settled on favorable terms.See, e.g., Takeda Pharmaceutical Co., Ltd. v. Teva Pharmaceutical Industries Ltd., Case No. 1:09-CV-04465 (DLC).
•Managed a team of attorneys in formulating infringement and validity positions for 29 patents covering various aspects of photocopier technology in a rocket docket case filed in the Eastern District of Texas. The case, involving more than 200 accused products, settled on favorable terms.Sharp v. Xerox, Case No. 02-06CV-187.
•Defended financial service provider in suit alleging infringement of a patent directed to a method of processing financial transactions. Won summary judgment of non-infringement and prevailed before the Federal Circuit in plaintiff's attempt to appeal this decision.SpendingMoney LLC v. Visa U.S.A. Inc., Case No. 08-CV-1376; aff'd (Fed. Cir. 2012-1481).
•Represented an ultracapacitor manufacturer in two co-pending patent infringement suits involving five patents. The case settled on favorable terms in April 2008, after the Court's Markman ruling, and after successfully opposing summary judgment.Maxwell v. NessCap, Case No. 3:06-cv-02311;NessCap v. Maxwell, 3:07-cv-00704.
•Member of team that successfully defended the validity of compound patent directed to popular oral anti-diabetic.Takeda Chemical Industries, Ltd. v. Mylan Laboratories, Inc., 2007 U.S. Dist. LEXIS 19614 (S.D.N.Y. Mar. 21, 2007),aff'd549 F.3d 1381 (Fed. Cir. 2008).
•Represented manufacturer in two patent arbitrations and obtained awards of non-infringement and of invalidity.
•Obtained summary judgment of invalidity and unenforceability in patent infringement litigation on behalf of major retailer. After summary judgment, obtained costs and a portion of clients' attorney's fees from Plaintiff.Dbest Products, Inc. v. Staples, Inc., Case No. 1:07-VC-04895 (ODW).
•Obtained summary judgment that client did not infringe Plaintiffs' design patent and alleged trade dress.Competitive Edge, Inc. v. Staples, Inc., 763 F. Supp. 2d 997 (N.D. Ill. 2010),aff'd per curiam 412 Fed. Appx. 312 (Fed. Cir. 2011).
•David has briefed and argued case dispositive motions and Markman hearings; deposed and cross examined at trial inventors, experts, and corporate representatives; managed cases from the filing of a complaint through trial and appeal; and worked with industry and academic experts to develop and present infringement and validity analyses.
•David is comfortable working with a broad range of technologies and products. He has represented clients in patent infringement litigation and provided non-infringement and validity opinions on technology including: multiple major pharmaceuticals, blood screens, immunoassays, mass spectrometers, alloys, automotive parts, hand tools, lithographic developers, and bacteria detection media.