David is a patent litigator whose practice involves a range of technologies and products, from complex pharmaceuticals and electronics to simple mechanical devices. His work includes managing cases end-to-end, from the filing of the initial complaint through trial and appeal. David has briefed and argued appeals, case dispositive motions and Markman hearings as well as deposed and cross-examined at trial inventors, experts, and corporate representatives.
In addition to representing his clients in district court, David provides representation before the Patent Trial and Appeal Board in inter partes review proceedings as well as in arbitration and mediation proceedings. David also advises clients regarding patent validity and potential infringement, and helps clients design around existing patents.
David is comfortable working with a broad range of technologies and products. He has represented major pharmaceutical companies in Hatch-Waxman litigations involving pharmaceutical compounds, formulations, and methods of use. Other of his cases have involved blood screens, immunoassays, mass spectrometers, alloys, automotive parts, consumer products, lithographic developers, and bacteria detection media.
David is a registered patent attorney licensed to practice and argue before the United States Patent and Trademark Office. He has also argued cases before the.US Court of Appeals for the Federal Circuit and multiple US District Courts.
• Accentra, Inc. and WorkTools, Inc. v. Staples, Inc. (C.D.Cal.- 07-CV-5862; Fed. Cir. -1237, -1264) Represented a major retailer in a patent and trademark infringement suit at trial and on appeal to the Federal Circuit. Won a summary judgment 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 the Federal Circuit's claim construction and won a summary judgment finding a third of the asserted patents invalid as obvious and/or not infringed.
• Mitsubishi Chemical Corp. v. Barr Laboratories, Inc. (S.D.N.Y.; Fed. Cir. - 1:07-CV-11614) Represented a pharmaceutical company in a Hatch-Waxman litigation regarding formulation of a blood thinner used to treat heparin-induced thrombocytopenia (HIT). The validity of the patent was upheld after a lengthy bench trial and affirmed on appeal.
• Takeda Pharmaceutical Co., Ltd.v. Teva Pharmaceutical Industries Ltd. (1:09-CV-04465 DLC) Represented a pharmaceutical company in Hatch-Waxman in several litigations in which the client asserted that multiple defendants infringed seven patents directed to compositions and methods of using a popular oral anti-diabetic. The cases were settled on favorable terms.
• Sharp v. Xerox (02-06CV-187) 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.
• SpendingMoney LLC v. Visa U.S.A. Inc. (Fed. Cir. - 08-CV-1376) Defended a financial service provider in a 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 the plaintiff's attempt to appeal this decision.
• Maxwell v. NessCap (3:06-cv-02311); NessCap v. Maxwell (3:07-cv-00704) 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.
• Takeda Chemical Industries, Ltd. v. Mylan Laboratories, Inc. (S.D.N.Y; Fed. Cir.) Member of a team that successfully defended the validity of a compound patent directed to a popular oral antidiabetic.
• Represented a manufacturer in two patent arbitrations and obtained awards of non-infringement and of invalidity.
• Dbest Products, Inc. v. Staples, Inc. (1:07-VC-04895 ODW).Obtained a summary judgment of invalidity and unenforceability in a patent infringement litigation on behalf of a major retailer. After summary judgment, obtained costs and attorney's fees from the plaintiff.
• Competitive Edge, Inc. v. Staples, Inc. (N.D. Ill; Fed. Cir) Obtained a summary judgment that a client did not infringe the plaintiff's design patent and alleged trade dress. Successfully defended this result on appeal before the Federal Circuit.
• Co-author, Friction Between PTAB and the Federal Circuit?, Intellectual Property Magazine ( 06.2014 )
• Co-author, Using Another's Inter Partes Patent Review Can Cost You, Corporate Counsel ( 04.11.2014 )
• Co-author, The End of Multidefendant Patent Litigation?, Law 360 ( 10.07.2011 )