Experience
An attorney rated "AV" by Martindale-Hubbell, Don has practiced exclusively in the intellectual property area for over 22 years. His practice focuses on electrical, electronic, optical, computer and mechanical technologies. Don has defended clients in patent infringement litigation before various U.S. District courts on patents relating to a wide range of technologies and has briefed and orally argued patent infringement cases before the U.S. Court of Appeals for the Federal Circuit. Don has also represented clients in trademark and copyright infringement cases and has served both as a mediator and as counsel to parties in mediation.
As a registered Patent Attorney, Don's practice includes preparation and prosecution of utility and design patent applications (both domestic and international), patentability, infringement and validity opinions, reexamination and reissue proceedings, foreign patent oppositions, and federal patent litigation. Don provides legal advice to clients on how to design or re-design their products as to avoid or reduce the risk of liability for infringing patents owned by others. Don has testified in Federal Court as a patent law expert concerning the efficacy of a product design adopted by a company to avoid infringing the patent of a competitor.
Don's trademark practice involves securing, maintaining and enforcing trademark rights, in U.S. and abroad. Don counsels clients on the selection of new marks, conducts clearance investigations and renders availability and infringement opinions and provides legal advice concerning trademarks, company names, domain names and related unfair competition issues. Federal, state and foreign registrations are obtained, maintained and renewed. Don is experienced in trademark litigation as well as in the prosecution and defense of related proceedings such as oppositions and cancellations of registrations and disputes concerning Internet domain names.
In addition to drafting and negotiating licenses and transfers of all forms of intellectual property, Don has experience in preparing and negotiating agreements relating to software development, acquisitions of computer hardware and software, work made for hire agreements, confidentiality agreements, employee agreements, software distribution agreements, application service provider (ASP) agreements, source code escrows. He also assists clients in mergers and acquisitions in connection with due diligence in the intellectual property area, including ownership/title issues, scope of rights, infringements, and trade secret issues.
Don is registered to practice before the United States Patent and Trademark Office and, in addition to being a member of The Florida Bar, is a member of the Bars of the Supreme Court of Ohio, the U.S. District Courts for the Southern District of Florida, Middle District of Florida, Southern District of Ohio, Eastern District of Michigan, and Western District of Tennessee. He is also admitted to practice before the United States Court of Appeals for the Federal Circuit and the Eleventh Circuit Court of Appeals.
Background
Don was born in Pittsburgh, Pennsylvania. He attained the rank of Eagle Scout and earned his B.S. in Electrical-Biomedical Engineering from Carnegie-Mellon University in 1977. Don worked for a subsidiary of Alcoa in a number of engineering and supervisory positions in the areas of power distribution, control systems, product design and testing. He earned his J.D., cum laude, from the University of Pittsburgh in 1985. Prior to joining GrayRobinson, P.A. Don was a capital partner with Holland & Knight LLP for 11.5 years.
Professional
· "AV" rated by Martindale-Hubbell
· Selected by peers for inclusion in Best Lawyers in America, 2006-2012
· Named by South Florida Legal Guide 2007, 2008, 2009 and 2010 as a "Top Lawyer" in both Intellectual Property and Technology Practice Areas
· The Florida Bar
- Board Certified in Intellectual Property Law
· Bar of the Supreme Court of Ohio
· Registered Patent Attorney: U.S. Patent and Trademark Office
· Admitted to U.S. Court of Appeals for the Federal Circuit
· Admitted to U.S. Court of Appeals for the Eleventh Circuit
· Admitted to U.S. District Court for the Southern District of Florida
· Admitted to U.S. District Court for the Middle District of Florida
· Admitted to U.S. District Court for the Southern District of Ohio
· Admitted to U.S. District Court for the Eastern District of Michigan
· Admitted to U.S. District Court for the Western District of Tennessee
· Broward County Bar Association Intellectual Property Law Section, Past Chair
· American Intellectual Property Law Association, Member
· American Bar Association, Member
· International Trademark Association, Member
Civic
· Boy Scouts of America, South Florida Council Executive Board