Overview

David is a patent litigator focused on electrical, mechanical, and software technology matters. He has achieved several complete wins for leading technology companies enforcing their rights against competitors attempting to copy successful products and against non-practicing entities. David also counsels clients in intellectual property licensing, evaluation, and procurement matters.

David is the leader of the Patents practice of BFKN’s Intellectual Property Group, as well as a partner in the Litigation and Corporate & Securities Groups. David has over 20 years of experience as an intellectual property litigator, counselor, and prosecutor representing large market cap to small privately-held clients in a wide range of industries. David’s client services include litigation, licensing, negotiations, patent portfolio development, product clearance, structuring intellectual property provisions, and due diligence analysis.

David has litigated before multiple United States District Courts, and is a member of the Trial Bar of the United States District Court for the Northern District of Illinois. He has also litigated before the Court of Appeals for the Federal Circuit, United States Supreme Court, International Trade Commission, and United States Patent and Trademark Office (USPTO). He leads trial teams, resolves patent infringement demands, and has argued on behalf of co-defendant groups. He has represented clients in inter partes review (IPR) proceedings in the USPTO and argued before the Patent Trial and Appeal Board (PTAB). David became registered to practice before the USPTO while still in law school.

David's transactional experience involves a wide range of technology matters, including a central role in providing guidance for the intellectual property acquisitions and deal evaluation for clients. He negotiates and drafts license agreements, evaluates joint development and acquisition targets, conducts product clearance, prepares invalidity opinions, and assists in patent portfolio enforcement strategies. He also helps to create and manage patent portfolios for large companies and startups. David also advises clients on protecting their key data through contractual obligations and intellectual property rights.

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With a technical background in electrical engineering, David has in-depth knowledge in electrical, mechanical, and software matters. David has activity represented clients and litigated in multiple technology areas, including semiconductor technology, x-ray tubes, computer networking hardware, wireless communications, biomedical devices, computer software, hearing instruments, gaming, signal processing, valves, mechanical assemblies, green technology, vehicle navigation systems, plastics, office seating, internet-based applications, monitoring systems, as well as fashion-related designs, including handbags, shoes, and watches.

Prior to joining BFKN, David began his legal career at an intellectual property boutique law firm, starting as a law clerk during law school and concluding as a partner, then he moved to an international law firm.

Credentials

Admissions

  • State of Illinois
  • U.S. Supreme Court
  • U.S. Court of Appeals - Federal Circuit
  • U.S. District Court - Northern District of Illinois (Trial Bar)
  • U.S. District Court - District of Colorado
  • U.S. District Court - Eastern District of Michigan
  • U.S. District Court - Eastern District of Texas
  • U.S. Patent and Trademark Office

Education

  • Northwestern University Pritzker School of Law, J.D., 1999
  • University of Illinois at Urbana-Champaign, B.S., Electrical Engineering, with honors, 1996

Experience

  • Complete win against Acacia Research Group subsidiary including final judgment of non-infringement with no payments made to the plaintiff. ID Image Sensing LLC v. OmniVision Technologies, Inc. (D. Del.).
  • Lead patent counsel for Varex Imaging Corporation asserting infringement of two patents related to X-ray tube technology used in CT scanners and trade secret misappropriation against competitor Richardson Electronics, Ltd. Case resolved favorably for client. Varex Imaging Corporation v. Richardson Electronics, Ltd. (N.D. Ill.).
  • Successful defense of OmniVision patent in inter partes review challenge. Jiangu SmartSens Technology Co., Ltd et al v. OmniVision Technologies, Inc. (PTAB).
  • Lead patent counsel in patent litigation asserted against Louis Vuitton Tambour Horizon smartwatch. Semcon IP Inc. v. Louis Vuitton North America, Inc. (E.D. Tex.).
  • Complete win in non-practicing entity matter. SportBrain Holdings LLC v. Louis Vuitton North America, Inc. (N.D. Ill.).
  • Complete win in trademark infringement, unfair competition, breach of contract, and tortious interference matter brought by hearing instrument manufacturer. Sonova AG v. Hearsite, Inc. (N.D. Ill.).
  • Complete win as team lead for defendant in a patent infringement action relating to hearing aid technology. University of Iowa Research Foundation v. Phonak (S.D. Iowa).
  • Prepared successful petition for inter partes review in group defense against Intellectual Ventures relating to hearing aid technology. HIMPP v. Intellectual Ventures (P.T.A.B.).
  • Led trial team on all non-infringement, invalidity, and unenforceability issues for defendant in a patent infringement action relating to Power over Ethernet functionality. Developed and presented key defense strategies in court, including successful summary judgment arguments. Obtained key witness deposition testimony. Drafted petitions for inter partes review and coordinated expert witness strategy. Case settled very favorably close to trial. Chrimar v. AMX (E.D. Tex., P.T.A.B.).
  • Took over and restructured inter partes review to address previously omitted claim construction issue post-institution and argued client position at hearing. Intex v. Bestway (P.T.A.B.).
  • Achieved favorable settlement as lead counsel for defendant in a patent infringement action relating to simulated logs and electronic fireplace assemblies. Dimplex v. Twin-Star (E.D. Mich.).
  • Lead counsel for plaintiffs in a patent infringement action relating to flatwork finishing equipment for commercial laundry applications. Case resolved in a favorable settlement for client. Chicago Dryer Company v. Jensen (N.D. Ill.).
  • Successfully transferred case from the District of Delaware to the Southern District of California and obtained stay pending inter partes review proceedings for cellular phone manufacturer. Content Guard Holdings, Inc. v. ZTE Corp. (S.D. Cal., P.T.A.B.).
  • Led technical team in ITC and district court litigation involving digital image and mobile device technology resulting in asset sale. Kodak v. Apple, HTC, Samsung (W.D.N.Y, ITC).
  • Cross-examined expert witness on short notice in Section 337 patent infringement investigation relating to cellular transmission protocols. In re Certain Wireless Devices with 3G Capabilities (ITC).
  • Won summary judgment of infringement for patents protecting the iconic Aeron chair. Case settled favorably. Herman Miller v. Teknion (N.D. Ill.).
  • Successfully argued claim construction resulting in settlement as trial team head for market-leading hearing instrument manufacturer. Energy Transport Group v. Phonak (D. Del.)).
  • Successfully won specification disclaimer argument in defense of plastics company. Pliant v. Atlantis (N.D. Ill., Fed. Cir.).
  • Achieved complete defensive win resulting in final judgment of non-infringement, invalidity, and unenforceability in patent infringement case asserting rights to cellular telephone technology. Motorola v. Vosi (N.D. Ill.).
  • Won patent infringement trial, including willful infringement and double damages, and successful appeal for valve technology. Aero Products v. Intex (N.D. Ill., Fed. Cir.).

Newsroom

Recognitions

  • Leading Lawyers Network (2011-2023)
  • Super Lawyers 
    • Illinois Super Lawyers (2014-2020, 2023)
    • Illinois Rising Stars (2008-2013)
  • Judicial Extern, Hon. Robert W. Gettleman, US District Court for the Northern District of Illinois (1998)
  • Legal Team Intern, Intel Corporation (1996)
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