Office:San Diego (3579 4th Avenue)
Practice Groups and Client Sectors:Transactional Law, Technology, Intellectual Property, Litigation, Corporate
Areas of Focus:Complex Litigation, Litigation, Intellectual Property Transactions, Emerging Companies, Intellectual Property Transactions and Due Diligence, Intellectual Property Litigation, Life Sciences, Patent Counseling and Prosecution, Medical Devices, Trademarks & Copyrights, Startups & Startup Financing, Food and Drug Regulatory, Commercial Transactions, Technology Licensing, Licensing
Leveraging two decades of intellectual property (IP) counseling experience as both in-house and outside counsel, Dave brings a Chief-IP counsel-type comprehensive and personalized perspective to his law practice. His business-centered mindset fosters the smooth flow of commerce rather than being an impediment thereto, while at the same time accounting for and minimizing risks and rapidly executing on strategic IP opportunities. Responsive, transparent, personable, inquisitive, and team-oriented are terms that aptly describe Dave’s seasoned approach. Intellectual Property comprises a business tool/asset, whether it is a patent, trademark, copyright, trade secret, license, or other bundle of IP-related contractual rights, and Dave is an expert at securing and protecting such rights as well as evaluating and maximizing their value for his clients.
The core of Dave’s trusted-advisor approach drives from an intense knowledge of the underlying business models of his clients and the various technologies that drive them. Dave has a wealth of experience securing, leveraging, and asserting IP rights for consumer product destined for retail shelves, technologies or products subject to intense FDA review, or niche industries that helps other businesses work.
Specifically, Dave brings extensive experience advising clients ranging in size from start-ups to multi-national organizations in a variety of technical arenas including medical diagnostics, digital health, additive manufacture and 3-D printing, medical devices, AR/VR software and devices, near-eye displays and imaging/optical technologies, smart garments, compression garments, health and beauty, food prep and catering, athletic equipment, nutraceuticals, machine learning software and devices, nucleic acid sequencing, bioinformatics and data translation, antibody products and targets, immunology-focused technologies, CART-T targets and therapy, consumer devices and services, and information technology.
The core legal work of Dave’s practice includes: Patent prosecution, trademark prosecution, IP licensing/assignment, post-grant patent challenges, trademark oppositions, IP due diligence/opinions and product clearance, litigation (patent, copyright, trademark, trade secret, business), technology-business deal identification and brokering.
Ex Parte Jaronczyk, Jr. (Reexamination of U.S. Patent No. 5,598,138; Control Nos. 90/013,722, 90/013,078) – Counsel for patent owner Fusilamp, LLC in two separate reexamination proceedings before the U.S. Patent and Trademark Office. Patent claims upheld in unamended form in both proceedings.
Fusilamp, LLC v. Littelfuse, Inc., Case No. 13-20-1200-2324 (American Arbitration Association) – Co-counsel for Fusilamp, LLC in patent infringement and validity arbitration proceeding.
The Reynolds and Reynolds Company v. BPI Custom Printing, Inc., Case No. 2:16-cv-06726-TJH (C.D. Cal.) – Counsel for BPI Custom Printing in copyright infringement action brought by Reynolds.
Julius Zorn, Inc. v. Medi Manufacturing, Inc., Case No. 3:15-CV-2734 (S.D. Cal.) – Counsel for patent owner medi® Manufacturing, Inc. in patent infringement case involving compression garments.
Ex Parte Cabilly (Reexamination of U.S. Patent No. 6,331,415 (“Cabilly II”)) – Counsel for patent co-owner Genentech, Inc. in a reexamination proceeding in the U.S. Patent and Trademark Office related to recombinant antibody heavy and light chain expression. Patent claims upheld in unamended form.
Cabilly v. Boss (Interference No. 105,531) – Counsel for Genentech, Inc. in an interference proceeding in the U.S. Patent and Trademark Office. USPTO Board of Appeals and Interferences awarded Genentech's "Cabilly" patent application (No. 08/422,187), which related to methods for making antibodies, priority over the "Boss" patent application (No. 08/450,727).
U.S. counsel for Genentech, Inc. and Biogen Idec Inc. in the prosecution and opposition defense of European Patent No. 1176981 (8 opponents), related to methods of treating autoimmune disease, before European Patent Office Examination and Opposition Divisions.
The Rockefeller University and Chiron Corporation v. Centocor, Inc. and Abbott Laboratories, Civ. No. 2-04CV-168 (TJW) (E.D. Tex.)– Counsel for defendant Centocor in patent infringement case involving chimeric antibody technology brought against Centocor; claims against Centocor settled in 2005.
“Substantial Equivalence: A Valid International Sanitary and Phytosanitary Risk Assessment Objective for Genetically Modified Foods” 51 Case W. Res. L. Rev. 257 (2000).
"Assessing Risk in Funding Innovation Companies: Intellectual Property Checklist," Private Equity Quarterly (Summer 2016).