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Experience
Patent Prosecution and Portfolio Management
With a focus in open-source and proprietary computer and software technology, Dave has prepared and prosecuted hundreds of patents in the fields of computer science and electrical engineering. Dave has been entrusted by several Fortune 500 companies with prosecution of patent portfolios having the highest strategic value. He has handled numerous appeals, reissues, and reexaminations, and is part of the Perkins Coie team having one of the highest volumes of Inter Partes Reexamination proceedings at the U.S. Patent and Trademark Office.
Representative technology of patents that Dave has prosecuted include: audio- and video-compression and processing technology, blockchain technology, business methods, client-server systems, content access systems, consumer premises equipment, cryptographic systems, databases, data center systems, digital audio and video processing and recording systems, file backup, management, and synchronization systems, graphical user interfaces, interoperability technology, local- and wide-area (Internet) networking technology, location- and temporal-based awareness systems, medical ventilators, drones and UAV/UVS technology, mobile telephony, multimedia streaming and management systems, operating systems, retail and enterprise software, remote-sensing, robotics, signal processing, and telecommunications equipment, interfaces, protocols and systems.
Licensing and Contracts
As the former co-chair of a licensing group and as prior in-house counsel for a Fortune 500 corporation, Dave has more than a decade of experience handling all aspects of licensing, including drafting, negotiation, and enforcement of complex domestic and international license agreements, with the value of several agreements exceeding several hundred million dollars. Dave’s experience includes drafting and negotiating agreements in the areas of telecommunications, content distribution and management (including first-of-kind digital rights and content distribution agreements), manufacturing and distribution, cloud services, product development, intellectual property licensing, joint research and development, confidentiality, and technology transfer. Dave has also handled contract and intellectual property due diligence matters related to investment-backed financing and mergers and acquisitions of public and private companies.
Dave’s licensing and patent analysis experience also includes counseling of clients about standard-setting, and technical standards, notably including the 3G, 4G, LTE, MPEG-2, H.264/MPEG-4 AVC, H.265 HEVC, VP8, RTP, MPEG-TS, DVB, NTSC, ATSC, CSS, PGP, OpenGL, OpenGL ES, Bluetooth, ZigBee, AllJoyn, IEEE 802.11, IEEE 802.16, programmable, semantic, and real-time web architecture (e.g., REST, JSON, HTTP, RDF, and HTML 5) standards. Dave understands the technology and licensing underlying many of these and other well-known standards, including standards promulgated by 3GPP, ETSI, IEEE, ISO, ITU, W3C, IETF, IPSO Alliance, Open Interconnect Consortium, Open Connectivity Foundation, the Thread Group, and the AllSeen Alliance.
Dave also has extensive experience advising clients on open-source licensing, including software licensed under variants of the GPL, LGPL, and other restrictive open-source licenses.
Patent Analysis
Dave’s patent analysis experience has encompassed evaluation of infringement, validity, and valuation in support of patent assertion, licensing, and litigation matters. He has overseen portfolio targeting, monetization (including acquisitions and liquidations of patent portfolios), and product clearance efforts, with many projects having a high profile with corporate management.
In particular, Dave’s patent analysis experience has focused on the following technologies: proprietary application and operating system software (e.g., OS X, Windows, Palm OS, and Unix), open-source application and operating system software (e.g., Android, iOS, GNU/Linux, Chrome OS, webOS, and Windows), mobile software and hardware, cloud and enterprise software, data center systems, cryptographic systems, authentication and data integrity (e.g., watermarking) systems, digital audio and video compression, object-oriented programming, graphical user interfaces, computer hardware and architecture, real-time communications (e.g., streaming video), satellite technology (including LEO, NEO and GEO satellites), wired and wireless networking communications and protocols, digital and analog circuits, signal processing, semiconductors, component object models, database management systems, query languages, smart grid systems, automotive technology, medical devices (e.g., ventilators, auto-injectors, inhalers, and medical software), unmanned vehicle systems (UVS)/unmanned aerial systems (UAV) (i.e., drones), and bicycle technology.
Patent Conflicts and Litigation
As both in-house counsel and outside counsel, Dave has significant experience handling a variety of patent litigation matters. In particular, Dave handles pre-litigation (patent assertion) matters that often require the rapid assessment of non-infringement and invalidity positions, evaluation of potential damages, and determination/implementation of strategic cost-control and response options. He has also handled landscape and freedom-to-operate/freedom-to-license patent analysis matters, involving the assessment, classification and pre-suit disposition of domestic and international patent assets. Without disclosing client representations, Dave’s pre-litigation conflicts experience notably includes representations adverse to the following companies: Acer, Blackberry, Broadband iTV, IBM, Interface IP, MPEG-LA, Nokia, Ronald A. Katz*, Qualcomm, Rovi, TiVo and Whitserve.
Dave’s representative litigation experience includes:
Sisvel International S.A. et al. v. Cradlepoint, Inc.
Wireless technology; Case No. 1-19-cv-1142-MN
RealTime Data LLC v. Code42 Software, Inc.
Data storage technology; Case No. 1-17-cv-02479-KLM
TiVo, Inc. v. EchoStar Communications Corp.*
Digital video recorder (DVR) technology; Case No. 2-04CV01 DF
EchoStar Technologies Corp. v. TiVo*
DVR technology; Case No. 5-05CV-81
Forgent Networks, Inc. v. EchoStar Communications Corp.*
DVR technology; Case No. 2:05-CV-318
EchoStar Satellite LLC, et al. v. Finisar Corp.*
Electronic program guide and digital video transmission technology; Case No. 06 CV 425
Acacia Media Technologies Corp. v. Comcast Corp.*
Video-on-demand (VOD) and streaming media technology; Case No. 05 CV 01114 JW; MDL No. 1665
*Prior Experience
