David has over 25 years of experience representing clients in complex, high-stakes business and IP litigation matters before district courts throughout the United States, including in California, Texas and Delaware. He has been recognized as one of the best intellectual property litigators in America by Best Lawyers in America, and has represented a number of well-known companies in litigation, including GE Lighting Solutions (f/k/a GELcore), Emcore, DIRECTV, Lending Tree, Mag Instrument, SAS Institute, Belkin, BestBuy, TCL Corporation, Yamaha Motor Corp., and ZTE. David is currently representing a plaintiff in a two-patent case against Verizon Wireless in the Eastern District of Texas set for trial in December 2020 in which a nine figure damages claim is at issue.
David has a track record of creatively managing cases to successful outcomes for his clients. For example, David recently represented ZTE, a leading smartphone manufacturer, in an Eastern District of Texas patent litigation involving four patents relating to touch screen technology. The case was taken over from prior counsel nearly a year after its filing and a little over six months from trial. Within a month, David had identified two defenses that had not been previously identified by prior counsel—or by counsel for another leading cell-phone manufacturer—and that ultimately helped the case settle on extremely favorable terms to ZTE without having to file any IPRs before the one-year cut-off. Recently, David also successfully represented a multi-national professional lighting company, in a nine-patent case in the Central District of California. The plaintiff had been seeking nearly ten million dollars from the client during months of pre-litigation negotiations. David was brought on as lead counsel when a complaint for patent infringement was filed and was able to quickly identify a number of targeted defenses that allowed his client to obtain a settlement on very favorable terms in just three months of litigation. David represented the same company in contract dispute with one of its customers over a dispute that arose out of an order for custom lights the client had manufactured for its customer. The customer was claiming that the lights did not meet its specification and was demanding over a $1M be refunded to the customer and that the client expend significant time and effort to make corrections to the delivered lights. David brought a breach of contract action on behalf of his client, and the customer quickly dropped its demands and agreed to a settlement in which the client did not have to pay any money or make any repairs to the delivered lights.
David has also represented clients in connection with numerous post-grant proceedings, including over twenty inter partes review proceedings and ten patent interferences. Recently, David led a team of lawyers in the preparation and filing of seventeen IPR petitions on behalf of TCL Corporation. The petitions challenged the validity of five patents asserted by Ericsson against TCL in the Eastern District of Texas. All seventeen IPRs were instituted, the case was stayed, and four of the five patents were found invalid by the Board, thereby reducing potential exposure and simplifying the issues to be tried in the district court.
David is also active in the IP community; he is currently the Secretary of the LAIPLA and on its Board. He co-chaired the 2014 and 2018 LAIPLA Spring Seminar Planning Committees and TechTainment 4.0 and 5.0 Planning Committees. He has also been an active member of the Intellectual Property Owners Association’s U.S. Post-Grant Patent Office Practice Committee since 2013.
- Arizona State University, College of Law, J.D., 1991, cum laude
- University of Arizona, B.S. in Metallurgical Engineering, 1985, honors
- State Bar of California
- Registered to practice before the U.S. Patent and Trademark Office
- All California State Courts
- S. District Courts for the Central, Eastern, Northern, and Southern Districts of California
- S. District Court for the Northern District of Florida
- S. District Court for the Northern District of Ohio
- S. District Court for the Eastern District of Texas
- S. Court of Appeals for the Federal Circuit
- S. Court of Appeals for the Ninth Circuit
- S. Patent and Trademark Office
- American Intellectual Property Law Association
- Intellectual Property Owners Association – U.S. Post-Grant Patent Office Practice Committee
- Los Angeles Intellectual Property Law Association, Secretary and Director
- Best Lawyer in America, Best Lawyers, 2014-2020
Goobich v. Excelligence Learning Corporation, No. 19-cv-06771-EJD (N.D. Cal.) Lead counsel for plaintiff Joel Goobich in dispute over unpaid royalties for paint formulas that Mr. Goobich created and trade secret misappropriation.
Mobility Workx v. Cellco Partnership D/B/A Verizon Wireless, Case No. 4:17-cv-00872-ALM (E.D. Tex.). Co-lead counsel for start-up in patent infringement litigation against a national telecommunications carrier relating to technology spun out of the University of Florida concerning handover procedures and testing equipment.
Neutrik AG v. ADJ Products LLC and Seetronic Ningbo Co. Ltd., Case No. 2:19-cv-09937-JAK (C.D. Cal.). Lead counsel for ADJ and Seetronic in an ongoing patent and trademark infringement case related to ruggedized electrical connectors.
Activision Publishing, Inc. Provided IP counseling concerning various game titles and gaming technologies. Negotiated the resolution of a dispute with a vendor over a contract and IP rights.
AEC-Able Engineering, Inc. Acted as AEC-Able’s lead counsel in connection with the settlement of a potential interference that AEC-Able was preparing to initiate related to solar concentrator technology.
Aerielle Technologies, Inc. v. Belkin International, Inc., et al, (N.D. Cal.) Represented Belkin, Best Buy, and RadioShack in a two-patent case relating to portable FM transmitters. The case was favorably settled after the Court issued a claim construction order adopting several of the Defendants’ key positions advanced during the Markman hearing and after a number of significant admissions were obtained during the depositions of the inventors.
Artistry in Motion, Inc. v. Tubeworks, Inc., (C.D. Cal.). Successfully represented Artistry in Motion in the enforcement of its patent relating to a method of making confetti against Tubeworks.
Big Baboon v. Dell, Inc., et. al, (C.D. Cal.). Successfully represented defendant UTi Worldwide, Inc. and UTi Services, Inc. in a patent infringement case brought by Quinn Emanuel on behalf of NPE Big Baboon. The action involved 18 defendants and multiple internet/software patents for managing and querying complex databases. The team was able to obtain an early dismissal on very favorable terms while the action continued for close to another year against other defendants.
CardioGenesis Corporation v. PLC Medical Systems, Inc., (N.D. Cal.). Represented CardioGenesis in a declaratory judgment action relating to PLC Medical Systems’ heart pulsed laser system patent. The case was favorably settled just before trial and following a Markman hearing.
U.S. v. IBM v. Cedars-Sinai Medical Center. Represented Cedars-Sinai against the United States Secretary of Energy and IBM in a six-year patent interference relating to a method for ablating tissue with an excimer laser. Also represented Cedars in two parallel Administrative Procedure Act cases filed in the Central District of California to successfully challenge a determination of the Secretary of Energy under 42 U.S.C. § 5908 that the U.S. Government owned the subject technology invented at Cedars-Sinai.
Core Optical Technologies, LLC v. Ciena Corporation, (C.D. Cal.). Represented Core Optical Technologies against Ciena Corporation in a patent infringement action related to dual polarization coherent optical receiver technology.
Creative Products Group, LLC and Street Surfing, LLC v. Decolee Co. Ltd. Successfully represented Decolee in an arbitration action relating to Creative Products efforts to cancel a patent license and marketing agreement relating to The Wave™ board.
Diamonex, Inc. v. Spectra Physics Scanning Systems, Inc., (E.D. Penn.). Successfully defended Spectra Physics in a patent infringement and trade secret misappropriation action brought by a former supplier related to wear resistant glass technology. Also represented Spectra Physics before the U.S.P.T.O. in order to initiate a patent interference against Diamonex’s asserted patent.
Diagnostic Systems Corporation v. Oracle Corporation, SAS Institute, Inc., Business Objects of America f/k/a Business Objects, Inc., BMC Software Inc., and Cognos Corporation, (C.D. Cal.). Represented SAS Institute in a patent infringement action brought by Diagnostic Systems Corporation, a subsidiary of Acacia, relating to a business analytic software system including a relational database. A favorable settlement was reached on behalf of SAS with DSC.
Electric Fuel (E.F.I.) Ltd. v. Electrofuel, Inc., (OHIM). Successfully represented Electric Fuel in connection with a trademark opposition proceeding pending before the OHIM relating to Electric Fuel’s CTM registration for ELECTRIC FUEL.
Electric Fuel Corp. and Electric Fuel (E.F.I.) Ltd. v. Electrofuel, Inc., (S.D.N.Y.). Successfully represented Electric Fuel Corp. and Electric Fuel (E.F.L.) Ltd. in a trademark infringement and unfair competition action against Electrofuel, Inc.
Everlight Electronics Co., Ltd. et al. v. Nichia Corporation et al., (E.D. Mich.). Represented Emcore in patent infringement action brought by its licensee against Nichia and in a parallel Inter Partes Review proceeding brought by Nichia against Emcore’s asserted patent.
EOS GmbH Electro Optical Systems v. 3D Systems, Inc., DTM Corporation, and Compression, a division of Moll Industries, Inc., (C.D. Cal.). Defended 3D Systems in a patent infringement suit brought by EOS, a licensee of 3D Systems, against DTM Corporation, a corporation 3D acquired after EOS brought suit, and one of DTM’s customers. DTM was alleged to have infringed thirteen of 3D’s patents that arose from 3D’s development of a rapid prototyping technology known as stereolithography. DTM developed and sold a different rapid prototyping technology involving laser sintering of dry powder materials. After acquiring DTM, in a related action, 3D accused EOS of infringing patents directed to polymer materials used in laser sintering systems. After an on-site tutorial and a Markman hearing that lasted several days and involved percipient and expert testimony, the court issued an order construing the claims in a manner that foreclosed 3D’s infringement. The case settled shortly thereafter with a favorable, royalty-bearing settlement for 3D.
Europaisches Laboratoriam fur Molekularbiologie (Embl) v. Harvard University. Successfully represented Harvard University in a patent interference challenging whether Harvard was the first to invent certain DNA sequencing technology. The Board entered judgment in Harvard’s favor following the preliminary motion phase.
Formula One Licensing B.V. v. AWI Acquisition Company (T.T.A.B.) Global Communications, Inc. v. DIRECTV, (N.D. Fla.). Acted as lead counsel on behalf of AWI in a trademark cancellation proceeding brought by Formula One Licensing against AWI’s U.S. Registration for FORMULA 1. The cancellation proceeding was dismissed with prejudice after Formula One withdrew its petition.
Global Communications, Inc. v. DIRECTV, (N.D. Fla.). Defended DIRECTV in a patent infringement action related to satellite reception and distribution systems brought by a well-known plaintiff’s lawyer. The case was successfully settled shortly after Mr. Randall obtained an expert report from the author of several key prior art references and damaging testimony from the inventors concerning the patentability of the asserted patent over that prior art.
Lending Tree LLC v. Zillow, Adchemy and NexTag, (W.D.N.C.). Partner responsible at trial for Lending Tree’s infringement and validity case in its patent infringement lawsuit against Zillow, Adchemy and NexTag over a method for generating on-line mortgage leads. The case went to trial in a widely-publicized lawsuit.
Mag Instrument v. Ampercell and Bright Ideas & More, Inc., (C.D. Cal.). Successfully represented Mag Instrument in a flashlight patent infringement action against Bright Ideas. Shortly after agreeing to a preliminary injunction, Bright Ideas agreed to settle the case. Default Judgment was entered against Ampercell following a hotly contested motion for default judgment.
Mag Instrument v. Japanese Patent Office. Represented Mag Instrument in a landmark appeal to the Japanese Intellectual Property High Court. The appeal related to the JPO’s refusal to register Mag Instrument’s product shape configuration trademark for the MINI MAGLITE® flashlight. The High Court reversed the JPO resulting in the first-ever product configuration trademark recognized by the court.
Mag Instrument v. Nordic Technologies, Inc., (C.D. Cal.). Represented Mag Instrument in a patent and trademark infringement action involving flashlights. The case was favorably settled on behalf of Mag Instrument.
Mag Instrument v. Play By Play Toys and Novelties, Inc., et al., (C.D. Cal.). Represented Mag Instrument in a trademark and trade dress infringement action. Shortly after all of the defendants agreed to a Preliminary Injunction, a favorable settlement was reached on behalf of Mag Instrument.
Meggitt-USA, Inc. Acted as Meggitt’s lead counsel in the settlement of a potential patent interference with supplier related to the supplier’s patenting of Meggitt’s proprietary fuel level sensor.
Memory Control Enterprise, LLC v. Belkin International, Inc., Keds, LLC, and Yamaha Motor Corporation, U.S.A., (C.D. Cal.). Successfully represented Yamaha in a patent infringement action brought by NPE Memory Control Enterprise, LLC (“MCE”), one of several entities used to enforce patents of former Fish & Richardson partner, Scott C. Harris. MCE accused a user controlled 360° view product rotation feature included in Yamaha’s various Websites of infringing Mr. Harris’s patent entitled “Three Dimensional Experience For Thick and Thin Clients.”
Fitman, S.L. v. MRV Communications, Inc., (OHIM). Representing MRV in connection with a trademark opposition proceeding pending before the OHIM relating to MRV’s CTM application for MRV.
Oakley, Inc. v. Pyramex Safety Systems, LLC, (S.D. Cal.). Successfully represented Safety Systems, a safety eye-wear maker, against Oakley in a multi-patent lawsuit relating to eyewear.
Oakley, Inc. v. Suntech Optics, Inc. (“Ryders Eyewear”), (S.D. Cal.). Successfully represented Suntech in a multi-patent and trademark infringement action relating to eyewear, which included a counterclaim by Suntech against Oakley for false patent marking.
Permlight Products, Inc. v. GELcore, LLC, (C.D. Cal.). Represented GELcore, a joint venture between GE and Emcore, in a patent infringement action relating to lighting systems employing LED light engines. The case was favorably settled on behalf of GELcore.
Quarton Inc. v. Ideavillage Products Corp., et. al., (D.N.J.). Acted as co-lead counsel with firm attorney Larry LaPorte in representation of Quarton in a patent infringement, misappropriation, unfair competition, and breach of contract case relating to laser level devices. A favorable settlement was reached on behalf of Quarton.
Sage Products, Inc. v. Devon Industries, Inc., (C.D. Cal.). Successfully defended Devon Industries in a patent infringement action involving three patents related to sharps disposal devices. Summary judgment of non-infringement was entered in Devon’s favor on all three patents. The Federal Circuit affirmed the district court’s decision in Sage Products, Inc. v. Devon Industries, Inc., 126 F.3d 1420 (Fed. Cir. 1997).
SpaceLabs Medical, Inc. v. Masimo Corporation. Represented SpaceLabs in patent interference with Masimo related to patent oximiters. The parties settled the interference.
Sugen, Inc. v. The Regents of the University of California. Represented Sugen against The Regents in a patent interference involving the rights to an isolated and purified nucleic acid for Discodin Domain Receptor (DDR) protein. The Board entered judgment in Sugen’s favor following the preliminary motion phase.
TCL Corporation. Represented TCL Corporation—one of the top five cell phone manufacturers in the world—in seventeen IPR proceedings and parallel district court action involving five patents asserted by Ericsson against the client in the Eastern District of Texas.
Tactile Feedback Technologies, LLC v. ZTE (USA) Inc., (E.D. Tex.). Represented ZTE, a leading smartphone manufacturer, in an Eastern District patent infringement action relating to touch screen technology.
Toro AG v. Kathy Weterman, Netafim Irrigation, Inc., (Sup. Ct. Cal.). Successfully represented Netafim in a trade secret misappropriation action involving allegations of misappropriation in connection with the hiring of a former Toro employee. A favorable settlement was achieved on behalf of Netafim following Mr. Randall’s expedited discovery obtained from Toro, which included computer forensic testing of Toro’s computer system.
Veratex, Inc. v. Field Crest Cannon, Inc. et. al., (C.D. Cal.). Successfully represented Veratex in connection with a trademark declaratory judgment action.
Wontok, Inc. v. Advanced Network Laboratories Pte Ltd. (“ANTlabs”). Lead counsel for ANTlabs in patent interference challenging the inventorship of ANTlabs’ patent related to network systems and methods for providing transaction security to an end user device. Wontok initiated the interference in an attempt to become a co-owner of the patented technology. The proceeding resulted in a judgment in favor of ANTlabs.
X.Com/The Banquet. Provided intellectual property counseling and patent portfolio development services in connection with a start-up website directed to extreme sports, including providing content acquisition and licensing agreements for content displayed on the website. The Banquet was subsequently acquired by USA Today.