He focuses his practice in two key areas:
- Strategic IP Solutions for Innovation Leaders: Companies and institutions who desire to be innovation leaders regularly hire Dave to identify and develop solutions that optimally align the company’s IP strategy with its overall business objectives.
Businesses have benefited through these strategy-based solutions in many ways, including:
- Developing IP assets that create real value to businesses
- Monetizing IP to increase valuation
- Reducing IP portfolio management costs
- Mitigating risks of competitive IP
- Ceasing infringing sales and payment of damages from competitors
Dave was named "Lawyer of the Year" for Patent Law in Cleveland by The Best Lawyers in America®, 2018, and has been named a leader in intellectual property by Chambers USA since 2016.
IP strategy solutions for innovation leaders
- Work closely with clients on developing effective IP portfolio alternative fee arrangements.
- Developed improved forms and workflows for client IP portfolios to save clients significant time and money.
- Identified new ways for clients to identify innovations and protocols on how to identify the best forms of protection.
- Formed client-specific training for key technical, commercial, and legal personnel on important IP issues based on the needs of that business.
- Devised trade secret policies to ensure the maintenance of key confidential information both internally and externally.
- Created plan on consolidating worldwide counsel to save significant foreign costs.
- Worked with clients on developing more sound approaches in protecting new IP innovations based on joint development with third parties.
IP Enforcement and Dispute Resolution Strategies
District Court Experience
- Litigated dozens of patent, trade secret, trademark, copyright, and unfair competition cases all over the country.
- Led trial team in obtaining jury verdict of willful patent infringement in a chemical patent case.
- Awarded favorable willful patent infringement ruling at a bench trial involving four different consumer product patents.
- Prevailed at preliminary injunction hearing on behalf of accused trademark infringer involving multi-million dollar claim.
- Presented at more than 10 patent claim construction hearings that involved dozens of claim terms in a wide variety of electrical, chemical, and mechanical technologies.
- Obtained numerous favorable summary judgment rulings in all areas of IP including infringement, non-infringement, no invalidity, no inequitable conduct, affirmative defenses.
Appeals Court Experience
- Argued patent infringement and invalidity issues before the Federal Circuit that originated from federal district courts as well as from PTAB.
- Argued trademark and unfair competition issues before the Sixth Circuit.
- Briefed numerous cases commencing in district court and at the USPTO.
USPTO Patent Trial and Appeal Board (PTAB) Experience
- Argued before PTAB in numerous inter partes reviews (IPR), inter partes reexaminations, ex parte applications.
- Successfully represented patent owners and petitioners challenging competitive patents and obtained results at a rate much higher than the overall PTAB grant/denial rate.
- Successfully represented petitioners challenging competitive patents in obtaining grants of IPR petitions.
Arbitration and Other Litigation Experience
- Arbitrated a wide variety of IP matters before the American Arbitration Association
- Obtained favorable false advertising findings before the National Advertising Division (NAD) of the Better Business Bureau
- Uniform Domain Name Dispute Resolution Policy (UDRP) actions
- Litigated dozens of USPTO trademark oppositions and cancellations
Admissions - Court
- U.S. Patent and Trademark Office
- U.S. Court of Appeals for the Federal Circuit
- U.S. Court of Appeals for the 6th Circuit
- U.S. District Court for the District of Colorado
- U.S. District Court for the Eastern District of Arkansas
- U.S. District Court for the Western District of Arkansas
- U.S. District Court for the Northern District of Illinois
- U.S. District Court for the Northern and Southern Districts of Ohio
- U.S. District Court for the Eastern District of Michigan
- U.S. District Court for the Western District of New York
Admissions - State
- Case Western Reserve University School of Law
- Case Western Reserve University
Honors and Awards
- Named leader in Ohio Intellectual Property - Chambers USA (2016-2018)
- Named one of the Best Lawyers in America (2016-2018)
- Designated "Lawyer of the Year" in Cleveland for Patent Law by Best Lawyers in America (2018)
- Selected for inclusion in Ohio Rising Stars (2011, 2013, 2014, 2018)
- American Intellectual Property Law Association-Member, Biotech Committee-Liaison to Amicus Committee
- Cleveland Intellectual Property Law Association-Chair, Chemical Committee
- International Trademark Association
- Cleveland Metropolitan Bar Association
- American Chemical Society
Supreme Court decision will have big impact on location of patent infringement suits
New Trademark Trial and Appeal Board rules coming January 2017
Court identifies commercial activities allowed under on-sale bar doctrine
Supreme Court decision loosens standard for awarding enhanced damages
3 notable features of the newly passed Defend Trade Secrets Act
How to successfully challenge or defend a patent before the USPTO Patent Trial and Appeal Board
Proposed federal trade secrets legislation before Congress
Intellectual Property: 6 updates from the USPTO on patent eligibility
Can you keep a secret?
Supreme Court Ruling will have significant impact on pharmaceutical industry
Federal Circuit decision could give patent owners more leverage
Patent "Death Squads:" Is the USPTO the best way to challenge patents?
What does your business need to know about Chinese IP?
Monsanto: The Supreme Court Affirms Patent Owner's Rights
U.S. Patent Law changes to First-to-File System - Is your business ready?
McDonald Hopkins Recognized by Chambers USA 2018
MH Business Exchange Episode 7 helps businesses manage their IP portfolio
22 attorneys at McDonald Hopkins named 2018 Ohio Super Lawyers and Rising Stars
35 attorneys at McDonald Hopkins selected for inclusion in Best Lawyers® 2018
McDonald Hopkins Recognized by Chambers USA 2017
39 attorneys at McDonald Hopkins selected for inclusion in Best Lawyers 2017
Federal Court upholds DNA Diagnostics Center's Use of "Ancestry" for DNA Testing
41 attorneys at McDonald Hopkins selected for inclusion in Best Lawyers® 2016
McDonald Hopkins announces department and leadership promotions
- "How the America Invents Act impacts your business," Smart Business Magazine, November 2011.
- "How to keep your intellectual property safe while not infringing on others’ IP," Smart Business Magazine, November 2010.
- "Rethinking patents," Smart Business Magazine, May 2008.
- “Despite Laches Defense, Patent Owners Have Little Worries,” 8 Ohio Lawyers Weekly 31, May 31, 2004.
- What your business needs to know about Chinese intellectual property | Thursday, December 12, 2013
- Patent Reform: Significant changes are coming March 16, 2013. Is your business ready? | Wednesday, January 16, 2013
- “Trade Secret Considerations for Businesses” Presentation, University of Akron IP Symposium, March 2018.
- “Supreme Court Update on Patent Cases” Presentation, Cleveland Intellectual Property Law Association, September, 2017.
- “How to Protect Your IP Assets in China” Presentation, Cleveland Intellectual Property Law Association, February 2015.
- "Intellectual Property Strategies to Protect Your Valuable Assets," Executive College on Laboratory and Pathology Management, New Orleans, May 2011.
- "Practical Advice and Legal Strategies to Protect Intellectual Property of the Laboratory and Molecular Technologies," Executive College on Laboratory and Pathology Management, New Orleans, May 2009.
- "Best Practices for Avoiding Inequitable Conduct Issues," Cleveland Intellectual Property Law Association, October 2008.
- "Intellectual Property Strategies: Two Case Studies," Executive College on Laboratory and Pathology Management, Miami, May 2008.
- “Post-KSR Strategies in the Chemical and Biotech Fields,” Cleveland Intellectual Property Law Association, November 2007.