Professionals
Technology Areas
- Aerospace & Aeronautics
- Automotive Technology
- Computer and Systems Engineering
- Computer Science & Software
- Electrical Engineering & Electronics
- Electro-Communications
- Energy
- Internet & E-Commerce
- Mechanical Engineering
- Metallurgy & Ceramics
- Semiconductor Devices & Processing Methods
- Telecommunications
Practice Areas
Admissions
- State of Connecticut, 2012
- Supreme Court of the United States, 2008
- U.S. Patent and Trademark Office, 2001
- State of New York, 2000
- U.S. District Court for the Southern District of New York, 2000
- U.S. District Court for the Eastern District of New York, 2000
Education
Benjamin N. Cardozo School of Law, JD, 2000
NYU-Tandon School of Engineering (formerly Polytechnic Institute), M.S. in Mechanical Engineering, 2006
NYU-Tandon School of Engineering (formerly Polytechnic Institute), Graduate Certificate in Network Telecommunications, 2005
State University of New York at Buffalo, B.S. in Aerospace Engineering, 1994
Teaching Positions
- Quinnipiac University School of Law, Adjunct Professor of Cyber Law
David has served as both in-house and outside counsel to some of the largest and most recognizable Fortune 500 companies. In these positions, he has been responsible for developing, coordinating and executing all aspects of patent protection strategies among global teams of business and technology hubs. In addition, he has developed objectives and procedures for identifying and protecting high value technology assets, and organized and led teams of technology leaders, who assisted in coordinating enterprise-wide protection efforts. David also managed patent procurement efforts by in-house and outside counsel.
David has gained substantial experience in negotiating short and long-term agreements touching upon the development and exchange of intellectual property with suppliers, innovation partners, and universities. He has successfully protected client interests in negotiating provisions directed to, e.g., ownership of intellectual property, confidentiality, indemnification, representations and warranties, and default.
David has also focused on drafting and negotiating software license agreements. He has advised clients about copy-left concerns with consuming open source code and contributing proprietary code to the open-source community, and recommended actions to mitigate the impact on the development of intellectual property. David has also lead efforts to protect company trade secrets though proactive initiatives, including creating protective procedures for recording of business sensitive information, and providing adequate notices and education to company employees.
David has drafted and prosecuted patent applications in the mechanical, electro-mechanical, telecommunication arts, to name a few, and participated in various post grant reviews. He has also drafted many freedom-to-operate opinions and patentability opinions for his clients. Further, David has protected his clients’ interests in litigation matters via various Examination Before Trial (EBT) proceedings, including taking and defending depositions, preparing and examining infringement claim charts, preparing Markman briefs and assisting in Markman hearings.
David enjoys lecturing about intellectual property, and has participated in and chaired many industry conferences and panels. He teaches Cyber Law at Quinnipiac University School of Law as an Adjunct Professor.
Experience Highlights
Counsel, Cantor Colburn LLP, 2016-present
Counsel, Patents, Trade Secrets, Technology, Aetna, 2015-2016
Assistant Intellectual Property Counsel, United Technologies Corporation, Pratt & Whitney Division, 2012-2015
Counsel, Day Pitney, LLP, 2007-2012
Senior Associate, Jordan & Hamburg, LLP, 2004-2007
Associate, Scully, Scott, Murphy & Presser, P.C., 2001-2003
Associate, Darby & Darby, P.C., 1999-2001
Structural Dynamics / Acoustics Engineer, Electric Boat Corporation, a General Dynamics Company, 1996-1997
Processes Design Engineer, Pall Corporation, 1995-1996
Junior Engineer, CCI Manufacturing, A Ryder Truck Company, 1994-1995
Publications
Co-author, "The Supreme Court Reaffirms the Clear-and-Convincing Standard for Patent Invalidity," Day Pitney Alert, June 15, 2011
Co-author, "The Supreme Court Retools the Test for Induced Patent Infringement," Day Pitney Alert, June 3, 2011
Co-author, "The Federal Circuit Redefines Inequitable Conduct," Day Pitney Alert, June 2, 2011
Co-author, "Federal Circuit Defines Framework for Pre-Suit Spoliation Inquiry," Day Pitney Alert, May 17, 2011
Co-author, "The Machine-Or-Transformation Test Reaffirmed As Useful And Important," Day Pitney Alert, Dec. 20, 2010
Co-author, “U.S. Supreme Court Leaves Door Open for Some Business Method Patents,” Day Pitney Alert, June 30, 2010
Co-author, “TiVo v. EchoStar: Designing Around After Being Enjoined, Seek Permission or Roll The Dice?,” JPPCLE, Apr. 29, 2010
Co-author, “Federal Circuit Upholds Separate Written Description Requirement,” Day Pitney Alert, Mar. 23, 2010
Co-author, “Medical Diagnostic Claims Patent-Eligible after Bilski,” Day Pitney Alert, Oct. 5, 2009
Co-author, “Federal Circuit in Tafas Invalidates the U.S. Patent Office's Continuation Rule but Does Not Render a Final Decision on the Remaining Rules,” Day Pitney Alert, Mar. 27, 2009
Co-author, “Federal Circuit Clarifies the Test for Patent Eligibility in Process Claim,” Day Pitney Alert, Jan. 12, 2009
Co-author, “Federal Circuit Continues to Lower the Bar for Filing a Declaratory Judgment in Patent Cases,” Day Pitney Alert, May 1, 2008
News
- October 24, 2016
Cantor Colburn LLP is proud to announce that it has hired a team of talented intellectual property attorneys, working in the firm's Hartford and Houston offices, adding to its significant presence in the IP legal sector. Cantor Colburn also has offices in Washington, D.C., Atlanta, and Troy, Michigan.
Events
Panelist, Supreme Court Update, 13th annual World Congress Patents for Financial Services Summit, New York, July 21, 2016
Panelist, Diverse Careers in IP Law and Strategies for Achieving Success, NYIPLA and Cardozo School of Law Alumni Association, April 19, 2016
Event Chair, Corporate IP Counsel Forum, IP World Congress, New York, Mar. 23, 2006
Panelist, Annual IP Trademark, Copyright & Licensing Counsel Forum, ALM, New York, November 3, 2015
Panelist, Careers in IP Law, NYIPLA, Quinnipiac Law School, April 16, 2015
Event organizer/Panel Moderator, One-Day Patent CLE Seminar, NYIPLA, New York, Nov. 20, 2014
Event Co-Chair/Panel Moderator, Annual IP Trademark, Copyright & Licensing Counsel Forum, ALM, New York, Oct. 28, 2014
Moderator/Co-Chair, “Key Leadership Issues in Sports and Media Law: Maximizing Profits and Protecting the Brand,” the New York County Lawyers Association, April 29, 2014
Speaker, “Ethics in Social Media 2014,” the Practicing Law Institute, New York, NY, Mar. 17, 2014
Moderator, “NYIPLA 2014 One-Day CLE Program”, the New York Property Lawyers’ Association, The University Club, New York, NY, Jan. 16, 2014
Speaker, “Intellectual Property Basics-With Case Law Updates: Copyright Basics For The Corporate Attorney,” McCarter & English and the New York County Lawyers Association, Dec. 18, 2013
Speaker, “Intellectual Property in an International Landscape: What’s Your Risk?”, Corporate Counsel’s 6th Annual IP Trademark, Copyright & Licensing Counsel Forum, The University Club, New York, NY, Oct. 22, 2013
Speaker, “Understanding Patents, Copyrights & Trademarks: Practicing & Dispute Basics with Case Law Updates”, Day Pitney and the New York County Lawyers’ Association, April 10, 2013
Speaker, “Patent Law For Non-Patent Lawyers: Understanding A Patent”, the New York City Bar Association, Mar. 19, 2013
Speaker, “Protecting Your Products and Discoveries Perspectives from both In-House and Outside Patent Counsel,” McCarter & English and the New York County Lawyers Association, Dec. 11, 2012
Speaker, "Patent Law and the America Invents Act," Day Pitney and the New York County Lawyers’ Association, Feb. 22, 2012
Speaker, “Patent Law Upheaval? The New America Invents Act & Its Impact On Patent Rights”, the Nassau County Bar Association, Jan. 30, 2012
Speaker, “The Patent Reform Act,” the New York City Bar Association, Jan. 26, 2012
Moderator, "The Supreme Court's Increased Interest In Patent Law," New York Intellectual Property Lawyers Association, Nov. 3, 2011
Speaker, "A Review of Supreme Court Patent Law Decisions from 2011 & Their Impact on Your Practice," the New York City Bar Association, Oct. 12, 2011
Moderator, “Roundtable: Updates on Damages and the Use of Experts,” New York City Bar Association, June 7, 2011
Speaker, "Exploring Obviousness," Long Island Systems, Applications and Technology Conference, Farmingdale State College of the State University of New York, May 6, 2011
Speaker, “Patent Basics for Inventors, Engineers, Scientists, Entrepreneurs, and Students,” New York City Bar Association, April 7, 2011
Speaker, "What Is Patent Eligible Following the 2010 Supreme Court's Bilski Decision?" IEEE Consultants Network of Long Island, Feb. 9, 2011
Speaker, "Patent Protection Update: Software and Financial Method Patents," New York Technology Council, Inc, Jan. 18, 2011
Chair and Moderator, "Supreme Court Update," New York City Bar Association, Jan. 11, 2011
Speaker, "Navigating The Supreme Court's Bilski v Kappos Decision, Subsequent Federal Circuit and District Court Decisions, Including Prometheus Labs," Day Pitney and the New York County Lawyers’ Association, Dec. 22, 2010
Speaker, “Getting The Most Out Of Your Patent Licensing, The Impact of Bilski v Kappos,” New York City Bar Association, Dec. 6, 2010
Organizer, “NYIPLA 2010 Fall One-Day CLE Program,” New York Intellectual Property Lawyers’ Association, Nov. 4, 2010
Speaker, "Understanding the 2010 Examination Guidelines Update: Developments in the Obviousness Inquiry After KSR v.Teleflex," Day Pitney and the New York County Lawyers Association, Oct. 7, 2010
Speaker, “Patent Marking, How to Navigate This Changing Area Of Law,” Day Pitney and the New York County Lawyers Association, Mar. 25, 2010
Organizer and Panel Moderator, “NYIPLA 2009 Fall One-Day CLE Program”, Nov. 5, 2009
Organizer and Panel Moderator, “Current Issues in Patent Practice,” New York City Bar Association, Oct. 8, 2009
Speaker, “Federal Circuit Update: Prometheus Labs v Mayo Collaborative Services,” Day Pitney and the New York County Lawyers Association, Oct. 1, 2009
Speaker, “How to Protect Your Intellectual Property without Breaking Your Budget,” Day Pitney Webinar, May 5, 2009
Speaker, “Following Bilski, Comiskey & Recent Board Decisions, How To Navigate the Changing Area of Law for Business Method Patents,” Day Pitney and the New York County Lawyers Association, Feb. 24, 2009
Moderator, “Navigating Effective Intellectual Property Enforcement on the Web,” Day Pitney, Dec. 11, 2008
Panelist, “Roundtable on In Re Bilski,” New York City Bar Association, Dec. 2, 2008
Moderator, “NYIPLA 2008 Fall One-Day CLE Program”, The University Club and the New York Property Lawyers’ Association, Nov. 7, 2008
Panelist, “Design Patent Infringement - Egyptian Goddess v. Swisa,” Benjamin N. Cardozo School of Law, Apr. 14, 2008
Professional Affiliations
Connecticut Intellectual Property Lawyers Association (CIPLA), 2012-Present
New York Intellectual Property Law Association (NYIPLA), CLE Planning Committee, 2008-present
Institute of Electrical and Electronics Engineers (IEEE), Section Vice President
Intellectual Property Owners Association (IPO)
International House of New York, Steering Committee
Community/Civic Involvement
Benjamin N. Cardozo School of Law, JD, 2000
NYU-Tandon School of Engineering (formerly Polytechnic Institute), M.S. in Mechanical Engineering, 2006
NYU-Tandon School of Engineering (formerly Polytechnic Institute), Graduate Certificate in Network Telecommunications, 2005
State University of New York at Buffalo, B.S. in Aerospace Engineering, 1994
