David Cavanaugh

Wilmer Cutler Pickering Hale and Dorr LLP

$ $$$

Pennsylvania Avenue Northwest 1875
Washington 20006 DC US

David L. Cavanaugh has broad legal experience in industry and private practice and provides clients with strategic, business-focused counseling in the procurement, management and exploitation of their intellectual property. He has extensive experience in all aspects of intellectual property practice, including IP litigation, patent procurement, technology transfer and licensing, and due diligence for corporate transactions.

Mr. Cavanaugh has developed and implemented intellectual property strategies suited for companies at all stages, from early startup phase to established business phase. Since the implementation of the America Invents Act, Mr. Cavanaugh has been active in post-grant proceedings at the US Patent Office and was recently named by Patexia as one of the top five most active attorneys in inter partes review (IPR).

He has filed petitions and represented patent owners in a variety of technologies and has been lead counsel or counsel of record on more than 250 inter partes review proceedings (IPR). As lead counsel he has presented at dozens of oral hearings at the Patent Trial and Appeal Board (PTAB).

He has also developed strategies for using IPRs as a vehicle toward settlement of related district court cases as well as developed strategies for joinder of parties. Mr. Cavanaugh has also represented patent owners in IPR proceedings and developed successful IPR strategies for patent owners.

Along with inter partes reviews, Mr. Cavanaugh routinely develops strategies for other post-grant proceedings such as ex parte reexaminations and reissues. He has extensive experience in inter partes reexamination and interferences. These procedures can be used to develop comprehensive strategies using all the procedures the Patent Office provides.

Mr. Cavanaugh is a sought-after speaker in the area of post-grant proceedings and specifically IPRs. He developed the post-grant class and curriculum for American University where he teaches patent litigation in the Spring semester and post-grant proceedings in the Summer session.

Prior to joining the firm, Mr. Cavanaugh was a senior patent counsel in the legal department of Boston Scientific Corporation, responsible for the intellectual property matters in the radiology, neurology, urology and endoscopy divisions.

Prior to his work with Boston Scientific, Mr. Cavanaugh was associated with Wolf, Greenfield and Sacks in Boston, where he provided patent support to a variety of medical device clients. Mr. Cavanaugh also has been a patent examiner at the United States Patent Office, where he examined patent applications in a variety of technologies.

Mr. Cavanaugh received a JD from George Washington University, where he was selected to study at the Max-Plank-Institute for Comparative Patent Law in Munich. He earned his JCL at the Catholic University of America, his master’s degree at Washington Theological Union and his bachelor’s degree in mechanical engineering at Villanova University. He is a member of the Pi Tau Sigma National Mechanical Engineering Honor Society.

Mr. Cavanaugh is an adjunct professor at The American University Washington College of Law since 2014 where he teaches Patent Litigation in the Spring Semester and Post Grant Proceedings in the Summer Session. He served on the Board of Directors of the Massachusetts Medical Device Industry Council (MassMEDIC) for six years.

He has been selected by the Massachusetts Life Sciences Center to serve as a peer reviewer for its Small Business Matching Grant (SBMG) Program, which promotes the life sciences within the Commonwealth of Massachusetts.

He has been a Board member of the New England Business and Technology Association and has been a frequent guest lecturer at New England College of Law about patent law related topics.

Experience :

  • Lead counsel for two Inter Partes Review proceedings (IPRs) before the US Patent Office’s Patent Trial and Appeal Board (Board) for Permobil, a company that designs and manufactures wheelchairs. The Board issued Final Written Decisions declaring unpatentable all challenged claims of US Patent No. 8,408,343 (the ‘343 patent) and US Pat. No. 8,408,598 (the ‘598 patent).
  • Lead counsel for patent owner in a series of IPRs filed against US Patent Nos. 6,866,866 (‘866 patent) and 6,790,459 (‘459 patent) alleging the patents were invalid. The IPRs on the ‘459 patent were denied at institution and the ‘866 patent survived in the Final Written Decision was held not-cancelled. The patented technology relates to timed release of medication.
  • Lead counsel for a Fortune 500 technology company when the Federal Circuit held that three patent claims that we had challenged in an IPR adverse to an acoustics company were unpatentable. The patents related to speaker designs that the acoustics company accused our client of infringing.
  • Selected to develop patent portfolio by SevenOaks Biosystems (SevenOaks) and Massachusetts General Hospital (MGH) in the field of tissue grafting. The portfolio includes applications licensed to SevenOaks by MGH and technology developed by SevenOaks.
  • Selected to be on the Patent Advisory Council for LaVit Life, a company which develops beverage dispensers for residential use. The Advisory Council aligns existing product development and the developing US and worldwide patent portfolio.

EDUCATION :

  • JCL, Catholic University of America, 2016
  • JD, George Washington University Law School, 1994
  • MA, Washington Theological Union, 1989
  • BME, Villanova University, 1986

ADMISSIONS :

  • District of Columbia
  • Maryland
  • Massachusetts
  • United States Patent and Trademark Office

Cost

Rate : $$$$

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Pennsylvania Avenue Northwest 1875
Washington 20006 DC US
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Lina Stillman

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Broadway 42
New York 10006 NY US
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