Overview
David Tobin focuses his practice on intellectual property (IP) matters, with a particular emphasis on patent post-grant trials and patent litigation. He has extensive experience litigating complex patent infringement and other IP cases across the country, including in district courts, the Patent Trial and Appeal Board (PTAB) and the International Trade Commission (ITC). David represents clients in a wide variety of fields spanning telecommunications hardware and standards, computer hardware and software, e-commerce, data compression, semiconductor manufacturing and design, fossil energy production, renewable energy generation, medical devices, chemical processes and pharmaceutical formulations. He also litigates and provides counseling on trade secret, copyright, trademark and trade dress issues.
David skillfully handles all aspects of a lawsuit for his clients, including pre-suit investigations, e-discovery, taking and defending fact and expert depositions, summary judgment and Markman proceedings, presenting and cross-examining witnesses at trial, and appeal. David has represented both petitioners and patent owners in numerous post-grant trials at the PTAB, including all stages of the case from finding prior art through arguing at hearings. His comprehensive IP practice also covers transactions, including negotiating license agreements.
In addition to his IP practice, David is actively involved in pro bono work. His pro bono docket includes representing veterans before the U.S. Court of Appeals for Veterans Claims.
During law school, David was the chief articles editor of the Texas Intellectual Property Law Journal.
Results
- Represented a power generation company in patent litigation; the case settled on favorable terms after the PTAB instituted four inter partes review (IPR) petitions and the court stayed the case pending IPR*
- Represented a wireless carrier against patent infringement claims involving ten patents relating to antenna arrays, at the PTAB and district court; the case settled on favorable terms after closing arguments to the jury, on the morning of jury deliberations*
- Participated in month-long jury trial in state court during the pandemic, including cross-examining expert witness; the case involved defending against assertions of misappropriation of trade secrets, and the jury returned a verdict finding that none of the alleged misappropriated information was trade secret*
- Represented a crafting tools company in an infringement action to protect its copyrights, trademarks, and trade dress against a company selling knock-off goods from overseas; the case settled on favorable terms with a consent judgment*
- Represented one of the world’s largest manufacturers of magnetic recording in an IPR before the PTAB; the Federal Circuit affirmed a final written decision of invalidity of all challenged claims; also presented expert witness at the ITC evidentiary hearing*
- Represented one of the world’s leading flash memory manufacturers against patent infringement claims involving five patents related to memory devices, including at district court and PTAB*
- Represented a pharmaceutical company in a Hatch-Waxman lawsuit concerning diabetes treatment; the case settled on favorable terms on the morning of trial*
- Represented a wireless carrier in a patent infringement action relating to ringtones and to Multimedia Messaging Service (MMS) technology, which settled on favorable terms*
- Represented a technology company accused of fraud and breach of contract relating to nanowires; the case settled on favorable terms after summary judgment briefing*
- Represented a television manufacturer in a patent infringement investigation relating to timing circuits and bond-pad layout before the ITC; the case settled on favorable terms*
- Represented one of the world’s leading flash memory manufacturers against patent infringement claims involving twelve patents relating to flash memory chips, memory systems, semiconductor processes, and chip packaging patents; after a favorable ruling on the issue of patent exhaustion, all claims were dismissed in federal circuit appeal*
- Represented a national data provider in a patent infringement action involving compression of financial market data, in which all asserted claims were held to be invalid or not infringed; the Federal Circuit affirmed the trial court’s summary judgment rulings*
- Represented a technology company in patent infringement action involving Long Term Evolution (LTE) and 3G mobile communications technology*
- Represented sporting goods manufacturer in a patent infringement action; the case settled on favorable terms shortly after Markman briefing was concluded*
- Tried a patent infringement investigation relating to wind turbine clean-energy technology on behalf of the patentee, a Fortune 50 company, before the ITC; the administrative law judge found a violation of two of the three patents-in-suit and found that the third patent-in-suit was both infringed and valid*
- Represented a group of online retailers accused of infringement of a patent related to real-time transactions occurring over the web based on a variety of web-based transactions, including the online purchase of products and/or services using the retailers’ e-commerce platforms. The matter was settled after the filing of a petition at the PTAB for covered business method (CBM) review*
*Matter handled prior to joining McDermott
Recognitions
- Patextia, PTAB Intelligence Report, Top 1-2% PTAB Attorney, 2023
- Super Lawyers, Texas Rising Star, 2013 to 2017
Community
- Dallas Bar Association, member
- The Honorable Barbara M.G. Lynn American Inn of Court, former associate
Credentials
Education
The University of Texas School of Law, JD, with high honors, Order of the Coif, 2007
University of California, Los Angeles, MS, Materials Science & Engineering, National Defense Science and Engineering Graduate Fellowship, 2004
University of California, Los Angeles, BS, Chemical Engineering, summa cum laude, Outstanding Bachelor of Science Award, Tau Beta Pi, Engineering Honors Society, 2001
Admissions
Texas
Courts / Agencies
US Patent and Trademark Office
US Court of Appeals for the Federal Circuit
US Court of Appeals for Veterans Claims
US District Court for the Northern District of Texas
US District Court for the Southern District of Texas
US District Court for the Eastern District of Texas
US District Court for the Western District of Texas
US District Court for the Western District of Wisconsin
