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 David W. O'Brien
Partner
(512) 338-6300 : Phone
(512) 338-6301 : Fax
david.obrien@ip-counsel.com
Practice Areas :
Intellectual Property; Patents; Trademarks; Copyrights
 Education
- J.D., The University of Texas School of Law, with honors (1995)
- M.S.E., (Electrical & Computer), The University of Texas at Austin (1987)
- B.S.E.E., Cornell University (1986)
David O'Brien has over 20 years of experience in software, semiconductor and computer electronics technologies. His legal practice emphasizes IP portfolio development and strategic patent counseling, building on core technology expertise and incorporating a sophisticated understanding of the evolving legal framework in which rights to such technologies are procured and enforced.
David prepares and prosecutes high-value patent applications. He provides clients with focused offensive and defensive analyses of intellectual property positions, including opinions, assertion analyses and acquisition due diligence. Over the years, David has provided strategic counsel to a variety of multi-national corporations and emerging companies in the context of major
microprocessor-, semiconductor- and network security patent assertions. He renders defensive non-infringement and/or invalidity opinions when appropriate. David also prepares agreements and advises clients in technology transactions and licensing matters.
David's representation of clients builds on substantial prior-career experience including R&D for DARPA and other clients, in areas of multiprocessor architecture; software and algorithms for parallel and distributed computing; semiconductor devices, fabrication and materials; networks and protocols; process control; opto-electronics and lasers, and computer vision/imaging systems.
David is published and lectures on patent law and protection of computer software. Recent topics include litigating divided infringement claims, including issues of transnational and joint liability for infringements, post-Phillips claim construction, and continuing application strategy.
Legal & Technical Experience
- Zagorin O’Brien Graham LLP (1998 – present)
- Skjerven Morrill MacPherson (1993 – 98), Technical Advisor, Associate
- BDM Corporation (acquired by TRW) (1987 –92), Engineer, R&D Manager
Bar Admissions
- Texas, U.S. Patent & Trademark Office
Publications & Presentations
- Patent Prosecution Procedure: Continuing Applications, Information Disclosure and Other New (or Proposed) Rules, at 11th Annual Advanced Patent Law Institute, October 26th, 2006 (joint presentation with Andrew J. Dillon)
- Claim Construction Update: Phillips and Beyond, CLE luncheon for Austin Intellectual Property Law Association, May 24, 2006 (joint presentation with Ranjeev Singh and Amber H Rovner)
- Divided Infringement Claims, 33 AIPLA Q.J. 255 (2005) (co-author with Mark A. Lemley, Ryan M. Kent, Ashok Ramani & Robert Van Nest).
- Litigating Divided Infringement Claims, at 9th Annual Advanced Patent Law Institute, Austin, Texas, October 28, 2004. Joint presentation with Mark A. Lemley.
- Continuing Application Strategy, at 8th Annual Advanced Patent Law Institute, Austin, Texas, October 30, 2003.
- Recent Developments in Patent Law, 7 Tex. Intell. Prop. L.J. 305 (1999) (co-author with Mark Zagorin)
- Encouraging Software Reuse, 49 Stan. L. Rev. 255 (1997) (co-author with Mark A. Lemley)
- Discovery of Draft Patent Applications: Considerations in Establishing a Draft Retention Policy, 2 Tex. Intell. Prop. L.J. 237 (1994)
- A Comparison of the U.S. and Japanese Patent Systems, in Introduction to Japanese Patents (Japan Information Access Project, July 1994) (co-author with Gary W. Hamilton)
- Trends in Intellectual Property: Unlocking the Mind Behind the Invention, 12:42 Tex. Law. 33 (1997).
- Protecting the Intellectual Property in Software, at the Eleventh Annual University of Texas Computer Law Conference, Austin, Texas, May 13-15, 1998 (joint presentation with David W. Carstens)
- Software Components and Intellectual Property, Software Patents Symposium at The University of Texas School of Law, February 26, 1998
Issued U.S. Patents
- 5,136,497 and 5,202,837, each entitled Material Consolidation Modeling and Control System, and naming Coe, Godfrey, Henniges, O'Brien, Payne, Ashby, Aravas, McMeeking, Fields, Parrish and Wadley as inventors.
Selected Technical Works
- The Data/Instruction Instruction Systolic Array, Master's Thesis, The University of Texas at Austin, 1987.
- Nonlinear Optical Materials and Devices, (with Dr. C. T. Butler), BDM/W-86-0317-TR.
- Optical Interconnects for Microelectronic Circuits, (with R. Collins and Dr. C. T. Butler), BDM/W-86-0316-TR.
- A Three-Dimensional Data/Instruction Systolic Array for Signal Processing Applications, (with C. L. Wu) Proceedings of the SPIE Conference on Visual Communications and Image Processing, 1987.
- Mixed Event- and Time-Stepped Parallel Simulation, (with Dr. J. B. Gilmer) Proceedings of the 1989 Distributed Simulation Conference, Society for Computer Simulation, March 1989.
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