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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)
- BDM Corporation (acquired by TRW) (1987 – 92)
Bar Admissions and Professional Affiliations
- Texas, U.S. Patent & Trademark Office
- Austin Intellectual Property Law Ass'n, President (2010), Board of Directors (2007-2011)
- AIPLA, IEEE, ACM
- American Inn of Court, Barrister (2010 - present), Austin Intellectual Property Inn
Representative Engagements
- Manages and develops
portfolios; prepares and prosecutes high-value patents for major
semiconductor, microprocessor, software, and network security clients;
manages and directs other attorneys in furtherance of client
engagements
- Handles litigation facing ex parte and inter partes re-examination matters
- Successfully identified targets
and developed infringement proofs for client patent assertion program
generating $3-5M annual licensing revenue
- Counsels clients regarding
portfolio coverage, filing and prosecution strategy, appeals, reexamination/reissue
and licensing value; prepares and negotiates licenses (in and out); conducts/contributes
to due diligence investigations
- Advised major
telecommunications client regarding claim constructions,
post-verdict proceedings and appeal relative to district court &
ITC actions in major 3rd party patent dispute involving
communications semiconductors
- Provided general litigation counsel
with targeted and effective patent-related legal advice that resulted
in business-ending injunction for opposing party and repatriation of
misappropriated intellectual property; prepared
dispositive motions for related actions in state and federal court
- Developed non-infringement
and invalidity positions relative to counterclaims in client patent
assertion; contributed to resolution of matter with $5M settlement for
client
- Developed patent portfolio
and essential patents strategy for software modem startup client
successfully acquired by major semiconductor company for $170M
- Advised major microprocessor company
regarding scope of coverages relative to 3rd party patent assertion against
competitor and subsequent portfolio acquisition
- Provided defensive patent
analysis for major Asian semiconductor manufacturer in context $10M+
at stake licensing negotiations
Publications & Invited Presentations
- Ass'n for Competitive Technology, Innovators Network, Turning Innovations Into a Successful
Business: Attracting Venture Capital and Business Partners, June 11, 2008 (with Ashwani Dhar and Raymond Millien)
- Moderator, Obviousness after KSR v. Teleflex, Austin IPLA Luncheon,
July 31, 2007 (Tom Felger, John Guaragna and Jennifer Wuamett, panelists)
- 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
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