Education

Georgetown University Law Center, J.D., cum laude

University of Michigan, B.S.E, magna cum laude, Aerospace Engineering

Bar Admissions

California
Illinois
Michigan

Languages

American Sign Language

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R David "Dave" Donoghue

Partner
Chicago
t: 312-578-6553

R. David Donoghue is a trial attorney and a partner in Holland & Knight's Intellectual Property Group focusing upon intellectual property litigation and particularly upon patent disputes. Mr. Donoghue's most recent trial experience includes a successful jury verdict, including a finding of willfulness, a full trebling of damages and a full award of attorney's fees in the Northern District of Illinois.

Mr. Donoghue was previously with Delphi, the world's largest automotive supplier, where he was a founding member of Delphi's Technology Licensing and Litigation Group and handled substantial international intellectual property litigation and licensing matters. His practice spans diverse technology areas, including cellular telephony, computer software, internet technologies, pharmaceuticals, automotive technologies, electrical technologies, television production equipment, nutritional supplements and numerous medical devices.

Mr. Donoghue served as an adjunct professor at the Loyola University Chicago School of Law, teaching legal research and writing and intellectual property courses. At the beginning of his legal career, Mr. Donoghue served as a law clerk to The Honorable Gordon J. Quist, federal district judge for the Western District of Michigan.

REPRESENTATIVE PATENT LITIGATION MATTERS:

  • Adjustacam, LLC v. Jasco Products (E.D. Tex.). Representing multiple defendants in this case involving web cameras.
  • Arrival Star S.A. v. Axis Global Logistics LLC (S.D. Fla.). Representing defendant in a patent infringement lawsuit alleging infringement of patent covering shipping and destination software.
  • Arrival Star S.A. v. BSM Wireless (N.D. Ill.). Represented defendant in patent infringement lawsuit alleging infringement of patent covering shipping and destination software.
  • Arrival Star S.A. v. CargoTel (N.D. Ill.). Representing defendant in a patent infringement lawsuit alleging infringement of patent covering shipping and destination software.
  • Arrival Star S.A. v. Complete Innovations (N.D. Ill.). Represented defendant in patent infringement lawsuit alleging infringement of patent covering shipping and destination software.
  • Arrival Star S.A. v. Intergis LLC (N.D. Ill.). Represented defendant in patent infringement lawsuit alleging infringement of patent covering shipping and destination software.
  • Arrival Star S.A. v. IntraVex LLC (S.D. Fla.). Representing defendant in a patent infringement lawsuit alleging infringement of patent covering shipping and destination software.
  • Arrival Star S.A. v. StarTrak (N.D. Ind.). Representing defendant in patent infringement lawsuit alleging infringement of patent covering shipping and destination software.
  • Arrival Star S.A. v. TECSYS (N.D. Ill.). Representing defendant in patent infringement lawsuit alleging infringement of patent covering shipping and destination software.
  • Automotive Technologies, International v. Delphi Automotive Systems (E.D. Mich.). Led team in Federal Circuit briefs and argument resulting in Fed. Cir. R. 36 summary affirmance of the Eastern District of Michigan’s summary judgment for Delphi.
  • Billing Patent Network LLC v. WEBeDoctor (N.D. Ill.). Represented defendant in this case involving medical billing software.
  • Fire 'Em Up v. Technocarb & Aurora Electronics (N.D. Ill.). Representing defendants in a patent infringement and trade secret case involving alternative fuel technologies.
  • Furnace Brook v. Boston Proper, Inc. (N.D. Ill.). Represented defendant against patent infringement claims related to online shopping cart technologies and won summary judgment of noninfringement before discovery.
  • GeoTag LLC v. Herman Miller, Inc. (E.D. Tex.). Representing Herman Miller in a patent infringement case involving store locator technology for websites.
  • Girafa, Inc. v. Amazon (D. Del.). Represented defendant in a preliminary injunction in this case involving thumbnail image and Internet technologies. Argued technical aspects of a preliminary injunction hearing resulting in a denial of the injunction.
  • Grasslin Controls Corp. v. Jasco Products (N.D. Ill.). Represented defendant in this case involving electrical switches.
  • Greenlight LLC v. Jasco Products (E.D. Tex.). Representing defendant in this case involving light sensors.
  • Innovatio IP Ventures v. Accor North America (N.D. Ill.). Defending Accor against claims alleging infringement based upon the 802.11x wireless networking standard.
  • Innovatio IP Ventures v. Meijer, Inc. (N.D. Ill.). Defending Meijer against claims alleging infringement based upon the 802.11x wireless networking standard.
  • Intellectual Property Innovations v. VIZIO, Inc. (N.D. Ill.). Co-counsel defending VIZIO against patent claims related to television noise reduction and picture enhancement.
  • Jarrow Formulas, Inc. v. NOW Health Group (C.D. Cal.). Representing defendant in this case involving nutraceutical formulations.
  • Liao v. Colovos Co. (N.D. Ill.). Represented defendants against patent claims related to woodworking and metalworking machine technologies.
  • MVConnect v. Digital Recognition Network (N.D. Ill.). Representing defendant in a patent infringement lawsuit regarding digital license plate recognition technology.
  • Meyer Corp. v. Bodum (N.D. Ill.). Tried case for plaintiff involving nonelectric milk frothers, winning a full plaintiff's verdict including a willfulness finding.
  • New Medium Technologies v. Miranda Technologies (N.D. Ill.). Represented defendant against hardware and software patent claims focused on video editing technologies resulting in a favorable settlement.
  • SFA v. Meijer, Inc. (E.D. Tex.). Representing Meijer in a patent infringement case involving internet technology for suggesting related products to a shopper.
  • Spread Spectrum v. Continental Web Press (N.D. Ill.). Represented defendant against patent claims related to printing press and related computer software technologies.
  • WinWare, Inc. v. AutoCrib, Inc. (N.D. Ga.). Represented defendant against patent claims regarding software for controlling an RFID portal. After a strong technical presentation, the case was settled without answering.

Professional Honors & Awards

Memberships

  • Federal Bar Association
  • University of Michigan Aerospace Engineering Alumni Association, Board Member

Court Admissions

  • U.S. Patent and Trademark Office
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Court of Appeals for the Ninth Circuit
  • U.S. District Court for the Central District of California
  • U.S. District Court for the Northern District of Illinois
  • U.S. District Court for the Western District of Michigan
  • U.S. District Court for the Western District of Wisconsin
  • U.S. Court of Appeals for the Sixth Circuit

Speaking Engagements

  • Moderator, "Strategies for Dealing with Non-Practicing Entities," 3rd Annual IP Trademark, Copyright & Licensing Counsel Forum, an ALM/Corporate Counsel event, The Harvard Club, NYC, September 14-15, 2011
  • "Controlling Patent Litigation Costs From Inside & Outside," Rocky Mountain IP & Technology Conference, June 2011
  • "Defending Against Patent Trolls Without Killing Your Budget," Food Marketing Institute Legal Conference, June 2011
  • "What Every Litigator Needs to Know About Joint Defense Agreements," ExecSense CLE Program, May 2011
  • "False Patent Marking: Crafting Your Defense as the Law Evolves," ALI-ABA CLE Program, October 2010
  • "Online Legal-ease: Fair Use, Copyright and Content Aggregation Issues in the Digital Age," Publishing Business Conference, March 2010
  • "Practical Tips for Defending False Patent Marking Litigation," Michigan State Bar Spring CLE, March 2010
  • "Northern District of Illinois Local Patent Rule Roundtable Discussion," Applied Discovery Roundtable, November 2009
  • "Be Pareto Efficient: Control of Social Media, Do Not Let it Control You," Marketing Strategy and the Law teleconference, November 2009
  • "Seven Steps for Reducing Intellectual Property Budgets & Increasing Effectiveness," BrightTalk IP Litigation Summit, October 2009
  • "Protecting & Promoting Your Brand With Social Media," ALI-ABA CLE Program, September 2009
  • "Using Intellectual Property to Grow & Protect Your Small Business," Rotary Club, April 2009
  • "Understanding and Using Social Media," Rotary Club, April 2009
  • Moderator, "Bilski: Are Software and Business Methods Patentable," Northwestern Journal of Technology & Intellectual Property Debate on In re Bilski, March 2009
  • "Alternative Dispute Resolution in Intellectual Property Cases," ALI-ABA CLE Program, February 2009
  • "Better Practice Management Through Technology," Chicago Bar Association, Legal Practice & Technology Management Seminar, January 2009
  • "Building Relationships & Managing Expectations," Successful Settlements, November 2008
  • "Successful Settlements: Building Relationships & Managing Expectations," ALI-ABA CLE Program, November 2008
  • "Communications Decency Act ยง 230 ISP Immunity," ALI-ABA CLE Program, August 2008
  • "Top Ten Cyberlaw Trends Northern District of Illinois," Chicago Bar Association Cyberlaw Committee Meeting, February 2008
  • "Leveraging Your Copyrights & Respecting the Copyrights of Others," Client Presentation, November 2007
  • "Injunctions Post-eBay: The More You Change, The More You Stay the Same," Client Presentation, April 2007

Published Articles & Books