R. David Donoghue

Partner
  • T 312.578.6553

R. David Donoghue is an established IP trial attorney with jury trial success and a strong track record across district courts, the Federal Circuit, and at the Patent Trial and Appeal Board. He serves as the co-leader of Holland & Knight's national Intellectual Property Group and is based in the firm's Chicago office.

Mr. Donoghue advises clients from major corporations to midsize businesses on technology disputes, such as patent, trade secret, trademark, copyright and Computer Fraud and Abuse Act (CFAA). Mr. Donoghue has been recommended in Intellectual Asset Management (IAM) Patent 1000 since 2014. The 2017 write-up states, "David Donoghue is a retail guru who understands the commercial drivers of the industry, as well as the technology that underpins it. Clients trust him because he makes it explicitly clear what is at stake and what it may cost them, and excels at finding solutions."

Whether he is asserting his client's IP, defending against competitors, or fending off Non-Practicing Entities (NPE), Mr. Donoghue blends his deep litigation experience with practical business insight garnered from his in-house experience. As a founding member of Aptiv (f/k/a Delphi) Licensing and Litigation Group, he handled substantial international IP litigation and licensing matters.

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

Mr. Donoghue is also the founder and principle author of the Chicago IP Litigation and Retail Patent Litigation blogs.

Representative engagements for Mr. Donoghue include:

Patent

  • Mr. Donoghue and his team won a jury verdict finding of willfulness, a full trebling of damages and a full award of attorney's fees for a manufacturing client against a key competitor
  • Defended a major retailer from patent infringement claims regarding POS systems and electronic couponing, forcing dismissal of patent holders' case without payment or confidentiality while summary judgment motions were pending
  • Defeated a preliminary injunction motion on behalf of a significant technology company after expedited discovery by focusing on critical claim construction and invalidity arguments
  • Defeated numerous NPE patents as invalid software patents at the Rule 12 stage, including summary affirmances by the Federal Circuit
  • Forced early dismissal of a competitor patent dispute regarding alternative automotive fuel sources by identifying key prior art
  • Defended hardware manufacturers and end-users against claims alleging infringement based upon the 802.11x wireless networking standard
  • Defended numerous clients against telecommunications and internet-based technology claims, including SMS and MMS messaging, GPS-based location functionalities and back-end internet shopping cart systems
  • Defending numerous clients in the telematics and fleet-based logistics industry

Trademark

  • Defeated a preliminary injunction after expedited discovery in a trade dress and false advertising case
  • Defended a major U.S. manufacturer against color trademark claims

Trade Secret / Computer Fraud and Abuse Act (CFAA)

  • Represented an airline in a CFAA action based upon unlawful scraping of online content
  • Defeated motions for a temporary restraining order and preliminary injunction in a software trade secret dispute
  • Defended a medical records software company in an expedited preliminary injunction proceeding

Copyright

  • Defended a major retailer from artist's copyright infringement claims
  • Defended software and internet clients whose online content was scraped

Honors & Awards

  • The Best Lawyers in America guide, Patent Law, 2015-2019; Litigation - Patent, 2016-2019; Litigation - Intellectual Property, 2019 
  • IP Star, Managing Intellectual Property magazine, Patent Contentious, Trademark Contentious, and Licensing, 2013-2019
  • Martindale-Hubbell AV Preeminent Peer Review Rated
  • Illinois Super Lawyers magazine, 2014-2018
  • IAM Patent 1000, the World’s Leading Patent Professionals - Litigation, International Asset Management magazine, 2014-2018
  • Chicago's Rising Stars: 40 Under 40, The National Law Journal, 2013
  • Current Developments Editor for the Georgetown Journal of Legal Ethics
  • Chicago Bar Association Herman Kogan Media Award
  • Chicago Business Lawyer magazine 2010 40 and Under 40, 2010

Memberships

  • PTAB Bar Association
  • Federal Bar Association
  • Law360 Intellectual Property Editorial Advisory Board
  • University of Michigan Aerospace Engineering Alumni Association, Board Member