Overview

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 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 2019 publication describes him as “A practical lawyer who gets right to the heart of any matter, David Donoghue really understands the most technical aspects of patent law. He is also great at figuring out how to win cases without spending a shed-load of his clients’ money.” He provides strong leadership to Holland & Knight’s national IP group. 

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

Experience

  • Represented and currently representing multiple clients in both extensive litigation and negotiating licenses against Helferich Patent Licensing, including dispositive motion practice, claim construction, and Federal Circuit appellate work.
  • Represented and currently representing multiple clients in both litigation and negotiating licenses against Interface IP.
  • Currently representing multiple clients with regard to Nokia’s standard-essential patent licensing campaign seeking FRAND payments.
  • Represented defendants against patent claims related to woodworking and metalworking machine technologies (Liao v. Colovos Co., N.D. Ill.)
  • Representing Herman Miller in a patent infringement case involving store locator technology for websites (GeoTag LLC v. Herman Miller, Inc., E.D. Tex.)
  • Representing the defendant in a case involving light sensors (Greenlight LLC v. Jasco Products, E.D. Tex.)
  • Defending Meijer against claims alleging infringement based upon the 802.11x wireless networking standard (Innovatio IP Ventures v. Meijer, Inc., N.D. Ill.)
  • Represented the defendant in a case involving medical billing software (Billing Patent Network LLC v. WEBeDoctor, N.D. Ill.)
  • Represented Delphi 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 (Automotive Technologies, International v. Delphi Automotive Systems, E.D. Mich.)
  • Defending Accor against claims alleging infringement based upon the 802.11x wireless networking standard (Innovatio IP Ventures v. Accor North America, N.D. Ill.)
  • Representing the defendant in a patent infringement lawsuit regarding digital license plate recognition technology (MVConnect v. Digital Recognition Network, N.D. Ill.)
  • Representing defendants in a patent infringement and trade secret case involving alternative fuel technologies (Fire 'Em Up v. Technocarb & Aurora Electronics, N.D. Ill.)
  • Represented the defendant in a case involving electrical switches (Grasslin Controls Corp. v. Jasco Products, N.D. Ill.)
  • Representing Meijer in a patent infringement case involving Internet technology for suggesting related products to a shopper (SFA v. Meijer, Inc., E.D. Tex.)
  • Represented the defendant in a preliminary injunction in a case involving thumbnail image and Internet technologies; our team argued the technical aspects of a preliminary injunction hearing, resulting in a denial of the injunction (Girafa, Inc. v. Amazon, D. Del.)
  • Represented multiple defendants in several patent infringement lawsuits alleging infringement of a patent covering shipping and destination software (Arrival Star S.A. v. Axis Global Logistics LLC, S.D. Fla.; Arrival Star S.A. v. BSM Wireless, N.D. Ill; Arrival Star S.A. v. CargoTel, N.D. Ill.; Arrival Star S.A. v. Complete Innovations, N.D. Ill.; Arrival Star S.A. v. Intergis LLC, N.D. Ill.; Arrival Star S.A. v. IntraVex LLC, S.D. Fla.; Arrival Star S.A. v. StarTrak, N.D. Ind.; Arrival Star S.A. v. TECSYS, N.D. Ill.)
  • Represented the defendant against hardware and software patent claims focused on video editing technologies resulting in a favorable settlement (New Medium Technologies v. Miranda Technologies, N.D. Ill.)
  • Representing multiple defendants in a case involving web cameras (Adjustacam, LLC v. Jasco Products, E.D. Tex.)
  • Serving as co-counsel defending VIZIO against patent claims related to television noise reduction and picture enhancement (Intellectual Property Innovations v. VIZIO, Inc., N.D. Ill.)
  • Representing the defendant in a case involving nutraceutical formulations (Jarrow Formulas, Inc. v. NOW Health Group, C.D. Cal.)
  • Represented the plaintiff in a case involving nonelectric milk frothers and obtained a full plaintiff's verdict, including a willfulness finding (Meyer Corp. v. Bodum, N.D. Ill.)
  • Represented the defendant against patent infringement claims related to online shopping cart technologies and won summary judgment of noninfringement before discovery (Furnace Brook v. Boston Proper, Inc., N.D. Ill.)
  • Represented the defendant against patent claims regarding software for controlling an RFID portal; after a strong technical presentation, the case was settled without answering (WinWare, Inc. v. AutoCrib, Inc., N.D. Ga.)
  • Represented the defendant against patent claims related to printing press and related computer software technologies (Spread Spectrum v. Continental Web Press, N.D. Ill.)
  • Represented supplier and twenty plus customer defendants in a patent infringement lawsuit involving therapeutic cold pack (Der Ovanesian v. Modular Thermal Technologies, Inc. et al, S.D. Fla.)
  • Represented Office Depot in a patent infringement lawsuit involving web based greeting card systems (Express Card Systems v. Office Depot, E.D. Tex.)
  • Representing defendant in a patent infringement lawsuit involving flooring installation (OSBE Parket et al. v. Foam Products Corp.,N.D. Ill.)
  • Represented Hy-Vee in a patent infringement lawsuit involving web based greeting card systems (Express Card Systems v. Hy-Vee, E.D. Tex.)
  • Lead counsel representing Robertshaw in a patent infringement suit involving thermostats with variable fan control (ABT v. Robertshaw, N.D. Ill.).
  • Represented retailer Chelsea & Scott as lead counsel in a patent infringement suit involving parametric searching functionality on websites (Select Retrieval v. Chelsea & Scott, N.D. Ill.).
  • Lead counsel representing Meijer in a patent infringement suit involving parametric searching functionality on websites (Select Retrieval v. Meijer, N.D. Ill.).
  • defended Wrigley in a false patent marking suit involving Hubba Bubba Bubble Tape gum; after the filing of several Rule 12(b)(6) motions, the case was dismissed (Herengracht v. Wrigley, S.D. Fla.).
  • Represented Jasco in a patent infringement suit involving rotatable HDMI connectors (Ideative v. Jasco Products, N.D. Tex.).
  • Lead counsel representing a foreign electronics manufacturer in resolving numerous patent disputes in which its customers were named.
  • Represented Office Depot as lead counsel in a patent infringement suit involving retractable data cords (Retractable Cord Technologies v. Office Depot, N.D. Ga.).
  • Representing plaintiff in patent infringement lawsuit involving housewares (Meyer Intellectual Properties Limited et al v. Bodum, Inc., N.D. Ill., Fed. Cir.).
  • Representing defendant in patent infringement lawsuit regarding CoQ10 (Jarrow Formulas, Inc. v. NOW Health Group, Inc., C.D. Cal., Fed. Cir.).
  • Represented defendant in patent infringement lawsuit regarding search bar functionality (Interface IP v. Ikea, D. Del.).
  • Represented defendant in a patent infringement lawsuit involving medical device (Neurowave Medical Technologies LLC v. Comfort Quest, Inc et al, N.D. Ill.).
  • Represented defendant in a patent infringement lawsuit involving registered card technology (Rewards Network Inc. v. Rainbow Rewards, S.D. Fla.).
  • Represented defendant in a patent infringement lawsuit involving QR code technology (Marshall Feature Recognition, LLC v. Wm. Wrigley Jr. Company, E.D. Tex.)
  • Represented defendant in a patent infringement lawsuit involving registered card technology (Rewards Network Inc. v. Zavee, S.D. Fla.).
  • Represented defendant in a patent infringement lawsuit involving registered card technology (Rewards Network Inc. v. Thanks Again, LLC, N.D. Ill.).
  • Represented defendant in patent infringement lawsuit regarding ticket option technology (Smart Options, LLC v. Ticket2Final, Ltd. et al, W.D. Wis.).
  • Represented defendant in a patent infringement lawsuit involving shipment tracking technology (Eclipse IP LLC v. Acushnet Company,E.D. Tex.).
  • Represented defendant in a patent infringement lawsuit involving product recommendation technology (Pinpoint Incorporated v. Staples, Inc., N.D. Ill.).
  • Represented patent owner in patent infringement lawsuit regarding overhead shelving (One-O-Nine Investments vs. Knape and Vogt Manufacturing Company, D. Az.).
  • Represented defendant in a patent infringement lawsuit involving e-book systems (Innovative Automation, LLC v. Vital Source Technologies, E.D. Tex.)
  • Represented defendant in lawsuit involving shipment tracking technology (Eclipse IP LLC v. Cobra Electronics, N.D. Ill).
  • Representing defendant in lawsuit involving digital coupon system (Advanced Marketing Systems v. Hy-Vee, Inc., W.D. Wis.).
  • Represented defendant in a patent infringement lawsuit involving shipment tracking technology (Eclipse IP LLC v. CSX Corporation, N.D. Ill).
  • Represented defendant in a patent infringement lawsuit involving e-book reader (Innovative Automation, LLC v. Kobo, Inc, E.D. Tex.).
  • Representing defendant in patent infringement lawsuit regarding emergency notification system(911 Notify, LLC v. BSM Wireless Inc.,D. Del.)
  • Representing patent owner in patent infringement lawsuit regarding overhead shelving (Eagle Industrial Group vs. Knape and Vogt Manufacturing Company, C.D. Cal.).

  • Lead counsel representing Internet Employment Linkage d/b/a HigherEdJobs defending its trademarks against various entities, including UDRP actions and TTAB proceedings.
  • Represented plaintiff in a trademark infringement lawsuit involving pneumonic telephone number (Mountain Marketing Group, LLC v. Heimerl & Lammers, LLC, W.D. Wis.).
  • Lead counsel representing Meyer entities defending against a trademark involving the color green on the inside of a cooking pan (Meyer v. Telebrands, E.D. Cal.).
  • Represented plaintiff in a trademark infringement and dilution lawsuit (Caymus Vineyards v. Caymus Corporation et al., D. Az.)
  • Representing plaintiff in a trademark and copyright infringement lawsuit (Cervezas Cuauhtémoc Moctezuma SA de CV v. KCI, Inc. et al., D. N.J.).
  • Representing defendant in trademark infringement lawsuit (DM Luxury, LLC v. Celebrity Cruises, Inc., N.D. Ill.).
  • Represented defendant in trademark infringement lawsuit (Craft Distillers, Inc. v. American Craft Distillers’ Association, Inc., N.D. Cal.).

  • Representing defendant in trade dress infringement lawsuit regarding housewares (Bodum USA, Inc. v. Lifetime Brands, Inc. et al, N.D. Ill.).

Credentials

Education
  • Georgetown University Law Center, J.D., cum laude
  • University of Michigan, B.S.E., Aerospace Engineering, magna cum laude
Bar Admissions/Licenses
  • California
  • Illinois
  • Michigan
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. Court of Appeals for the Sixth Circuit
  • U.S. District Court for the Central District of California
  • U.S. District Court for the Eastern District of California
  • U.S. District Court for the Northern District of Illinois
  • U.S. District Court for the Southern District of Illinois
  • U.S. District Court for the Central District of Illinois
  • U.S. District Court for the Western District of Michigan
  • U.S. District Court for the Eastern District of Texas
  • U.S. District Court for the Western District of Wisconsin
  • U.S. Supreme Court
Memberships
  • PTAB Bar Association
  • Federal Bar Association
  • Law360 Intellectual Property Editorial Advisory Board, 2018, 2019 
  • University of Michigan Aerospace Engineering Alumni Association, Board Member
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, 2014-2019
  • IAM Patent 1000, the World’s Leading Patent Professionals - Litigation, International Asset Management magazine, 2014-2019
  • 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

Publications

Speaking Engagements

News