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David L. Cavanaugh

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Chair, Post-Grant Patent Proceedings Group

Cavanaugh, David L.

David Cavanaugh has broad legal experience in industry and private practice and provides clients with strategic, business-focused counseling in the procurement, management and exploitation of their intellectual property. He has extensive experience in all aspects of intellectual property practice, including IP litigation, patent procurement, technology transfer and licensing, and due diligence for corporate transactions. Mr. Cavanaugh has developed and implemented intellectual property strategies suited for companies at all stages, from early startup phase to established business phase.

Since the implementation of the America Invents Act, Mr. Cavanaugh has been active in post-grant proceedings at the US Patent Office and was recently named by Patexia as one of the top five most active attorneys in inter partes review (IPR). He has filed petitions and represented patent owners in a variety of technologies and has been lead counsel or counsel of record on more than 120 inter partes review proceedings (IPR). As lead counsel he has presented at more than a dozen oral hearings at the Patent Trial and Appeal Board (PTAB). He has also developed strategies for using IPRs as a vehicle toward settlement of related district court cases as well as developed strategies for joinder of parties. Mr. Cavanaugh has also represented patent owners in IPR proceedings and developed successful IPR strategies for patent owners. 

Along with inter partes reviews, Mr. Cavanaugh routinely develops strategies for other post-grant proceedings such as ex parte reexaminations and reissues. He has extensive experience in inter partes reexamination and interferences. These procedures can be used to develop comprehensive strategies using all the procedures the Patent Office provides. 

Mr. Cavanaugh is a sought-after speaker in the area of post-grant proceedings and specifically IPRs. He developed the post-grant class and curriculum for American University where he teaches patent litigation in the Spring semester and post-grant proceedings in the Summer session. 

Prior to joining the firm, Mr. Cavanaugh was a senior patent counsel in the legal department of Boston Scientific Corporation, responsible for the intellectual property matters in the radiology, neurology, urology and endoscopy divisions. Prior to his work with Boston Scientific, Mr. Cavanaugh was associated with Wolf, Greenfield and Sacks in Boston, where he provided patent support to a variety of medical device clients. Mr. Cavanaugh also has been a patent examiner at the United States Patent Office, where he examined patent applications in a variety of technologies.

Mr. Cavanaugh received a JD from George Washington University, where he was selected to study at the Max-Plank-Institute for Comparative Patent Law in Munich. He earned his JCL at the Catholic University of America, his master's degree at Washington Theological Union and his bachelor's degree in mechanical engineering at Villanova University. He is a member of the Pi Tau Sigma National Mechanical Engineering Honor Society.

Honors & Awards

Publications & News

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November 17, 2017

Remands From the Federal Circuit Back to the Patent Trial and Appeal Board: Are They a “Redo” or Something More Limited?

The Court of Appeals for the Federal Circuit, the reviewing court for the decisions issued by the Patent Trial and Appeal Board, has handled over 1,000 appeals from the Board on patent trials authorized by the America Invents Act.

July 24, 2017

WilmerHale Recognized in IAM Patent 1000 2017

The firm and several of its partners are ranked in IAM Patent 1000 2017 – The World's Leading Patent Professionals.

June 9, 2017

The Legal 500 United States 2017 Recognizes 125 WilmerHale Lawyers Across 28 Practice Areas

The Legal 500 United States has released its 2017 rankings, recommending 125 WilmerHale lawyers—including 12 who are named to its elite “Leading Lawyers” list and two on its “Next Generation Lawyers” list—and 28 practice areas in its 11th edition.

June 8, 2017

WilmerHale Partners and Practices Named Among Managing Intellectual Property's 2017 IP Stars

IP Stars identifies lawyers based on their practice and industry experience, and recommendations from their peers and clients.

May 23, 2017

WilmerHale Earns Win for Unified Patents at PTAB

WilmerHale achieved a significant victory on behalf of Unified Patents Inc. when the Patent Trial and Appeal Board issued its final written decision in Unified Patents Inc. v. American Vehicular Sciences, LLC, holding unpatentable all challenged claims of US Patent [No.] 9,043,093.

May 9, 2017

WilmerHale Helps Unified Patents Earn Win at PTAB Against Nonend Inventions

The Patent Trial and Appeal Board issued a final written decision in Unified Patents Inc. v. Nonend Inventions, NV, invalidating all claims of US Patent 8,090,862, owned and asserted by Nonend Inventions, NV.

March 2, 2017

WilmerHale Recognized for Most Federal Circuit Wins in Law360 2016 Patent Litigation Special Report

WilmerHale's dominance in the Federal Circuit in 2016, resulting in 14 wins—the most for any law firm—was highlighted in Law360's Patent Litigation Special Report released on March 1, 2017.

January 20, 2017

Practice Tips for Presenting and Responding to Motivation-to-Combine Arguments in IPR Proceedings

David Cavanaugh, Joshua Stern and Kevin Yurkerwich, in this article published by Bloomberg BNA's Patent, Trademark & Copyright Journal, provide an overview of recent PTAB decisions denying institution of inter partes review and share practice tips for practitioners to follow.

June 22, 2016

The Legal 500 United States 2016 Recognizes 111 WilmerHale Lawyers Across 30 Practice Areas

The guide's rankings are based on a series of criteria, including client feedback, interviews with private practice lawyers, and its own research.

May 17, 2016

WilmerHale Attorneys and Practices Recognized in 2016 edition of IP Stars Handbook

The fourth edition of the IP Stars Handbook—a Managing IP guide that identifies the leading IP firms and lawyers in the world—has been released and it prominently ranks WilmerHale and 19 of its partners.

Recent Highlights

PTAB Proceedings:

  • Successfully invalidated all challenged claims for two Inter Partes Review proceedings (IPRs) before the US Patent Office's Patent Trial and Appeal Board (Board) for Permobil, a company that designs and manufactures wheelchairs. The Board issued Final Written Decisions declaring unpatentable all challenged claims of US Patent No. 8,408,343 (the '343 patent) and US Pat. No. 8,408,598 (the '598 patent).
  • Developed successful strategy to prepare and file 27 IPRs for a major semiconductor manufacturer for which the PTO instituted IPR trials and led to an early and favorable settlement of a related litigation. The technology involved plasma etching and sputtering used in semiconductor wafer manufacture.
  • Successfully invalidated all challenged claims in an IPR for Becton Dickinson & Company. The Board issued a Final Written Decision declaring unpatentable all challenged claims of US Patent No. 5,704,914 (the '914 patent). A settlement was reached on very favorable terms our client for the related district court case.
  • Developed successful strategy using IPRs to achieve a victory for Smith & Nephew in a district court litigation filed by Bonutti Skeletal Innovations, LLC which asserted six patents that cover joint repair techniques. Two IPRs were terminated soon after filing the IPR petition due to settlement on the issues related to those patents, three were terminated because the patent owner disclaimed the challenged claims and Smith & Nephew achieved a very favorable result in the sixth IPR. The remainder of the case settled on favorable terms to Smith & Nephew after the final written decision on the IPR for the sixth patent. 
  • Counsel of record for an IPR filed against US Patent number 6,331,415, (the Cabilly '415 patent). The Cabilly '415 patent issued in 2001 and was filed in 1983 and has been through extended prosecution, an interference, two reexamination proceedings (which were merged) and extensive litigation. The patented technology relates to the production of monoclonal antibodies.
  • Selected to be Counsel for Unified Patent Counsel for strategic post-grant activities. Unified Patents reached out to WilmerHale because their research showed that WilmerHale was the largest, most successful firm for getting grounds of unpatentability instituted at the Patent Trial and Appeal Board. 

Patent Portfolio Development:

  • Selected to develop patent portfolio by TransMedics—a Massachusetts-based medical device company created to address the need for more effective organ transplant technologies—since 2004, when the company sought corporate, litigation and IP advice. The company has developed the first commercial, portable warm blood perfusion system, or Organ Care System (OCS), which allows surgeons to reanimate hearts from people who have recently died. The portfolio includes both US and worldwide patent applications. 
  • Selected to develop patent portfolio by SevenOaks Biosystems (SevenOaks) and Massachusetts General Hospital (MGH) in the field of tissue grafting. The portfolio includes applications licensed to SevenOaks by MGH and technology developed by SevenOaks.  
  • Selected to be on the Patent Advisory Council for LaVit Life, a company which develops beverage dispensers for residential use. The Advisory Council aligns existing product development and the developing US and worldwide patent portfolio.

Professional Activities

Mr. Cavanaugh is a member of the Federal Circuit Bar Association Bench and Bar. He served on the Board of Directors of the Massachusetts Medical Device Industry Council (MassMEDIC) for six years. He was recently selected by the Massachusetts Life Sciences Center to serve as a peer reviewer for its Small Business Matching Grant (SBMG) Program, which promotes the life sciences within the Commonwealth of Massachusetts. In the recent past he has been a Board member of the New England Business and Technology Association. He has been a frequent guest lecturer at New England College of Law about patent law related topics.
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