People

David L. Cavanaugh

Partner

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 is active in post-grant proceedings at the US Patent Office where 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 80 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

  • Named a Leading Lawyer in the 2016 edition of The Legal 500 United States for intellectual property: patents: prosecution and is recommended for healthcare: life sciences
  • Selected as a 2016 IP Star and named to Managing IP's 2015 shortlist as the US PTAB Practitioner of the Year
  • Recognized as a Washington DC leader in the intellectual property field in the 2008-2013 editions of Chambers USA: America's Leading Lawyers for Business
  • Named a 2014 and 2015 leading practitioner in patent law by IAM Patent 1000: The World's Leading Patent Practitioners
  • Selected to the 2013-2016 Washington DC Super Lawyers list for his intellectual property practice

Publications & News

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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 United States—has been released and it prominently ranks WilmerHale and 19 of its partners.

April 15, 2016

Strategic Considerations of Estoppel for IPRs After Shaw Industries Group v. Automated Creel Systems

In this article published in Bloomberg BNA's Patent, Trademark & Copyright Journal, David Cavanaugh and John Polley discuss how the Federal Circuit's recent opinion in Shaw Industries Group v. Automated Creel Systems may have important implications for the decision to pursue an IPR proceeding.

April 13, 2016

Precedent, Persuasion, and the PTAB

In this article published by the ABA's Landslide Magazine in its March/April 2016 edition, David Cavanaugh and Chief Patent Counsel of United Patents Inc. Jonathan Stroud explore the precedential value of PTAB decisions and how they might bind the PTAB and others in subsequent matters.

April 7, 2016

Amendments to the Rules of Practice for Trials Before the PTAB Take Effect May 2, 2016

The US Patent and Trademark Office has announced amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board that will take effect on May 2, 2016. The amendments generally adopt the rules proposed by the Patent Office on August 20, 2015, but the final rules have several differences of potential importance.

February 19, 2016

Printed Publications at the PTO

David Cavanaugh and Anant Saraswat explore how the implementation of the America Invents Act has led to an increase in inter partes review proceedings at the PTAB as a way to challenge the validity of a patent in this article published in Bloomberg BNA's Patent, Trademark & Copyright Journal.

February 11, 2016

PTAB's Skyrocketing Petition Rate Starts To Stabilize

David Cavanaugh, Chair of WilmerHale's Post Grant Patent Proceedings Group, discusses trends at the PTAB with Law360 in an article published on February 11, 2016.

January 15, 2016

Settling IPRs and District Court Litigation: Strategic Considerations for Resolving a Dispute

Inter partes review proceedings have become a popular mechanism for defendants to challenge the validity of a patent that is asserted in a district court litigation.

October 16, 2015

Identification of Cases in Comments to Proposed Rule Change Is Consistent With Prior Guidance in PTAB Practice Guide

An article by David Cavanaugh, published in the October 16, 2015 issue of BNA's Patent, Trademark & Copyright Journal.

September 4, 2015

PTAB's Estoppel Rules Lack Teeth, Lawyers Grumble

Post-Grant Patent Proceedings Group Chair David Cavanaugh is quoted in this September 4, 2015 article by The Recorder that discusses PTAB estoppel rules.

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.

Practices

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Education

JCL, Catholic University of America, 2016

JD, George Washington University Law School, 1994

MA, Washington Theological Union, 1989

BME, Villanova University, 1986

Bar Admissions

District of Columbia

Massachusetts

United States Patent and Trademark Office

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