Cavanaugh, David L.

David L. Cavanaugh

Cavanaugh, David L.

David L. Cavanaugh

Partner

  • Chair, Post-Grant Patent Proceedings Group

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.

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.

Experience

  • PTAB Proceedings

    • Achieved a significant victory for Unified Patents, Inc. when the PTAB held that a SportBrain Holdings LLC patent for fitness tracker technology was obvious, invalidating a patent that dozens of companies have been accused of infringing. The patent has been asserted in more than 140 cases, and more than a dozen of those were pending at the time of the board's decision.
    • Successfully invalidated all 371 claims of 10 patents asserted against a major consumer products company in one of the largest IPR proceedings ever brought, thereafter affirmed by the Federal Circuit on all issues. Prior to obtaining a stay of the underlying district court action, also obtained summary judgment of noninfringement of all of the client's commercial products.
    • Led a significant victory on behalf of Unified Patents, Inc. when the PTAB issued a final written decision invalidating all claims of US Patent 8,090,862, owned and asserted by Nonend Inventions, NV. The '862 Patent, which relates to streaming content over a network, has been asserted in multiple district court cases against a wide range of networking and consumer electronics companies. 
    • Obtained a significant victory for a Fortune 500 technology company when the Federal Circuit held that three patent claims that we had challenged in an IPR adverse to an acoustics company were unpatentable. The patents related to speaker designs that the acoustics company accused our client of infringing. 
    • 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).
    • 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.
  • 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.

Recognition

  • Named a Leading Lawyer in the 2016 and 2017 editions of The Legal 500 United States for intellectual property: patents: prosecution and is recommended for healthcare: life sciences
  • Named a 2014-2017 leading practitioner in patent law by IAM Patent 1000: The World's Leading Patent Practitioners, which recognizes his "technical and presentation abilities in a slew of PTAB oral hearings."
  • Selected as a 2016-2018 IP Star and named to Managing IP's 2015-2018 shortlist as the US PTAB Practitioner of the Year
  • Recognized as a Washington DC leader in the intellectual property field in the 2008-2013 and 2018 editions of Chambers USA: America's Leading Lawyers for Business
  • Selected to the 2013-2018 Washington DC Super Lawyers list for his intellectual property practice
  • Recognized as the 2018 Intellectual Property Lawyer of the Year by Finance Monthly

Insights & News

Credentials

  • Education

    • JCL, Catholic University of America, 2016

    • JD, George Washington University Law School, 1994

    • MA, Washington Theological Union, 1989

    • BME, Villanova University, 1986

  • Admissions

    • District of Columbia

    • Maryland

    • Massachusetts

    • United States Patent and Trademark Office

Credentials