Patent Law Practice Center

R. David Donoghue

Holland & Knight

R. David Donoghue is a trial attorney and a partner in Holland & Knight’s Intellectual Property Group focusing upon intellectual property litigation and particularly upon patent disputes. Mr. Donoghue’s most recent trial experience includes a successful jury verdict, including a finding of willfulness, a full trebling of damages and a full award of attorney’s fees in the Northern District of Illinois.

Mr. Donoghue was previously with Delphi, the world’s largest automotive supplier, where he was a founding member of Delphi’s Technology Licensing and Litigation Group and handled substantial international intellectual property litigation and licensing matters. His practice spans diverse technology areas, including cellular telephony, computer software, internet technologies, pharmaceuticals, automotive technologies, electrical technologies, television production equipment, nutritional supplements and numerous medical devices.

Mr. Donoghue is also the founder and author of the Chicago IP Litigation blog (www.chicagoiplitigation.com) where he tracks intellectual property litigation in Chicago.  Mr. Donoghue served as an adjunct professor at the Loyola University Chicago School of Law, teaching legal research and writing and intellectual property courses. At the beginning of his legal career, Mr. Donoghue served as a law clerk to The Honorable Gordon J. Quist, federal district judge for the Western District of Michigan.

Clement S. Roberts

Durie Tangri

Clement Roberts’ practice focuses on intellectual property litigation and on complex commercial cases with a high-technology component. He has successfully tried a wide variety of civil and criminal cases to verdict in state and federal court and in arbitration, including more than a half-dozen jury trials as first chair.

Clem has litigated many highly technical cases in district courts throughout the United States. He has litigated patents involving computer architecture, software, operating systems, semiconductor manufacturing, networking, electronic commerce and protein formation, among others.

Clem’s approach to litigation is focused on efficiency and customer service. He believes that the best litigation strategies reflect the client’s specific business problems, and that winning requires a relentless focus on the facts and arguments most likely to persuade the decision maker.

Prior to founding Durie Tangri, Clem was a partner at San Francisco’s Keker & Van Nest, which he joined in 2001 after working as an associate at Morrison & Foerster. Clem graduated with honors from both Harvard Law School and Harvard College and was named a rising star in IP litigation by Superlawyers magazine in 2009.

Michael A. Davitz

Axinn, Veltrop & Harkrider LLP

Michael A. Davitz is a partner in the firm’s Intellectual Property and Biomedical Practice Groups, where his practice focuses on creating value for clients through the development and effective enforcement of intellectual property rights.  He is a registered U.S. patent attorney as well as a physician with over 15 years of experience in biomedical research, and more than ten years of experience providing strategic counseling to clients in all aspects of intellectual property law.

Dr. Davitz has extensive experience negotiating and drafting licensing, technology transfer and research-and-development agreements.  In the pharmaceutical industry, he has negotiated and drafted numerous types of agreements, including licensing, risk-sharing, joint development, product acquisition and supply agreements.  Michael has also conducted intellectual property due diligence for joint ventures, mergers, acquisitions, bankruptcy proceedings and venture capital funding.  For a multinational company, he developed a series of intra-company intellectual property cross-licensing agreements that permitted transfer of technology and products among the various subsidiaries in a tax-efficient manner.

Dr. Davitz has prosecuted patents in a wide variety of different technologies, including (i) pharmaceuticals, both generic and innovator, (ii) medical devices such as stents, needles and laboratory instrumentation, (iii) biotechnology, specifically involving monoclonal antibodies and genetically transformed organisms and (iv) information technology, for example, linguistic search engines, Internet business methods and genomics.  Michael has broad international experience with securing intellectual property protection in Europe, South America, the Middle East, Asia and Canada.  In addition, he has experience with European patent and trademark oppositions.  He also has provided patentability, freedom-to-operate, non-infringement and invalidity opinions.

He has specific expertise with Hatch-Waxman issues involving the evaluation and development of design-around strategies for generic pharmaceutical products, product portfolio evaluation, Orange Book patent listings, PIV litigation strategies and the negotiation of settlement agreements between innovator and generic companies and between generic companies.

Dale Lazar

DLA Piper

Dale Lazar counsels on intellectual property matters concerning a variety of technologies. He concentrates his practice in patenting electronic technology, patenting and copyrighting computer hardware and software, litigating patents and copyrights, negotiating and drafting licenses for patents and software and preparing software-related agreements. Mr. Lazar has also been involved in analyzing electronic and computer-related patents and copyright for infringement and validity.

Mr. Lazar teaches patent law at George Mason University Law School and writes and lectures extensively on patent prosecution and litigation for the Patent Resources Group. He taught “Designing around Valid US Patents” from 1993 to 1999; “Electronics and Software Patent Copyright Practice” in 1998; “Advanced Patent Prosecution” from 1979 to 1998; and has taught “Crafting and Drafting Winning Patents” since 1999 and the Patent Bar review course since 1984. He also has lectured to groups around the world on topics related to US patent law and has authored a number of papers on patent subjects.

The respected English publisher Chambers & Partners cites him in Chambers USA: America’s Leading Lawyers for Business. Legal 500 cites him for his patent litigation practice. Mr. Lazar is listed in three Marquis publications, Who’s Who in American Law, Who’s Who in America, and Who’s Who in the World, and he has been named both a Virginia Super Lawyer and a Washington, DC Super Lawyer in the area of Intellectual Property.

Gerald M. Murphy

Birch, Stewart, Kolasch & Birch, LLP

Gerald M. Murphy, Jr. is a partner at Birch, Stewart, Kolasch & Birch, LLP.  In his more than 30 years in the IP field, he has prosecuted thousands of patent applications and handled a number of reexaminations, reissue applications and appeals in the USPTO.  He has also personally participated in over 30 patent interferences.  Most of his work has involved representing clients in the fields of biotechnology, chemistry, and pharmaceuticals, including related FDA and patent term adjustment (PTA) issues, including successfully obtaining an additional 600 days of PTA for a pharmaceutical patent by filing a civil action in U. S. District Court.

Mr. Murphy has counseled clients and prepared numerous opinions analyzing patent validity and infringement issues, managed worldwide patent portfolios, and prepared and presented numerous seminars before international audiences regarding U.S. patent statutory law and case law developments. He served as the sole arbitrator in two arbitrations involving patent and licensing issues in the fields of DNA diagnostics and therapeutic monoclonal antibodies and has served as an expert witness in a patent infringement litigation and in an arbitration.

Mr. Murphy has written and lectured throughout the U.S. and abroad on such topics as reissue and reexamination strategies, patent infringement and prosecution and interpretation of pharmaceutical and biotechnology patents.  He is a regular lecturer for PLI at annual Patent Law Institute on Pharmaceutical and Biotechnology Patents.  He is also the managing partner of BSKB’s month long Summer Patent Seminar, an introductory course on the U.S. patent system that has been held annually for over 30 years.