David M. Tennant
David leads the Patent Office Practice in the Firm’s Washington, DC office. His background in electrical engineering gives him an unusually clear understanding of the highly technical concepts and products he helps to patent as well as challenge in post-grant proceedings, in such areas as software, computer servers, network routers, microprocessors, semiconductor processes, semiconductor devices, image sensors, circuits, consumer electronics and mobile products and services.
David has a successful track record of protecting and challenging patents in post-grant proceedings implemented under the America Invents Act (AIA). In such proceedings, clients benefit from his experience in both litigating complex patent cases in district courts and the International Trade Commission and procuring patents.
In patent procurement matters, David has extensive experience drafting and prosecuting patent applications. He understands how to leverage his patent litigation experience in order to obtain patents of utmost quality. In addition, clients turn to him for his guidance on establishing, developing, maintaining and leveraging their patent portfolios to maximize value.
David brings knowledge and insight to transactional matters, including patent licensing negotiations, technology agreement negotiations and service provider agreement negotiations. He also provides advice on patent invalidity, enforceability and infringement studies.
David is a frequent lecturer on all aspects of intellectual property protection. International in experience and outlook, he has spent extended periods of time working abroad with a Japanese client, and has served as in-house counsel for a leading Japan-based international consumer electronics manufacturer.
Lead counsel in 27 IPR filings on behalf of GlobalFoundries, petitioner
David successfully represented petitioner GlobalFoundries in 27 IPR proceedings challenging the validity of 275 claims of seven patents. Final decisions in all proceedings held all claims unpatentable.
Lead counsel in 3 CBM filings on behalf of American Express, petitioner
David successfully represented American Express Company and American Express Travel Related Services Company, Inc. in 3 CBM filings challenging the validity of three patents. The USPTO instituted trials on all challenged claims. American Express's claims were terminated following settlement in the client's favor.
Lead counsel on IPR filing for TPK Touch Solutions, patent owner
David successfully defended patent owner TPK Touch Solutions in a validity challenge of US Patent No. 8,283,935, IPR case no. 2014-00141. TPK achieved an early victory with the USPTO denying institution of trial.
Patent infringement on scripting technology
David represented a software technology company in a patent infringement case in the District Court for the Southern District of New York. The infringement related to website and server-side scripting technologies.
LCD and semiconductor memory technology infringement
Representing technology companies in patent infringement cases in the District Court of Delaware, David acted on claims relating to liquid crystal display (LCD) and semiconductor memory technologies.
Infringements on semiconductor processes, devices and microprocessors
David represented technology companies in patent infringement cases before the International Trade Commission, relating to semiconductor processes, devices and microprocessors.
Digital cameras, image sensors and website security patent infringements
David represented technology companies in a patent infringement case in the Northern District of California, relating to digital cameras, image sensors and website security.
Patent infringement on highly scalable servers
David advised a technology company on a patent infringement case in the Eastern District of Texas, Tyler Division, which related to cache coherency for highly scalable servers.
Semiconductor and consumer electronics product patent infringement
Representing a technology company, David advised on a patent infringement case in the Eastern District of Texas, Marshall Division, involving technology relating to semiconductors and consumer electronics products.
Semiconductor memory, circuit and manufacturing infringement
David represented a technology company in a patent infringement case in the Eastern District of Texas, Tyler Division. The case related to semiconductor memory, circuits and manufacturing technology.
"America Invents Act — Update on Post Issuance of Patents", April 12, 2012: International Association for the Protection of Intellectual Property (Japan), Tokyo, Japan
"America Invents Act — What Japanese Companies Need to Know", November 17, 2011: Fair Trade Center, Institute for International Trade and Investment, Tokyo, Japan
Supreme Court Hears Arguments on Business Method Claims — Will They Survive?, IT, Internet and Outsourcing Bulletin; North Carolina Bar Association's Corporate Counsel Section Section, Vol. 22, No. 2, December 2009; January 2010, (co-author with Monisha Deka)
Leading Practitioner, IAM Patent 1000: The World's Leading Patent Practitioners, 2012- 2015