Leading Gould & Ratner's Intellectual Property Group, David Newman focuses his practice in the areas of patents, trademarks, copyrights and trade secrets. His broad practice includes experience with IP litigation, preparing and prosecuting patents and trademarks, and opinion work relating to infringement/ non-infringement and validity/invalidity.

David serves Fortune 500 companies, mid-size companies and start-ups including clients in a wide variety of industries, including computers, consumer goods, electronics, mechanical devices, medical devices and telecommunications, and financial services and securities trading systems. He has handled numerous litigation matters involving:

  • U.S. and foreign patents
  • business methods
  • consumer fraud
  • unfair trade practices
  • copyrights
  • domain names
  • patent infringement
  • trade dress
  • trade secrets
  • trademarks
  • antitrust
  • breach of contract
  • false marking claims
  • IP mediations
  • arbitration disputes, including cases using the American Arbitration Association's Commercial Arbitration Rules

David has been involved in all aspects of practice before the U.S. Patent and Trademark Office, particularly proceedings at the Patent Trial and Appeals Board (PTAB), as well as appeals, reissues and reexamination proceedings.

Drawing upon his technical background, David has worked on IP matters involving technologies such as big data storage systems, cloud services, financial services and securities trading systems, high frequency trading, email, internet encryption systems, eCommerce technology, internet mapping systems, internet server systems, mp3 compression, gaming technology, HVAC controllers, low-latency point-to-point communication systems, microwave transmission systems, semiconductor testing systems, charger plug adapters for cell phones, pixel imaging systems, article-writing software, luggage-locking and security systems, optoelectronics, fiber optics, optical connectors, cable assemblies, semiconductor lasers, small form factor transceivers and adapters, electromagnetic shielding, wave division multiplexing (WDM) systems, electrical connectors, torque sensors, semiconductor chip sockets, PC cards, position sensors, electrical cables, ethernet communication devices, buss bars, differential signal terminators, automotive safety systems, microwave transmission controllers, LED bulbs and power distribution units.

David is very active in the both legal and civic organizations, including serving as:

  • Chair of the Alternative Dispute Resolution Committee of the IP Section of the American Bar Association
  • Co-chair of the ABA's Standard Essential Patent Arbitration Proposal (ASAP) Committee
  • Member, Licensing Executives Society International, Standard Licensing Agreements Committee and Standards Committee
  • Chair and Commissioner for Ravinia Festival Community Relations Commission, Highland Park, IL.
  • Executive Board of the Center for Creativity at the DePaul University Driehaus College of Business
  • Member, International Commission on Patent Disputes for the International Institute for Conflict Prevention and Resolution (CPR)
  • Vice-Chair of the Alternative Dispute Resolution Committee, Intellectual Property Law Association of Chicago

In addition, David has taught courses involving claim drafting for patent applications and is a periodic guest lecturer on intellectual property topics at the DePaul University Driehaus College of Business and presenting mediation and arbitration topics for World Intellectual Property Organization (WIPO) seminars.

David is a frequent author and authority on several IP topics, contributing chapters in several books such as The Cambridge Handbook of Technical Standardization Law - Competition, Antitrust, and Patents, as well as authoring Patent Neutral: Expanding Use of ADR for Settlement of Patent Disputes at the PTAB. 

David has been recognized by Illinois Super Lawyers in the areas of Copyright & Trademark Law, Intellectual Property Law, Patent Law and Trade Secrets/Unfair Competition Law for 2017.

Credentials

Education

  • DePaul University College of Law, J.D., 1992
  • Ohio State University, B.S., 1986

Bar Admissions

  • Illinois

Court Admissions

  • U.S. Patent and Trademark Office

Affiliations

  • American Bar Association
    – Chair, Alternative Dispute Committee, Intellectual Property Section
    – Founder and Co-Chair, ABA Standard Essential Patent Arbitration Proposal (ASAP) Committee
    – Former Continuing Legal Education Board Member and Division VI Liaison
  • American Intellectual Property Law Association
  • Intellectual Property Law Association of Chicago
    – Vice-Chair of the Alternative Dispute Resolution Committee
  • International Commission on Patent Disputes for the International Institute for Conflict Prevention and Resolution (CPR)
  • Licensing Executives Society International
    – Standard Licensing Agreements Committee
  • Ravinia Festival Commission
    – Commissioner and Chair, City of Highland Park, Illinois

Key Cases or Transactions

  • Mellanox Technologies, Inc. v. Methode Electronics, Inc. (represented defendant in patent infringement suit involving quad small form factor pluggable (QSFP+) transceiver and adapaters)
  • LDG Corp. v. CableOrganizer.com, LLC (represented defendant in trademark infringement matter involving stansions for facilitating control of persons waiting in queue)
  • Pantaurus LLC v. Hulu LLC (represent defendant in patent infringement suit involving big data storage system)
  • Transunion LLC v. Search America, Inc./Experian (represent party in patent infringement suit involving electronic hospital intake and financing system)
  • RD Jones, Stop Experts, Inc. v. Carmanah Technologies, Inc. (represent party in patent infringement suit involving LED flashing beacon safety equipment)
  • Chicagoland Aviation v. Chicago Premier Boat Rental et al. (represent party in unfair competition and trademark suit; obtained TRO March 2012)
  • Marvelous Day Electronic Co. Ltd. v. Holiday Bright Lights, Inc. (represent party in design patent, false marking, unfair competition suit involving electronic string lighting system)
  • Constellation, LLC v. Allstate, Inc. (represented defendant in case that was closed after patent found invalid by USPTO for patent relating to web page presentations)
  • University of Central Florida Board of Trustees et al. v. Emerson Climate Tech. et al. (settled favorably for client; patent litigation involving HVAC controllers)
  • TQP Development, LLC v. Merrill Lynch & Co. Inc., et al. (settled favorably for client; involving encryption technology for secure online transactions)
  • Parallel Networks v. Netflix, Inc. et al. (settled favorably for client following successful Claim Construction hearing; involving web server transmission systems)
  • DUSA Pharmaceuticals, Inc. v. Photo Therapeutics, Ltd. (settled favorable for client; plaintiff dismissed suit without payment and client continued to use its photodynamic treatment system)
  • Ventrassist PTY Ltd. v. HeartWare, Inc. (settled favorably for client; plaintiff licensed its patents for Ventricular Assist Devices)
  • Angel Sales, Inc. v. Hollywood Gadgets, Inc. (patent, copyright and trademark infringement action settled successfully for client; defendant agreed to withdraw all accused products and pay damages)
  • Toy v. E*TRADE Group, Inc. (following favorable decision by CAFC the patent infringement case involving e-commerce products was settled favorably for client)
  • W. Enterprises Inc. v. Quality Products, Inc. (settled favorably for client; accused patent infringer stopped selling telecommunications accessory product)
  • Raven Products Inc. v. Mansfield Plumbing Inc. (settled favorably for client; accused patent infringer stopped selling plumbing product)
  • World Kitchen LLC v. MIU France/Kitchen Basics, Inc. (settled favorably for client; accused patent infringer stopped selling kitchen products)
  • Stratos Lightwave LLC v. Infineon, Inc. (settled favorably for client; party took license under client’s patents for optoelectronic transceiver modules)
  • Ayala v. United Health Group, Inc. (settled trademark, breach of contract case favorably for client involving health services)
  • Stratos Lightwave LLC v. E20, Inc. (settled favorably for client; party took license under client’s patents for optoelectronic transceiver modules)
  • Stratos Lightwave LLC v. Finisar, Inc. (settled favorably for client; party took license under client’s patents for optoelectronic transceiver modules)
  • Stratos Lightwave LLC v. OCP, Inc. (settled favorably for client; party took license under client’s patents for optoelectronic transceiver modules)