David Newman

David Newman is an accomplished intellectual property attorney, currently focusing his practice on patent and trademark procurement, branding, licensing and intellectual property litigation and dispute resolution. Drawing upon his technical background and years of experience, David has procured patents for clients in technologies such as big data storage systems, cloud services, artificial intelligence, financial services, encryption, e-commerce, gaming, wireless communications and optoelectronics. 

David’s experience extends well beyond patent and trademark procurement. He has previously served as litigation counsel for numerous clients as both plaintiff and defendant in patent and other intellectual property disputes. (List of representative cases is provided below). David leverages his litigation experience to provide clients with meaningful counsel on how they can best procure and use intellectual property. 

In his distinguished career, David has been recognized by the American Law Journal and by former USPTO Director, Michelle Lee for his contributions in educating PTAB judges and executives on legal issues that are expected to impact USPTO policies in the coming years. He has previously been honored as an  Illinois Super Lawyer in the areas of Copyright & Trademark Law, Intellectual Property Law, Patent Law and Trade Secrets/Unfair Competition Law. David has also authored and co-authored numerous books and publications on patent law and dispute resolution. He is a frequent guest lecturer at DePaul University Kellstadt School of Business, a course instructor for patent claim drafting, and he has been a presenter at numerous World Intellectual Property Organization (WIPO) seminars. He is also Chair and Co-Chair of two ABA alternative dispute resolution committees, as well as an active participant in a standards committee and several other professional organizations. 

Prior to joining Mahamedi IP Law LLP, David was the Partner and Chair of the Intellectual Property Practice at Gould & Ratner LLP.  He is a graduate of DePaul University College of Law, J.D., and he earned his B.S. from Ohio State University.

David is admitted to practice in the state of Illinois and is registered to practice before the United States Patent and Trademark Office. 

Representative Cases:

  • Mellanox Technologies, Inc. v. Methode Electronics, Inc. (represented defendant in patent infringement suit involving quad small form factor pluggable (QSFP+) transceiver and adapters)

  • 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)

 

Publications

 

 

Professional Organizations

  • 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