David C. BohrerPartner

My Focus: Technology and Innovation Litigation; Complex Business Litigation

Education: Juris Doctor (J.D.), Northwestern University School of Law, Dean’s List, 1983; Bachelor of Arts (B.A.), Stanford University, Distinction, 1980

About Me: I am a Silicon Valley technology trial lawyer who has won trials, obtained significant money damages and injunctive relief, and secured favorable defense verdicts and rulings for my clients.  I focus my litigation practice on patent, trade secret, trademark, technology licensing disputes and other complex business litigation matters in federal and state courts, arbitrations and mediations across the country.

I have litigated IP matters across a spectrum of advanced technologies in the electrical, mechanical, and computer hardware and software fields.  These technologies include online consumer services, implantable medical devices, surgical instruments, system-on-chips, digital signal processing, integrated circuit fabrication and testing, semiconductor capital equipment, RF/microwave circuits, Bluetooth and Wi-Fi applications, PCB design and circuits, computer aided design, optics and reflexive imaging, networking infrastructure and website operation and e-Commerce applications, waterproof technologies for electronic devices, mini and micro focus low voltage x-ray tubes, and direct-to-consumer genetic testing technology.

Before coming to Greenfield, I was an equity partner in the IP litigation departments at several AmLaw 100 firms and flexed my entrepreneurial muscles as a partner and owner of Valorem Law Group, a disruptive law startup focused on offering fee arrangements that better aligned the economic interests of clients and their lawyers. I created the blog Flat Fee IP (FlatFeeIPblog.com) on which I continue to regularly post on alternatives to traditional hourly billing as well as current and future issues relevant to IP litigations.

Representative Matters:

  • Currently enforcing patented improvements to surgical instrument sterilization system against infringing competition.
  • Currently representing leading provider of CRM software for wireless Internet service providers in lawsuit asserting trade secret misappropriation, breach of fiduciary duties and related claims against departing employees, third parties aiding in their departure, and a competitor.
  • Successfully enforced patented technology on genetic testing for cellular age, including the successful resolution of patent infringement lawsuit in the District of Delaware. In response to the lawsuit, infringing competitor took down down its website and ceased all sales and distribution of all of its products and services.
  • Sucessfully defended developer of novel implantable medical device against claims of trade secret misappropriation.
  • Obtained a complete summary judgment victory in a medical device patent infringement case brought against my client, a $12 billion healthcare company. The case involved intrauterine pressure catheters and the successful result allowed my client to continue a flagship product line.
  • Defended developer of novel intragastric balloon technology against alleged infringement of competitor patents, including counseling on patent license options and obtaining favorable licensing and other settlement terms.
  • Successfully defended early stage developer of novel mini focus x-ray tube technology against allegations of insider IP theft and trade secret misappropriation by much larger more established competitor. Following aggressive refutation of all charges, all allegations were withdrawn.
  • Defended patent litigation brought against provider of online data storage and backup services.
  • Represented minority interest shareholders against controlling shareholders and directors challenging fraudulent transfer of online payment technology; defended motions for summary judgment and coordinated favorable global settlement including merger of transferor and transferee companies.
  • Represented leading manufacturer of Bluetooth headsets in patent infringement actions enforcing headset technology against competitors.
  • Defended multiple patent infringement actions across the country brought by non-practicing entities (NPEs) against major electronics retailer based on asserted infringement of different e-commerce applications.
  • Defended patent infringement action brought against leading online travel search site that challenged metasearch technology allowing persons to see and compare prices obtained by searching across other travel sites.
  • Defended developer of clean room technology and services against trade secret misappropriation and unfair competition lawsuit brought by prior employer and competitor.
  • Represented leading supplier of office products regarding unfair competition, false advertising, and trademark infringement by competitor, including Lanham Act causes of action and potential challenge brought before the National Advertising Division.
  • Represented plastic surgeon seeking recovery for online defamation by anonymous posters (believed to be sponsored by competing practices) on third-party patient review sites, including separate discovery action in California involving potential First Amendment challenges to obtaining identity of anonymous posters from third-party web sites.
  • Represented chip designer regarding RF/Microwave circuit design generally and RF/Microwave amplifier design specifically for wireless networking in defense of patent infringement and trade secret litigation. I leveraged a favorable settlement by aggressively disputing the alleged trade secrets, expediting the submission of technical expert reports, and filing a countervailing lawsuit. Not only were all claims dismissed with prejudice, but the client was able to continue sales of its flagship product and technology without change or restriction.
  • After a three-and-a-half-week patent infringement trial in the Northern District of California, the jury rendered a verdict in favor of my client, a major Japanese manufacturer of consumer electronics, finding that its three patents were valid and willfully infringed. The jury awarded lost profit and reasonable royalty damages in excess of $7 million. The trial court subsequently awarded $2 million in pre- and post-judgment interest and $4 million in attorneys’ fees and costs. The decision was affirmed by the Federal Circuit on appeal. On remand, the trial court increased the total award to over $20 million to account for successor liability claims deemed valid by the Federal Circuit.
  • My $7.4 million jury verdict obtained on behalf of a client-inventor in a patent infringement suit involving computer software claims was featured in The National Law Journal’s “Verdict of the Week.” On post-trial motions, the court not only upheld the verdict, but increased the award to my client to $9.6 million.
  • Defeated a $50 million patent infringement case brought against a leading manufacturer of semiconductor equipment used to detect flaws on bare and patterned wafers. The complete summary judgment victory protected the client’s high-revenue line of inspection tools. I led the litigation team that obtained the summary judgment.
  • Brought an $80 million patent infringement action on behalf of the world’s largest manufacturer of spindle motors used in computer hard disk drives on a technology related to fluid dynamic bearings. I obtained complete summary judgment of a $60 million patent infringement counterclaim on related spindle motor and hard disk drive technology while defeating the defendant’s summary judgment motion leading to a very favorable settlement for my client.
  • On behalf of a Malaysian investment fund and two companies formed under U.S. law for purposes of distributing proprietary software, I, serving as lead trial counsel, obtained a temporary restraining order and a preliminary injunction enjoining competition in the United States and ultimately obtained both a permanent injunction, an order transferring ownership of intellectual property rights in the subject software, and an award of actual damages in excess of $5 million and reimbursement of attorney’s fees.
  • On behalf of a global leader in pressure-sensitive products used in office and consumer applications, I brought suit to block a competitor’s false advertising and trademark infringement and, serving as lead trial counsel, obtained a preliminary injunction that was made permanent via settlement.