David Elkins has led our global Intellectual Property & Technology Practice Group since 2010. Based in Silicon Valley, David serves as lead trial and arbitration counsel in patent, trademark, trade dress, trade secret, false advertising and copyright actions nationwide.

Following outstanding client feedback, David has been named a “star lawyer” in the Acritas Stars™ global database in 2017 and 2018: “He’s a very dedicated lawyer and we can have full confidence and trust that he will act in our interests”; “The quality of his advice: it is sharp, it is to the point, and it’s very concise and relevant.” David has also been a Thomson Reuters Northern California Super Lawyer since 2014.

David served for more than seven years on the Silicon Valley Board of Directors of Playworks, including several years as the board’s chair. Playworks (which David continues to support) is a national nonprofit organization that supports learning at low-income, urban schools by transforming recess and play into a positive experience – helping kids and teachers get the most out of every learning opportunity throughout the school day.

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  • Lead counsel for our stealth-mode battery technology company client in an arbitration (JAMS) against two former R&D scientist-employees who, after the respective employment of each terminated, wrote and published a journal article unlawfully disclosing a number of our client’s key trade secrets. Our client’s trade secret misappropriation and related claims will be tried in a multiple-day hearing scheduled for June 2018.
  • Lead counsel for the famous Muirfield Village Golf Club, securing a TRO, preliminary injunction and, ultimately, a permanent injunction in S.D. Ohio, preventing a Texas LLC from claiming exclusive rights to Muirfield’s 40+ year old trademark for its annual PGA Tour tournament.
  • Lead trial and appellate counsel for Venture Corporation Ltd and Venture Design Services, Inc. Following a two-week jury trial in N.D. Cal., the jury (i) confirmed our clients’ ownership of patents that a former employee claimed to have invented before his employment commenced, and (ii) rejected the former employee’s counterclaims seeking US$52 million-US$103 million in damages. Venture Corp. Ltd v. Barrett, No. 5:13-CV-03384-PSG, 2015 U.S. Dist. LEXIS 165809, 2015 WL 8479475 (N.D. Cal. Dec. 9, 2015). After the Court of Appeals affirmed, Venture Corp. Ltd v. Barrett, Case No. 15-17439, 2017 U.S. App. LEXIS 14174 (9th Cir. Aug. 2, 2017), the district court awarded our clients more than US$1.4 million in attorneys’ fees and related expenses. 
  • Lead counsel for Zippo Manufacturing Co., maker of the iconic windproof lighter, in a number of trademark enforcement actions. In one action, David first-chaired our enforcement of one of Zippo’s trademark families in an infringement action in C.D. Cal. while directing parallel litigation in the German Regional Court of Frankfurt am Main and in the High Court of Justice in London. The parallel proceedings resolved by settlement on the eve of trial in C.D. Cal.
  • Represented US sugar cane growers, sugar beet farmers and refiners of natural sugar in a federal false advertising lawsuit against Archer-Daniels-Midland, Cargill, other processors of high fructose corn syrup (HFCS) and their trade group, the Corn Refiners Association, for falsely advertising the various formulations of HFCS as “corn sugar,” as “natural,” and that “your body can’t tell the difference.”
  • Lead counsel in a US$12 million defense victory for our clients against a patent owner seeking to enforce a liquidated damages provision contained in a licensee agreement’s licensee estoppel clause. The S.D.N.Y. held the clause unenforceable as against public policy and a Second Circuit panel unanimously affirmed. Rates Tech., Inc. v. Speakeasy, Inc., 685 F.3d 163 (2d Cir. 2012).
  • Co-lead counsel for patent-owner pharmaceutical company in MDL class actions (consolidated in N.D. Cal.) alleging violation of Sherman Act and state antitrust laws in connection with a purported “reverse payment” settlement of Hatch-Waxman patent infringement litigation. The class and other plaintiffs settled with our client shortly before the 10-week jury trial was to commence.
  • In multiple cases in the District of Delaware, represented a branded pharmaceutical company and its US subsidiary in Hatch-Waxman Act patent infringement actions against would-be generic manufacturers of our clients’ blockbuster prescription adhesive patch.
  • Lead counsel for a branded international pharmaceutical company in a Lanham Act false advertising case in N.D. Ill. against a would-be competitor, arising out of the defendant’s advertising claims that its purported over-the-counter (OTC) product is essentially equivalent to our client’s adhesive patch. Obtained a consent judgment and permanent injunction.
  • Lead counsel for a global fashion label in enforcing its haute couture trade dress in a Lanham Act action in C.D. Cal., obtaining a consent judgment and permanent injunction against the copycat infringer.
  • Lead counsel in a trade secret misappropriation and breach of confidence action in Texas state court action alleging misuse of proprietary information pertaining to our client’s technology for inkjet printing of electronic circuitry. The action paralleled two other actions between the same parties before the England High Court of Justice. All actions settled favorably.
  • Lead trial counsel before the AAA and the N.D. Ohio for a manufacturing company asserting patent infringement claims against its archrival, winning an award of infringement, lost profit damages and a permanent injunction.
  • Lead arbitration hearing counsel representing a Japan-based integrated circuit design company before the ICC against a Taiwan-based turnkey manufacturer of defective ICs, securing a complete victory for our client including attorneys’ fees.
  • Lead counsel for the author and owner of copyrights to a documentary and a bestselling book in a copyright ownership case in N.D. Ill. asserted by a director of the documentary. The action saw complete vindication of our client following a jury trial. We successfully represented the book’s publisher in parallel proceedings.
  • Lead counsel for a Spanish satellite television broadcaster prosecuting claims in C.D. Cal. against a global media company subsidiary for copyright infringement, violation of the Digital Millennium Copyright Act (DMCA) and related claims arising from widespread piracy of the smartcard technology used in protecting encrypted digital TV broadcasts.
  • Lead counsel for the developer and manufacturer of iconic classic video games in proceedings in federal court and the Trademark Trial and Appeals Board (TTAB) to prevent piracy of arcade consoles and protected images and trademarks. Obtained, among other things, a consent judgment and permanent injunction.
  • Lead counsel for an innovator of ornamental and vegetative plants and seeds in a breach of license dispute (in Santa Clara County Superior Court) regarding flowering ornamental plants. After we defeated the licensee’s motion for TRO, the case settled quickly on very favorable terms for our client.
  • Lead counsel defending against patent infringement claims (N.D. Cal.) relating to methods for retaining water in canned mushrooms, settling the case without our client paying any money.
  • Lead trial counsel in dozens of TTAB opposition and cancellation proceedings.

Education

  • University of California, Davis, J.D., 1990
  • University of California, Berkeley, A.B., 1986

Admissions

  • California, 1990

Courts

  • U.S. Supreme Court
  • U.S. Ct. of App., Federal Circuit
  • U.S. Ct. of App., Second Circuit
  • U.S. Ct. of App., Ninth Circuit
  • U.S. Dist. Ct., C. Dist. of California
  • U.S. Dist. Ct., E. Dist. of California
  • U.S. Dist. Ct., N. Dist. of California
  • U.S. Dist. Ct., S. Dist. of California
  • U.S. Dist. Ct., N. Dist. of Illinois
  • U.S. Dist. Ct., Dist. of Colorado

Memberships and Affiliations

  • Member of IQPC’s Global IP Exchange Advisory Council
  • Selected by BTI Consulting Group as a 2018 Client Service All-Star
  • Named a “star lawyer” in the Acritas Stars™ global database in 2017 and 2018
  • Included in Thomson Reuters' Northern California Super Lawyers since 2014

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  • Co-author, “Exhausted: The Supreme Court Takes The Federal Circuit To Task (Again),” Global IP & Privacy Law Blog, May 31, 2017
  • Co-author, “Change of Scenery: TC Heartland Reshapes the Patent Litigation Landscape,” Global IP & Privacy Law Blog, May, 22, 2017
  • Co-author, “Supreme Court Tosses Laches Defense To Patent Damages,” Global IP & Privacy Law Blog, March 22, 2017
  • Author, “The Northern District of California’s Recent Patent Local Rules Amendments: Elevating Damages Considerations to the Same Level as Infringement and Invalidity Contentions,” Global IP & Privacy Law Blog, February 2, 2017
  • Co-author, “The Defend Trade Secrets Act – Key Takeaways,” Global IP & Privacy Law Blog, May 26, 2016
  • Co-author, “Obama Signs Federal Trade Secrets Bill Into Law,” Global IP & Privacy Law Blog, May 12, 2016
  • Co-author, “New Federal Law Will Provide First-Ever Civil Claim for Theft of Trade Secrets,” Global IP & Privacy Law Blog, April 27, 2016
  • Co-author, “Trademark Protection: Strategies for Cuba,” Global IP & Privacy Law Blog, April 1, 2015
  • Co-author, “Federal Circuit supports the Patent Office in first Inter Partes Review appeal decision,” Global IP & Privacy Law Blog, February 5, 2015
  • Co-author, “Again Reversing the Federal Circuit, The Supreme Court Vests District Courts With Deference For Claim Construction,” Global IP & Privacy Law Blog, January 20, 2015

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