David Elkins has led our global Intellectual Property & Technology Practice Group since 2010. While his office is in Silicon Valley, David serves as lead trial and arbitration counsel in patent, trademark and trade dress, trade secret and copyright actions nationwide. He also counsels clients about competitive IP strategy, emphasizing both the protection of trade secrets and safeguarding against the assertion of trade secret claims by others. 

David has been named a Thomson Reuters Northern California Super Lawyer  since 2014. Following outstanding client feedback, David was identified in 2017 as a “star lawyer” in the Acritas StarsTM global database: “He’s a very dedicated lawyer and we can have full confidence and trust that he will act in our interests.”

David recently stepped down from the Silicon Valley Board of Directors of Playworks after serving on it for more than seven years, including several years as the board’s chair. Playworks 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 the famous Muirfield Village Golf Club, securing a TRO and then preliminary 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). 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).
  • Lead counsel for el Banco Central de Venezuela, the Venezuelan Central Bank, in a federal lawsuit asserting civil RICO and Lanham Act false advertising claims against a group of US-based defendants allegedly involved in an enterprise using social media tools to misrepresent and manipulate a black market for foreign exchange, thereby devaluing the country’s currency, robbing the Central Bank of seigniorage and disrupting the Venezuelan economy.
  • Lead counsel for Zippo Manufacturing Co., maker of the iconic windproof lighter, in enforcing one of Zippo’s trademark families in a trademark infringement action in C.D. Cal. and directing parallel litigation in the German Regional Court of Frankfurt am Main and in the High Court of Justice in London. All three actions 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).
  • 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.
  • 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 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 the payment of 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
  • Included in Thomson Reuters' Northern California Super Lawyers since 2014

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