David Kelly

Biotechnology and Pharmaceutical

• Serving as lead counsel representing defendant in patent infringement and trade secret misappropriation litigation, PTO contested cases, and various appeals. Subject matter involves assisted reproductive technologies.
• Serving as lead counsel representing plaintiff in breach of contract case involving client’s patented mechanical circulatory system technologies for heart surgery.
• Represented plaintiff in trade secret misappropriation case involving CAR-T technology. Obtained injunction, followed by favorable settlement.
• Represented defendant in patent infringement case involving universal hip prosthetic technology. Obtained summary judgment of invalidity against one of the patents and non-infringement on the remaining patents.
• Represented plaintiff in patent infringement litigation involving fluoropolymer plastics technology. Obtained summary judgment of patent validity and no inequitable conduct. After four-week bench trial, obtained verdict of infringement and permanent injunction, which was affirmed on appeal.
• Represented defendant in patent infringement and trade misappropriation case. Successfully prevailed on every motion, including Markman, sanctions motions, and summary judgment of no trade secret misappropriation. After Markman, obtained stipulation of dismissal and covenant not to sue on competitor’s entire patent portfolio, including non-asserted patents.
• Represented declaratory judgment plaintiff in patent infringement case involving less-abusable opioid technology. Successfully defeated motions to dismiss and transfer and obtained favorable Markman rulings. Case settled on favorable terms just before summary judgment.
• Represented plaintiff in patent infringement case involving DNA sequencing technology. Obtained successful Markman ruling and summary judgment on written description and enablement issues.

Contested Patent and Trademark Office

• Represented inter partes review (IPR) requester against competitor in proceedings involving flow cytometry technology. Claims in two patents were deemed unpatentable.
• Represented IPR requester against competitors in IPR proceedings involving various medical device technologies, including silverized wound dressings, devices comprising ultra-high molecular weight polyethylene, and compression bone plates. IPRs instituted in all cases, and competitors’ challenged claims deemed unpatentable. 
• Represented IPR requester in multiple IPRs involving coated seed products and related methods. IPRs instituted in all cases. In one case, the competitor’s claims were deemed unpatentable, and in another the competitor signed a covenant not to sue after institution of the IPR.

Non-Bio/Pharma Experience

• Represent Atlanta CPA firm in multiple business and contract matters.
• Represent private individual in SEC enforcement action.
• Represented U.S. Department of Commerce in U.S. export control laws compliance monitorship.