Troutman Sanders Adds Patent Specialist David Devernoe (San Diego)

The placement of an intellectual property team led by David Devernoe. Mr. Devernoe and Chris Franich join Troutman in San Diego from Gordon & Rees.

David Devernoe focuses his practice on intellectual property (IP) counseling and portfolio strategy, patent licensing, post-grant USPTO administrative proceedings, trade secret counseling, patent prosecution, and intellectual property litigation. He performs IP portfolio reviews and diligence for clients ancillary to licensing or acquisition, product pipeline phase exits/commercialization, funding source diligence, and for post-grant review or pre-litigation purposes.

David has extensive experience advising clients ranging in size from one-person start-ups to multi-national organizations in a variety of technical arenas including molecular and cellular diagnostics, sequencing, bioinformatics, molecular biology, immunology, machine learning, nutraceuticals, compression garments, 3-D printing, medical devices, near-eye displays and imaging/optical technologies, consumer devices and services, and information technology. David specializes in providing lean and purpose-driven service and advice, and accordingly takes special care in developing a multi-level understanding of the businesses of his clients.

David was previously associated with two separate top-tier law firms and served as an in-house intellectual property attorney with a molecular diagnostics corporation.

Representative Matters

  • Ex Parte Jaronczyk, Jr. (Reexamination of U.S. Patent No. 5,598,138; Control Nos. 90/013,722, 90/013,078) – Counsel for patent owner Fusilamp, LLC in two separate reexamination proceedings before the U.S. Patent and Trademark Office. Patent claims upheld in unamended form in both proceedings.
  • Fusilamp, LLC v. Littelfuse, Inc., Case No. 13-20-1200-2324 (American Arbitration Association) – Co-counsel for Fusilamp, LLC in patent infringement and validity arbitration proceeding.
  • The Reynolds and Reynolds Company v. BPI Custom Printing, Inc., Case No. 2:16-cv-06726-TJH (C.D. Cal.) – Counsel for BPI Custom Printing in copyright infringement action brought by Reynolds.
  • Julius Zorn, Inc. v. Medi Manufacturing, Inc., Case No. 3:15-CV-2734 (S.D. Cal.) – Counsel for patent owner medi® Manufacturing, Inc. in patent infringement case involving compression garments.
  • Ex Parte Cabilly (Reexamination of U.S. Patent No. 6,331,415 (“Cabilly II”)) – Counsel for patent co-owner Genentech, Inc. in a reexamination proceeding in the U.S. Patent and Trademark Office related to recombinant antibody heavy and light chain expression. Patent claims upheld in unamended form.
  • Cabilly v. Boss (Interference No. 105,531) – Counsel for Genentech, Inc. in an interference proceeding in the U.S. Patent and Trademark Office. USPTO Board of Appeals and Interferences awarded Genentech’s “Cabilly” patent application (No. 08/422,187), which related to methods for making antibodies, priority over the “Boss” patent application (No. 08/450,727).
  • S. counsel for Genentech, Inc. and Biogen Idec Inc. in the prosecution and opposition defense of European Patent No. 1176981 (8 opponents), related to methods of treating autoimmune disease, before European Patent Office Examination and Opposition Divisions.
  • The Rockefeller University and Chiron Corporation v. Centocor, Inc. and Abbott Laboratories, Civ. No. 2-04CV-168 (TJW) (E.D. Tex.)– Counsel for defendant Centocor in patent infringement case involving chimeric antibody technology brought against Centocor; claims against Centocor settled in 2005.