David J. Thomas

David Thomas is an intellectual property attorney who focuses his practice on strategic counseling and guidance regarding intellectual property matters. David has litigated in patent-heavy forums across the country, including in the District of Delaware, the Eastern and Western Districts of Texas, the International Trade Commission, the Northern District of Illinois and the Eastern District of Michigan, among others. He has defended and challenged patents in IPR proceedings before the Patent Trial and Appeal Board at the U.S. Patent & Trademark Office. In addition to his litigation practice, David counsels clients on domestic and international patent procurement strategies, and prosecutes patents in the software, electrical, and mechanical arts.

Practice Areas

Representative Matters

Patent Office IPRs

• Counsel for Petitioner in IPR No. 2021-01411 challenging patent directed to underbed mount for fifth-wheel and gooseneck style hitches. Trial instituted on all grounds presented in Petition; Final Written Decision found all challenged claims unpatentable on obviousness grounds
• Counsel for Petitioner in IPR No. 2022-01166 challenging patent directed to thermally insulated windows. Trial instituted on all grounds presented in Petition; successfully achieved settlement in favor of client, terminating the proceeding
• Counsel for Patent Owner in IPR No. 2020-00777 defending patent directed to exterior rearview mirror assembly. Final Written Decision upheld the validity of several key challenged claims
• Principal drafter of Petition in IPR No. 2019-00625 challenging patent directed to electronic brake controller for controlling brakes of towed vehicle. Trial instituted on all grounds presented in Petition; Final Written Decision found all challenged claims unpatentable on obviousness grounds; Final Written Decision affirmed in its entirety on appeal, Horizon Global v. Curt Manufacturing, No. 20-2203 (Fed. Cir.)

International Trade Commission (ITC) Proceedings

• Counsel for patent owner / complainant KUB Technologies, Inc. in ITC Investigation No. 337-TA-1348, In the Matter of Certain Cabinet X-Ray and Optical Camera Systems and Components Thereof, alleging patent infringement based on unauthorized importation for sale of optical-camera enabled intraoperative x-ray cabinet units. After institution of investigation, all accused parties filed consent orders agreeing to cease the conduct giving rise to the action, resulting in a Final Determination terminating the proceeding

Prior Experience

• Bejin Bieneman P.L.C., Patent Agent, 2016-2018
• Harness, Dickey & Pierce, P.L.C., Summer Associate, 2016

Education

Admissions

Court Admissions

Press Releases

Publications