R. David Donoghue
Partner
Overview
R. David Donoghue is an established intellectual property (IP) trial attorney with jury trial success and a strong track record across district courts, the U.S. Court of Appeals for the Federal Circuit and at the Patent Trial and Appeal Board (PTAB). He serves as the leader of Holland & Knight's national Intellectual Property Group and is based in the firm's Chicago office.
Mr. Donoghue advises clients from major corporations and midsize businesses on technology disputes such as patent, trade secret, trademark, copyright and the Computer Fraud and Abuse Act (CFAA). Mr. Donoghue has been recommended in Intellectual Asset Management (IAM) Patent 1000 since 2014. A recent publication describes him as "A practical lawyer who gets right to the heart of any matter, David Donoghue really understands the most technical aspects of patent law. He is also great at figuring out how to win cases without spending a shed-load of his clients' money." He provides strong leadership to Holland & Knight's national IP group.
Whether he is asserting his client's IP, defending against competitors or fending off Non-Practicing Entities (NPE), Mr. Donoghue blends his deep litigation experience with practical business insight garnered from his in-house experience. As a founding member of Aptiv's (f/k/a Delphi) Technology Licensing and Litigation Group, he handled substantial international IP litigation and licensing matters.
In addition to his legal practice, Mr. Donoghue has served as an adjunct professor at the Loyola University Chicago School of Law, teaching legal research, writing and IP courses. At the beginning of his legal career, he served as a law clerk to the Honorable Gordon J. Quist, federal district judge for the U.S. District Court for the Western District of Michigan.
Mr. Donoghue is also the founder and principle author of the Chicago IP Litigation and Retail Patent Litigation blogs.
Representative Experience
- Defending 3G, 4G, LTE and H.264 Telecom Standards: Defending a major telecom company in a number of suits involving 3G, 4G, LTE and H.264 video codec standards
- Jury Verdict, Willfulness Decision and Fees Award: Donoghue and his team won a jury verdict finding of willfulness, a full trebling of damages and a full award of attorney's fees for a manufacturing client, Meyer Corp., against a key competitor
- Standard Essential Patent Damages Trial: Defended hardware manufacturers and end-users, including Meijer and Accor, against claims alleging infringement based upon the 802.11x wireless networking standard, culminating in a Standards Essential Patent (SEP) damages bench trial and significant defense-side win
- Medical Device Experience: Defended a major medical device company against patent infringement claims, including winning substantive Rule 12 motions substantially limiting the patentholder's case.
- Summary Judgment Forced Walk Away in POS / e-Coupon Matter: Defended a major retailer from patent infringement claims regarding point-of-sale (POS) systems and electronic couponing, forcing dismissal of patent holders' case without payment or confidentiality while summary judgment motions were pending
- Defeated Search Engine Preliminary Injunction: Defeated a preliminary injunction motion on behalf of a significant technology company after expedited discovery by focusing on critical claim construction and invalidity arguments
- Early Alice / §101 Decisions: Defeated numerous Non-Practicing Entity (NPE) patents as invalid software patents at the Rule 12 stage, including summary affirmances by the U.S. Court of Appeals for the Federal Circuit
- Automotive Industry Experience: Forced early dismissal of a competitor patent dispute regarding alternative automotive fuel sources by identifying key prior art
- Internet-Based and SMS / MMS Messaging Experience: Defended numerous clients against telecommunications and internet-based technology claims, including SMS and MMS messaging, GPS-based location functionalities and back-end internet shopping cart systems
- Deep Telematics / GPS Tracking Experience: Defending numerous clients in the telematics and fleet-based logistics industry, including representing numerous entities in response to Nokia Technologies' Standards Essential Patents portfolio seeking FRAND-based payments
- Nutraceutical Formulations Experience: Defending NOW Health Group against various claims involving vitamins and nutraceuticals
- Software patents: Successfully defended a software company against claims that it stole the idea for its software from a potential customer, including defeating a preliminary injunction motion that would have prevented prosecution of the software company's patent
- Protecting Client Trademarks: Asserting major retailer's house brand trademarks and trade dress against major competitors in federal district court
- Defeated Trade Dress / False Advertising Preliminary Injunction: Defeated a preliminary injunction after expedited discovery in a trade dress and false advertising case
- Color Trademark Experience: Defended a major U.S. manufacturer against color trademark claims
- Asserting Trademark Portfolios: Asserting trademark portfolio for leading online jobs board, including Uniform Domain-Name Dispute-Resolution Policy (UDRP) actions and Trademark Trial and Appeal Board (TTAB) proceedings
- Drone / Avionics: Brought suit for a fixed-wing drone manufacturer alleging trade secret misappropriation against its vendor
- CFAA Scraping: Represented an airline in a series of CFAA actions based upon unlawful scraping of online content, including overcoming multiple, McGovern-based challenges
- CFAA Scraping: Represented an airline in a CFAA action based upon unlawful scraping of online content
- Temporary Restraining Orders and Preliminary Injunctions: Defeated motions for a temporary restraining order and preliminary injunction in a software trade secret dispute
- Medical Records: Defended a medical records software company in an expedited preliminary injunction proceeding
- Defending Social Media Copyright Claims: Defending major retailers, including ALDO, Hy-Vee and Office Depot, against claims for use of copyrighted images on various social media platforms
- Copyright Claims Against Retailers: Defended major retailers from various artists' copyright infringement claims
- Online Scraping of Copyrighted Material: Defended software and internet clients whose online content was scraped
- Images of Murals: Defending retailers against copyright claims based upon a mural in the background of an image used in advertising
Credentials
- Georgetown University Law Center, J.D., cum laude
- University of Michigan, B.S.E., Aerospace Engineering, magna cum laude
- California
- Illinois
- Michigan
- U.S. Patent and Trademark Office
- U.S. Court of Appeals for the Federal Circuit
- U.S. Court of Appeals for the Ninth Circuit
- U.S. Court of Appeals for the Sixth Circuit
- U.S. District Court for the Central District of California
- U.S. District Court for the Eastern District of California
- U.S. District Court for the Northern District of Illinois
- U.S. District Court for the Southern District of Illinois
- U.S. District Court for the Central District of Illinois
- U.S. District Court for the Western District of Michigan
- U.S. District Court for the Eastern District of Texas
- U.S. District Court for the Western District of Wisconsin
- U.S. Supreme Court
- Intellectual Property Law Association of Chicago, IP Litigation Committee, Vice Chair, 2020-present
- Federal Bar Association
- Law360 Intellectual Property Editorial Advisory Board, 2018, 2019
- University of Michigan Aerospace Engineering Alumni Association, Board Member
- University of Michigan College of Engineering Alumni Board Member
- The Best Lawyers in America guide, Patent Law, 2015-2025; Litigation – Patent, 2016-2025; Litigation – Intellectual Property, 2019-2025
- Illinois Super Lawyers magazine, 2014-2024
- Leading Litigators in America, Lawdragon 500, 2022, 2024, 2025
- Chambers USA – America's Leading Business Lawyers guide, Intellectual Property, 2021-2024
- IAM Patent 1000, the World's Leading Patent Professionals - Litigation, International Asset Management magazine, 2014-2024
- The Irish Legal 100, Irish Voice, 2020-2023
- IP Star, Managing Intellectual Property magazine, Patent Contentious, Trademark Contentious, and Licensing, 2013-2021
- Martindale-Hubbell AV Preeminent Peer Review Rated
- Current Developments Editor for the Georgetown Journal of Legal Ethics
- Chicago Bar Association Herman Kogan Media Award
