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 post-grant review 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

U.S. District Court

• Counsel for Plaintiff in patent infringement action related to wastewater leaching technology, securing summary judgment of infringement and settlement thereafter.
• Counsel for Defendant in patent infringement action related to vehicle tracking technology, securing dismissal of action at pleading stage.
• Counsel for Defendant in patent infringement action related to video processing technology, securing dismissal of action at pleading stage.
• Counsel for Defendant in patent infringement action related to image processing technology, securing dismissal of action at pleading stage.
• Counsel for Defendant in patent infringement action related to tonneau cover technology, securing dismissal of action at pleading stage.

Patent Office Post-Grant Review Proceedings

• Counsel for Petitioner in IPR 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 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 defending patent directed to exterior rearview mirror assembly. Final Written Decision upheld the validity of several key challenged claims
• Counsel for Petitioner in IPR 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

International Trade Commission (ITC) Proceedings

• Counsel for Patent Owner / Complainant in ITC Investigation 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

Professional & Community Involvement

State Bar of Michigan

• Intellectual Property Law

Federal Bar Association, Eastern District of Michigan Chapter

• Intellectual Property Committee Member

News

Press Releases

Events

Alerts

Publications