David Connaughton, Of Counsel

David Connaughton’s practice involves all aspects of intellectual property law including patents, trademarks, and copyrights, with a focus on patent application preparation and prosecution, and litigation matters. David holds a Bachelor of Science degree in Chemical Engineering with a focus in Bioengineering.

David is an attorney registered to practice before the US Patent and Trademark Office. He has experience in all aspects of patent practice including patent application drafting and filing, responding to office actions, reexamination proceedings, and post-grant practice, among others. David has prosecuted and obtained over three hundred (300) U.S. patents for clients in a wide variety of technological fields including mechanical, electrical, software, biotechnology, energy, and environmental innovations. David has also obtained patent registrations in numerous countries outside of the United States, in conjunction with foreign associates.

In addition to patent prosecution, David has been lead or assistant counsel on numerous patent litigations in the Federal Courts, particularly focusing on claim construction matters, infringement/non-infringement assertions, and validity/invalidity assertions. Further, David advises clients on all aspects of management, enforcement, and licensing of their patent portfolios.

David also has substantial experience in post grant proceedings before the US Patent Office’s Patent Trial and Appeal Board (PTAB), particularly inter partes review (IPR), post grant review (PGR), and ex part reexamination to address the validity or invalidity of patents after they have issued. Through such proceedings, David has helped strategically and effectively invalidate and/or weaken the patent positions of opposing parties to defend the patent validity positions of our clients.

Outside of the office, David enjoys hiking and being outdoors, as well as spending time with his wife and two sons. David is also active in leadership roles at his church and is currently chair of the membership committee at Old South Church in Boston. When he can, David enjoys working at craft beer festivals across the country pouring beer for a Portland, Maine brewery started by his cousin.

Experience:

• SM Assembly Systems Weymouth Ltd. et al v. Stentech, Inc. et al. (D. NH. 2018) representing Stentech and Blue Ring in a patent infringement lawsuit.
• EMSEAL Joint Systems, Ltd v. MM Systems Corporation (D. Mass. 2014) represented MM Systems in a patent infringement lawsuit resulting in favorable claim construction and a non-infringement order.
• Emseal Joint Systems, Ltd. v. Schul International Co., LLC, Willseal, LLC, et al. (D. N.H. 2014) representing Schul, Willseal, and all other listed Defendants in a patent infringement lawsuit against Emseal Joint Systems, Ltd.
• Tempnology LLC v. Grabber, Inc. (D. N.H. 2013) Local counsel representing Grabber, Inc. in a patent infringement lawsuit against Tempnology, LLC.
• Kar Enterprises, LLC v. Ford Motor Company (D. Mass. 2011) representing Kar Enterprises, LLC in a patent infringement lawsuit against Ford Motor Company.
• Schul International Company, LLC v. Emseal Joint Systems Ltd., PGR 2017-00053 (Patent Trial and Appeal Board), represented Schul in a Post-Grant Review (PGR) asserting invalidity of Emseal’s patent.
• Schul International Company, LLC v. Emseal Joint Systems Ltd., PGR 2018-00034 (Patent Trial and Appeal Board), represented Schul in a Post-Grant Review (PGR) asserting invalidity of Emseal’s patent.
• Clim-A-Tech Industries, Inc. v. William A. Ebert, IPR2017-01863 (Patent Trial and Appeal Board), represented Mr. Ebert in an Inter Partes Review (IPR) successfully confirming the validity of Mr. Ebert’s patent.
• Ex Parte Steven E. Adams et al., Appeal 2019-004301 (Patent Trial and Appeal Board), represented Mr. Adams and Worthen Industries successfully overturning an examiner’s rejection of patent claims, resulting in an issued patent.
• Ex Parte Jim Stearns et al., Appeal 2017-006116 (Patent Trial and Appeal Board), represented Mr. Stearns successfully overturning an examiner’s rejection of patent claims, resulting in an issued patent.

Accolades:

• Rising Star, Massachusetts Super Lawyers, 2018 – 2020

Areas Of Practice:

• Patent Drafting and Prosecution
• IPR, PGR, Reexamination and other Post Grant Proceedings before the Patent Trial and Appeal Board
• Patent Litigation and Patent Local Counsel
• Trademark, Copyright, and other IP Litigation
• IP Licensing and Sales

Bar Admissions:

• Massachusetts
• Connecticut
• U.S. Patent and Trademark Office
• U.S. District Court for the District of Massachusetts

Education:

• Franklin Pierce Law Center, J.D. Law, 2010
• University of New Hampshire, B.S. Chemical Engineering: Bioengineering, cum laude, 2007
• The Governor’s Academy
  Byfield, Massachusetts