David C. Bohrer

Partner
Silicon Valley
55 South Market Street, Suite 1500
San Jose, CA 95113
D: 408.938.3883
Contact My Assistant
Wathena "Tina" Galeana

Education

Northwestern University School of Law
J.D., 1983
Dean’s list

Stanford University
B.A. History, with distinction, 1980
Phi Beta Kappa

Bar and Court Admissions

California State Bar, 2001
Illinois State Bar, 1983
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 Seventh Circuit
U.S. District Court, Northern District of California
U.S. District Court, Eastern District of California
U.S. District Court, Central District of California
U.S. District Court, Southern District of California
U.S. District Court, Northern District of Illinois
U.S. District Court, Northern District of Illinois, Trial Bar

Publications & Speaking

Recent publications, lectures, interviews and presentations:

Panelist, Aligning Your Enforcement Strategy with Business Goals, CLE presentation and panel, Palo Alto, CA, November 15, 2016

Moderator, Inter Partes Review: Current Thinking on What, When, Why and How Much, CLE presentation and panel, Mountain View, CA, September 27, 2016

Panelist, Death of Form 18, the Birth of New Federal Litigation Rules – A New World in Pleading and Procedure, Annual Program of the IP Section, California State Bar, San Francisco, CA, March 23, 2016

Speaker, Improved Project Management: Process Map for Flat Fee Engagement for Defending NPE Patent Litigation, Rocky Mtn IP & Tech Institute, Westminster, CO, May 30, 2013

Panelist, Using Decision Trees to Deconstruct Patent Litigation, Global Legal Process Outsourcing Conference, New York, NY, October 12, 2012

Panelist, Inequitable Conduct After Therasense, Law Seminars International TeleBriefing, June 24, 2011

Interview: Law360, Q&A With Confluence Law Partners’ David Bohrer, October 6, 2009

The Shifting Sands of Price Erosion: Price Erosion Damages Shift by Tens of Millions of Dollars Depending Upon the Admissibility of Pre-Notice Eroded Prices, co-authored with Matthew R. Lynde, Ph.D. and Elizabeth M. N. Morris, 25 Santa Clara Computer & High Tech. L.J. 723 , 2009

Do Patent Cases Reward One Inventor for the Contributions of Many?, Daily Journal (San Francisco and Los Angeles editions), July 29, 2009

Trolling for Efficiency, Daily Journal (San Francisco and Los Angeles editions), June 24, 2009

Big Firms’ Inefficient Cost Structures Bind Them to the Billable Hour, Daily Journal (San Francisco and Los Angeles editions), June 15, 2009

Panelist, Implementing Alternative Fees, Davis, Wright and Tremaine partner meetings, March 19, 2009

Panelist, 2008 Intellectual Property Roundtable, sponsored by California Lawyer, San Francisco, CA, November 3, 2008

Lecturer, Intellectual Property Law Enforcement, Boalt Hall School of Law, University of California, Berkeley, CA, presented on September 7, 2006, September 6, 2007 and September 4, 2008

Lecturer, Asserting Patent Rights: Life After Knorr-Bremse, eBay, Sandisk, KSR . . . and now Seagate, Association of Corporation Counsel Litigation Committee, Palo Alto, CA, September 17, 2007

Panelist, 2006 Intellectual Property Roundtable, sponsored by California Lawyer, San Francisco, CA, December 16, 2005

Lecturer, Demonstration of a Closing Argument: Tips From a Patent Trial Lawyer, Practicing Law Institute Patent Litigation 2005 Seminar, Chicago, IL, November 29, 2005

Lecturer, Knocking the Eagle Off The Patent Owner’s Shoulder: Chiron Holds That Jurors Don’t Have To Be Told That Patent Is Presumed Valid, Silicon Valley Association of General Counsel, Palo Alto, CA, March 18, 2005

Knocking the Eagle Off The Patent Owner’s Shoulder: Chiron Holds That Jurors Don’t Have To Be Told That Patent Is Presumed Valid, 21 Santa Clara Computer and High Tech L.J. 259 (2004)

The Question Left Unanswered in WMS Gaming: What Is the Algorithm?, co-authored with Michael I. Frankel, Intellectual Prop. & Tech L.J. vol. 16, no. 4 (April 2004)

Lecturer, Steal This Software, ver 2.0, Silicon Valley Association of General Counsel, Palo Alto, CA, November 21, 2003

Lecturer, Steal This Software, ver 1.0, Bay Area General Counsel Group, San Francisco, CA, June 3, 2003

Lecturer, False Advertising Claims, A Primer on the Law, presented to numerous clients across the country

Teaching

Adjunct professor for Clinical Legal Ethics class at Northwestern University School of Law, fall 1994 to fall 1999.

Dave is a Silicon Valley technology trial lawyer who has won trials, obtained significant money damages and injunctive relief, and secured favorable defense verdicts and rulings for his clients. He focuses his litigation practice on patent, trade secret, trademark, copyright, and other IP matters in federal and state courts, arbitrations and mediations across the country, and at the Patent Trial and Appeal Board.  Dave has extensive experience developing and successfully managing multi-million dollar patent, trade secret and other complex IP and business litigation budgets to match client economic objectives.

Dave has litigated IP matters across a spectrum of advanced technologies in the electrical, mechanical, and computer hardware and software fields. These technologies include online consumer services, business and software services, medical devices, system-on-chips, digital signal processing, integrated circuit fabrication and testing, semiconductor capital equipment, RF/microwave circuits, Bluetooth and Wi-Fi applications, PCB design and circuits, computer aided design, optics and reflective imaging, networking infrastructure and website operation and e-Commerce applications, and waterproof technologies for electronic devices.

His trial and IP litigation and counseling services, mirroring the diverse and challenging issues faced by his technology clients, include unfair competition, deceptive practices, licensing and founders’ disputes, corporate governance litigation, shareholder derivative actions, proprietary rights relating to departing or newly-hired employees, complex commercial litigation, arbitration and mediation, and appellate litigation.

Before coming to Merchant & Gould, Dave was an equity partner in the IP litigation departments at several AmLaw 100 firms and flexed his entrepreneurial muscles as a partner and owner of Valorem Law Group, a disruptive law startup focused on offering fee arrangements that better aligned the economic interests of clients and their lawyers. Dave created the Flat Fee IP Blog on which he continues to regularly post on alternatives to traditional hourly billing as well as current and future issues relevant to IP litigation.

Dave serves as the managing partner of Merchant & Gould’s Silicon Valley office.

Representative Cases

In addition to his notable first chair trials and related decisions, which are available upon request, Dave's recent significant representations include:

  • Defending developer of novel intragastric balloon technology against trade secret misappropriation lawsuit brought by competitor.
  • Defended patent litigation brought against provider of online data storage and backup services.
  • Represented minority interest shareholders against controlling shareholders and directors challenging fraudulent transfer of online payment technology; defended motions for summary judgment and coordinated favorable global settlement including merger of transferor and transferee companies.
  • Represented leading manufacturer of Bluetooth headsets in patent infringement actions enforcing headset technology against competitors.
  • Defended multiple patent infringement actions across the country brought by non-practicing entities (NPEs) against major electronics retailer based on asserted infringement of different e-commerce applications.
  • Defended patent infringement action brought against leading online travel search site that challenged metasearch technology allowing persons to see and compare prices obtained by searching across other travel sites.
  • Defended developer of clean room technology and services against trade secret misappropriation and unfair competition lawsuit brought by prior employer and competitor.
  • Represented leading supplier of office products regarding unfair competition, false advertising, and trademark infringement by competitor, including Lanham Act causes of action and potential challenge brought before the National Advertising Division.
  • Represented plastic surgeon seeking recovery for online defamation by anonymous posters (believed to be sponsored by competing practices) on third-party patient review sites, including separate discovery action in California involving potential First Amendment challenges to obtaining identity of anonymous posters from third-party web sites.
  • Represented chip designer regarding RF/Microwave circuit design generally and RF/Microwave amplifier design specifically for wireless networking in defense of patent infringement and trade secret litigation. Dave leveraged a favorable settlement by aggressively disputing the alleged trade secrets, expediting the submission of technical expert reports, and filing a countervailing lawsuit. Not only were all claims dismissed with prejudice, but the client was able to continue sales of its flagship product and technology without change or restriction.
  • After a three-and-a-half-week patent infringement trial in the Northern District of California, the jury rendered a verdict in favor of Dave’s client, a major Japanese manufacturer of consumer electronics, finding that its three patents were valid and willfully infringed. The jury awarded lost profit and reasonable royalty damages in excess of $7 million. The trial court subsequently awarded $2 million in pre- and post-judgment interest and $4 million in attorneys’ fees and costs. The decision was affirmed by the Federal Circuit on appeal. On remand, the trial court increased the total award to over $20 million to account for successor liability claims deemed valid by the Federal Circuit.
  • Dave obtained a complete summary judgment victory in a medical device patent infringement case brought against his client, a $12 billion healthcare company. The case involved intrauterine pressure catheters and the successful result allowed his client to continue a flagship product line.
  • Dave's $7.4 million jury verdict obtained on behalf of a client-inventor in a patent infringement suit involving computer software claims was featured in The National Law Journal's "Verdict of the Week." On post-trial motions, the court not only upheld the verdict, but increased the award to his client to $9.6 million.
  • Defeated a $50 million patent infringement case brought against a leading manufacturer of semiconductor equipment used to detect flaws on bare and patterned wafers. The complete summary judgment victory protected the client’s high-revenue line of inspection tools. Dave led the litigation team that obtained the summary judgment.
  • Brought an $80 million patent infringement action on behalf of the world's largest manufacturer of spindle motors used in computer hard disk drives on a technology related to fluid dynamic bearings. Dave obtained complete summary judgment of a $60 million patent infringement counterclaim on related spindle motor and hard disk drive technology while defeating the defendant’s summary judgment motion leading to a very favorable settlement for his client.
  • On behalf of a Malaysian investment fund and two companies formed under U.S. law for purposes of distributing proprietary software, Dave, serving as lead trial counsel, obtained a temporary restraining order and a preliminary injunction enjoining competition in the United States and ultimately obtained both a permanent injunction, an order transferring ownership of intellectual property rights in the subject software, and an award of actual damages in excess of $5 million and reimbursement of attorney's fees.
  • On behalf of a global leader in pressure-sensitive products used in office and consumer applications, Dave brought suit to block a competitor's false advertising and trademark infringement and, serving as lead trial counsel, obtained a preliminary injunction that was made permanent via settlement.

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