David C. Bohrer

Partner

David C. Bohrer is a partner in Morgan Lewis's Intellectual Property Practice. Mr. Bohrer focuses his practice on the defense of intellectual property rights, including patent infringement litigation, patent licensing litigation, trade secret misappropriation, trademark, trade dress, and false advertising litigation, and other technology-focused litigation. He has tried cases in federal and state courts and before arbitration panels throughout the United States.

Some of Mr. Bohrer's most recent cases include:

• On July 6, 2007, 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.
• On February 4, 2008, after a three-and-a-half-week patent infringement jury trial in the Northern District of California, the jury rendered a verdict in favor of his client, a major Japanese manufacturer of consumer electronics. The jury found that the three patents at issue were infringed and not invalid due to obviousness and that, notwithstanding the Federal Circuit's decision in Seagate conditioning willful infringement on proof of objectively reckless conduct by the accused infringer, the infringement was willful, and awarded lost profit and reasonable royalty damages in excess of $7 million. Post-trial motions to enhance damages and for attorneys fees are pending.

Other representative cases include:

• Mr. Bohrer was featured in The National Law Journal's "Verdict of the Week" for the $7.4 million jury verdict he obtained as lead trial counsel on behalf of a client-inventor in a patent infringement suit involving computer software claims. As part of the verdict, the jury found willful infringement. On post-trial motions, the court not only upheld the verdict, but increased the award to his client to $9.6 million.
• A complete summary judgment victory obtained in a $50 million semiconductor patent infringement case brought against Mr. Bohrer's client, a leading manufacturer of semiconductor equipment used to detect flaws on bare and patterned wafers. The case involved specific processes for collecting and analyzing light scattered from the wafer surface. The summary judgment allowed the client to continue selling a very high-revenue line of inspection tools. Mr. Bohrer led the litigation team that obtained the summary judgment.
• Serving as senior trial counsel on the litigation team that brought an $80 million patent infringement action on behalf of the world's largest manufacturer of spindle motors used in computer hard disk drives. The patented technology related to fluid dynamic bearings used in spindle motors. The opposing party brought a $60 million patent infringement counterclaim on related spindle motor and hard disk drive technology. On September 28, 2007, Mr. Bohrer obtained a complete summary judgment victory on the patent infringement counterclaim, as well as rulings denying his opponent's motions for summary judgment on the great majority of his client's patent infringement claims. These results precipitated a very favorable settlement of the lawsuit in early February 2008.
• On behalf of a Malaysian investment fund and two companies formed under U.S. law for purposes of distributing proprietary software, Mr. Bohrer, 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, brought suit in the Central District of California to block a competitor's false advertising and trademark infringement. Mr. Bohrer, serving as lead trial counsel, obtained a preliminary injunction, which was made permanent via settlement.
• Serving as lead trial counsel, obtained a summary judgment victory in electronics device patent infringement litigation brought against a manufacturer of electronic gaming equipment and related software. The case involved application of optics and reflective imaging in electronic gaming devices. Based upon the court's findings of no literal infringement, the lawsuit was dismissed with no damages, costs, or fees assessed against the client.

Mr. Bohrer frequently writes and lectures on topics relating to trial advocacy and intellectual property. In 2006 and 2007, he was a guest speaker at the Boalt Hall School of Law on intellectual property enforcement. He has made presentations to the Association of Corporation Counsel Litigation Committee ("Asserting Patent Rights: Life After Knorr-Bremse, eBay, Sandisk, KSR …and now Seagate," Sept. 2007), the Silicon Valley Association of General Counsel ("Knocking the Eagle Off the Patent Owner's Shoulder: Chiron Holds That Jurors Don't Have to Be Told That a Patent Is Presumed Valid," March 2005; "Steal this Software, Version 2.0," Nov. 2003), and the Practising Law Institute Patent Litigation Seminar ("Demonstration of a Closing Argument: Tips From a Patent Trial Lawyer," Chicago, Nov. 2005). He participated in the 2006 Intellectual Property Roundtable sponsored by California Lawyer on protecting trade secrets and the impact of the Internet on trademark, copyright, and patent law. His publications include "Knocking the Eagle Off the Patent Owner's Shoulder: Chiron Holds That Jurors Don't Need to be Told That a Patent is Presumed Valid," Santa Clara Computer and High Tech L.J. 259 (2004), and "The Question Left Unanswered in WMS Gaming: What is the Algorithm?" Intellectual Property and Tech. L.J. Vol. 16, No. 4 (April 2004).

Mr. Bohrer also produces a regular series of seminars on intellectual property issues. These seminars are sponsored by the firm's Intellectual Property Litigation Practice and are provided to the firm's clients and other interested technology businesses in Silicon Valley.

Mr. Bohrer is admitted to practice in California and Illinois. He is a member of the Federal Circuit Bar Association and the Santa Clara County Bar Association.