• Biography

    David O'Brien leads the firm’s Patent Office Trials Practice Group and focuses on Inter Partes Review (IPR) and Covered Business Method (CBM) review before the Patent Trial and Appeal Board (PTAB). He has more than 20 years of experience in software, semiconductor, microprocessor architecture, information security and protocol related technologies.

    David handles all phases of IPR and CBM proceedings, from development of the grounds of challenge to petition drafting, briefing, trial, oral argument and appeal strategy. He is an experienced lead counsel in petitioner-side and patent owner-side representations alike. To date, David has served as lead counsel in nearly 30 contested PTAB proceedings.

    In addition to his PTAB trial practice, David prepares and prosecutes high-value patent applications. He provides clients with focused offensive and defensive analyses of intellectual property positions, including opinions, assertion analyses and acquisition due diligence. Over the years, David has provided strategic counsel to a variety of multi-national corporations and emerging companies in the context of major eCommerce, network security, content delivery, microprocessor and semiconductor patent assertions. He renders defensive non- infringement and/or invalidity opinions when appropriate. David also prepares agreements and advises clients in technology transactions and licensing matters.

    David's representation of technology clients builds on substantial prior-career experience including R&D for DARPA and other clients, in areas of multiprocessor architecture; software and algorithms for parallel and distributed computing; semiconductor devices, fabrication and materials; internetworking protocols; process control; opto-electronics and lasers, and computer vision/imaging systems. David's patent legal representations span computer several generations of computer hardware and software technologies including superscalar, multicore and massively parallel processors, various programming languages and code development environments, operating system internals, memory and storage hierarchies, internetworking standards and RFCs, cryptosecurity, INFOSEC and malware, virtualization, compilers, debuggers and execution tracing, eCommerce, geolocation and mobility.

    David is published and lectures on patent law and protection of computer software. Recent topics include IPR and CBM strategies, section 101 law, litigating divided infringement claims, including issues of transnational and joint liability for infringements, claim construction, and continuing application strategy.

    Professional Recognition

    • Recognized as a leading patent litigator by Intellectual Asset Management (IAM) Patent 1000, Globe Business Media Group, 2019 and 2020
  • Education and Clerkships

    • J.D., University of Texas School of Law, 1995, with honors
    • M.S.E., Electrical and Computer Engineering, University of Texas at Austin, 1987
    • B.S.E.E., Electrical Engineering, Cornell University, 1986
  • Admissions

    • Texas
    • U.S. Patent and Trademark Office