David A. GossePartner

David A. Gosse helps clients protect their intellectual property rights through litigation, working on all phases of litigation matters, ranging from due diligence investigations through trial and post-trial motions. In district court litigation, Dave has substantial pre-trial and trial experience, including multiple jury trials relating to patent infringement, validity, and breach of license. He has argued claim construction and motions for summary judgment and has deposed numerous fact and expert witnesses. He has extensive experience working with expert witnesses to develop their reports, prepare for depositions, and polish their trial testimony.

In addition, Dave helps clients procure broad intellectual property protection at the U.S. Patent and Trademark Office, beginning with patent drafting and prosecution and extending to post-issuance reexamination and AIA proceedings as appropriate. He has successfully argued on appeal to the Patent and Trademark Appeal Board and has successfully defended patent owners against inter partes review and covered business method petitions at both the preliminary response stage and after institution of trial. Because his practice extends to both the acquisition and the enforcement of patent rights, Dave is better able to understand and evaluate issues that arise in intellectual property protection.

Dave has worked extensively with clients to protect innovations including complex process control algorithms, gift card activation systems, industrial printing hardware and software, DRAM and Flash memory, RISC processors, and a variety of mechanical devices.

Trained as a mechanical engineer, Dave worked for an engineering and software development firm before attending law school. He has practical, hands-on experience in systems integration, developing automation control solutions for many different industries on a variety of platforms, including robots, machine vision systems, PCs, and programmable logic controllers.

Lone Star Silicon Innovations LLC v. Nanya Technology Corporation (N.D. Cal. 2016–20). Currently representing plaintiff in patent infringement action against Nanya Technology Corporation under multiple patents related to DRAM and NAND Flash memory and other large-scale integrated semiconductor devices. Actions against Micron, Toshiba, United Microelectronics Corporation, Renesas Electronics, Semiconductor Manufacturing International Corporation, and STMicroelectronics were resolved.

Limestone Memory Systems LLC v. Micron Technology, Inc. et al. (C.D. Cal. 2015–20). Currently representing the plaintiff in enforcement actions related to memory chip design. Responded to multiple petitions for inter partes review at the USPTO, successfully distinguishing claims in four asserted patents from the art cited in the petitions.

Industrial Print Technologies v. Hewlett-Packard Co. et al. (N.D. Tex. 2015–18). Currently representing the plaintiff in a patent infringement action involving technology related to high-speed industrial printing. Seven separate actions are consolidated for pre-trial discovery and claim construction.

United Microelectronics Corp., et al. v. Lone Star Silicon Innovations LLC (PTAB 2018). Institution denied as to all claims after preliminary response.

Micron Technology, Inc. v. Limestone Memory Systems LLC (PTAB 2016). Institution denied as to all claims after preliminary response.

Apple Inc. v. Limestone Memory Systems LLC (PTAB 2016). Institution denied as to all claims after preliminary response.

Ex parte Tesseron Ltd. (PTAB 2015). Successfully argued that all claims were patentable, overcoming examiner rejections based on art cited by litigation defendants in ex parte reexamination proceedings.

Transcenic, Inc. v. Google et al. (D. Del. 2011–15). Represented plaintiff in a patent infringement action involving technology for street-level geospatially oriented photographs, such as those used in Google’s StreetView function and Microsoft’s Streetside tools. Deposed third-party witness and was part of the trial team preparing witness testimony. Case settled on the eve of trial.

Alexsam, Inc. v. Best Buy et al. (E.D. Tex. 2010–13). Represented plaintiff in a patent infringement action involving prepaid store-branded gift cards. Deposed party and third-party fact witnesses. Assisted experts with reports and prepared fact and expert witnesses for patent validity trial and for three separate infringement trials.

Alexsam, Inc. v. NetSpend Corp. (Travis County Dist. Ct., Tex. 2007–12). Represented plaintiff in a breach of license action involving network branded prepaid cards. Pursued discovery, including third-party discovery through state courts outside of Texas. Assisted experts with reports and preparation for testimony. Participated in trial preparation and trial, including witness preparation, designation of deposition testimony and exhibits, and evidence hearings, resulting in a favorable jury verdict and subsequent favorable settlement.

Alexsam, Inc. v. IDT Corp. (E.D. Tex. 2007–11). Represented plaintiff in a patent infringement action involving prepaid phone and network-branded gift cards. Participated in trial preparation and trial in the Marshall division of the Eastern District of Texas, resulting in a favorable jury verdict, designated a 2011 Top 10 Texas IP Verdict. Subsequently represented plaintiff in going-forward damages case based on earlier judgment. Deposed party and non-party witnesses.

Presentations

• Adjunct Professor, Chicago-Kent College of Law, “Oral Advocacy for the IP Lawyer,” Fall 2019–present
• “Alphabet Soup: A Review and Summary of Post-Grant Practice at the USPTO,” Fitch Even Webinar, November 21, 2019.
• "Not So Obvious: Secondary Considerations at the PTAB,” Fitch Even Webinar, with Evan Kline-Wedeen, July 18, 2019.
• “Advanced Obviousness Analysis: Understanding the Reasonable Expectation of Success Doctrine,” Fitch Even Webinar, May 31, 2018.
• “Alice in Chains? Lessons Learned from Recent Federal Circuit Opinions on Patentable Subject Matter,” Fitch Even Webinar, January 25, 2017.
• “Pitfalls in Patent Licensing: The Litigator’s Perspective,” Fitch Even Webinar, March 31, 2016.
• “Exhaustion at the Federal Circuit: Lexmark Int’l, Inc. v. Impression Prods. Inc., et al.,” Case Law Review, American Intellectual Property Law Association, January 26, 2016.
• "Asserting Patents and Responding to Threats in the Age of State Anti-Troll Legislation," Fitch Even Webinar, with Edward E. Clair, September 25, 2014.
• "On-Sale Bars Under the America Invents Act: Avoiding Pitfalls," Fitch Even Webinar, with Joseph F. Marinelli, September 26, 2013.

Publications

• “PTAB Judges Should Call Balls and Strikes, Not Throw Curve Balls,” IP Watchdog, May 6, 2020.
• Gosse, David A. and Jeffrey N. Townes. “Post-Grant Strategies for Correcting and Challenging Patent Claims.” American Intellectual Property Law Association webinar paper, March 4, 2020.

• American Intellectual Property Law Association
  • PTAB Trial Committee
    • Chair
    • Vice Chair (2018–20)
  • Special Committee on Education Coordination (2017–19)
  • IP Transactions Committee
    • Chair, Programs Subcommittee
  • Education Committee
    • Chair, Law School Outreach Subcommittee (2015–17)
  • New Lawyer Committee
    • Chair, Giles Rich Moot Court Competition Problem-Drafting Subcommittee (2012–14)

• December 14, 2020

  IP Alert | PTAB Issues Final Rules Removing Presumption at Institution Favoring Petitioners

• November 24, 2020

  IP Alert | Federal Circuit Finds PTAB's Determination That a Patent Qualifies for CBM Review Is Not Appealable

• November 19, 2020

  Fitch Even Partner David Gosse Appointed Chair of AIPLA PTAB Trial Committee

• September 16, 2020

  IP Alert | Sun Sets on the Covered Business Method Review

• June 15, 2020

  IP Alert | PTAB Designates New Precedential and Informative Decisions on Procedural Issues

• May 20, 2020

  IP Alert | PTAB Cannot Invalidate Original Patent Claims Under 35 U.S.C. 112 in an IPR

• May 6, 2020

  Fitch Even Partners Tim Maloney and Dave Gosse Published in IP Watchdog

• April 10, 2020

  IP Alert | PTAB Holds Establishing Prior Art as a "Printed Publication" in Examination Differs From IPR Proceedings

• March 25, 2020

  IP Alert | PTAB Patent Judge Appointments Remain Unconstitutional After Federal Circuit Denies En Banc Rehearing

• February 19, 2020

  IP Alert | Federal Circuit Holds IPR Time-Bar Challenges Are Waivable

• February 11, 2020

  IP Alert | PTAB Cannot Invalidate Original Patent Claims Under 35 U.S.C. 112 in an IPR