David M. KoganPartner

David M. Kogan has strong capabilities in both patent prosecution and litigation, combined with substantial experience in prosecuting reexamination proceedings for patents that are being litigated. His skills and experience integrate with a wider focus on counseling large, midsized, and start-up companies on worldwide IP portfolio management, strategic development, and licensing.

In the area of patent prosecution, David primarily responds to U.S. Patent and Trademark Office actions in domestic and foreign patent applications and prepares new patent applications for inventions relating to mechanical, chemical, pharmaceutical, and software technologies. Most of David’s IP litigation experience is with cases involving patent infringement, but he also has litigated trademark, copyright, and trade secret disputes. In addition, he is experienced in conducting IP due diligence and freedom-to-operate studies.

David is fluent in Russian.

Represents a major food industry company in patenting inventions relating to mechanical and chemical technologies.

Represented start-up companies, large corporations, and universities in patenting pharmaceutical and chemical technologies.

Successfully prosecuted a reissue application and obtained a reissue patent directed to a mechanical system despite an unfavorable Federal Circuit decision regarding the parent patent.

Successfully represented a client in a patent infringement action involving mechanical devices and performed an IP due diligence study after the client acquired the defendant company.

Successfully prosecuted several concurrent ex parte reexamination proceedings directed to software technology, which resulted in reexamination certificates confirming the patentability of all claims of all patents without any amendments.

Tokai Corporation, et al. v. New York Lighter Company Inc., et al. (C.D. Cal. 2005). Represented Plaintiff in asserting three patents directed to child-resistant safety lighters against three different defendants. Prepared a summary judgment motion resulting in a favorable settlement for Plaintiff.

Akazawa v. Link New Technology International. Inc. (Fed. Cir. 2003). Represented Plaintiff in a patent infringement action relating to coolant-changing technology, in which the Federal Circuit issued a precedential opinion vacating the district court’s summary judgment ruling that plaintiff lacked standing. Case subsequently settled.

Revolution Eyewear, Inc., v. Aspex Eyewear, Inc. (C.D. Cal. 2003). Represented Plaintiff in a patent infringement action related to magnetic clip-on eyewear, obtaining reversal of a district court summary judgment finding of invalidity. Case subsequently settled.

Presentations

• "Navigating the Patent Gauntlet: Considerations for New Product Launch,” Fitch Even Webinar, with Nicholas T. Peters, February 23, 2023.
• “Intellectual Property: New Opportunities for Young Entrepreneurs,” St. Petersburg International Economic Forum, June 5, 2021.
• “A Deal with Intelligence: Heading for Capitalized IP,” Russian Venture Forum, April 8, 2021.
• "Patent-Eligible Subject Matter Considerations After CLS Bank and Ultramercial," Fitch Even Webinar, July 31, 2013.

• American Bar Association
• Los Angeles County Bar Association
• Los Angeles Intellectual Property Law Association

• February 13, 2024

  IP Alert | Government’s Royalty-Free Licensing Rights Affirmed Over USF Patent