Donald R. McPhail

Senior Counsel Chicago

Summary

Don has more than 20 years of experience in patent and trademark matters before the U.S. district courts, the U.S. International Trade Commission and the U.S. Court of Appeals for the Federal Circuit. He has handled cases involving a wide range of technologies, including avionics, LCD optics, video signaling, semiconductor design and operation, thin film transistor manufacturing and design, voice-over-internet telephony and firewalls, routers and switches, network topology and message routing, LED design and operation, PECVD manufacturing processes, regulated medical devices, computer software and electronic point of sale devices. Don also has experience with contested matters before the U.S. Patent & Trademark Office and the European Patent Office.

Prior to practicing law in the private sector, Don was an examiner with the U.S. Patent & Trademark Office, where he concentrated on applications in the drug and pharmaceutical arts.

All Service Areas

Education

  • Antonin Scalia Law School (Formerly George Mason University School of Law) (1994)
  • Duke University, M.S., Synthetic Organic Chemistry (1991)
  • Duke University, B.S. in Chemistry (with distinction) (1988)

Admissions

  • State - District of Columbia
  • Federal - United States Patent and Trademark Office
  • Federal - U.S. Court of Appeals for the Federal Circuit
  • Federal - U.S. District Court for the Eastern District of Texas

Notable Matters

  • Ferring B.V. v Watson Labs, Inc. et al. (represented defendant Apotex), 764 F.3d 1382 (Fed. Cir. 2014); patent infringement case relating to Apotex’s generic challenge to Ferring’s LYSTEDA product, prevailed at trial and on appeal to Federal Circuit; significant for holding that a generic company can moot ANDA litigation by amending its application to exclude the patented invention even while litigation is on-going.
  • Uniloc USA Inc. and Uniloc Luxembourg SA v. Meridian EMR Inc. et al. (represented defendants MeridianEMR, Endo Health Solutions, AmeriSourceBergen), Case No. 6:14-cv-00622  (E.D. Tx.); patent infringement case relating to electronic medical record software; case settled following successful motion to dismiss certain claims and subsequent mediation.
  • Apeldyn Corp. v. AU Optronics Corp. et al. (represented defendants Chi Mei Optoelectronics Corp. and Chi Mei Optoelectronics USA), 831 F.Supp.2d 817 (D. Del. 2011), aff’d, 522 Fed. Appx. 912, 912 (Fed.Cir. 2013); patent infringement case relating to video signaling in LCD devices; prevailed on summary judgment of non-infringement and on appeal to Federal Circuit.
  • Endo Pharmaceuticals Inc. et al. v. Actavis Laboratories UT, Inc. (represented plaintiff Endo), Case No. 2:13-cv-00192 (E.D. Tx.); patent infringement case relating to Actavis’ generic challenge to Endo’s FORTESTA product; prevailed at trial and on appeal to Federal Circuit.
  • Eidos Display, LLC et al. v. AU Optronics Corp. et al. (represented defendants Innolux and Chi Mei Optoelectronics USA), Case No 6:11-cv-00201 (E.D. Tx.); patent infringement case relating to manufacture of TFT-LCDs; prevailed on summary judgment of invalidity.
  • STB Ltd et al. v Johnson & Johnson et al. (represented plaintiff STB), Case No. 2:13-cv-00277 (E.D. Tx.); patent infringement case relating to J&J’s EVARREST bandage product; settled.
  • Allen Video Tech. v. Optoma Tech. (represented defendant Optoma), Case No. 1:15-cv-00999 (D. Md.); patent infringement case relating to LED projectors; settled during discovery.
  • ChanRx Corp. v. Case Western Reserve University et al. (represented 3d party defendants ChanTest Inc. and Dr. Arthur Brown), Case No. 1:13-cv-01948 (N.D. Ohio); case regarding ownership rights in various patents; settled following mediation.
  • Pfizer Inc. et al v. Mylan Pharmaceutical Inc. (represented defendant Mylan), Case No. 1:10-cv-00085 (D. Del); patent infringement case relating to Mylan’s generic challenge to Pfizer’s CADUET product; settled.
  • CardSoft (Assignment for the Benefit of Creditors), LLC v. VeriFone Holdings et al. (represented plaintiff CardSoft), Case No.  2:08-cv-00098 (E.D. Tx.); patent infringement case relating to electronic point of sale devices; prevailed at trial ($15MM+ award).
  • Cardsoft (Assignment for the Benefit of Creditors), LLC v. The Gores Group, LLC et al., Case No. 2:12-cv-00325 (E.D. Tx.); patent infringement case relating to electronic point of sale devices; settled after Markman.
  • Cardsoft (Assignment for the Benefit of Creditors), LLC v. First Data Corporation, Case No. 2:13-cv-00290 (E.D. Tx.); patent infringement case relating to electronic point of sale devices; settled.
  • Spherix Inc. v. Cisco Systems Inc. (represented plaintiff Spherix), Case No. 1:14-cv-00374 (D. Del.); patent infringement case based on Nortel patent portfolio; settled during discovery.
  • NNPT LLC v. Huawei Investment & Holding Co. Ltd et al., Case No. 1:14-cv-00667 (E.D. Tx.); patent infringement case based on Nortel patent portfolio; settled following Markman hearing.
  • Spherix Inc. et al. v. Juniper Networks Inc., Case No. 1:14-cv-00578 (D. Del.); patent infringement case based on Nortel patent portfolio; settled.

Professional Affiliations

  • Federal Circuit Bar Association (Member)
  • LMG Life Sciences Star (2012-2016)