Overview

David helps clients of all sizes with their intellectual property, technology, data management and security issues.

His work includes developing, acquiring, protecting and commercializing IP and technology via diverse transactions, such as patent, technology and university licenses and other technology transfers, research, development and other collaborations, sponsored and government funded research, merger and acquisitions, and software and data agreements.

His clients work in a variety of industries, including life sciences, medical device, health care, software, manufacturing, advertising, design, service and retail. He works with clients to find practice and creative solutions to the client’s goals. Clients have described David as being an expert in life science licensing and having “a complete transactional skill set.”

Services

Experience

Licenses and Strategic Agreements

  • Negotiated a worldwide patent license relating to a system of producing emulsions and microcapsules that would enhance the client’s advanced genetic analysis technology.
  • Represented a medical device client in obtaining a technology license relating to a transvaginal system for apical support.
  • Represented the licensor in a license and development transaction relating to the construction of a plant for the extraction of oil from oil-based shingles.
  • Represented a global medical technology company in a strategic partnership agreement, licensing agreements and sublicensing agreements relating to the development and commercialization of blood testing equipment.
  • Represented an aerospace equipment manufacturer in a strategic teaming agreement with an international aircraft parts manufacturer for the commercialization of the parties’ combined technology.
  • Represented the owner of patents in the materials field in manufacturing, distribution and supply agreements for devices able to operate in adverse conditions, such as saltwater.

Mergers & Acquisitions

  • Negotiated and provided advice for a global medical device company in the acquisition of software for flow cytometry instruments.
  • Negotiated and provided advice for an agricultural lighting company for the divestiture of its technology.
  • Negotiated and provided advice for a packaging distribution company in its acquisition.

Credentials

Education

  • University of Minnesota Law School, J.D., 1990, cum laude
  • Wagner Moot Court
  • University of Wisconsin-Madison, B.S., Engineering Mechanics, 1987

Admissions

  • Minnesota, 1990
  • U.S. District Court for the District of Minnesota, 1991
  • U.S. Patent & Trademark Office, 1991

Recognition

  • IAM Patent 1000: The World’s Leading Patent Professionals, 2015-2021, 2023
  • Recommended Attorney for Licensing, Intellectual Asset Management’s Patent 1000, 2013
  • North Star Lawyer, Minnesota State Bar Association, 2012-2013

Civic & Professional

Professional Activities

  • University of Minnesota Office of Technology Transfer
  • Licensing Executive Society
  • American Intellectual Property Law Association
  • International Trademark Association (INTA)

Community

  • The Origins Program, President, Board of Directors, 2013
  • The Amnicon Foundation, Board of Directors Past President, 2010-2011

News & Insights

Legal Updates

Publications & Presentations

Speaker, “IP Issues in Commercial Agreements”, Minnesota CLE on IP Issues in Contracts, December 2019

Mentor, “Minnesota Swarm Legal Issues,” July 2019

Presenter, “Moving Beyond Boilerplate: Key Considerations for Getting the Right Indemnification Provision in Your IP Licenses,” 2015 Midwest IP Institute, September 17-18, 2015

Presenter, “IP Issues in Commercial Agreements,” 2013 Midwest IP Institute, September 26-27, 2013

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