David Callahan focuses on complex litigation in the areas of patent, trademark, trade secret, false advertising and unfair competition. IP Law and Business named David one of the "Top 50 Under 45" IP lawyers in the country; Law and Politics has listed him as an Illinois "Super Lawyer" since 2005; and Chambers and Partners named him to its Chambers USA, America's Leading Lawyers for Business 2011-2013 editions. Intellectual Asset Management magazine named him to the 2013 IAM Patent1000; LMG Life Sciences listed him as a "star" in its 2012 edition and he was listed in The International Who's Who of Business Lawyers 2011-2013 in the area of patents. David has tried numerous bench and jury trials; and has argued many appeals before the Federal and Seventh Circuit Courts of Appeal. In patent matters, David has represented clients in a diverse range of technologies, including semiconductors, medical devices, abrasives, paper products, automotive products, business methods, cellular telephony, building products and agricultural equipment.
David won summary judgment for Amazon.com in a case that received significant media attention, convincing the court that Amazon's "1-Click" feature did not infringe a competitor's patent. David tried a patent infringement case for Kubota Corporation against John Deere & Company that appeared in The Wall Street Journal article, "Jury Strikes Down Deere's Patent Claim Against Kubota Corp." The National Law Journal chose the Kubota win as one of the "Top 20 Defense Wins" of 2002. David's Lanham Act victory for his client, BCE Emergis, was covered in the article, "Court Rejects False Advertising Claim Brought by First Health Against 'Silent' PPO."
Patent Infringement Litigation
UMF Corp. v. Norwex (N.D. Ill. 2012) Lead counsel in defense of case involving antibacterial microfiber materials.
Hansen Mfg. Co. v. Enduro Systems Inc. (D.S.D. 2011) Lead counsel in defense of case involving grain moving technology and equipment.
Hemopet v. Hill's Pet Nutrition (C.D. Cal. 2012) Lead counsel in defense of multiple-patent case involving nutrigenomic methods used to make pet food.
ICTI Patent Litigation (E.D. Va. 2012) Lead counsel asserting patent portfolio related to Internet connectivity technology.
Dyson, Inc. v. LG Electronics (N.D. Ill. 2012) Lead counsel asserting claims and defending against patent counts related to advanced vacuum technology.
Church & Dwight v. Colgate (D.N.J. 2011) Lead counsel in defense of multi-patent case related to packaging technology.
Hill-Rom v. Stryker (W.D. Wis. 2011) Lead counsel asserting multiple patents related to hospital bed networks and connectivity.
Hill-Rom v. Stryker (S.D. Ind. 2011) Lead counsel asserting multiple patents related to hospital bed and stretcher mobility.
PPS Data v. Availity (M.D. Fla. 2011) Lead counsel defending multiple patent cases involving insurance claim processing.
Asher v. Colgate (D. Colo. 2010) Lead counsel defending consumer goods company accused of infringing toothbrush patent.
TexPat v. Littelfuse (E.D. Tex.) Lead counsel defending false patent marking case.
San Francisco Tech. v. Colgate, et al. (N.D. Cal. 2010) Lead counsel defending false patent marking case.
Broadridge v. Inveshare (D. Del. 2009) Lead counsel representing patent owner in case involving automated proxy services.
AlmondNet v. Microsoft (W.D. Wis. 2010) Lead counsel in asserting patent portfolio related to advanced Internet advertising technology.
IDEX v. CPS Color (N.D. Ill. 2008) Lead counsel asserting patent related to fluid dispensing technology.
Arimathea v. Hershey Foods, et al. (N.D. Ill. 2008) Lead counsel defending multiple parties accused of infringing packaging patent.
Credentials v. NSC (E.D. Va. 2008) Lead counsel in successful assertion of business method patent related to computerized degree and credentials verification.
Dripping Wet Water v. IDEX (N.D. Ill. and S.D. Tex. 2007-2008) Lead counsel in two cases involving two patent portfolios related to sanitization technology. Successfully led strategy to get initial case dismissed and to obtain judgment for client on all counts of second case.
Katz Patent Litigation (MDL 2007) Represented numerous defendants in connection with defense of MDL action asserting 25+ patents related to call center and teleconferencing technology.
Baxter v. Fresenius (N.D. Cal. 2007) Principal counsel for plaintiff in nine patent action related to technology for portable peritoneal dialysis.
Christiana Industries v. Empire Manufacturing (E.D. Mich. 2006) Lead counsel for plaintiff in patent infringement action. Obtained preliminary injunction on newly issued patent.
Kerr v. 3M (W.D. Wis. 2006) Lead counsel in defense of patent infringement action involving light curing of dental compounds. Defeated plaintiff's claims and achieved favorable settlement on client's counterclaims.
Wm. Wrigley v. Hershey (N.D. Ill. 2006) Lead counsel in defense of patent infringement action involving flavor additives used in chewing gum.
Emergis EIPP Litigation (various jurisdictions; 2004-2007) Lead counsel for plaintiff in patent infringement litigation involving electronic invoicing presentment and payment (EIPP) technology.
Prokop v. 3M (D. Okla. and D. Minn. 2005) Lead counsel in defense of patent infringement action involving ergonomic wrist-rest technology. Case settled following successful motion for change of venue.
Howmedica v. Zimmer, Inc. et al. (D.N.J. 2005) Lead counsel in defense of multiple-patent case involving technology related to highly crosslinked ultra high molecular weight polyethelene (UHMPWE) inserts for various orthopaedic implant systems. Won summary judgment on three of four asserted patents.
Thomas Ind. v. Gast Mfg. (W.D. Wis. 2004) Lead counsel in defense of patent infringement action in "rocket docket" involving oxygen accumulator technology; won summary judgment of noninfringement affirmed by Federal Circuit.
Agere Systems Inc. v. Atmel (E.D. Penn. 2005) Lead trial counsel for plaintiff in action asserting patents related to semiconductor processing and packaging.
IPXL Holdings LLP v. Amazon.com (E.D. Va. 2004) Lead counsel for defendant in "rocket docket" patent case related to "shopping cart" purchases using the Internet. Won summary judgment of noninfringement and invalidity; court ruled case "exceptional" and ordered award of attorneys' fees; liability judgment affirmed by Federal Circuit.
Computer Motion v. Intuitive Surgical (D. Del. and D. Cal. 2002-2003) Second chaired "bet the company" multi-district patent infringement and interference actions involving the principal manufacturers of robotic surgical equipment. Parties merged following summary judgment win in patent action.
Ricoh v. Katun Corporation, et al. (D.N.J. 2003) Lead counsel for defendant in action alleging infringement of six patents related to toner bottle design, as well as trademark infringement and unfair competition claims and antitrust counterclaims. Won summary judgment on all nonpatent counts; case settled following dismissal of four of six patent counts.
Agere Systems v. Broadcom, Inc. (E.D. Penn., W.D. Wis. and N.D. Cal. 2003-2004) Second chair for significant, multi-district patent litigation involving more than 30 patents covering wireless communications and storage technology. Successfully licensed defendant following Markman hearing.
BCE Emergis v. e-Docs (W.D.N.C. 2003) Lead counsel in patent case involving electronic invoicing patent. Successfully licensed defendant.
Solaia v. Arvinmeritor, et al./Solaia v. American Honda, et al. (N.D. Ill. 2002 and 2003) Lead counsel for numerous defendants in case brought by Niro, Scavone firm involving computer control of programmable logic controllers. Organized and headed up joint defense group.
3M v. Barton Nelson (D. Minn. 2002) Lead counsel for 3M in patent infringement action against multiple defendants related to tape flag technology. Won summary judgment of infringement request and validity.
Kelsey-Hayes v. Honeywell (E.D. Mich. 2002) Lead counsel for Honeywell in connection with defense of patent infringement litigation involving brake pad technology.
Webb Wheel, Inc. v. Gunite (N.D. Ala. 2002) Lead counsel for Gunite, a leading manufacturer of wheel-end components for trucks, in connection with defense of patent infringement litigation involving wheel hub technology used in antilock brakes.
Netscape Communications et al. v. Konrad (N.D. Cal. 2000) Second chair declaratory judgment action relating to plaintiff's allegations that his patents broadly cover important aspects of Internet functionality, including the ability to use databases remotely. Won summary judgment of patent invalidity.
3M v. Z-International (D. Minn. 1999) Second chair in case alleging patent infringement, trademark infringement and unfair competition related to 3M's Post-it® technology. Prevailed on all patent counts.
Illinois Tool Works v. Nordson (N.D. Ill. 1999) Second chair in case alleging patent infringement on technology related to meltblowing adhesives. Case settled with defendant taking a license under the asserted patents.
Wiand v. 3M (E.D. Mich. 1999) Second chair defense of patent infringement action involving industrial adhesive products.
John Deere v. Kubota Tractor Corporation (C.D. Ill. 1999) Second chair defense of patent infringement action relating to farm and garden tractor equipment for $12 billion Japanese corporation. Jury verdict for defendant; affirmed on appeals; listed as "Top Twenty Defense Win" for 2002.
Security & Access v. Motorola (D. Del. 1997) Second chair in defense of a patent case involving cellular telephony. Following two-week jury trial patent was held invalid and not infringed.
Bell & Howell v. Altek Systems (N.D. Ill. 1996-1998) Second chair in patent infringement action involving microfilm storage technology. Obtained preliminary injunction after which case settled.
James River v. Hallmark Cards, Inc. (E.D. Wis. 1993-1997) Second chair for patent infringement action involving manufacturing technology. Responsible for damages case. Obtained favorable settlement for client on eve of trial.
Georgia-Pacific v. United States Gypsum (D. Del. 1996) Second chaired two-week jury trial concerning advanced wallboard technology.
Representative Trade Secret Litigation
Unigen v. Colgate-Palmolive (N.D. Wash. 2007) Lead counsel in defense of trade secret and breach of contract action related to oral care formulations.
Xentris v. Firefly (DuPage County, Ill. 2006) Lead counsel in defense of case alleging breach of contract and trade secret misappropriation. Case dismissed following fact discovery.
Descartes Systems v. ProLogis Trust, et al. (C.D. Cal. 2000) Represented multi-billion dollar REIT, along with its technology affiliates, as lead counsel in defense of action for misappropriation of trade secrets, breach of contract and fraud. Defeated motions for temporary restraining order and preliminary injunction, leading to favorable settlement for clients.
General Clutch v. General Motors (D. Conn. 1993) Represented General Motors in a trade secret and breach of contract action involving no-back clutch used in antilock braking systems. Limited plaintiff's claims and obtained favorable settlement for client.
Representative Trademark/Unfair Competition/False Advertising Litigation
Dyson, Inc. v. Bissell (N.D. Ill. 2010) Lead counsel in false advertising action related to HEPA filtration performance claims.
Dyson B2B v. AAA Kitchens (E.D. Penn. 2009) Lead counsel in trademark infringement suit, which resulted in permanent injunction and damages award.
Dyson, Inc. v. Oreck Direct LLC (D. La. 2007) Lead counsel in false advertising action related to vacuum cleaner performance claims and related commercial dispute.
Weinstein v. Timberland, et al. (N.D. Ill. 2005) Lead counsel in defense of putative class action brought under Telephone Communications Privacy Act (TCPA).
Hill's Pet Nutrition v. Nutro Products (C.D. Cal. 2004) Lead counsel in false advertising, unfair competition and trademark matter relating to the advertising and promotion of premium pet food. Obtained preliminary and permanent injunctions against false advertising.
United Payors & United Providers v. St. John's Hospital (W.D. Mo. 2000; related cases pending in Missouri State Court) Lead counsel in multiple-party actions involving claims for unfair competition, breach of contract and fraud. Won case on summary judgment.
Unext.com LLC v. Learnsoft Corp. and Unexus University (D. Mass. 2000) Lead counsel in action for trademark infringement, false advertising and unfair competition, representing a premier Internet-based educational services company. Case settled with defendant agreeing to change its trademark.
Hoeganaes Corporation v. Höganäs A.B. (D. Del. 1999) Lead counsel in action for trademark infringement and breach of contract. Case settled on favorable terms following the filing of a motion for preliminary injunction.
First Health v. United Payors & United Providers (N.D. Ill. 1996) Lead counsel in defense of case alleging trademark infringement, false advertising and unfair competition. Obtained summary judgment on plaintiff's false advertising and unfair competition claims, and dismissal of claim for $50 million in damages.
Morison v. Rand McNally & Company (Sup. Ct. Cal. 1996) Responsible for defense of false advertising/unfair competition action brought by an individual acting as private attorney general. Also responsible for compliance with FTC inquiry. Case settled on favorable terms; FTC withdrew its investigation. Also responsible for obtaining coverage from client's insurer.
Morrison's Orchards v. TruGreen L.P. (TTAB 1995) Responsible for handling cancellation and opposition proceedings before the Trademark Trial and Appeal Board. Case settled with client keeping its marks and acquiring additional rights in related marks.
Office Depot Inc. v. Mar-Mol, et al. (D.P.R. 994) Lead counsel in case involving trademark infringement and unfair competition. Prepared for a preliminary injunction hearing with witnesses. Case settled with client receiving the requested injunction; also won motion for discovery sanctions.
Representative Commercial Litigation and Arbitration
Baxter v. Fresenius (N.D. Ill. 2009) Lead counsel in breach of contract litigation arising out of long-term supply agreement for peritoneal dialysis equipment and supplies.
Marquette v. Rowe, et al. (Va. Bankr. and E.D. Va. 2007) Lead counsel in breach of contract and conversion action, arising out of bankruptcy transaction.
Jupiter Medical Center v. Aetna (Palm Beach County 2002) Lead counsel in breach of contract case related to third-party payment of medical expenses.
BCE Emergis v. Ariba, Inc. (N.D. Cal. 2002) Lead counsel in case alleging breach of contract, fraud and negligent misrepresentation arising out of breach of strategic alliance agreement for electronic commerce facilities. Won partial summary judgment leading to favorable settlement.
BCE Emergis v. St. Johns Regional Health Center (W.D. Mo. 2001) Lead counsel in litigation involving claims of breach of contract, fraud and negligent misrepresentation related to provider services agreement with national health care network. Successfully obtained judgment of breach of contract; defeated all counterclaims.
Primrose Healthcare Services v. BCE Emergis (Amer. Arb. Ass'n 2001) Lead counsel in successful arbitration involving claims of breach of contract, fraud and negligent misrepresentation related to provider services agreement with national health care network.
SodaMate Enterprises, Inc. v. 3M Represented $3million in a dispute involving intellectual property rights in an industrial chemical dispensing system. Engaged in protracted negotiations and mediation which led claimant to withdraw their claims to ownership of 3M intellectual property.
Representative Computer and Internet Litigation and Counseling
Various Domain Name Disputes and Counseling: Significant counseling for clients regarding disputes over domain names on the World Wide Web. Domain name investigations, domain name transfers and litigation involving domain names, including against cyber-pirates.
Agency Management Services v. Management Automation Services, et al. (N.D. Cal. 1992) Copyright infringement (computer software), breach of contract, theft of trade secrets. Second chair, responsible for all document and fact discovery, preparation of pretrial order and related materials, drafting of all pleadings. Case settled with entry of consent judgment, injunction and cash payment to client.
DSC v. Motorola (E.D. TX. 1992) Defense of preliminary injunction action for copyright infringement (computer software), breach of contract and theft of trade secrets. Responded to action brought in "rocket docket" in a case involving claims in the hundreds of millions of dollars. Case settled prior to preliminary injunction hearing on more favorable terms than client had offered prior to suit.
Representative Copyright Litigation
I.B. Diffusion v Lands' End, Inc. (N.D. Ill. 1995) Lead counsel in defense of retailer accused of infringing a copyright for fabric design. Handled all discovery and motion practice. Case settled with client receiving right to sell allegedly infringing merchandise. Recovered six-figure sum from supplier in related third-party action.
Representative Appellate Litigation
Howmedica v. Zimmer, et al. (Fed. Cir. 2010) Argued defense of appeal by plaintiff of summary judgment of indefiniteness as to three patents. Affirmed per curiam.
Oreck Direct LLC v. Dyson, Inc. (5th Cir. 2009) Lead counsel in defense of appeal from motion for summary judgment. Decision below affirmed.
Thomas v. Gast (Fed. Cir. 2006) Argued defense of appeal by plaintiff of summary judgment of noninfringement. Affirmed per curiam.
IPXL v. Amazon.com (Fed. Cir. 2004) Argued defense of appeal by plaintiff of summary judgment of noninfringement and invalidity; judgment of district court affirmed.
John Deere v. Kubota (Fed. Cir. 2003) Principal author of brief defending appeal of successful jury verdict of noninfringement. Affirmed per curiam.
First Health v. United Payors & United Providers (7th Cir. 2001) 269 F.3d 800. Argued appeal to Seventh Circuit. Seventh Circuit upheld grant of summary judgment by District Court, and its opinion established important precedent with respect to the limitations of claims brought under the Lanham Act's false advertising prong.
Georgia-Pacific v. United States Gypsum (Fed. Cir. 1999) 195 F.2d 1322. Principal author of brief challenging infringement and validity verdict. Obtained reversal of decision that certain patent claims were not invalid for obviousness-type double patenting and obtained new trial on other claims on issue of infringement.
Middleton v. 3M (Fed. Cir. 1999 and 2002) Principal author of brief defending entry of summary judgment of noninfringement in a patent infringement case.
Quinn v. McGraw-Hill Companies (7th Cir. 1999) 168 F.3d 331. Argued appeal to Seventh Circuit. Principal author of brief defending dismissal of complaint alleging that client's Standard & Poors rating service had negligently rated a bond issue. Seventh Circuit opinion establishes important precedent limiting a rating service's liability to parties other than its actual customers.
Bell & Howell v. Altek, et al. (Fed. Cir. 1997) 132 F.3d 701. Principal author of briefs appealing a district court's refusal to grant a preliminary injunction. Obtained rare reversal of denial of a preliminary injunction in an opinion widely cited on the issues of preliminary injunctions and claim construction.
Memberships & Affiliations
Member of Advisory Board, DePaul University Center for Intellectual Property Law and Information Technology (CIPLIT)
Illinois College, President's Advisory Council
Intellectual Property Owners Association, E-Commerce/Internet Committee
American Intellectual Property Law Association
Federal Circuit Bar Association
American Bar Association, Litigation Section
Recruiting, Operations, and Associate Review Committees
Co-Founder, K&E Parenting Link
Professional Presentations and Awards
Recognized as one of the "Top 50 Under 45" in IP Law & Business, 2008
Named to the IAM Patent 1000 by Intellectual Asset Management Magazine, 2013
Listed as a "star" in LMG Life Sciences, 2012
Listed in Chambers USA, America's Leading Lawyers for Business, 2011-2013
Listed in The International Who's Who of Business Lawyers in the area of patents 2011-2013
Listed in The Legal 500 U.S., 2011 and 2013 (Trademarks, Marketing & Advertising)
Listed as an "Illinois Super Lawyer" by Law and Politics, 2005-2013
Listed in The Best Lawyers in America, 2012-2014
Listed as a "Washington D.C. Super Lawyer" by Law and Politics, 2012-2013
Illinois State Bar Association Presented "Rambus is Final: Where Do We Go From Here?" September 2009.
Institute of Canadian General Counsel Presentation and panel discussion on U.S. patent law issues at Spring 2004 Meeting.
American Conference Institute Panelist on Advanced Forum on Litigating Patent Disputes, February and March 2002.
Society of Automotive Engineers Presented "Intellectual Property Law For Engineers" on numerous occasions.
American Intellectual Property Law Association Panelist, "Free Agents: Retaining Junior Attorneys," Spring 1999 Meeting.
PricewaterhouseCoopers General Counsel Forum Presented seminar on patent litigation to gathering of Chicago-area general counsel.
Co-author, US Patent Law Reform (Japan Institute for Promoting Invention and Innovation, forthcoming)
United States Supreme Court
Supreme Court of Illinois
District of Columbia
Courts of Appeals for the Federal, Fifth, Seventh, Ninth and District of Columbia Circuits
Federal District Courts: N.D., IL., CA., C.D., S.D. IN., E.D. MI., E.D., W.D. WI., DE. CO., TX.
Member of Trial Bar, N.D. Ill