Profile

David has decades of experience working with business leaders to consistently deliver on business goals in the strategic management, use and enforcement of intellectual property (IP). He is frequently engaged in complex and consequential IP issues, in both commercial and government markets.

He has assisted clients in the formation and administration of hundreds of contracts and subcontracts. He also successfully litigated for a major defense contractor to protect proprietary business data. He has favorably resolved a dozen USG-initiated technical data rights challenges. He has negotiated transactions and resolved disputes with governments around the world and leading technology companies. He has also focused on business efficiency, including use of processes and tools for very large engineering groups, to ensure quick capture and action on important IP.

He began his career as a US Air Force officer, serving as a Chief Engineer of electronic technology procurement programs on behalf foreign governments, including the United Kingdom, Israel, Egypt, Hungary and Columbia. He later worked at the Secretary of the Air Force, Office of the General Counsel and interned at the United States Court of Appeals for the Federal Circuit for Judge Pauline Newman.

Credentials

Education
J.D., The George Washington University Law School (1999)

B.S., Mechanical Engineering, cum laude, Rose-Hulman Institute of Technology (1991)

Architecture and System Engineering: Models & Methods to Manage Complex Systems (Prof. Cert.), Massachusetts Institute of Technology xPRO (2022)

Bar and Court Admissions
Massachusetts
US Patent and Trademark Office
US Court of Appeals for the Federal Circuit
US District Courts of Massachusetts & Colorado

Representative Experience

  • Successfully defended data rights challenges to retain over $10 billion in sole source procurements. Also prevailed against data rights challenges in Other Transaction Agreement framework.
  • Led teams negotiating IP licenses of technology, data, software and services with customers and suppliers. Drafted licenses enabling $100 million in commercial software licensing, including resolution of USG end user license compliance disputes.
  • Lead attorney initiating litigation filed against the US Army at the Court of Federal Claims, successfully protecting vendor lists as proprietary business data.
  • IP Monetization Team leadership, securing high value licenses and conducting an IP Monetization Workshop on licensing fundamentals with 350 participants.
  • Led successful trademark opposition defense and negotiation of settlement with the US Army while securing global trademark protection for a significant product mark.
  • General Counsel to engineering function of 15,000 engineers and software developers in a business with customers and suppliers in 50 countries and $16 billion in annual revenue. Developed and implement strategies for engineering efforts for Independent Research and Development (IR&D) and bidding highly competitive procurements.
  • Policy lead for government procurement IP issues at a major defense contractor. Participant in Defense Acquisition Regulation (DAR) Council public meetings. Led discussions with House Armed Services Committee staffers on legislative issues.
  • Nominated to U.S. Navy Data Rights Tiger Team established by Assistant Secretary of the Navy for Research, Development and Acquisition.
  • Led IP strategy for offset, localization and non-US based subsidiaries, joint ventures, M&A, as well as development/co-development efforts and associated tax strategies at a major defense contractor. Led company-wide Data Rights Working Group.
  • Reformed patent procurement process and refocused filing strategy consistent with business competitive interests while reducing spend.
  • Built and managed large patent portfolios of thousands of cases for Fortune 50 clients. Managed law firm attorneys and staff distributed nationwide.  Personally drafted 200+ patents. 

Law Journals

Executive Notes Editor – American Intellectual Property Law Association Quarterly Journal

Publications

“Court Protects Closely Guarded Vendor Lists,”
National Defense, Sep. 2022, p. 18.

Working with Government chapter in book, Intellectual Property Operations and Implementation in the 21st Century Corporation, J. Wiley & Sons (2011)

Affiliations

Aerospace Industries Association (AIA) IP Committee
2024 & 2014 Chair

Licensing Executives Society (LES) Standards
Board of Directors

National Defense Industrial Association (NDIA)
Corporate Member

Speaking Engagements

Licensing Executives Society (LES) Annual Meeting – October 2024

     Panelist to discuss maximizing IP value through strategic spin-outs and alternative commercialization approaches.

Technical Data Rights Forum – Aerospace Industries Association & National Defense Industrial Association – September 2024

     Organizer and provided Opening Remarks and Closing Remarks.  Moderator of panel discussion of four CEOs on successfully bringing private capital to defense markets.

Defense Acquisition University (DAU) – April  2024

      Presented Intellectual Property in Executive Program Managers Course (PMT4020) to Program Executive Officers (PEOs) and Program Managers of Acquisition Category (ACAT) I and II programs. 

Department of Defense IP Forum – December 2023

      Panelist with Director of the Office of the Secretary of Defense Intellectual Property Cadre and Sr. Procurement Analyst of Defense Acquisition Regulations System to discuss extensive regulatory changes.

LES Annual Meeting – October 2023

      Moderator of panel of discussion on Innovation Lift from LES Standards.

US Air Force Materiel Command Corporate Counsel Day – May 2023

      Panelist to discuss data rights law.

Public Meetings for DoD Federal Acquisition Regulation Supplement (DFARS) – February & March 2023

      Presented industry remarks on behalf of Aerospace Industries Association in connection with Code of Federal Regulations proposed rule on Small Business Innovation Research (SBIR) Program Data Rights, as well as substantial impacts to all non-commercial and commercial data rights (DFARS Case 2019-D043).

LES Annual Meeting – October 2022

      Panelist in discussion on agreement drafting.

Technical Data Rights Forum – Aerospace Industries Association/National Defense Industrial Association – October 2022

      Panelist to discuss IP evaluation with: Office of the Secretary of Defense Intellectual Property Cadre Lead-Communications, Knowledge and Performance Management; and Chief Legal Officer, Anduril Industries; moderated by Assistant General Counsel (IP), Lockheed Martin Corporation.

The Next Frontier in Data Rights Policy and Practice?  Data Rights as a Competitive Proposal Evaluation Factor – June 2022

      American Bar Association Public Contract Law Intellectual Property Committee meeting panelist with Office of the Secretary of Defense Intellectual Property Cadre Lead-Communications, Knowledge and Performance Management and Assistant General Counsel (IP), Lockheed Martin Corporation.

Raising the Standard for Excellence in Innovation – November 2021

      Licensing Executives Society (LES) webinar.

Intellectual Property Owners Association (IPO) Annual Meeting – September 2020

      Panelist discussing Interests and Activity of the Sovereign vis-à-vis Private Intellectual Property Rights.

National Defense Industrial Association (NDIA) – June 2020

    IP Monetization webinar.

ACC National Capital Region – Rethinking Rights in Government Contracts – May 2020

      Panelist with USAF General Counsel and DoD Deputy Director for IP on webinar discussing DoD’s initial 2020 NDAA proposal for sharing manufacturing data with direct competitors.

Driving Innovation: Standards in Licensing & Intellectual Capital Management – May 2019

      Panelist discussing improvement of IP valuation outcomes.  At Silicon Valley US Patent & Trademark Office.