David A. Gosse
“I am always fascinated with new technologies and new applications of technology. Working with inventors to identify and protect their inventions makes my job especially gratifying.”

David A. GossePartner

Chicago
120 South LaSalle Street
Suite 2100
Chicago, IL 60603VCard
312.577.7000 
312.577.7007 fax
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Education

J.D., Chicago-Kent College of Law, 2009
B.S., Mechanical Engineering, Northwestern University, 2001

Services

Technical Areas

Bar & Court Admissions

IllinoisU.S. Patent and Trademark OfficeNorthern District of IllinoisEastern District of MichiganEastern District of TexasU.S. Court of Appeals for the Federal Circuit

Recognition

Selected for inclusion in Illinois Super Lawyers – Rising Stars for Intellectual Property Law and Intellectual Property Litigation (2017 and 2018)
Chicago-Kent College of Law
  • Managing Editor, Journal of Intellectual Property, 2008-09
  • Represented Chicago-Kent in the 2008 Giles Rich Memorial Moot Court Competition sponsored by the American Intellectual Property Law Association
  • Recipient of CALI Award in Practice Before the Federal Circuit

David A. Gosse helps clients protect their intellectual property rights through litigation, working on all phases of litigation matters, ranging from due diligence investigations through trial and post-trial motions. In district court litigation, Dave has substantial pre-trial and trial experience, including multiple jury trials relating to patent infringement, validity, and breach of license. He has argued claim construction and motions for summary judgment and has deposed numerous fact and expert witnesses. He has extensive experience working with expert witnesses to develop their reports, prepare for depositions, and polish their trial testimony.

In addition, Dave helps clients procure and protect broad intellectual property protection at the U.S. Patent and Trademark Office, beginning with patent drafting and prosecution and extending to post-issuance reexamination and AIA proceedings as appropriate. He has successfully argued on appeal to the Patent and Trademark Appeal Board and has successfully defended patent owners against inter partes review and covered business method petitions at both the preliminary response stage and after institution of trial. Because his practice extends to both the acquisition and the enforcement of patent rights, Dave is better able to understand and evaluate issues that arise in intellectual property protection.

Dave has worked extensively with clients to protect innovations including complex process control algorithms, gift card activation systems, industrial printing hardware and software, DRAM and Flash memory, RISC processors, and a variety of mechanical devices.

Trained as a mechanical engineer, Dave worked for an engineering and software development firm before attending law school. He has practical, hands-on experience in systems integration, developing automation control solutions for many different industries on a variety of platforms, including robots, machine vision systems, PCs, and programmable logic controllers.



Industrial Print Technologies v. Hewlett-Packard Co. et al. (N.D. Tex. 2015–18). Currently representing the plaintiff in a patent infringement action involving technology related to high-speed industrial printing. Seven separate actions are consolidated for pre-trial discovery and claim construction.

Lone Star Silicon Innovations LLC v. Toshiba Corporation et al. (N.D. Cal. 2016–18). Currently representing the plaintiff in enforcement actions for multiple semiconductor process patents that relate to memory and other large-scale integrated semiconductor devices.

Limestone Memory Systems LLC v. Micron Technology, Inc. et al. (C.D. Cal. 2015–18). Currently representing the plaintiff in enforcement actions related to memory chip design. Responded to multiple petitions for inter partes review at the USPTO, successfully distinguishing claims in four asserted patents from the art cited in the petitions.

United Microelectronics Corp., et al. v. Lone Star Silicon Innovations LLC(PTAB 2018)Institution denied as to all claims after preliminary response.

Micron Technology, Inc. v. Limestone Memory Systems LLC (PTAB 2016). Institution denied as to all claims after preliminary response.

Apple Inc. v. Limestone Memory Systems LLC (PTAB 2016). Institution denied as to all claims after preliminary response.

Ex parte Tesseron Ltd. (PTAB 2015). Successfully argued that all claims were patentable, overcoming examiner rejections based on art cited by litigation defendants in ex partereexamination proceedings.

Transcenic, Inc. v. Google et al. (D. Del. 2011–15). Represented plaintiff in a patent infringement action involving technology for street-level geospatially oriented photographs, such as those used in Google’s StreetView function and Microsoft’s Streetside tools. Deposed third-party witness and was part of the trial team preparing witness testimony. Case settled on the eve of trial.

Alexsam, Inc. v. Best Buy et al. (E.D. Tex. 2010–13). Represented plaintiff in a patent infringement action involving prepaid store-branded gift cards. Deposed party and third-party fact witnesses. Assisted experts with reports and prepared fact and expert witnesses for patent validity trial and for three separate infringement trials.

Alexsam, Inc. v. NetSpend Corp. (Travis County Dist. Ct., Tex. 2007–12). Represented plaintiff in a breach of license action involving network branded prepaid cards. Pursued discovery, including third-party discovery through state courts outside of Texas. Assisted experts with reports and preparation for testimony. Participated in trial preparation and trial, including witness preparation, designation of deposition testimony and exhibits, and evidence hearings, resulting in a favorable jury verdict and subsequent favorable settlement.

Alexsam, Inc. v. IDT Corp. (E.D. Tex. 2007–11). Represented plaintiff in a patent infringement action involving prepaid phone and network-branded gift cards. Participated in trial preparation and trial in the Marshall division of the Eastern District of Texas, resulting in a favorable jury verdict, designated a 2011 Top 10 Texas IP Verdict. Subsequently represented plaintiff in going-forward damages case based on earlier judgment. Deposed party and non-party witnesses.

Presentations

  • Alice in Chains? Lessons Learned from Recent Federal Circuit Opinions on Patentable Subject Matter,” Fitch, Even, Tabin & Flannery Webinar, January 25, 2017.
  • “Pitfalls in Patent Licensing: The Litigator’s Perspective,” Fitch, Even, Tabin & Flannery Webinar, March 31, 2016.
  • “Exhaustion at the Federal Circuit: Lexmark Int’l, Inc. v. Impression Prods. Inc., et al.,” Case Law Review, American Intellectual Property Law Association, January 26, 2016.
  • "Asserting Patents and Responding to Threats in the Age of State Anti-Troll Legislation," Fitch, Even, Tabin & Flannery Webinar, with Edward E. Clair, September 25, 2014.
  • "On-Sale Bars Under the America Invents Act: Avoiding Pitfalls," Fitch, Even, Tabin & Flannery Webinar, with Joseph F. Marinelli, September 26, 2013.
  • American Intellectual Property Law Association
    • Special Committee on Education Coordination
    • IP Transactions Committee
      • Chair, Programs Subcommittee
    • Education Committee
      • Chair, Law School Outreach Subcommittee (2015–17)
    • New Lawyer Committee
      • Chair, Giles Rich Moot Court Competition Problem-Drafting Subcommittee (2012–14)

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