The Innovation Firm

David J. Brody

Practice Areas

Technologies

Education

  • Brown University, Sc.B. in Organic Chemistry, cum laude
  • Yale University, M.S. in Physical Organic Chemistry
  • New York University School of Law, J.D., magna cum laude First in class

Professional Associations

  • American Bar Association, IP Litigation Section
  • Boston Bar Association
  • Boston Patent Law Association, Litigation Section
  • Order of the Coif Honorary Society

David J. Brody

David J. Brody Attorney

David J. Brody

Of Counsel
Concord office
978.341.0036

David's practice focuses on complex business disputes and IP litigation in trial and appellate courts across the country. In addition to patent infringement litigation, David’s practice includes disputes involving trade secret misappropriation, nondisclosure agreements, invention assignment and license agreements, trademark infringement, and unfair competition and other intellectual property disputes. He also has extensive experience in licensing and other IP transfer transactions.

David works with clients ranging from large multi-national corporations and major academic institutions to start-ups and individuals. His clients have been in a wide range of industries, including medical technology, organic chemistry, oil refinery waste remediation, chemical engineering, CT imaging, acoustics, genetic diagnostic testing, telecommunications, plastic chambers for underground conduits, video signal processing, and medical apparatus. 

David holds a chemistry degree from Brown University, a physical organic chemistry master’s degree from Yale University and a law degree from New York University.  For nine years, he has been named to Super Lawyers, which is a rating of outstanding lawyers who have attained a high-degree of peer recognition and professional achievement.

Before joining Hamilton Brook Smith Reynolds, David was with Widett, Slater & Goldman, P.C. and Foley Hoag, both in Boston, and Paul, Weiss, Rifkind, Wharton & Garrison in New York.

Other Publications

  • “Employee Invention Assignment Agreements: Issues in Getting Them Right,” Association of Corporate Counsel Lexology, 2011
  • “Who Really Owns Those Patents that I Thought I Own, or Why I Am Stuck With Just a Royalty on the Sales that My Infringing Competitor Stole from Me,” Boston Business Journal website, 2011

Bar Admissions

  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Court of Appeals for the First Circuit
  • U.S. District Court, District of Massachusetts
  • Massachusetts
  • Various federal trial and appellate courts around the country

 

  • Represented a Fortune 500 company in an action for misappropriation of trade secrets involving imaging technology that had a value of tens of millions of dollars. We developed evidence of the misappropriation through an analysis of e discovery obtained from the defendant, which resulted in a successful resolution under a confidential settlement agreement.
  • Defended a major franchisor in litigation by a competitor who alleged that the client’s new nationwide identity program infringed the competitor’s registered trademark.  After we asserted a counterclaim that the competitor’s own trade name infringed one of our client’s marks, the case was settled on favorable terms that included a concurrent use agreement
  • Represented a manufacturer of consumer electronics equipment in an unfair competition action in the District of New Hampshire against an unauthorized reseller.  The litigation settled under an arrangement with the defendant ceasing its unauthorized sales
  • Represented a technology development consulting firm against one of its clients that is among the world’s largest integrated circuit manufacturers, for misappropriation of our client’s intellectual property rights in certain MEMS technology.  The conflict was resolved by the manufacturer assigning to our client the patent applications that the IC manufacturer had filed on the inventions. In addition, the IC manufacturer paid our client’s legal fees.
  • Represented a client against a software developer for breach of a contract relating to a digital publishing platform.  After we uncovered the defendant’s violation of a preliminary injunction that we had secured, we had the defendant held in contempt of court and were able to settle the matter with a seven-figure payment to our client that included legal fees.
  • Represented a biotechnology company in a dispute with another company regarding ownership of patent rights.  We developed an informal litigation approach in which both sides presented evidence and view points over several months which resulted in a favorable settlement for our client in an amicable context that enabled our client to have continued business relations with the other party.
  • Defended a patent infringement action that involved LED backlight technology and light enhancing films in the U.S. District Court for the District of Delaware. We formulated a defense strategy that included expedited discovery and mediation to achieve a favorable settlement for our client on the eve of our taking the inventor’s deposition.
  • Represented an international research and development company in litigation in the U.S. District Court for the Eastern District of New York, as well as a related arbitration, against a licensee of the client’s patents that involved video recorder technology. After a three-week trial, our client received a judgment that exonerated it of all alleged improprieties and vindicated its early termination of the license.
  • Represented a patent owner in an infringement action involving telecommunications technology in the U.S. District Court for the District of New Jersey. We successfully disqualified the defendant’s law firm, a major New York City patent law firm, and the case settled thereafter on terms favorable to our client.
  • Represented the patent owner in an infringement action involving genetic diagnostic testing procedures which included a contempt motion to enforce an injunction entered against the defendant.  The defendant agreed to an expanded permanent injunction and a substantial payment toward our client’s attorneys’ fees.
  • Represented a Fortune 500 company in enforcement litigation of a group of its biotech patents. The case resulted in a settlement payment of more than 60% of the infringer’s gross revenue on its infringing sales, a permanent injunction, and the sending of a joint letter to the infringer’s customers urging them to make their future purchases from our client.
  • Defended a patent infringement action involving oil refinery technology in the U.S. District Court for the Southern District of Texas. After summary judgment of patent invalidity was affirmed on appeal, the patent owner paid our client a high six-figure amount toward its litigation defense costs. We also identified insurance policies which led to our client’s receiving a further mid-six figure amount toward its litigation defense costs.
  • Defended a succession of patent infringement claims in the U.S. District Court for the District of Connecticut, as well as in related arbitrations, involving molded plastic chamber technology. The controversy included a counterclaim by our client for infringement of a design patent. In each proceeding, our client either prevailed after a trial on the merits or was able to settle the proceeding on favorable terms.
    • Negotiated a long-term business relationship between our client, a major genetic diagnostic company, and a research organization under which our client sponsored a research program by the other party to develop the underlying technology for a major new business segment.  The negotiations centered on creating a structure for allocating ownership and other IP rights in the various developments produced by the research program depending on the development's ultimate commercial value.
    • Negotiated a settlement of an alleged infringement claim against a medical device manufacturer that resulted in a cross license of limited scope, thereby removing a cloud over our client's entire business.
    • Negotiated an expansion of a limited field of use license to enable our client to launch a new product line.

Firm News

  • Mary K. Murray, Ph.D. and Scott Pierce Organize Symposium with Suffolk University Law School to Discuss Critical Changes in Patent Law and Practice – Chief Judge Randall R. Rader Will Participate more
  • “Litigation Issues Under the America Invents Act (AIA),” Suffolk University Law School – Conference Panelist, Boston, MA, 2012
  • “Employee Invention Assignment Agreements," Suffolk University Law School Lecture, Boston, MA, 2012
  • “Owning What You Think You Own: Avoiding Pitfalls in IP Rights and Assignments,” ALM Media CLE Seminar, Stamford, CT, 2011
     
Biography

David's practice focuses on complex business disputes and IP litigation in trial and appellate courts across the country. In addition to patent infringement litigation, David’s practice includes disputes involving trade secret misappropriation, nondisclosure agreements, invention assignment and license agreements, trademark infringement, and unfair competition and other intellectual property disputes. He also has extensive experience in licensing and other IP transfer transactions.

David works with clients ranging from large multi-national corporations and major academic institutions to start-ups and individuals. His clients have been in a wide range of industries, including medical technology, organic chemistry, oil refinery waste remediation, chemical engineering, CT imaging, acoustics, genetic diagnostic testing, telecommunications, plastic chambers for underground conduits, video signal processing, and medical apparatus. 

David holds a chemistry degree from Brown University, a physical organic chemistry master’s degree from Yale University and a law degree from New York University.  For nine years, he has been named to Super Lawyers, which is a rating of outstanding lawyers who have attained a high-degree of peer recognition and professional achievement.

Before joining Hamilton Brook Smith Reynolds, David was with Widett, Slater & Goldman, P.C. and Foley Hoag, both in Boston, and Paul, Weiss, Rifkind, Wharton & Garrison in New York.

Other Publications

  • “Employee Invention Assignment Agreements: Issues in Getting Them Right,” Association of Corporate Counsel Lexology, 2011
  • “Who Really Owns Those Patents that I Thought I Own, or Why I Am Stuck With Just a Royalty on the Sales that My Infringing Competitor Stole from Me,” Boston Business Journal website, 2011
Representative Experience

 

  • Represented a Fortune 500 company in an action for misappropriation of trade secrets involving imaging technology that had a value of tens of millions of dollars. We developed evidence of the misappropriation through an analysis of e discovery obtained from the defendant, which resulted in a successful resolution under a confidential settlement agreement.
  • Defended a major franchisor in litigation by a competitor who alleged that the client’s new nationwide identity program infringed the competitor’s registered trademark.  After we asserted a counterclaim that the competitor’s own trade name infringed one of our client’s marks, the case was settled on favorable terms that included a concurrent use agreement
  • Represented a manufacturer of consumer electronics equipment in an unfair competition action in the District of New Hampshire against an unauthorized reseller.  The litigation settled under an arrangement with the defendant ceasing its unauthorized sales
  • Represented a technology development consulting firm against one of its clients that is among the world’s largest integrated circuit manufacturers, for misappropriation of our client’s intellectual property rights in certain MEMS technology.  The conflict was resolved by the manufacturer assigning to our client the patent applications that the IC manufacturer had filed on the inventions. In addition, the IC manufacturer paid our client’s legal fees.
  • Represented a client against a software developer for breach of a contract relating to a digital publishing platform.  After we uncovered the defendant’s violation of a preliminary injunction that we had secured, we had the defendant held in contempt of court and were able to settle the matter with a seven-figure payment to our client that included legal fees.
  • Represented a biotechnology company in a dispute with another company regarding ownership of patent rights.  We developed an informal litigation approach in which both sides presented evidence and view points over several months which resulted in a favorable settlement for our client in an amicable context that enabled our client to have continued business relations with the other party.
  • Defended a patent infringement action that involved LED backlight technology and light enhancing films in the U.S. District Court for the District of Delaware. We formulated a defense strategy that included expedited discovery and mediation to achieve a favorable settlement for our client on the eve of our taking the inventor’s deposition.
  • Represented an international research and development company in litigation in the U.S. District Court for the Eastern District of New York, as well as a related arbitration, against a licensee of the client’s patents that involved video recorder technology. After a three-week trial, our client received a judgment that exonerated it of all alleged improprieties and vindicated its early termination of the license.
  • Represented a patent owner in an infringement action involving telecommunications technology in the U.S. District Court for the District of New Jersey. We successfully disqualified the defendant’s law firm, a major New York City patent law firm, and the case settled thereafter on terms favorable to our client.
  • Represented the patent owner in an infringement action involving genetic diagnostic testing procedures which included a contempt motion to enforce an injunction entered against the defendant.  The defendant agreed to an expanded permanent injunction and a substantial payment toward our client’s attorneys’ fees.
  • Represented a Fortune 500 company in enforcement litigation of a group of its biotech patents. The case resulted in a settlement payment of more than 60% of the infringer’s gross revenue on its infringing sales, a permanent injunction, and the sending of a joint letter to the infringer’s customers urging them to make their future purchases from our client.
  • Defended a patent infringement action involving oil refinery technology in the U.S. District Court for the Southern District of Texas. After summary judgment of patent invalidity was affirmed on appeal, the patent owner paid our client a high six-figure amount toward its litigation defense costs. We also identified insurance policies which led to our client’s receiving a further mid-six figure amount toward its litigation defense costs.
  • Defended a succession of patent infringement claims in the U.S. District Court for the District of Connecticut, as well as in related arbitrations, involving molded plastic chamber technology. The controversy included a counterclaim by our client for infringement of a design patent. In each proceeding, our client either prevailed after a trial on the merits or was able to settle the proceeding on favorable terms.
    • Negotiated a long-term business relationship between our client, a major genetic diagnostic company, and a research organization under which our client sponsored a research program by the other party to develop the underlying technology for a major new business segment.  The negotiations centered on creating a structure for allocating ownership and other IP rights in the various developments produced by the research program depending on the development's ultimate commercial value.
    • Negotiated a settlement of an alleged infringement claim against a medical device manufacturer that resulted in a cross license of limited scope, thereby removing a cloud over our client's entire business.
    • Negotiated an expansion of a limited field of use license to enable our client to launch a new product line.
Education
  • Brown University, Sc.B. in Organic Chemistry, cum laude
  • Yale University, M.S. in Physical Organic Chemistry
  • New York University School of Law, J.D., magna cum laude First in class
Speaking Engagements
  • “Litigation Issues Under the America Invents Act (AIA),” Suffolk University Law School – Conference Panelist, Boston, MA, 2012
  • “Employee Invention Assignment Agreements," Suffolk University Law School Lecture, Boston, MA, 2012
  • “Owning What You Think You Own: Avoiding Pitfalls in IP Rights and Assignments,” ALM Media CLE Seminar, Stamford, CT, 2011
     
Professional Associations
  • American Bar Association, IP Litigation Section
  • Boston Bar Association
  • Boston Patent Law Association, Litigation Section
  • Order of the Coif Honorary Society
News
  • Mary K. Murray, Ph.D. and Scott Pierce Organize Symposium with Suffolk University Law School to Discuss Critical Changes in Patent Law and Practice – Chief Judge Randall R. Rader Will Participate more
Bar Admissions
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Court of Appeals for the First Circuit
  • U.S. District Court, District of Massachusetts
  • Massachusetts
  • Various federal trial and appellate courts around the country

Back to the Top