David R. Clonts focuses on intellectual property litigation and strategic counseling.

Practice & Background

Mr. Clonts is active in all aspects of intellectual property protection, with a particular focus on, and experience in, electronics, software, computer technology, medical devices, networks and the Internet, telecommunications systems and protocols, and business methods. In these fields he has litigated over 50 patent cases, provided strategic intellectual property guidance and counseling, licensed intellectual property, and managed intellectual property aspects of corporate transactions.

Representative Matters

Mr. Clonts’ recent experience includes:

Litigation

  • defending one of the world’s largest semiconductor memory chip manufacturers against patent infringement claims to a take-nothing jury verdict in New Jersey. The case was named in the National Law Journal’s 2007 “Defense Hot List.”
  • defending one of the nation’s top broadband communications providers in three patent cases to favorable settlements, two in the Eastern District of Texas
  • representing successfully a patentee against a competitor for the patent infringement of a radar detector patent
  • representing successfully the plaintiff in a multimillion-dollar patent suit regarding encryption technology in garage door openers; case settled in favor of our client on the eve of trial
  • representing an indemnity defendant in litigation and successfully obtaining an indemnity following settlement of a set-top cable-box technology patent
  • representing a plaintiff alleging infringement of a patent related to blades for use in microkeratomes, ophthalmic devices used in LASIK; settled favorably to client, with defendant exiting the business
  • defending client against patent infringement claims regarding answering-machine technology; case settled on terms favorable for client

Long-Term Counseling Relationships

  • advice, counseling and litigation to one of the top ophthalmic medical device companies for over 15 years, focusing on refractive medical devices, lasers and lenses
  • strategic counseling and opinion work for one of the nation’s top telecommunications service providers for nearly 10 years, focusing on mobile telephony, network systems and business methods
  • counseling, strategic transaction analysis and patent litigation for one of the nation’s top broadband providers for over five years, focusing on network technology, routing and content delivery.

Awards & Accolades

  • Best Lawyers in America for Patent Litigation (2013 and 2014, 2016)
  • Chambers USA: America’s Leading Lawyers for Business (2005 - 2017)
  • Chambers Global: The World’s Leading Lawyers for Business (2006 - 2015)

Speaking Engagements

  • “Software Patents,” (Oct. 1997)
  • “Avoiding An Unintended Implied License” (Nov. 1997)
  • “Drafting Patent Applications” (June 1998)
  • “Patent Office Actions:  Anticipation & Obviousness” (June 1999)
  • “Intellectual Property for Emerging IT Enterprises” (Feb. 2000)
  • “Legal Issues: Securing your Information Assets” with Mason A. Gross (June 2000)
  • “On-Sale Bar (Post-Pfaff)” with Richard A. Schafer (June 2000)
  • “Claim Construction” with Lester L. Hewitt and Gregory M. Hasley (June 2000)
  • “Chasing Shadows—How Technology Companies Capture—and Lose—Their Intellectual Property” (Sep. 2000)
  • “Impact of Festo on Patent Prosecution”  (Feb. 2001)
  • “On Sale Bar” (Mar. 2001)
  • “The Legal Side Of Keeping What’s Yours:  Intellectual Property As A Competitive Tool” with John A. Tang and Richard D. Fladung (Oct. 2001)
  • “Demonstrative Evidence In Patent Trials” with Stephen P. Swinton (Nov. 2001)
  • “A Picture Is Worth…” with Stephen P. Swinton and Richard A. Schafer (Nov. 2001)
  • “Claim Construction” with Lester L. Hewitt (Jan. 2002)
  • “Claim Construction” with Lester L. Hewitt (Sep. 2002)
  • “Claim Construction, Stare Decisis, And Collateral Estoppel—What To Do In The Face Of A Bad Markman Ruling” with Erick S. Robinson (Sep. 2002)
  • “Drafting Patents in the Current Federal Circuit Climate” (Mar. 2004)
  • “The Supreme Court Set to Review Permanent Injunctions in Patent Cases” (Jan. 2006)
  • “e-Discovery: Applying the New FRCP Changes” (Aug. 2007)
  • “Practicing Law” (Oct. 2007)
  • “The Rise. . .And Fall?. . .of Patents in Corporate America” (Nov. 2007)
  • “Seagate: One Year Later” with Michael F. Reeder, ABA Annual Meeting (Aug. 2008)
  • “United States Patent Litigation: An Overview” (Oct. 2008)
  • “Litigation from 30,000 Feet” (Oct. 2008)
  • “Practicing Law” (Oct. 2008)
  • “The Role of Patent Reform and Recent Court Cases in Monetizing and Managing Your Portfolio” with Keith Witek (Feb. 2009)
  • “Anatomy of a Patent Case” (Dec. 2009)
  • “Microsoft Corp. v. i4i: Supreme Court Refuses to Lower the ‘Clear and Convincing’ Standard for Proving Patent Invalidity,” with James L. Duncan (June 2011).
  • ILR Legal Reform Summit Panel (Oct. 22, 2013)
  • ACI:  Patent Litigation Forum – “Patent Reform Primer: Analyzing the Implementation of the America Invents Act and Investigating Unresolved Issues on the Forefront of Litigation”  (Dec. 9, 2013)
  • Innovation in E-Discovery Conference “Social Media, BYOD, Cloud, Privacy, and Data Protection,” (June 2016)