PROFESSIONALS

Jonathan A. David

Of Counsel
T: 908.518.6331
F: 908.654.7866
E: jdavid@lernerdavid.com
20 Commerce Drive
Cranford, NJ 07016
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Litigation Experience

Jon David is hands on, detail oriented, organized, and thinks strategically. He has handled all aspects of IP litigation since 1992, and has been involved in numerous patent reexaminations and inter partes review proceedings. He excels in formulating and implementing targeted strategies from the onset of a case to ensure that client goals are being advanced.

Technology

Jon’s cases have been predominantly in high technology areas that match his electrical engineering and computer background. He has litigated cases involving microprocessors, hard drives and data storage, data synchronization, mobile phones, DVD and Blu-ray players, digital cameras, LCD displays, encryption methods, data security, telecommunication systems, cable and satellite TV equipment, and three-dimensional (3D) printing technologies. He has also litigated cases involving trademark infringement, copyright infringement of source code, and federal and state unfair competition.

Breaking Down The Complex

Jon's ability to break down complex technology, jargon, and techno-speak into understandable and familiar examples is one of his strongest skills. This ability translates into highly effective presentation and persuasion skills that he has used successfully before judges and juries, as well as key decision makers of both clients and adversaries, who desire concise and understandable information to quickly drill down to the bottom line.

Strong IP Roots

Jon began his career in the fundamentals of IP work, performing patentability searches and opinions, right-to-use and clearance searches and opinions, U.S. and foreign patent prosecution, trademark clearance and prosecution, IP licensing, and client counseling on all aspects of IP law. Jon is still active in all of these areas, and his extensive prosecution and litigation experience proves most valuable when providing real world advice to clients as to what may happen down the road in litigation or adversarial situations.

Practical Business Advice

Jon's practical and instinctive legal advice has helped big and small companies achieve fast and cost-effective resolution of commercial IP disputes. Jon focuses on business-driven solutions so clients can get back to their core businesses rather than being involved in drawn out IP disputes.

Litigation Experience

Strong IP Roots

Overview

Litigation Experience

Jon David is hands on, detail oriented, organized, and thinks strategically. He has handled all aspects of IP litigation since 1992, and has been involved in numerous patent reexaminations and inter partes review proceedings. He excels in formulating and implementing targeted strategies from the onset of a case to ensure that client goals are being advanced.

Technology

Jon’s cases have been predominantly in high technology areas that match his electrical engineering and computer background. He has litigated cases involving microprocessors, hard drives and data storage, data synchronization, mobile phones, DVD and Blu-ray players, digital cameras, LCD displays, encryption methods, data security, telecommunication systems, cable and satellite TV equipment, and three-dimensional (3D) printing technologies. He has also litigated cases involving trademark infringement, copyright infringement of source code, and federal and state unfair competition.

Breaking Down The Complex

Jon's ability to break down complex technology, jargon, and techno-speak into understandable and familiar examples is one of his strongest skills. This ability translates into highly effective presentation and persuasion skills that he has used successfully before judges and juries, as well as key decision makers of both clients and adversaries, who desire concise and understandable information to quickly drill down to the bottom line.

Strong IP Roots

Jon began his career in the fundamentals of IP work, performing patentability searches and opinions, right-to-use and clearance searches and opinions, U.S. and foreign patent prosecution, trademark clearance and prosecution, IP licensing, and client counseling on all aspects of IP law. Jon is still active in all of these areas, and his extensive prosecution and litigation experience proves most valuable when providing real world advice to clients as to what may happen down the road in litigation or adversarial situations.

Practical Business Advice

Jon's practical and instinctive legal advice has helped big and small companies achieve fast and cost-effective resolution of commercial IP disputes. Jon focuses on business-driven solutions so clients can get back to their core businesses rather than being involved in drawn out IP disputes.

Practices
Admissions

1993, United States Patent & Trademark Office
1992, New Jersey
Education

J.D., cum laude, Seton Hall University Law School, 1992; Editorial Board, Seton Hall Constitutional Law Journal
B.S., Electrical Engineering, Cornell University, 1989
Successes

Lerner David Obtains Dismissal with Prejudice of Copyright Lawsuit Against Sony’s Digital Binoculars

Claiming infringement of a copyright registration on digital binoculars, Gatewood filed a complaint in February 2019 in the U.S. District Court for Western District of North Carolina against Sony Corporation of America (“Sony”). Lerner David, on behalf of Sony, filed a motion to dismiss the second amended complaint for failing to plausibly plead copyright infringement. The district court granted Sony’s motion and dismissed the lawsuit with prejudice in July 2020 identifying multiple grounds as to why the second amended complaint failed to state a plausible claim for copyright infringement. Gatewood appealed to the U.S. Court of Appeals for the Fourth Circuit in August 2020. On December 21, 2020, a three-judge panel affirmed the district court’s judgment of dismissal, noting “[w]e have reviewed the record and discern no error by the district court.” The case is Gatewood v. Sony Corporation of America, No. 20-1887 (4th Cir), 3:19-cv-00087-FDW-DCK (W.D.N.C.)

Lerner David Succeeds In Defeating 101/Alice Motion

Lerner David defeated an “Alice” motion to dismiss a patent infringement claim filed by Lowe’s Companies, Inc in Iron Gate Security, Inc. v. Lowe’s Companies, Inc., 15-cv-8814-KBF, S.D.N.Y. Lowe’s contended that a patent for indexing multimedia data such as video, which was asserted by Iron Gate Security, Inc. against Lowe’s Iris surveillance system, was an unpatentable abstract idea under 35 U.S.C. § 101 and Alice Corp. v. CLS Bank Int’l, 573 U.S. __, 134 S. Ct. 2347 (2014). On August 3, 2016, Judge Katherine B. Forrest of the Southern District of New York issued an opinion in which where she agreed with Iron Gate and denied Lowe’s motion, holding that the patent was not directed to an abstract concept (thereby passing step one of Alice), and also contained an inventive concept that transformed the claims into a patent-eligible invention (thereby passing step two of Alice).

Lerner David Establishes License As Basis for Patent Exhaustion

In High Point SARL v. T-Mobile USA, Inc., 640 F. Appx 917 (Fed. Cir. 2016), a patent infringement suit brought against T-Mobile involving cellular telephone network infrastructure equipment, a Lerner David team represented Ericsson Inc., one of T-Mobile’s suppliers. After intervening at the district court, we established on summary judgment that the Ericsson components had been licensed by a previous owner of the patents, which provided support for T-Mobile to prevail on a defense of patent exhaustion. The judgment was affirmed in all respects by the Federal Circuit.

Lerner David Wins Markman Decision in Copy Protection Case

Lerner David represents Copy Protection LLC in a patent infringement enforcing Copy Protection’s U.S. Patent 7,079,649 against Netflix, Inc. The ‘649 Patent relates to methods for unauthorized copying of downloaded data. Following oral argument, on August 5, 2015, Chief Judge Leonard P. Stark issued a decision agreeing with Lerner David’s interpretation on nearly every claim term at issue in the ‘649 Patent. The Court also agreed with Copy Protection that two method steps in three asserted claims did not have to occur in the specific order recited, as Netflix had contended. Based on the ruling, Copy Protection is proceeding with further pretrial preparations, and heading towards a trial of the case. The case is Copy Protection LLC v. Netflix, Inc., No. 1:14-cv-00365-LPS before the United States District Court for the District of Delaware.

Lerner David Successfully Opposes Motion To Stay In Towel Case

Following oral argument on July 11, 2013, Judge Engelmeyer of the Southern District of New York agreed with the rationale proffered by Lerner David and refused Loftex’s request to stay its lawsuit pending a reissue proceeding it filed before the US Patent and Trademark Office. The refusal to stay was issued on the heels of Lerner David’s major victory on claim construction for its client, Trident Ltd. In denying the stay the Court agreed with Lerner David’s argument that plaintiff’s patent infringement allegations were “a cloud over Trident” and that the plaintiff’s case “was predominantly based on a theory that presumed the broader construction of the patent that was pursued in the Markman hearing. With the Court having rendered the defense [Trident] favorable construction of the patent, there remains only limited theory of liability left . . . .” The case is Loftex USA LLC v. Trident Ltd., 11 CV 9349 (S.D.N.Y.).

Lerner David Wins Markman Decision In Towel Case

Following oral argument, Judge Engelmeyer of the Southern District of New York agreed with Lerner David’s interpretation of the two key terms in dispute scoring a major victory for its client, Trident Ltd. The court ruled that Loftex’s U.S. Patent No. 7,810,308 was limited to a process of making a towel from 2-ply yarn free of polyvinyl alcohol (PVA) fibers before the yarn is woven to make the towel. Agreeing with our firm’s arguments, the court rejected Loftex’s assertion the key feature of the invention was how the yarns were twisted and therefore its patent more broadly covered the type of yarn twisting regardless of whether the towels were made with or without using PVA fibers. The court also agreed with Lerner David’s analysis that the term “2-ply yarn” meant “having only two discrete strands that are twisted together.” The court’s key rulings limiting the reach of Loftex’s patent were supported by the express words used in the claims as well as the patent’s specification. Click here for a copy of the decision.

Sony Wins Knock-out Jury Verdict

Sony Corporation and four of its subsidiaries (Sony Computer Entertainment Inc., Sony Computer Entertainment America LLC, Sony Electronics Inc., and Sony Corporation of America) prevailed on all counts of non-infringement and invalidity in a jury trial in the United States District Court for the Northern District of California against Television Interactive Data Corporation ("TVI"). TVI had alleged that Sony's Blu ray players, DVD players, and PlayStation3 consoles infringed claims in four patents related to autoplay of optical discs (DVDs and Blu-ray discs). The asserted patents are U.S. Patent Nos. 5,597,307; 5,795,156; 6,249,863; and 6,418,532. After a three week jury trial, the nine member jury delivered a verdict finding that Sony did not infringe any claim and that all asserted claims were invalid as anticipated and obvious to one of ordinary skill in the art. TVI had requested damages of $84M plus enhanced damages for alleged willful infringement. The jury delivered a knock-out blow to all of TVI's allegations. As reported in the March 28, 2013 edition of IPLaw360 "We felt very strongly from the beginning that there was no infringement, and that the patents were invalid," said Sony's attorney Greg Gewirtz of Lerner David. During closing arguments, Mr. Gewirtz made clear that Sony fought the battle with TVI "because of true justice, true principle" as Sony created and implemented autoplay in optical disc players well before TVI's patents were filed. The lawsuit was first filed in 2009 when TVI sued about a dozen consumer electronics companies alleging that all DVD and Blu-ray players infringed its patents. Sony was the only remaining defendant in the case and was very pleased to confirm its beliefs that its products did not use TVI's technology and that all asserted patent claims were invalid.

3D Systems Obtains Judgment as a Matter of Law (JMOL) Against Envisiontec

On March 10, 2011, the District Court for the Eastern District of Michigan granted our motion for JMOL in favor of our client, 3D Systems, Inc. The decision reversed a jury verdict of noninfringement on 3D Systems’ U.S. Pat. No. 5,660,981, a pioneering patent covering rapid prototyping methods. The decision further denied Envisiontec’s concurrent JMOL motion and affirmed there was substantial evidence supporting the jury’s verdict of infringement as to another 3D Systems patent in the case, U.S. Pat. No. 6,651,934. With the JMOL order, both of Envisiontec’s Perfactory and Vanquish line of rapid prototyping machines have been found to infringe the ‘981 Patent, while the Vanquish line has also been found to infringe the ‘934 Patent. Click here if you would like to obtain a copy of the JMOL Memorandum and Order.

Lerner David Leads Sony to Successful Settlement in Historically Significant Patent Litigation

New Jersey-based intellectual property law firm Lerner, David, Littenberg, Krumholz & Mentlik, LLP recently concluded simultaneous litigation involving a total of 58 patents against the Eastman Kodak Company. Representing Sony Corporation, various Sony subsidiaries and Sony Ericsson Mobile Communications, Lerner David secured a successful settlement after several years of extensive negotiation and litigation, including a Markman hearing involving 27 patents. The patents covered digital cameras and other technology used in scanners, printers, software and film cameras. All told, these simultaneous litigations may collectively constitute the largest patent litigation ever brought in the United States or elsewhere.
Publications
Accolades
- Lerner David Named Top IP Litigation Firm in New Jersey
- Lerner David Receives Top Honors in New Jersey For Intellectual Property Litigation
Affiliations

New Jersey State Bar Association
New Jersey Intellectual Property Law Association

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Jonathan A. David

Lerner David Obtains Dismissal with Prejudice of Copyright Lawsuit Against Sony’s Digital Binoculars

Lerner David Succeeds In Defeating 101/Alice Motion

Lerner David Establishes License As Basis for Patent Exhaustion

Lerner David Wins Markman Decision in Copy Protection Case

Lerner David Successfully Opposes Motion To Stay In Towel Case

Lerner David Wins Markman Decision In Towel Case

Sony Wins Knock-out Jury Verdict

3D Systems Obtains Judgment as a Matter of Law (JMOL) Against Envisiontec

Lerner David Leads Sony to Successful Settlement in Historically Significant Patent Litigation