Overview

Trial lawyer David Barkan is known for guiding companies through complex, competitor-to-competitor litigation, and for finding creative ways to achieve the client’s business goals.

David has handled more than 100 cases across technology fields, including as lead counsel in dozens of semiconductor and software patent cases. He represents multibillion-dollar national and international corporations, including top international telecommunications companies and major semiconductor component companies, as well as private companies with innovative software. In recent years, David has become a “go-to” resource for companies facing complex international standard essential patent issues.

These companies rely on David to enforce their intellectual property innovations in the competitive product marketplace while also protecting them from lawsuits that could derail their strategic plans.

During his 30-year career as a highly skilled litigator, David has built strong and lasting client relationships—some spanning more than two decades.

Among his notable cases are competitor-to-competitor cases dealing with litigation that has substantial, sometimes bet-the-company, consequences. For example:

  • In a five-year battle in which David’s electronics company client faced allegations of infringement of five patents in the ITC and 13 patents in District Court, David successfully tried the ITC case to a noninfringement determination and then obtained summary judgment on all asserted patents in District Court, leaving only his client’s counterclaims for trial.
  • For a major automotive component supplier, he successfully asserted three turbocharger components patents—obtaining a $32.5 million settlement from the competitor on the eve of trial, despite the competitor having insisted for years it would prove the patents invalid and the case would never go to trial.
  • For an innovative private software company, David successfully obtained a noninfringement judgment when the company was sued in its infancy by a large multinational corporation, permitting the private company to continue its growth plans. Over the following decade, David successfully enforced the company’s patents against three different competitors, helping to secure the company’s marketplace position.

When it comes to emerging issues and developing laws, David is on the leading edge. He is deeply steeped in issues unique to standard essential patents in both litigation and arbitration contexts, including portfolio-level valuations, damages for individual standard essential patents, licensing rules, and the strategic interplay arising from simultaneous litigations and arbitrations occurring on a global basis. He understands the nuances of this developing law and helps both U.S. and international companies—licensors and licensees—make strategic choices from both legal and business perspectives.

David served as the firm’s nationwide head of litigation from 2001-2006, during a time when the group doubled in size. He also served on the firm’s management committee from 2002-2004 and its compensation committee from 2012-2018.

Before attending law school, David worked as a software developer at a startup company.

Experience

Computer graphics and image processing

Adobe Systems Inc. adv. Heidelberger Druckmaschinen AG (computer graphics software) (D. Del.) Defended Adobe in patent litigation case brought by Heidelberger relating to computer graphics. Resolved successfully.

Adobe Systems Inc. adv. Quantel Limited (computer graphics software) (D. Del.) Defended Adobe in patent infringement case brought by Quantel. Jury found all five patents invalid, not infringed, and unenforceable despite prior litigation victories by Quantel. The National Law Journal recognized this verdict as one of the Top 15 Defense Verdicts for 1997, the only intellectual property case on the list.

Autodesk, Inc. adv. Preco, Inc. (CAD software) (D. Kan.) Defended Autodesk against claims of patent infringement relating to CAD software. Resolved successfully.

Autodesk, Inc. adv. Tektronix (CAD software) (D. Or.) Defended Autodesk against claims of patent infringement relating to CAD software. Resolved successfully.

Autodesk, Inc. adv. Vermont Microsystems, Inc. (CAD software) (D. Vt.) Defended Autodesk against claims of trade secret misappropriation relating to computer graphics software in district court and appellate and remand proceedings. Resolved successfully.

Corel Corp. adv. Heidelberger Druckmaschinen AG (computer graphics software) (S.D.N.Y.) Defended Corel in patent litigation case brought by Heidelberger relating to computer graphics. Resolved successfully.

Corel Corp. adv. Victor Co. of Japan (video playback software) (W.D. Tex.) Defended Corel in a six-patent case brought by JVC relating to video playback from optical media. Resolved successfully.

Marvell Semiconductor, Inc. and Nvidia Corp. adv. Intravisual, Inc. (video decoders) (E.D. Tex.) Defended Marvell and Nvidia against Intravisual’s claim of patent infringement involving video decoders for audiovisual services. Resolved successfully.

Maxim Integrated Products, Inc. adv. FastVDO LLC (digital video codecs) (D. Del.) Defended Maxim against FastVDO’s charge of patent infringement involving video decoders. Resolved successfully.

Cybersecurity

Corel Corp. adv. Entrust Corp. (digital signatures) (E.D. Va.) Defended Corel against allegations of copyright infringement and unfair competition relating to digital signature add-on software. Resolved successfully after obtaining dismissal of the action based on prior forum selection clause.

Harland Financial Solutions, Inc. v. Wolf Run Hollow, LLC (secure email transmission systems) (C.D. Cal.) Defended Harland against Wolf Run’s allegation of infringement concerning methods and systems for securely transmitting email messages. Resolved successfully.

Sygate Technologies, Inc. v. Zone Labs, Inc. (network security devices) (N.D. Cal.) Defended Sygate in a patent infringement action brought by Zone labs relating to network computer security software. Resolved successfully.

Zix Corp. v. Echoworx Corp. (email security systems) (N.D. Tex.) Represented Zix in enforcing three Zix patents relating to methods of analyzing and securing email against Echoworx. Resolved successfully.

Zix Corp. adv. RPost Holdings, Inc., RPost Int’l Ltd., and RMail Ltd. (email authentication software) (E.D. Tex.) Defended Zix against RPost’s allegation of infringement of its patent concerning certifying message transmission. Resolved successfully.

Internet and enterprise software

Adobe Systems Inc. adv. Macromedia, Inc. (website creation software) (N.D. Cal.) Defended Adobe in patent infringement litigation suit brought by Macromedia concerning website creation software. Resolved successfully.

Bank of America Corp. adv. Ablaise Ltd and General Inventors Institute A, Inc. (financial data aggregation services) (D. Del. and N.D. Cal.) Defended Bank of America against Ablaise’s allegations of patent infringement concerning online data aggregation and banking services. Resolved successfully.

Checks in the Mail, Inc., d/b/a iPrint.com adv. Graham Springs LLC (online printing services) (E.D. Tex.) Defended Checks in the Mail against Graham Springs’ allegations of infringement of a patent teaching a method of data processing and printing. Resolved successfully.

Coupa Software Inc. adv. Ariba, Inc. (e-procurement services) (Superior Court of California, County of Santa Clara) Defended Coupa Software against Ariba’s charges of trade secret misappropriation. Resolved successfully.

Genesys Telecommunications Laboratories v. Kana Corp. (e-mail routing software) (D. Del.) Represented Genesys in a patent infringement action concerning intelligent e-mail and customer response management software. Resolved successfully.

Harland Clarke Corp. adv. EZShield, Inc. (consumer fraud protection system) (D. Md.) Defended Harland against EZShield’s allegation of infringement of a patent concerning a system for reimbursing victims of check fraud. Resolved successfully.

Infosys Technologies Ltd. adv. Versata Software Inc., and Versata Development Group, Inc. (business software) (W.D. Tex.) Defended Infosys against Versata’s allegations of trade secret misappropriation, copyright infringement, and breach of contract. Resolved successfully.

The Northwestern Mutual Life Insurance Co. adv. Unified Messaging Solutions (webmail services) (N.D. Ill. – MDL) Defending Northwestern Mutual in a multi-district litigation brought by UMS for alleged infringement of five patents dealing with web-based communications services.

Valassis Communications, Inc. v. CTP Innovations, LLC (computer-to-plate printing) (D. Md. – MDL) Defending Valassis in a multi-district litigation brought by CTP for alleged infringement of a patent that teaches a method for printing materials using computer to plate technology.

Yodlee, Inc. v. Ablaise Ltd and General Inventors Institute A, Inc. (financial data aggregation services) (N.D. Cal.) Represented Yodlee in a declaratory judgment action arising from Ablaise’s allegations of patent infringement concerning online data aggregation and banking services. Resolved successfully.

Yodlee, Inc. v. Block Financial Corp. (distributed financial services systems) (D. Del. and W.D. Mo.) Represented Yodlee in prosecution of patent infringement action related to automatic collection of tax data over the Internet. Resolved successfully.

Yodlee, Inc. adv. Block Financial Corp. (distributed financial services systems) (W.D. Mo.) Defended Yodlee in patent infringement suit brought by Block relating to distributed financial services systems. Obtained summary judgment of non-infringement. Resolved successfully during appeal.

Yodlee, Inc. v. CashEdge Corp. (data aggregation products and services) (N.D. Cal.) Represented Yodlee in enforcing nine of its patents regarding financial data aggregation products and services against CashEdge in the Northern District of California. Resolved successfully.

Yodlee, Inc. adv. CashEdge Corp. (data aggregation products and services) (D. Del. and N.D. Cal.) Defended Yodlee in a patent infringement suit brought by CashEdge concerning methods and apparatus for retrieving and processing financial data. Resolved successfully.

Yodlee, Inc. v. Plaid Technologies, Inc. (financial account aggregation services) (D. Del.) Represented Yodlee adverse to Plaid Technologies in a suit for infringement concerning seven of Yodlee’s data gathering, aggregation, and analysis patents. Represented Yodlee in nine related IPR and CBM proceedings.  Successfully resolved.

Mechanical devices

BorgWarner, Inc. v. Honeywell Int’l, Inc. (automotive turbochargers) (W.D.N.C.) Represented BorgWarner in asserting three of its patents regarding the design and manufacture of turbocharger components. Obtained $32.5 million settlement for client on eve of trial.

BorgWarner, Inc. v. Cummins, Inc. (automotive turbochargers) (W.D.N.C.) Represented BorgWarner in asserting three of its patents regarding the design and manufacture of turbocharger components. Successfully resolved.

Intuitive Surgical, Inc. adv. Brookhill-Wilk 1, LLC (robotic surgery devices) (S.D.N.Y.) Defended Intuitive Surgical in patent infringement action brought by Brookhill-Wilk LLC 1 relating to robotic surgery devices. Resolved successfully.

General Motors LLC and Maven Drive LLC adv. American Automobile Association of Northern California, Nevada & Utah and A3 Mobility LLC (ride-sharing service) (N.D. Cal.) Defended GM and Maven against AAA’s allegations of trademark infringement and unfair competition involving GM’s and Maven’s vehicle-sharing service. Successfully resolved.

Microsoft Corp. adv. TypeRight Keyboard Corp. (Microsoft Natural® keyboard) (S.D.N.Y.) Defended Microsoft in a five-patent infringement case against TypeRight. Resolved successfully.

Networking

D-Link Systems, Inc. adv. 3Com Corp. (network interface controllers) (N.D. Cal.) Defended D-Link in a patent infringement case brought by involving network interface controller products. Resolved successfully.

Marvell Semiconductor, Inc. adv. Realtek Semiconductor Corp. (Ethernet networking devices) (N.D. Cal.) Defended Marvell in a patent infringement suit brought by Realtek relating to Ethernet networking devices. In a published decision, obtained a dismissal with prejudice and an award of more than $500,000 in attorneys’ fees for client.

Emulex Corp. adv. Broadcom Corp. (networking infrastructure solutions) (C.D. Cal.) Defended Emulex against a patent infringement suit brought by Broadcom involving multiple networking-related patents. Resolved successfully.

Marvell Semiconductor, Inc. v. Realtek Semiconductor Corp. / In re Certain Network Controllers and Products Containing Same (Ethernet networking devices) (ITC) Represented Marvell Semiconductor in a patent infringement action before the U.S. International Trade Commission relating to Ethernet network controllers. Resolved successfully.

SynOptics, Inc. v. 3Com (network management software) (N.D. Cal.) Represented SynOptics in the prosecution of a patent infringement suit relating to network management software. Resolved successfully.

Other software

Corel Corp. adv. Blueberry Software, Inc. (file conversion software) (N.D. Cal.) Defended Corel in copyright infringement case brought by Blueberry Software relating to file conversion software. Resolved successfully.

Corel Corp. adv. Disc Link Corp. (digital information distribution systems) (E.D. Tex.) Defended Corel against Disk Link’s complaint of patent infringement involving the distribution of information through broadcast and bi-directional communication channels. Resolved successfully.

Programming and systems software

National Instruments Corp. v. Cognex Corp. (machine vision software) (D. Del.) Defended National Instruments against allegations of patent infringement, copyright infringement, and unfair competition brought by Cognex. Resolved successfully.

National Instruments Corp. v. Coreco Inc. (graphical programming software) (W.D. Tex.) Represented National Instruments in asserting its foundational graphical programming patents. Resolved successfully.

National Instruments Corp. v. Ensoft Corp. (graphical programming software) (S.D. Iowa) Represented National Instruments in asserting its graphical programming patents against Ensoft. Successfully resolved.

National Instruments Corp. v. PPT Vision Inc. (graphical programming software) (W.D. Tex.) Represented National Instruments in asserting its graphical programming patents. Resolved successfully just prior to scheduled jury trial.

National Instruments Corp. adv. SoftWIRE Technology (graphical programming software) (D. Mass.) Represented National Instruments in a multi-patent dispute against SoftWIRE Technology and Measurement Computing Corp. relating to graphical programming software. Resolved successfully.

Semiconductor devices

Marvell Semiconductor, Inc. et al. v Lonestar Inventions, L.P. (semiconductor device structures) (W.D. Tex.) Defended Marvell in a patent infringement lawsuit brought by Lonestar. Resolved successfully

Maxim Integrated Products, Inc. v. Anpec Electronics Corp. (IC amplifiers) (N.D. Cal.) Represented Maxim in asserting a patent on integrated circuit headphone drivers against Anpec. Resolved successfully.

Maxim Integrated Products, Inc. adv. Charge Lion LLC (battery chargers and charger controller ICs) (E.D. Tex.) Defended Maxim against Charge Lion’s allegation of infringement of a patent relating to an alkaline battery charger. Resolved successfully.

Maxim Integrated Products Inc. adv. Commonwealth Research Group, LLC (microcontrollers) (D. Del.) Defended Maxim in a patent infringement suit brought by Commonwealth alleging infringement of a patent related to purportedly energy-saving circuitry. Resolved successfully.

Maxim Integrated Products Inc. adv. E‐Tool Development, Inc. and E‐Tool Patent Holdings Corp (analog circuits) (D. Ore.) Successfully defended Maxim against E-Tool’s assertions of infringement involving a single patent focusing on a method for configuring analog circuit components.

Maxim Integrated Products, Inc. and Volterra Semiconductor LLC v. Fairchild Semiconductor Int’l, Inc. (analog integrated circuits) (N.D. Cal.) Represented Maxim adverse to Fairchild in a lawsuit involving copyright infringement, misappropriation of trade secrets, breach of contract, intentional interference with contractual relations, and unfair competition. Successfully resolved.

Maxim Integrated Products, Inc. et al. adv. Freescale Semiconductor, Inc. (microcontrollers) (W.D. Tex.) Defended Maxim adverse to Freescale in a lawsuit involving allegations of trade secret misappropriation and copyright infringement. Resolved successfully.

Maxim Integrated Products, Inc. adv. In-Depth Test LLC (semiconductor test systems) (D. Del.) Defended Maxim adverse to In-Depth Test in a patent infringement lawsuit related to semiconductor testing. Obtained judgment of invalidity and Rule 36 affirmance at the Federal Circuit.

Maxim Integrated Products, Inc. adv. Signal Tech LLC (microcontrollers) (D. Del.) Defended Maxim in a patent infringement suit brought by Signal Tech alleging infringement of a patent related to amplifier circuitry. Resolved successfully.

Maxim Integrated Products, Inc. and Volterra Semiconductor LLC v. Silicon Mitus, Inc. and Silicon Mitus Technology, Inc. (battery fuel gauges and voltage regulators) (N.D. Cal.) Represented Maxim and Volterra in a suit involving infringement of six patents related to power supplies and voltage regulators. Resolved successfully.

Nvidia Corp. adv. Mosaid Technologies, Inc. (microprocessors) (E.D. Tex.) Defended Nvidia against Mosaid’s seven-patent infringement lawsuit involving a wide array of technology relating to computer microprocessors. Successfully resolved.

Volterra Semiconductor LLC v. Monolithic Power Systems, Inc. (D. Del.) (power converters) Representing Volterra in a suit involving Monolithic’s infringement of three patents related to voltage converters employing a coupled inductor architecture.

Xicor, Inc. v. Catalyst Semiconductor, Inc. (digital potentiometers) (D. Del.) Represented Xicor in the prosecution of a patent infringement suit related to digital potentiometers. Resolved successfully.

Storage systems and memory and MEMS devices

InvenSense, Inc., Roku, Inc., and Black & Decker (U.S.), Inc. adv. STMicroelectronics, Inc./ In re Certain Microelectromechanical Systems (“MEMS Devices”) and Products Containing Same (MEMS devices) (ITC) Successfully defended InvenSense against STMicroelectronics’ five patent infringement lawsuit before the International Trade Commission regarding micro-electromechanical systems. Resolved successfully.

Kingston Technology Co., Inc. and Phison Electronics Corp. adv. SanDisk Corp. / In re Certain Flash Memory Controllers, Drives, Memory Cards, And Media Players And Products Containing Same (Flash memory devices) (ITC) Successfully defended Kingston Technology and Phison Electronics against SanDisk’s claims of patent infringement before the International Trade Commission regarding flash memory devices. Obtained determination of non-infringement from the ITC for both clients.

Kingston Technology Co., Inc. and Phison Electronics Corp. adv. SanDisk Corp. (flash memory devices) (W.D. Wisc.) Defended Kingston Technology and Phison Electronics against SanDisk’s claims of patent infringement in the Western District of Wisconsin regarding flash memory devices. Resolved successfully.

Kingston Technology Co., Inc. adv. SanDisk Corp. (flash memory devices) (W.D. Wisc.) Defended Kingston Technology against SanDisk’s claims of patent infringement in the Western District of Wisconsin regarding flash memory devices and asserted counterclaims by Kingston against SanDisk for antitrust violations. Resolved successfully.

Macronix Int’l Co., Ltd. & Macronix America Inc. v. Spansion Inc., et al./In the Matter of Certain Non-Volatile Memory Devices and Products Containing the Same (non-volatile memory systems) (ITC) Represented Macronix in a patent infringement investigation against Spansion before the International Trade Commission relating to devices containing non-volatile memory. Resolved successfully.

Macronix Int’l Co., Ltd. v. Toshiba Corporation et al. / In the Matter of Certain Non-Volatile Memory Devices and Products Containing Same (non-volatile memory systems) (S.D. Cal. and ITC) Representing Macronix adverse to Toshiba in suits brought before the ITC and USDC for infringement by Toshiba of Macronix’s patents relating to devices containing non-volatile memory.

Mylex Inc. v. American Megatrends, Inc. (RAID controllers) (N.D. Cal. Arbitration) Represented Mylex in trade secret arbitration relating to RAID controllers.

Phison Electronics Corp. adv. Integrated Device Technology, Inc. (NAND flash drives) (N.D. Cal.) Defended Phison against IDT’s claims of infringement involving four patents dealing with the generation and synchronization of clock signals. Resolved successfully.

Samsung Electronics Co., Ltd adv. Fujitsu Microelectronics, Inc. (DRAMs and semiconductor processors) (ITC) Represented Samsung in a patent infringement action heard before the U.S. International Trade Commission relating to DRAM device structure and semiconductor processing. Resolved successfully.

Seagate Technology LLC adv. Carl B. Collins and Farzin Davanloo (hard drives containing a diamond-like coating) (E.D. Tex) Defended Seagate Technology in a patent infringement suit brought by Collins and Davanloo concerning computer hard drives containing parts coated with a diamond-like material. Resolved successfully

Seagate Technology LLC v. Cornice, Inc. / In re Certain Disc Drives, Components Thereof, and Products Containing Same (disk drive apparatus and magnetic recording media) (ITC and D. Del.) Represented Seagate Technology in patent infringement suits brought against Cornice before the International Trade Commission and in the District of Delaware relating to disk drive apparatus and magnetic recording media. Both matters were resolved successfully.

Seagate Technology LLC, et al. adv. StorMedia Texas, LLC (magnetic recording media) (E.D. Tex.) Defended Seagate Technology in a patent infringement suit relating to magnetic recording media. Resolved successfully.

Sonic Solutions and Napster (formerly known as Roxio, Inc.) adv. Optima Technology Corp. (CD-burning software) (C.D. Cal.) Represented Sonic Solutions and Napster (formerly Roxio) in a patent infringement lawsuit brought by Optima relating to CD burning software technology. Obtained summary judgment of non-infringement for client.

Telecommunications

Arima Communications Corp. adv Interdigital Technology Corp., et al. (mobile communications devices) (AAA – ICDR Int’l Arbitration Tribunal and D. Del.) Defended Arima adverse to Interdigital before a tribunal empanelled by the American Arbitration Association’s International Centre for Dispute Resolution in proceedings related to a licensing dispute. Also represented Arima in related proceedings in the District of Delaware in which the arbitration award was sought to be confirmed by InterDigital and modified or vacated by Arima. Resolved successfully.

Huawei Device USA Inc. and Huawei Device Co., Ltd. adv. Maxell, Ltd. (wireless telecommunications devices) (E.D. Tex.) Defended Huawei adverse to Maxell in a suit alleging infringement of ten patents relating to mobile and multi-media devices. Resolved successfully.

Huawei Technologies Co. Ltd. and Huawei Device USA Inc. adv. Nokia Solutions and Networks US LLC and Nokia Solutions and Networks Oy (mobile telephones and tablets) (E.D. Tex.) Defended Huawei in a series of four related lawsuits brought by Nokia alleging infringement of nine patents concerning LTE standards for cellphones and tablets. Resolved successfully.

Huawei Technologies USA Inc., Huawei Device USA Inc., Huawei Device Co. Ltd., and Huawei Technologies Co., Ltd. v. Rui Pedro Oliveira and SMATCAM, S.A. (camera phones) (E.D. Tex.) Represented Huawei in defending against counter-parties’ assertion of patent infringement, trade secret, contract, and tort claims. Resolved successfully.

Huawei Technologies Co. Ltd v. T-Mobile US, Inc. and T-Mobile USA, Inc. (wireless network technology) (E.D. Tex.) Representing Huawei adverse to T-Mobile in a series of four related lawsuits concerning T-Mobile’s infringement of 14 of Huawei’s patents related to cellular network equipment and services.

Huawei Technologies Co. Ltd v. T-Mobile US, Inc. and T-Mobile USA, Inc. (wireless network technology) (E.D. Tex.) Representing Huawei adverse to T-Mobile in suit seeking declaratory judgment that Huawei has complied with its FRAND licensing obligations.

Huawei Technologies Co. Ltd, Huawei Device Co., Ltd, and Huawei Digital Technologies (Chengdu) Co., Ltd. v. Verizon Communications, Inc., Cellco Partnership d/b/ a Verizon Wireless, and Verizon Business Network Services, Inc. (wireless network technology) (W.D. Tex.) Representing Huawei in a suit involving infringement by Verizon of seven patents related to communications networks, mobile devices, and services related to the same.

LG Electronics Mobilecomm U.S.A., Inc. adv. Dicam, Inc. (camera phones) (N.D. Ill.) Defended LG Electronics against an action for patent infringement involving camera phones brought by Dicam. Resolved successfully.

LG Electronics Mobilecomm U.S.A. Inc. adv. Golden Bridge Technology Inc. (wireless communication systems) (E.D. Tex.) Defended LG Electronics against an action for patent infringement involving WCDMA wireless communication systems brought by Golden Bridge. Resolved successfully.

LG Electronics Mobilecomm U.S.A., Inc. adv. Implicit Networks, Inc. (cellular telephones) (N.D. Cal.) Defended LG Electronics against Implicit Networks’ allegation of patent infringement involving cellular telephones and touch screen technology. Resolved successfully.

LG Electronics Mobilecomm U.S.A., Inc. adv. Morris Reese (cellular telephones) (E.D. Tex.) Represented LG Electronics in an action for patent infringement brought by inventor Morris Reese involving cellular telephones and caller identification systems. Resolved successfully.

Semiconductor Energy Laboratory Co., Ltd. v. BOE Technology Group Co., Ltd., BOE Technology America, Inc., and Motorola Mobility LLC (cellular telephones) (N.D. Cal.) Representing Semiconductor Energy Laboratory in a four patent infringement suit against BOE and Motorola related to OLED display technology.

Testimonials

“What makes [David] excellent is his ability to counsel his clients. He makes complicated issues easy to follow for the clients. It is easy to understand and digest. He is able to explain the detailed issues of the law and its implications. We sit and talk about what can happen and what could happen, we plan out the entire game plan, and I really like that. … He is able to gather a top-notch team that gets the work done.” — Client Testimonial, 2023 Chambers and Partners USA

"Barkan is a litigator. He has an understanding of the overall big picture and his strategy was so masterful that the whole company felt at ease and assured. He understands how to protect everyone." — Client Testimonial, 2019 Chambers and Partners USA