David Lee joined the firm in 2016. He is experienced in patent development and counseling, including patentability analysis, application preparation and prosecution in the U.S. and abroad, due diligence investigations for patent portfolio transfer, licensing and royalty agreements, cease and desist demands, freedom-to-operate/right-to-use investigations for product development, post-grant proceedings in the United States Patent and Trademark Office, and aspects of patent infringement defense in United States District Courts.
Mr. Lee represents corporations as well as individual inventors in a wide array of technologies, including digital and analog circuits, digital communications and error correction, semiconductor devices, storage and computation systems, software, Internet technologies, medical devices, business methods, complex financial systems, and other electrical, computer and mechanical technologies.
Prior to joining the firm, Mr. Lee was a patent practitioner with large law firms in New York City, where he developed patent portfolios for clients and negotiated patent royalty agreements. He has also worked on defending patent infringement suits in patent-heavy venues such as Eastern District of Texas, Central District of California, and Delaware. Mr. Lee’s broad experience in all aspects of patent matters enables him to address client needs and goals across a wide spectrum of issues and disputes.
- Fordham University School of Law, J.D., 2008
- Massachusetts Institute of Technology, Master of Engineering, Electrical Engineering and Computer Science, 2002
- Massachusetts Institute of Technology, Bachelor of Science, Electrical Science and Engineering, 2001
- State of New York
- United States District Courts for the Southern and Eastern Districts of New York
- United States Court of Appeals for the Federal Circuit
- United States Patent and Trademark Office
- New York Intellectual Property Law Association
New York Metro Super Lawyers®, Rising Stars 2015 – 2016
Mr. Lee practices primarily in the United States Patent and Trademark Office. He has handled hundreds of patent applications and understands the importance of obtaining patent rights that meet client’s technical and business needs. Mr. Lee also handles procuring patent rights in foreign jurisdictions and has managed patent portfolios having patent applications worldwide.
Mr. Lee also has experience negotiating patent licensing agreements, addressing patent infringement disputes, and negotiating settlement agreements. He has litigated patent disputes and has appeared on behalf of defendants in patent-heavy venues such as the Eastern District of Texas, Central District of California and Delaware. He has also second-chaired inter pares review proceedings in the Patent Trial and Appeal Board in the United States Patent and Trademark Office.
He is attuned to the various roles of patents in business and has experience with due diligence review in connection with mergers and acquisitions and with clearance/freedom-to-operate investigations in connection with product development.
- Protecting Claim Scope: Lessons From Poly-America, L.P. V. API Industries, Inc.
- “Reforming Litigation Practices and Strategies”, New York Intellectual Property Law Association Bulletin, April 2011
- “Perspectives for Japanese Companies in U.S. Patent Litigation”, UBIC Seminar Event, Osaka, Japan, March 30, 2012
- New York Metro Super Lawyers®, Rising Stars 2017