David A. RandallTEL: 213.617.5554
333 South Hope Street
Los Angeles, CA 90071
David A. RandallPrint PDF
David Randall is a partner in the Intellectual Property Practice Group in the firm's Los Angeles office.
Areas of Practice
Mr. Randall has nearly 20 years of experience representing clients in a wide variety of intellectual property matters. He has successfully represented clients in patent, trademark, and trade secret disputes in courts throughout the United States and has been involved in complex multijurisdictional matters in which aspects of the litigation were pending before tribunals around the world. He has handled patent interferences, appeals, and trademark opposition/cancellation proceedings before the U.S Patent and Trademark Office. Recently he represented Mag Instrument in a landmark Japanese High Court IP case, resulting in the first-ever product configuration trademark recognized by the court.
Mr. Randall routinely advises clients in connection with the development and management of worldwide patent and trademark portfolios, as well as product design and the procurement of product configuration trademarks. He has prosecuted hundreds of patents in the United States and throughout Europe, Latin America, Asia, and Africa and is well-versed in the prosecution of patents to withstand the crucible of litigation. Patents that he has prosecuted have been successfully asserted multiple times, including one of the most frequently litigated patents during 2005 to 2007.
In addition to litigation and prosecution, Mr. Randall's practice includes counseling clients on matters of strategic planning, technology transfer and licensing agreements, litigation avoidance, domain name disputes, and the development, implementation, and maintenance of IP portfolio management programs. Recently, he represented GeoSynFuels in connection with the formation of a joint venture with the Donald Danforth Plant Science Center to commercialize the production of low-cost proteins. He has also recently worked on the formation of a joint venture in Brazil.
- J.D., Arizona State University, 1991, cum laude
- B.S., Metallurgical Engineering, University of Arizona, 1985, with honors
- U.S. District Court for the Central District of California
- U.S. District Court for the Eastern District of California
- U.S. District Court for the Northern District of California
- U.S. District Court for the Southern District of California
- U.S. Court of Appeals for the Federal Circuit
- U.S. District Court for the Northern District of Florida
- U.S. Patent and Trademark Office
Activision Publishing, Inc.
Provided IP counseling concerning various game titles and gaming technologies. Negotiated the resolution of a dispute with a vendor over a contract and IP rights.
AEC-Able Engineering, Inc.
Acted as AEC-Able’s lead counsel in connection with the settlement of a potential interference that AEC-Able was preparing to initiate related to solar concentrator technology.
Aerielle Technologies, Inc. v. Belkin International, Inc., et al, (N.D. Cal.)
Represented Belkin, Best Buy, and RadioShack in a two-patent case relating to portable FM transmitters. The case was favorably settled after the Court issued a claim construction order adopting several of the Defendants’ key positions advanced during the Markman hearing and after a number of significant admissions were obtained during the depositions of the inventors.
Artistry in Motion, Inc. v. Tubeworks, Inc., (C.D. Cal.)
Successfully represented Artistry in Motion in the enforcement of its patent relating to a method of making confetti against Tubeworks.
Big Baboon v. Dell, Inc., et. al, (C.D. Cal.)
Successfully represented defendant UTi Worldwide, Inc. and UTi Services, Inc. in a patent infringement case brought by Quinn Emanuel on behalf of NPE Big Baboon. The action involved 18 defendants and multiple internet/software patents for managing and querying complex databases. The team was able to obtain an early dismissal on very favorable terms while the action continued for close to another year against other defendants.
CardioGenesis Corporation v. PLC Medical Systems, Inc., (N.D. Cal.)
Represented CardioGenesis in a declaratory judgment action relating to PLC Medical Systems’ heart pulsed laser system patent. The case was favorably settled just before trial and following a Markman hearing.
Cedars-Sinai Medical Center v. O’Leary, (C.D. Cal.)
Cedars-Sinai Medical Center v. Watkins, (C.D. Cal.)
Represented Cedars-Sinai in two Administrative Procedure Act actions relating to a determination of the Secretary of Energy that the U.S. Government owned a method of ablating tissue with an excimer laser invented at Cedars-Sinai. The district court dismissed the first case on ripeness grounds due to a co-pending interference involving the same technology and Cedars-Sinai and the government as the real parties in interest. Although the Federal Circuit affirmed the dismissal, the Federal Circuit rejected the district court’s finding that the case was unripe. This allowed the filing of a second case, which resulted in the government withdrawing its determination and settlement of the action.
Core Optical Technologies, LLC v. Ciena Corporation, (C.D. Cal.)
Currently representing Core Optical Technologies against Ciena Corporation in a patent infringement action related to dual polarization coherent optical receiver technology.
Creative Products Group, LLC and Street Surfing, LLC v. Decolee Co. Ltd.
Successfully represented Decolee in an arbitration action relating to Creative Products efforts to cancel a patent license and marketing agreement relating to The Wave™ board.
Diamonex, Inc. v. Spectra Physics Scanning Systems, Inc., (E.D. Penn.)
Successfully defended Spectra Physics in a patent infringement and trade secret misappropriation action brought by a former supplier related to wear resistant glass technology. Also represented Spectra Physics before the U.S.P.T.O. in order to initiate a patent interference against Diamonex’s asserted patent.
Diagnostic Systems Corporation v. Oracle Corporation, SAS Institute, Inc., Business Objects of America f/k/a Business Objects, Inc., BMC Software Inc., and Cognos Corporation, (C.D. Cal.)
Represented SAS Institute in a patent infringement action brought by Diagnostic Systems Corporation, a subsidiary of Acacia, relating to a business analytic software system including a relational database. A favorable settlement was reached on behalf of SAS with DSC.
Electric Fuel (E.F.I.) Ltd. v. Electrofuel, Inc., (OHIM)
Successfully represented Electric Fuel in connection with a trademark opposition proceeding pending before the OHIM relating to Electric Fuel’s CTM registration for ELECTRIC FUEL.
Electric Fuel Corp. and Electric Fuel (E.F.I.) Ltd. v. Electrofuel, Inc., (S.D.N.Y.)
Successfully represented Electric Fuel Corp. and Electric Fuel (E.F.L.) Ltd. in a trademark infringement and unfair competition action against Electrofuel, Inc.
EOS GmbH Electro Optical Systems v. 3D Systems, Inc., DTM Corporation, and Compression, a division of Moll Industries, Inc., (C.D. Cal.)
Defended 3D Systems in a patent infringement suit brought by EOS, a licensee of 3D, against DTM Corporation, a corporation 3D acquired after EOS brought suit, and one of DTM’s customers. DTM was alleged to have infringed thirteen of 3D’s patents that arose from 3D’s development of a rapid prototyping technology known as stereolithography. DTM developed and sold a different rapid prototyping technology involving laser sintering of dry powder materials. After acquiring DTM, in a related action, 3D accused EOS of infringing patents directed to polymer materials used in laser sintering systems. After an on-site tutorial and a Markman hearing that lasted several days and involved percipient and expert testimony, the court issued an order construing the claims in a manner that foreclosed infringement. The case settled shortly thereafter with a favorable, royalty-bearing settlement for 3D.
Formula One Licensing B.V. v. AWI Acquisition Company (T.T.A.B.) Global Communications, Inc. v. DIRECTV, (N.D. Fla.)
Acted as lead counsel on behalf of AWI in a trademark cancellation proceeding brought by Formula One Licensing against AWI’s U.S. Registration for FORMULA 1. The cancellation proceeding was dismissed with prejudice after Formula One withdrew its petition.
Global Communications, Inc. v. DIRECTV, (N.D. Fla.)
Defended DIRECTV in a patent infringement action related to satellite reception and distribution systems brought by a well-known plaintiff’s lawyer. The case was successfully settled shortly after Mr. Randall obtained an expert report from the author of several key prior art references and damaging testimony from the inventors concerning the patentability of the asserted patent over that prior art.
Mag Instrument v. Ampercell and Bright Ideas & More, Inc., (C.D. Cal.)
Successfully represented Mag Instrument in a flashlight patent infringement action against Bright Ideas. Shortly after agreeing to a preliminary injunction, Bright Ideas agreed to settle the case. Default Judgment was entered against Ampercell following a hotly contested motion for default judgment.
Mag Instrument v. Japanese Patent Office
Represented Mag Instrument in a landmark appeal to the Japanese Intellectual Property High Court. The appeal related to the JPO’s refusal to register Mag Instrument’s product shape configuration trademark for the MINI MAGLITE® flashlight. The High Court reversed the JPO resulting in the first-ever product configuration trademark recognized by the court.
Mag Instrument v. Nordic Technologies, Inc., (C.D. Cal.)
Represented Mag Instrument in a patent and trademark infringement action involving flashlights. The case was favorably settled on behalf of Mag Instrument.
Mag Instrument v. Play By Play Toys and Novelties, Inc., et al., (C.D. Cal.)
Represented Mag Instrument in a trademark and trade dress infringement action. Shortly after all of the defendants agreed to a Preliminary Injunction, a favorable settlement was reached on behalf of Mag Instrument.
Memory Control Enterprise, LLC v. Belkin International, Inc., Keds, LLC, and Yamaha Motor Corporation, U.S.A., (C.D. Cal.)
Successfully represented Yamaha in a patent infringement action brought by NPE Memory Control Enterprise, LLC (“MCE”), one of several entities used to enforce patents of former Fish & Richardson partner, Scott C. Harris. MCE accused a user controlled 360° view product rotation feature included in Yamaha’s various Websites of infringing Mr. Harris’s patent entitled “Three Dimensional Experience For Thick and Thin Clients.”
Fitman, S.L. v. MRV Communications, Inc., (OHIM)
Representing MRV in connection with a trademark opposition proceeding pending before the OHIM relating to MRV’s CTM application for MRV.
Oakley, Inc. v. Pyramex Safety Systems, LLC, (S.D. Cal.)
Successfully represented Safety Systems, a safety eye-wear maker, against Oakley in a multi-patent lawsuit relating to eyewear.
Oakley, Inc. v. Suntech Optics, Inc. (“Ryders Eyewear”), (S.D. Cal.)
Successfully represented Suntech in a multi-patent and trademark infringement action relating to eyewear, which included a counterclaim by Suntech against Oakley for false patent marking.
Permlight Products, Inc. v. GELcore, LLC, (C.D. Cal.)
Represented GELcore, a joint venture between GE and Emcore, in a patent infringement action relating to lighting systems employing LED light engines. The case was favorably settled on behalf of GELcore.
Quarton Inc. v. Ideavillage Products Corp., et. al., (D.N.J.)
Acted as co-lead counsel with firm attorney Larry LaPorte in representation of Quarton in a patent infringement, misappropriation, unfair competition, and breach of contract case relating to laser level devices. A favorable settlement was reached on behalf of Quarton.
Sage Products, Inc. v. Devon Industries, Inc., (C.D. Cal.)
Successfully defended Devon Industries in a patent infringement action involving three patents related to sharps disposal devices. Summary judgment of non-infringement was entered in Devon’s favor on all three patents. The Federal Circuit affirmed the district court’s decision in Sage Products, Inc. v. Devon Industries, Inc., 126 F.3d 1420 (Fed. Cir. 1997).
Toro AG v. Kathy Weterman, Netafim Irrigation, Inc., (Sup. Ct. Cal.)
Successfully represented Netafim in a trade secret misappropriation action involving allegations of misappropriation in connection with the hiring of a former Toro employee. A favorable settlement was achieved on behalf of Netafim following Mr. Randall’s expedited discovery obtained from Toro, which included computer forensic testing of Toro’s computer system.
Veratex, Inc. v. Field Crest Cannon, Inc. et. al., (C.D. Cal.)
Successfully represented Veratex in connection with a trademark declaratory judgment action.
Provided intellectual property counseling and patent portfolio development services in connection with a start-up website directed to extreme sports, including providing content acquisition and licensing agreements for content displayed on the website. The Banquet was subsequently acquired by USA Today.
- Contributing Faculty Author, Discover PLUS eBook Library, Practising Law Institute (2013 New Product of the Year, American Association of Law Libraries)