Mind + Muscle

technical minds + legal muscle

Bracket
Sterne Kessler Goldstein Fox
"Advises on patent due diligence for mergers and acquisitions involving IP-heavy companies. He is also a skilled and experienced patent litigator, with particular expertise in energy and mechanical engineering."
Chambers USA

 “By implementing his strategy regarding patent forensics, Cornwell is keeping the firm on the cutting edge of patent protection technology. ‘David’s work is very interesting,’ one attorney notes. ‘It is something to keep an eye on in the coming years.’”
-LMG Life Sciences 2012
David K.S. Cornwell

Mind + Muscle

David K.S. Cornwell

Director

 

Mr. Cornwell is a director in Sterne Kessler's Mechanical Group and is highly respected for his knowledge of design patents and mechanical devices.

Mr. Cornwell specializes in patent litigation in the fields of consumer product protection, clean energy and clean technology, biotechnology, computers and related technologies.  He has numerous offensive and defensive litigation to his credit in the fields of utility patents, design patents, trade dress, unfair competition, and trade secret law, and is known for his creative litigation strategies.  He has been named counsel in numerous post-grant proceedings including over 80 inter partes reviews and 4 derivation proceedings.  Mr. Cornwell has been lead counsel in over 60 patent cases and has been lead trial counsel in numerous Markman hearings and other evidentiary proceedings.  He has experience before the International Trade Commission, and has been the lead attorney before the Board of Patent Appeals and Interference in complex patent interference proceedings.  He has also served as an expert witness in matters focused on design patents and inequitable conduct.   He is viewed as a trusted advisor to Fortune 1000 companies headquartered around the world. 

Prior to joining the firm in 1987, Mr. Cornwell was Associate Patent Counsel for the University of California at Los Alamos National Laboratory, and worked as a Patent Examiner in the field of missile guidance systems.  In law school, he worked as a graduate research assistant for the University of California in the field of geothermal fluid mechanics.  He also performed complex three dimensional computer modeling of heat transfer systems.

Mr. Cornwell has served as a claim drafting instructor for the advanced Patent Application writing workshop sponsored by the Patent Resources Group.  He was a member of the Advisory Board to the University of New Mexico-Los Alamos, the board charged with approving the budget and shaping University policy for UNM-LA.

Additionally, Mr. Cornwell is a contributing author of Patent Office Litigation, Second Edition, published in 2017, the book provides a fresh and comprehensive exploration of patent office litigation proceedings, including how the proceedings interact with other aspects of patent procurement and enforcement, while delivering practical analysis and advice. This second edition of Patent Office Litigation is the follow up to the first version of the book that was published in 2012 by Thomson Reuters Westlaw that focused on the contested proceedings that were introduced under the America Invents Act that year.

Publications
  • "Halo v. Pulse Ushers in a New Era of Ehanced Damages in Patent Cases," Richard D. Coller III, David K.S. Cornwell, and Aisha M. Haley, Bloomberg BNA's Patent, Trademark and Copyright Journal, June 2016
  • "4 Keys to Navigating Patent Office Litigation Board Calls," Richard D. Coller III and David K.S. Cornwell, Inside Counsel, November 2014
  • "Inter Partes Review: Which Way Out?" Jason A. Fitzsimmons and David K.S. Cornwell, Westlaw Journal: Intellectual Property, October 2014
  • "The Supreme Court's New Definiteness Standard and Its Effect on Medical Device Patents," David K.S. Cornwell and Kyle E. Conklin, Bloomberg BNA Medical Device and Law Industry Report, July 2014
  • "Federal Circuit: Not all mechanical devices are so predictable taht disclosing a single example in a patent application supports broad patent protection," Kyle E. Conklin adn David K.S. Cornwell, Bloomberg BNA's Medical Devices Law & Industry Report, January 2014
  • "Renewed Energy for a Small Claims Patent Court," David K.S. Cornwell, World Intellectual Property, May 2013
  • "Protecting Your Innovations," David K.S. Cornwell and Jeffrey R. Fougere, Construction Today, February 2013
  • "A New Battery of Tools to Fight Patent Pollution," David K.S. Cornwell and Richard D. Coller III, Green Car Congress, February 2012
  • "ANDA One, ANDA Too?" Kevin McCabe and David Cornwell, World Intellectual Property Review, November 2010
  • "The Medical Device Rodeo: Harnessing Innovation," Kevin W. McCabe and David K.S. Cornwell, The National Law Review, October 2010
  • "Promise or Peril: Assessing Impact of Compulsory Licensing Schemes on Cleantech Innovation," David K.S. Cornwell adn Anbar F. Khal, Clean Tech Law & Business, August 2009
  • "Patent Pollution: Clearing the Patent Landscape and Protecting Innovation," David K.S. Cornwell and Graham C. Phero, Sterne, Kessler, Goldstein & Fox, May 2009
  • "Egyptian Goddess v. Swisa: Brief of Amicus Curiae on behalf of The Intellectual Property Owners Association," Tracy G. Gene-Durkin & David K.S. Cornwell, Sterne, Kessler, Goldstein & Fox, February 2008
  • Ole K. Nilssen and Geo Foundation v. Osram Sylvania – Represented Osram Sylvania in a patent infringement case.  Eleven of plaintiff's patents were found unenforceable and attorney fees were awarded for our client. 
  • Stutz Motor Car Company v. Reebok International Ltd. – Reebok was sued for patent infringement and trade secret misappropriation.  The accused product was the successful The Pump™ technology.  Successfully defended Reebok winning both the patent infringement and trade secret case on summary judgment. 
  • Payless Shoe Source v. Reebok International Ltd. – Payless filed a declaration judgment action against our client, Reebok.  Reebok counterclaimed for patent infringement, trade dress infringement, and trademark infringement.  Reebok successfully prosecuted this case and helped establish the legal principle of "post sale confusion."
  • Reebok International Ltd v. J. Baker – In this case, we prosecuted a design patent infringement case on behalf of Reebok.  This case is significant because Reebok successfully obtained an injunction pending appeal after the lower court denied a motion for preliminary relief. 
  • Hockerson-Halberstadt, Inc. v. Avia Group – In this case, we successfully defended a $100 million claim of patent infringement.  The Federal Circuit affirmed the lower court's finding of non-infringement.
  • Tailored Lighting, Inc. v. Osram Sylvania Products, Inc.(W.D.N.Y.) -- lead counsel representing Sylvania in defense of a patent lawsuit involving aftermarket automotive headlamps.  In this case, the Court granted summary judgment of non-infringement and invalidity in favor of Sylvania.
  • Representative Matters
      • Ole K. Nilssen and Geo Foundation v. Osram Sylvania – Represented Osram Sylvania in a patent infringement case.  Eleven of plaintiff's patents were found unenforceable and attorney fees were awarded for our client. 
      • Stutz Motor Car Company v. Reebok International Ltd. – Reebok was sued for patent infringement and trade secret misappropriation.  The accused product was the successful The Pump™ technology.  Successfully defended Reebok winning both the patent infringement and trade secret case on summary judgment. 
      • Payless Shoe Source v. Reebok International Ltd. – Payless filed a declaration judgment action against our client, Reebok.  Reebok counterclaimed for patent infringement, trade dress infringement, and trademark infringement.  Reebok successfully prosecuted this case and helped establish the legal principle of "post sale confusion."
      • Reebok International Ltd v. J. Baker – In this case, we prosecuted a design patent infringement case on behalf of Reebok.  This case is significant because Reebok successfully obtained an injunction pending appeal after the lower court denied a motion for preliminary relief. 
      • Hockerson-Halberstadt, Inc. v. Avia Group – In this case, we successfully defended a $100 million claim of patent infringement.  The Federal Circuit affirmed the lower court's finding of non-infringement.
      • Tailored Lighting, Inc. v. Osram Sylvania Products, Inc.(W.D.N.Y.) -- lead counsel representing Sylvania in defense of a patent lawsuit involving aftermarket automotive headlamps.  In this case, the Court granted summary judgment of non-infringement and invalidity in favor of Sylvania.
  • Admissions
      • United States Supreme Court

      • Court of Appeals for the Federal Circuit

      • New Mexico

      • United States District Court for the Central District of Illinois

      • United States District Court for the Southern District of Ohio

      • District of Columbia Court of Appeals

      • United States Patent and Trademark Office

  • Education
    • J.D., University of New Mexico

    • B.S., Mechanical Engineering, University of New Mexico

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