Donald R. McPhail

Donald R. McPhail has more than 25 years of experience in patent and trademark matters before the U.S. district courts, the U.S. International Trade Commission and the U.S. Court of Appeals for the Federal Circuit.  He has handled cases involving a wide range of technologies including: avionics; LCD optics; video signaling; semiconductor design and operation; thin film transistor manufacturing and design; ophthalmic instruments; voice-over-internet telephony and firewalls; glass flooring; metallurgy; RF signaling; routers and switches; network topology and message routing; LED design and operation; PECVD manufacturing processes; generic drugs and methods of using; regulated medical devices; computer software; and electronic point of sale devices. Mr. McPhail also has experience with contested matters before the U.S. Patent & Trademark Office and the European Patent Office, including inter partes review and post grant review matters for both petitioners and patent owners.

In addition, Mr. McPhail has prepared and prosecuted both U.S. and foreign patent applications relating to the areas of biotechnology, including genomics, genetic engineering and diagnostic assays, pharmaceuticals, including compositions, active agents and therapeutic methods, and chemistry, including organic and inorganic compounds and syntheses, polymers, liquid crystals, chromatography and materials. He has also counseled clients on subjects such as intellectual property strategy, licensing, research contracts and consulting agreements, evaluation of patent portfolios, monetization of intellectual property assets, mergers and acquisitions, and employment agreements. 

Prior to entering private practice, Don was an Examiner at the United States Patent & Trademark Office, where he examined applications relating to drugs and pharmaceutical compositions, including methods of preparation and therapeutic uses.

Education & Credentials

Education

Duke University

B.S., Chemistry, 1988
  • Graduated with distinction

Duke University

M.S., Organic Chemistry, 1991
  • Phi Lambda Upsilon

George Mason University School of Law

J.D., 1994
  • Associate Editor, Law Review

Bar Admission

  • District of Columbia1994

Prominent Assignments

Ferring B.V. v. Watson Labs. et al., 764 F.3d 1382 (Fed. Cir. 2014); patent infringement case relating to Apotex’s generic challenge to Ferring’s LYSTEDA product; prevailed at trial and on appeal to Federal Circuit; first holding that generic company can moot ANDA litigation by amending its application even while litigation is on-going.

Apeldyn Corp. v. AU Optronics Corp. et al., 831 F. Supp. 2d 817 (D. Del 2011), aff’d, 522 Fed. App’x 912 (Fed. Cir. 2013); patent infringement case relating to video signaling in LCD displays; prevailed on summary judgement and on appeal to Federal Circuit.

Endo Pharmaceuticals Inc. v. Actavis Labs. UT, Inc., 2016-1146, 2016 U.S. App. LEXIS 18490 (Fed. Cir. Oct. 14, 2016); patent infringement case relating to Actavis’ generic challenge to Endo’s FORTESTA product; prevailed at trial in E.D. Texas and on appeal to Federal Circuit.

Amgen, Inc. et al. v. Apotex Inc. et al., 827 F.3d 1052 (Fed. Cir.), cert. denied, 137 S.Ct. 591 (2016); patent infringement case relating to Apotex’s biosimilar challenge to Amgen’s NEUPOGEN and NEULASTA products; holding that 180-day commercial marketing provision of the BPCIA is mandatory and only triggered once the FDA has granted a license to manufacture a biosimilar.

Uniloc USA Inc. et al. v. Meridian EMR Inc. et al.; patent infringement case relating to electronic medical record software; settlement following successful challenge to patent claims under Alice.

ChanRx Corp. v. Case Western Reserve University et al. v. Arthur M. Brown, M.D., patent case involving inventorship and ownership of patent rights and trade secrets; settled following mediation by the Court.

Professional Involvement

  • Federal Circuit Bar Association

Community Involvement

  • Attorney Coach, Compass High School Mock Trial Team

Court Admissions

  • U.S. District Court for the Eastern District of Texas, 2011
  • U.S. Court of Appeals for the Federal Circuit, 1996
  • U.S. Patent & Trademark Office, 1992

Publications/Presentations

  • Speaker, “Patent Infringement: A Thorough Analysis of 2017 Developments and Their Impacts in 2018,” Webinar in conjunction with The Knowledge Group, May 24, 2018
  • Speaker, “Patent Infringement: Significant Developments in 2017 and Beyond,” Webinar in conjunction with The Knowledge Group, September 15, 2017
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