David Soofian focuses his practice on patent litigation in federal district courts, post-grant patent proceedings at the United States Patent and Trademark Office’s (USPTO) Patent Trial and Appeals Board, appeals before the Court of Appeals for the Federal Circuit and client counseling matters. David has a degree in electrical engineering and has worked with technologies in a variety of fields, including telecommunication protocols (e-mail, VoIP), underlying network protocols (signaling, synchronization, packet management), light circuits, jet engines, financial software, search algorithms, image recognition algorithms, barcode decoding algorithms, telecommunications cables and pharmaceuticals.
David has also prosecuted patent applications (prepared and prosecuted patent applications) at the USPTO.
David was the lead associate on a team that invalidated 79 claims in four IPRs before the Patent Trial and Appeal Board (PTAB), 74 of which were being asserted against Berk-Tek in a parallel proceeding in the District of Delaware. On March 18, 2014, the PTAB issued its first Final Decision invalidating all of the original patent claims of the ’503 patent, leaving only two dependent claims that were added in a 2010 reexamination proceeding. On April 28, 2014, the PTAB entered Final Decisions for the remaining three IPRs, invalidating all of the claims of the ’641, ’575 and ’061 patents that were being asserted against Berk-Tek in the District Court proceeding.Berk-Tek, LLC v. Belden Inc., IPR2103-00057 (Patent 6,074,503), IPR2013-0058 (Patent 7,977,575), IPR2013-00059 (Patent 7,135,641) and IPR2013-00069 (Patent 7,663,061). Belden has appealed three of the four final decisions to the Federal Circuit, resulting in a cancellation of one of the asserted patents (Patent 7,135,641). David is the lead associate representing Berk-Tek in the three Federal Circuit appeals, two of which were recently affirmed in what is only the second Federal Circuit opinion reviewing the final disposition of a PTAB proceedings and one in which the USPTO has intervened given the importance of the issues.
David was part of a trial team that preserved Pfizer’s patent exclusivity for its blockbuster drug Viagra®, defeating a challenge by Teva Pharmaceuticals USA Inc., which sought FDA approval to sell a generic version of the drug. After a 12-day bench trial, the U.S. District Court for the Eastern District of Virginia ruled that a Pfizer patent claiming the use of Viagra® to treat erectile dysfunction would be infringed by Teva’s proposed copy. The court rejected Teva’s assertion that the Pfizer patent is invalid and unenforceable. Pfizer Inc., et al. v. Teva Pharmaceuticals USA Inc., 803 F.Supp.2d 409 (E. D. Va. 2011). The court subsequently awarded Pfizer attorney fees. Pfizer Inc., et al. v. Teva Pharmaceuticals USA Inc., 820 F.Supp.2d 751 (E. D. Va. 2011).
David was also part of a litigation team that obtained summary judgment for CLS Bank in the U.S. District Court for the District of Columbia. The four asserted patents related to a computer implemented method and apparatus for intermediated settlement. The court ruled that each and every patent claim asserted against CLS covered non-patentable subject matter—the abstract idea of intermediated settlement—and was invalid. CLS Bank Int'l v. Alice Corp. Pty. Ltd., 768 F. Supp.2d 221 (D.D.C. 2011). The holding was subsequently affirmed by the Supreme Court in Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347 (2014).
In The Market
- Kaye Scholer Secures Significant Victory for ATopTech by Invalidating Key Synopsys Patent Claims February 2, 2016 • Client Successes
- Law360 Interviews Soofian on Cutsforth PTAB Decision Validity January 25, 2016 • Media Mentions
- Law360 Interviews Soofian on PTAB Appeals Process December 21, 2015 • Media Mentions