Biography

David M. Longo, Ph.D. is a partner in the firm’s Electrical, Mechanical, and Design practice groups.  His legal practice covers all aspects of strategic counseling, patent portfolio development and management, prosecution, reissue, reexamination, ex parte appeals, opinions of counsel, freedom-to-operate and landscape analyses, due diligence, pre-litigation counseling, and license negotiations.  International and domestic clients rely on him to help them develop and grow their utility and design patent portfolios.  He frequently travels to Europe and Japan to speak on a variety of U.S. patent law topics for clients and practitioners.  

Dr. Longo’s technical experience bridges the materials science and electrical engineering fields, particularly in the areas of semiconductor materials and devices, semiconductor processing and characterization, thin film deposition and analysis, photovoltaics, nanotechnology, nanoprinting, alternative lithography technologies, fiber optics/optoelectronics, medical devices, and microelectromechanical systems (MEMS).  He also has significant experience in focused ion beam (FIB) microscopy and micromachining, transmission electron microscopy (TEM), scanning electron microscopy (SEM), and atomic force microscopy (AFM).

His Ph.D. dissertation, entitled “Development of a Deep Submicron Printing Technology,” significantly contributed to a Defense Advanced Research Projects Agency (DARPA) project for nanoscale printing of electronic materials onto planar and curved surfaces.  His experimental research applied FIB direct-write technology to fabricate complex nanoscale patterns on reusable printheads.  Elastomer replicas of the printheads were cast, coated with self-assembled monolayers, and ultimately “printed” onto semiconductor substrates and glass lenses using a combination of microcontact printing and etching.  Other academic research involved FIB microscopy and FIB-assisted material deposition, as well as analytical TEM to study the effects of heat treatment on nanoscale films and diffusion barriers deposited onto single-crystal silicon substrates. 

Dr. Longo has several technical publications and has spoken on his nanoscale printing research at technical conferences.  He has also spoken on developments in U.S. patent law and the patenting process at technical meetings in the U.S., as well as at nanotech consultancy conferences in Spain and Egypt.

Prior to joining the firm, Dr. Longo worked for another law firm primarily in the areas of patent counseling and prosecution, and worked full time as a patent agent while attending law school.

Education

  • George Washington University Law School (J.D.)
  • University of Virginia (Ph.D.)
    • Materials Science & Engineering
  • University of Virginia (M.S.)
    • Materials Science & Engineering
  • University of Scranton (B.S.)
    • Physics & Philosophy

Admissions

  • Virginia
  • District of Columbia
  • New Jersey
  • U.S. Patent and Trademark Office
  • Eastern District of Virginia
  • Court of Appeals for the Federal Circuit
  • Court of Appeals for Veterans Claims
  • U.S. Supreme Court

Services

Professional Affiliations

  • American Intellectual Property Law Association (AIPLA)
  • AIPLA IP Practice in Japan Committee
  • U.S. Bar – Japan Patent Office Liaison Council (represent Virginia Bar IP Section)
  • Intellectual Property Owners Association, Patent Law (U.S.) Committee Member, Patent Office Practice (U.S.)
  • Materials Research Society (MRS)
  • Institute of Electrical and Electronics Engineers (IEEE)

Accolades

  • Second Prize in Nathan Burkan Memorial Paper Competition, sponsored by A.S.C.A.P., for paper entitled “Using the D.M.C.A. Anticircumvention Provisions to Avoid § 102(b) of the Copyright Act and the Limited Times Clause in Art. I, § 8 of the U.S. Constitution” (2004)
  • Received five awards between 1998 and 2000 for research and scholastic activities while a graduate student.

Citations

Legal Publications and Articles

  • Justices Seem Unsatisfied with Design Patent Damages Tests” (coauthor), Law360, Oct. 14, 2016.
  • “USPTO Publishes Request for Comments on (and Examples Addressing) the Application of the Written Description Requirement to Specific Situations in Design Applications,” Protecting Designs Blog, Apr. 15, 2016.
  • “USPTO publishes Final Rule on Changes to Implement the Hague Agreement Concerning Industrial Designs,” Protecting Designs Blog, Apr. 2, 2015.
  • Ugg!  Deckers’ Design Patent Infringement Claim Is Not Kicked to the Curb,” Lexology (AIPLA), Sept. 15, 2014.
  • USPTO Publishes Request for Comments and Notice of Roundtable Event on the Written Description Requirement for Design Applications,” Lexology (AIPLA), Feb. 10, 2014.
     
  • Pro Hac Vice Admission before the Patent Trial and Appeal Board – Discretionary and for Good Cause,” Lexology (AIPLA), Mar. 15, 2013.
     
  • “Part 2:  A Tale of Two Views – Substantial Evidence vs. a Thorough & Searching Inquiry, in a Post-KSR World,” Lexology (AIPLA), Jul. 11, 2012.
     
  • “Part 1:  A Tale of Two Views – Substantial Evidence vs. a Thorough & Searching Inquiry, in a Post-KSR World,” Lexology (AIPLA), Jun. 14, 2012.
     
  • “In the Course of an Obviousness-Based Reversal of the BPAI, the CAFC Reminds Us that Drawings Can Be Used as Prior Art, without Referring to the Surrounding Description, Only if the Prior Art Features are Clearly Disclosed by the Drawing,” Lexology (AIPLA), May 22, 2012.
  • “Guest Post:  Checking the “Staats” – in Broadening Reissue Practice, We Are Stuck in the “Doll”-drums,” Patently-O – The nation’s leading patent law blog, Mar. 7, 2012.
  • “Checking the Staats: How Long is too Long to Give Adequate Public Notice in Broadening Reissue Patent Applications?” (coauthor), Duke Law & Technology Review, No. 009 (Nov. 7, 2011).

Legal Speaking Engagements and Webinars

  • “Navigating the tortuous path from application to patent in the US,” Withers & Rogers Seminar, London, U.K., Jun. 20, 2017.
  • “Functional Language in Patent Claims” (co-speaker), Oblon-Maiwald Symposium, Alexandria, Virginia, Jun. 5, 2017.
  • “Le ‘Software’ est-il toujours brevetable aux USA?” and “Derniers développements de la guerre entre Apple et Samsung aux USA dans le domaine des smartphones” (co-speaker), European American Chamber of Commerce, Paris, France, Nov. 9, 2016.
  • “Functional Language in Patent Claims” (co-speaker), Maiwald-Oblon Symposium, Munich, Germany, Jun. 8, 2016.
  • “Digitalization of the IP Administration, the backbone of IP Management” (session chair); and “Medical Technologies News: From National R&D to International Commercialization” (panel speaker), IP Summit 2015, Berlin, Germany, Dec. 3, 2015. 
  • “USPTO’s After Final Consideration Pilot: Tips to Reach Allowance,” IPO Chat Channel Webinar, Nov. 19, 2015.
  • “Top 10 Patent Updates from the Courts and Congress in 2013,” speaking on “Claim Construction Revisited (Lighting Ballast),” AIPLA Webinar, Feb. 19, 2014.
  • “Increasing Allowance Rate at the USPTO and Recent Applications of the KSR Decision at the Federal Circuit,” American Chemical Society, New Orleans, Louisiana, Dec. 1, 2010.
  • “Collaboration Between Industry & Academia:  Intellectual Property as a Foundation for Business Growth,” Nanotech Business Summit, Cairo, Egypt, Dec. 6, 2009.
  • “The Importance of Opinions of Counsel,” American Chemical Society, San Juan, Puerto Rico Oct. 21, 2009.
  • “The Nanotechnology Dilemma: the Intersection of Nanotechnology and Obviousness” (keynote speaker), Nanotech Insight 2009, Barcelona, Spain, Apr. 1, 2009. 
  • “What is Obvious? A Review of Recent Cases and Tips for Prosecuting Patent Applications,” American Chemical Society, Nashville, Tennessee, Nov. 12, 2008. 
  • “Practical Tips for Prosecuting Patent Applications and Recent Developments in U.S. Patent Law,” Materials Science & Technology 2008, Pittsburgh, Pennsylvania, Oct. 6, 2008.
  • “What is Obvious? Nanotechnology and Current Case Law,” NanoBiotech 2008, Troy, New York, Sep. 15, 2008.
  • “Obvious Is Obvious – Or Is It? The Supreme Court Speaks in KSR v. Teleflex,” American Chemical Society, Greenville, South Carolina, Oct. 24, 2007.
  • “Protecting Your Hard Work and Discoveries with Patents” (panel speaker), 2003 International Mechanical Engineering Congress and RD&D Expo, Washington, DC, Nov. 20, 2003.
  • “Protecting Your Hard Work and Discoveries with Patents,” Materials Research Society, San Francisco, California, Apr. 24, 2003.

Technical Publications

  • Y. Liu, D.M. Longo, and R. Hull, “Ultra Rapid Nanostructuring of Polymethlmethacrylate (PMMA) films using Ga+ focused ion beams,” Appl. Phys. Lett., 82(3), 346-348, (2003).
  • R. Hull, T. Chraska, Y. Liu, and D.M. Longo, “Microcontact Printing: New Mastering and Transfer Techniques for High Throughput, Resolution, and Depth of Focus,” Mat. Sci. Eng. C19, 383-392 (2002).
  • D.M. Longo, W.E. Benson, T. Chraska, and R. Hull, “Deep Submicron Microcontact Printing of Electronic Materials Utilizing Focused Ion Beam Fabricated Printheads,” Appl. Phys. Lett., 78(7), 981-983, (2001).
  • D.M. Longo and R. Hull, “Direct Focused Ion Beam Writing of Printheads for Pattern Transfer Utilizing Microcontact Printing,” Mat. Res. Soc. Symp. Proc.: Materials Development for Direct Write Technologies, 624, 157-162, (2001).
  • D.M. Longo and R. Hull, “Microcontact Printing (µCP) of Electronic Materials Utilizing Focused Ion Beam Fabricated Printheads,” Proc. 1999 Intl. Semicond. Dev. Res. Symp., 33-36 (1999).
  • R. Hull and D.M. Longo, “Development of a Nanoscale Printing Technology for Planar and Curved Surfaces,” Proc. 10th Intl. Work. Phys. Semicond. Dev., New Delhi, India, II, 974-981 (1999); also available through the Proceedings of SPIE (The Int’l Soc. of Optical Eng.) 3975, 974-981 (2000).
  • D.M. Longo, J.M. Howe, and W.C. Johnson, “Development of a Focused Ion Beam (FIB) Technique to Minimize X-ray Fluorescence during Energy Dispersive X-ray Spectroscopy (EDS) of FIB Specimens in the Transmission Electron Microscope (TEM),” Ultramicroscopy, 80(2), 85-97, (1999).
  • D.M. Longo, J.M. Howe, and W.C. Johnson, “Experimental Method for Determining Cliff-Lorimer Factors in Transmission Electron Microscopy (TEM) Utilizing Stepped Wedge-Shaped Specimens Prepared by Focused Ion Beam (FIB),” Ultramicroscopy, 80(2), 69-84, (1999). (Micrographs from this article selected by editor Pieter Kruit for the cover illustration of the Oct. 1999 issue of Ultramicroscopy.)
  • D.M. Longo, J.M. Howe, and W.C. Johnson, “The Effect of Focused Ion Beam (FIB) Specimen Geometry on X-ray Fluorescence During Energy Dispersive X-ray Spectroscopy (EDS) Analysis in the Transmission Electron Microscope (TEM),” Proc. of Microscopy and Microanalysis, 4, 856-857, (1998).
     

Technical Presentations

  • “Single and Multiple-Level Microcontact Printing Progress and Challenges,” DARPA MLP Program Review, Charlottesville, Virginia, Mar. 13, 2001.
  • “Direct Focused Ion Beam Writing of Printheads for Pattern Transfer Utilizing Microcontact Printing,” Materials Research Society, San Francisco, California, Apr. 24, 2000.
  • “Microcontact Printing (µCP) of Electronic Materials Utilizing Focused Ion Beam Prepared Fabricated Printheads,” International Semiconductor Device Research Symposium (ISDRS), Charlottesville, Virginia, Dec. 1, 1999.
  • “Focused Ion Beam Printhead Fabrication,” Applied Electro-physics Laboratory (AePL) Seminar, Charlottesville, Virginia, Feb. 26, 1999.

Industries