Donald R. McPhail is member of the Firm’s Litigation and Post-Grant Patent Proceedings Practice Groups and has more than 30 years of experience in intellectual property law. He regularly represents plaintiffs and defendants in patent and trademark matters before the U.S. district courts. He has handled cases involving a wide range of technologies, including pharmaceuticals and biosimilars, regulated medical devices, semiconductor design and operation, thin film transistor manufacturing and design, voice-over-internet telephony, computer firewalls, routers and switches, network topology and message routing, LCD and LED design and operation, PECVD manufacturing processes, metal smelting furnaces, avionics, video signaling, computer software, and electronic point of sale devices. Mr. McPhail has also successfully represented appellees and appellants before the U.S. Court of Appeals for the Federal Circuit, including obtaining a ruling that an ANDA-filer could amend its application even during litigation in order to avoid infringement. Ferring B.V. v. Watson Labs. et al., 764 F.3d 1382 (Fed. Cir. 2014). Mr. McPhail also has experience with post-grant matters before the U.S. Patent & Trademark Office, including Post Grant Review and Inter Partes Review proceedings, Patent Term Extension applications, ex parte reexaminations, and re-issues, as well as in oppositions before the European Patent Office.
In addition, Mr. McPhail regularly counsels companies of all sizes on intellectual property matters, including portfolio design and development, patent enforcement and monetization, design around efforts, and licensing. Mr. McPhail has also gained substantial experience in negotiating and drafting settlement agreements and the like, including license agreements, asset purchase agreements, covenants not to sue, and stock purchase agreements. He is particularly adept at dealing with Non-Practicing Entities and has resolved a significant number of matters on highly favorable terms for his clients.
Mr. McPhail has prepared and prosecuted patent applications in the chemical, pharmaceutical, biotech, and mechanical arts in the United States and overseas and has designed and managed patent portfolios for a number of biotech and pharmaceutical start-ups. He is also a former examiner at the U.S. Patent & Trademark Office, where he examined applications in the pharmaceutical arts. Prior to entering the legal field, Mr. McPhail conducted research in the use of x-ray crystallography to elucidate the structures and absolute stereochemistry of pharmacologically active natural and synthetic products. He has published over sixty papers in peer-reviewed journals such as the Journal of the American Chemical Society and the Journal of the Chemical Society.