David R. Marsh, PhD

David R. Marsh, MBE, PhD

Partner

Dr. David Marsh focuses extensively on intellectual property counseling, patent prosecution, interferences, inter partes and ex parte matters, Hatch-Waxman issues and patent procurement, including in the biotechnology, business methods, chemical, clothing, computer media, consumer products, pharmaceutical, and medical device areas. His experience includes:

  • Lead counsel for numerous post-allowance proceedings at the US Patent and Trademark Office such as reexamination, reissues, inter partes reviews and interferences.
  • Appeal counsel at the US Patent and Trademark Office Board of Patent Appeals and Interferences.
  • Lead coordinating counsel for multiple European Opposition proceedings and other worldwide dispute resolution proceedings.
  • Worldwide patent prosecution experience.
  • Noninfringement and invalidity analysis and multiple due diligences.

Dr. Marsh is also an American Arbitration Association and World Intellectual Property Organization neutral arbitrator and has acted as a court-appointed mediator, arbitrator, and Markman Hearing special master. As an adjunct professor at Georgetown Law School, Dr. Marsh teaches "Biotechnology and Patent Law." 

Dr. Marsh carried out his graduate work in molecular biology at Cambridge, England, and his post-doctoral work at Yale University. His research experience includes molecular biology, immunology, biochemistry, and mammalian and plant genetics.

Experience

  • Lead patent procurement counsel for first-in-class pharmaceuticals. Patents have been successfully and repeatedly enforced.
  • Boston Scientific - OrbusNeich. Inter partes reexaminations of five patents on behalf of Boston Scientific. All asserted claims in the litigation were rejected in the reexaminations, and the case then settled favorably for our client.
  • Briggs & Stratton - Exmark Mfg. Ex parte reexamination of a patent asserted in litigation against Briggs & Stratton and another defendant. All asserted claims were rejected.
  • Boston Scientific - Vascular Solutions. Inter partes review of five patents on behalf of Boston Scientific was initiated and the case was settled favorably for our client.
  • General Electric/SightSound - Apple. Defending two of the client's patents that have been challenged in four inter partes “covered business method” reviews. Prevailed on two cases after filing preliminary responses to the review request; the two other cases are pending.

  • Amylin Pharmaceuticals in Coolidge v. Efendic before the US Patent and Trademark Office’s Board of Patent Appeals and Interference.

Perspectives

Life Sciences Transactions Boot Camp
Arnold & Porter Kaye Scholer, Morristown, NJ
Supreme Court Construes Key Provisions of Biosimilar Statute
Advisory
Preparing for a New Administration: What Should Endowments Expect?
Arnold & Porter Seminar, Washington, DC
PTAB Held Court of Claims Proceeding Didn't Trigger One-Year Bar for Filing Petitions for Inter Partes Review
Advisory
Post-Election Analysis 2016: Intellectual Property
Arnold & Porter LLP
More

Recognition

Chambers USA
Life Sciences: IP/Patent Litigation (Nationwide) (2009-2018)
Intellectual Property: Patent Prosecution (DC) (2010-2018)
The Legal 500 US
Healthcare: Life Sciences (2013-2018)
Patent Prosecution (2018)
IAM Patent 1000
Highly Recommended – Prosecution (2014, 2016-2018)
More

Credentials

Education
  • JD, New York University School of Law, 1995
  • CPE, Nottingham Law School, 1992
  • PhD, Institute of Plant Science Research, 1989
  • BSc, University of London, 1985
Admissions
  • District of Columbia
  • New York
Activities
  • AIPLA Quarterly Journal - Editorial Board (2013-2016)

  • Editor, BioScience Law Review

  • Intellectual Property Owners Association: Genetic Resources and Traditional Knowledge Committee; U.S. Post-Grant Patent Office Practice Committee

  • Member, American Bar Association, Intellectual Property Section

  • Member, American Intellectual Property Law Association, Interference and Biotechnology Sections

  • Member, British-American Business Association
  • Court-appointed Special Master, United States District Court for the Middle District of Florida

  • Fellow, Royal Society for the Encouragement of Arts, Manufactures and Commerce

Overview

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