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.
- 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.
Intellectual Property: Patent Prosecution (DC) (2010-2019)
Patent Prosecution (2018)
- 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
- District of Columbia
- New York
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