David B. Gornish

Member

Overview

David Gornish is a patent attorney with significant experience in domestic and worldwide patent procurement and portfolio management. He enjoys representing entrepreneurs, whether they are company executives or individuals with great ideas.

David has drafted patent applications directed to many different technologies, including automated manufacturing equipment, injection molding processes, medical devices, drug delivery devices, therapeutic methods, musical accessories, pharmaceutical packaging, fluid transfer apparatus, product quality inspection methods, air filtration, plasma deposition processes, conveyor equipment, and bicycles.

On the litigation side, he has been intimately involved in several high stakes patent cases, primarily in the pharmaceutical field. Having the unique perspective of both a patent litigator and patent prosecutor, David drafts and prosecutes patents with foresight concerning potential disputes arising in the future. In another aspect of his practice, David routinely advises on issues of patent clearance and risk management relating to new product launches. David also counsels on trademarks, copyrights, and trade secrets and has significant experience in IP-related contract drafting, review, and negotiation.

David’s technical background is in mechanical engineering and he worked in product development for a large medical device company prior to his legal career. David has served as the sole in-house patent counsel for a drug delivery and pharmaceutical packaging company. In that position, he managed a worldwide portfolio of hundreds of applications and patents. He also routinely handled contract matters and advised company executives on legal implications of their business decisions.

Representative Matters

  • Successfully represented a generic pharmaceutical company in invalidating asserted patent on summary judgment.
  • Successfully precluded an opponent’s biostatistics expert from testifying in patent litigation matter.
  • Significantly improved generic pharmaceutical company’s invalidity position by successfully moving court to reconsider claim construction.
  • Re-drafted client’s patent claims that had been prepared by former counsel to cover competitor’s products.
  • Provided in-house employee training to identify and protect trade secrets and avoid misappropriation of trade secrets from former employment.
  • Prepared, reviewed, negotiated, and managed compliance with hundreds of company confidentiality agreements and other contracts relating to trade secrets.
  • Devised and implemented system for invention intake and management as in-house patent counsel.
  • Conducted trade secret mining sessions with engineers and management as in-house patent counsel.

Awards and Recognition:

  • Selected for inclusion in Pennsylvania Super Lawyers – Rising Stars

Featured:

Spotlight on . . . David Gornish

News and Insights

Publications:

  • “Defending Infringement by Finding Unusual Prior Art,” co-author, ACC Docket, October 2011.
  • “Patent Markers Beware,” The Legal Intelligencer, May 2010.
  • “Patent Law Primer for Health Law Practitioners,” The Health Lawyer, Vol. 21, No. 1, October 2008.
  • “Future of Business Method Patents After Bilski,” co-author, TechLaw 360, September 2008.
  • “Patent Laws for Physician Inventors, Physician’s News Digest,” Vol. XXI, No. 8, May 2008.
  • “Medical Method Patents,” IP Law 360 September 2006.
  • “Valuation of IP for Litigation,” co-author, Pennsylvania Bar Institute, PBI No. 2005-3991, 2005.
  • “Hill-Rom and the Revised Rule on Patent Abstracts,” BNA Patent, Trademark & Copyright Journal, Vol. 68, No. 1690, October 2004.

Speaking Engagements

  • “Product Configuration — The Intersection of IP Rights,” co-presenter for Clear Law Institute webinar, May 2, 2017.
  • “Physicians as Creators” – Teleclass with The Entrepreneurial MD, January 2008.

Media Coverage

  • “Waymo v. Uber: a Gordian Knot Gets Tighter,” IPWatchdog.com, June 2017.

Interests

David is a singer and musician who enjoys playing guitar and bass. He also spends some of his free time following baseball, especially his favorite team, the Phillies.