Shawn McDonald

Shawn McDonald is Special Counsel in the Intellectual Property Practice Group. He is co-located in the firm's Del Mar Heights and New York offices. 

Areas of Practice

Mr. McDonald's practice is devoted primarily to patent litigation, and secondarily to counseling small and mid-size technology companies on the development and management of their intellectual property assets. 

Mr. McDonald has a degree in Mechanical Engineering and was a product engineer with Siemens VDO Automotive before attending law school.  He has applied this technical training to patent litigation and strategic counseling involving diverse technologies, including implanted medical and dental devices, computer systems hardware, computer software, electronic power conversion, automotive fuel systems, gypsum wallboard, electronic dispensers, and telecommunications equipment.

Mr. McDonald has litigated numerous patent infringement actions, both on behalf of the party enforcing the patent and on behalf of the party defending against a patent enforcement action.  Mr. McDonald has examined witnesses at trial in the U.S. District Court for the Central District of California, and has argued several dispositive and other motions in that court and in other federal courts.  Mr. McDonald has litigated in each of the most prominent federal courts for patent cases: the Eastern District of Texas, the District of Delaware, the Northern District of California, the Central District of California, the Eastern District of Virginia, the Southern District of New York, and the Western District of Wisconsin. 

Drawing upon his experience as a product engineer and his graduate business education, Mr. McDonald has extensively counseled technology companies regarding patent procurement and licensing.  He has aided clients in the establishment of internal patent procurement programs and provided strategic advice to clients concerning patent prosecution strategy.  He has performed detailed portfolio analyses for clients in order to identify potential licensing and enforcement opportunities for existing patents.  He has aided numerous clients in efforts to value intellectual property in connection with a potential acquisition or sale of assets. Mr. McDonald also has aided clients in the analysis of the patent portfolios of competitors in order to develop a defensive strategy concerning such patents.

During law school Mr. McDonald was admitted to practice as a Patent Agent before the United States Patent and Trademark Office, and served as the in-house advisor on intellectual property issues for a small technology start-up based in Charlottesville, Virginia.  He is a registered Patent Attorney, licensed to represent clients before the Patent Office.

Mr. McDonald was previously an associate at Latham & Watkins in Los Angeles and San Diego, and at the patent litigation firm Fish & Neave in New York City.

Education

• J.D., University of Virginia, 1999
• M.B.A., The College of William and Mary, 1996
• B.S. Mechanical Engineering, Old Dominion University, 1993, Magna cum laude
• Diploma, Thomas Jefferson High School for Science and Technology, 1989, Annandale, Virginia

Clerkships

• Mr. McDonald clerked for the Honorable Paul R. Michel, Chief Judge, United States Court of Appeals for the Federal Circuit, the appellate court with exclusive national jurisdiction over appeals in patent cases.

Admissions

• California
• New York
• District of Columbia
• U.S. District Courts
• U.S. Patent and Trademark Office

Representative Active Litigations

Mformation Technologies, Inc. v. Research in Motion, Ltd. ("RIM") (Northern District of California) – Currently representing plaintiff patent owner Mformation in its patent infringement suit against RIM, accusing RIM's Blackberry devices and related software of infringing Mformation's patents covering remote management of wireless devices.

SynQor v. Artesyn Techs. et al. (Eastern District of Texas) - Currently representing defendant Lineage Power Corp. (formerly, Tyco Electronics Power Systems) in a patent case brought by plaintiff SynQor, Inc. involving patents relating to power electronics.

Lineage Power Corp. v. SynQor, Inc. (Western District of Wisconsin) - Currently representing plaintiff Lineage in a patent case brought by it against SynQor involving patents relating to power electronics and printed circuit board fabrication.

Other Representative Litigations

Quantum Corp. v. Riverbed Tech., Inc. (Northern District of California) – Represented plaintiff and cross-defendant Quantum in multiple patent infringement lawsuits against Riverbed regarding data storage products utilizing de-duplication technology. The matters were resolved in a global settlement that was very favorable to Quantum.

C.R. Bard, Inc., Bard Peripheral Vascular, Inc., and Dr. David Goldfarb v. W.L. Gore & Associates, Inc. (District of Arizona) – While at Latham & Watkins, represented plaintiffs Bard and inventor Dr. Goldfarb in a four-year patent infringement litigation against Gore involving ePTFE (teflon) vascular grafts and stent grafts.  After a two-month trial, the jury found for plaintiffs on all issues, found that Gore had willfully infringed the Goldfarb Patent, and awarded plaintiffs 185 million dollars.  The verdict was the first willfulness verdict after the Federal Circuit's Seagate decision and the damages award was the 8th largest civil verdict of any type in the United States in 2007.

Every Penny Counts, Inc. v. Bank of America, Inc. (Middle District of Florida) – While at Latham & Watkins, represented defendant Bank of America in a patent infringement lawsuit involving Bank of America's "Keep The Change" automated savings system.

Grayson, Inc. v. Zumar Industries, Inc. (Central District of California) – While at Latham & Watkins, represented defendant Zumar Industries in a patent infringement case involving traffic warning systems, obtaining summary judgment of noninfringement on all counts for Zumar.

MaxLinear, Inc. v. Linear Technology, Inc. (U.S.P.T.O.) – While at Latham & Watkins, represented MaxLinear in a trademark Opposition proceeding initiated by Linear Technology to prevent the registration of MaxLinear's name, obtaining a settlement favorable to MaxLinear.

G-P Gypsum Corp. v. BPB America, Inc. (District of Delaware) – While at Fish & Neave, represented plaintiff Georgia-Pacific subsidiary G-P Gypsum in patent infringement action involving gypsum wallboard.  The case was settled favorably.

Veritas Operating Corp. (Symantec) v. Microsoft Corp. (Western District of Washington) – While at Latham & Watkins, represented plaintiff Veritas (a wholly owned subsidiary of Symantec) against Microsoft in a complex case involving claims of trade secret misappropriation, patent infringement, copyright infringement and breach of contract in the field of volume management software, storage array network and automated system recovery technologies.

Nguon v. Garden Grove Unified School District (Central District of California) – While at Latham & Watkins, devoted more than 700 hours of pro bono service to the representation of Ms. Nguon in the litigation and trial of her discrimination, including arguing against and defeating the defendant school district's motion for summary judgment.

Representative Transactional Matters

UBS Securities, Inc.  Represented UBS in evaluating patent portfolios of third parties for potential acquisition, licensing and enforcement in the area of advanced cellular and bio-chemical assay equipment and reagents.

Qinetiq Ltd.  Represented Qinetiq in evaluating its portfolio of patents relating to semiconductor silicon wafer manufacturing and infringement by third parties.

The Carlyle Group.  Represented The Carlyle Group in evaluating patent portfolios of third parties for potential acquisition, licensing and enforcement in the area of enhanced-efficiency electrical power generation.

Cardiomind, Inc.  Represented Cardiomind in IP licensing matters and assisted in improving its IP management procedures.

OpNext, Inc.  Represented OpNext in evaluating patent portfolios of third parties for potential acquisition, licensing and enforcement in the area of ultra-high-speed miniaturized optical switching.

Foster Farms, Inc.  Represented Foster Farms in evaluating IP licensing issues and contractual disputes involving poultry processing methods and equipment.

Kelley Blue Book, Inc.  Represented Kelley Blue Book in connection with intellectual property licenses offered by third parties with respect to various Kelley Blue Book products.

Energy Capital Partners.  Represented Energy Capital Partners in evaluating patent portfolios of third parties for potential acquisition, licensing and enforcement in the areas of wholesale electrical power generation and distributed systems for the conversion and storage of electrical power.

MedAccord, Inc. Served as in-house IP advisor to MedAccord during law school.  Drafted patent applications and advised on IP portfolio management issues relating to automated physician and hospital/employer matching software solutions.

Honors

• 2007 Recipient of the LGBT Award, ACLU Foundation of Southern California. Awarded in recognition of Mr. McDonald's pro bono representation of a lesbian high school student in the litigation and trial of her discrimination claim in the U.S. District Court for the Central District of California, including more than 700 hours of his pro bono work in 2006.

Articles

• Patenting Floppy Disks, or How the Federal Circuit’s Acquiescence has Filled the Void Left by Legislative Inaction, 3 Va. J.L. & Tech. 9 (1998) (available for free download at: http://www.vjolt.net/vol3/issue/vol3_art9.pdf).

Speeches

• Mr. McDonald was an invited lecturer at the 2006 Intellectual Property Summit Forum in Hangzhou, Zhejiang Province, China. He presented An Introduction to U.S. Intellectual Property Law to an audience of more than 400 academics, national and provincial government officials, and businesspersons in Hangzhou, China. Portions of the program were televised in Hangzhou.
• Mr. McDonald was a panel presenter on Proposals for Post-Grant Opposition in the US at the IP Focus Series at the Loyola Law School. The panel of four presenters also included Michael R. Fleming, Chief Administrative Patent Judge, Board of Patent Appeals and Interferences, U.S. Patent Office, and James Toupin, General Counsel, U.S. Patent Office.