David Okano
Biography
Overview
David Okano is a go-to attorney for managing and running complex patent and trade secret disputes.
David is a member of the Firm's Intellectual Property group, focusing on patent and trade secret litigation in district courts, appeals to the Federal Circuit, and post-grant proceedings before the Patent Trial and Appeal Board. He is sought after for the most complex patent and trade secret cases in a wide range of technologies, including large language models and neural networks underlying AI models, all varieties of software, wireless communication protocols, complex optical networking components, and smart biomedical devices. David is relied on to develop and implement case-wide strategy, manage large teams and case budgets, argue critical motions in court, prepare dispositive motions and appellate briefing, and defend and take depositions of key expert (both technical and financial) and 30(b)(6) fact witnesses.
David's trial experience includes cross-examining lead technical infringement experts and arguing critical evidentiary motions. He has also delivered oral arguments in IPR hearings at the PTAB, and second-chaired oral arguments for appeals to the Federal Circuit.
David previously served as a law clerk to the Honorable Raymond T. Chen of the U.S. Court of Appeals for the Federal Circuit. While in law school, he interned at the Computer Crime and Intellectual Property Section of the U.S. Department of Justice, and under supervision of attorneys in the Office of the Commonwealth's Attorney in Lynchburg, Virginia, prosecuted misdemeanors in general district court and misdemeanor appeals in circuit court.
Before practicing law, David gained experience as a systems engineer at a large defense contractor and a consultant at a risk management consulting firm.
School of Law
Experience
Representative matters include:
- Beijing Meishe Network Technology Co., Ltd. v. TikTok Inc., et al. (W.D. Tex. / N.D. Cal.): Representing TikTok and ByteDance in global copyright infringement and trade secret misappropriation suit involving foreign copyrights and foreign-developed trade secrets. Developed and implemented successful transfer strategy from WDTX to NDCA that resulted in In re TikTok Inc., 85 F.4th 352 (5th Cir. 2023) on mandamus to the Fifth Circuit
- Sterling Computers Corp. v. X Corp. (W.D. Tex.): Representing X in patent infringement suit brought against X targeting AI-driven recommendation algorithms in X’s “For You” feed.
- Whaleco Inc. v. Temureviewer.com et al. (D. Ariz.): Lead counsel represented TEMU in multiple trademark infringement and anti-cybersquatting suits. Successfully obtained preliminary injunctions and judgments against numerous infringing entities.
- Palo Alto Research Center Inc. (Xerox) v. Snap Inc. (C.D. Cal. and Fed. Cir.): Representing Snap in a multi-patent litigation matter. Developed strategy and led briefing on stay motions that resulted in full case stay pending IPR.
- 3G Licensing, S.A. v. HTC Corp. (Fed. Cir.): Represented HTC in multi-patent suit related to wireless communication technology. Took over briefing responsibilities at the Federal Circuit, defending invalidation of several patents at the Patent Office. Case settled favorably after briefing completed, before oral argument.
- Pixmarx LLC v. TikTok Inc. (W.D. Tex.): Represented TikTok in multi-patent dispute. Through aggressive early case strategy, obtained favorable settlement;*
- Quintessential LLC v. Quintessential Brands S.A., et al. (N.D. Cal.): Represented spirits importer Quintessential Brands in competitor suit involving trademark infringement, trade secret misappropriation, and various tort claims. Developed and led strategy resulting in rare Rule 12(b)(6) dismissal of all asserted claims, which resulted in plaintiff request to stay case to discuss mediation and settlement.*
- Philips N. Am. LLC v. Fitbit, Inc. (D. Mass): Represented Fitbit in multi-patent suit targeting health and medical functionality of Fitbit’s fitness and activity tracker devices. Successfully invalidated critical lead patent as indefinite for failure to disclose algorithm as required by 35 U.S.C. § 112, ¶ 6. Developed strategy that led to invalidation of remaining asserted patents under 35 U.S.C. § 101 on summary judgment.*
- BlackBerry Limited v. Snap Inc. (C.D. Cal.): Represented Snap, led defensive discovery and prepared summary judgment motions that invalidated four key patents under § 101, resulting in eventual dismissal with prejudice of remaining patents. Federal Circuit issued opinion affirming invalidation of all patents;*
- Canon Inc. v. TCL Electronics (E.D. Tex.): Represented Canon in six-patent suit relating to Internet TV technology. Responsible for day-to-day management of complex third-party and foreign discovery and offensive infringement case. Case settled after favorable Markman ruling and key discovery victories;*
- Represented large mobile phone manufacturer in patent litigation involving voice recognition technology (N.D. Cal.). Responsible for Markman brief resulting in asserted claims being found indefinite and not infringed, a finding which was affirmed in relevant part by the Federal Circuit;*
- IPA Technology Inc. v. Sony Corp., LG Electronics., Huawei, et al. (D. Del): Represented numerous phone manufacturers in patent litigation involving SRI's voice recognition technology. Responsible for Rule 12(b)(6) motion that invalidated independent claims of each asserted patent under §101. In follow-on case, filed successful Rule 12(b)(6) motion to invalidate all remaining 170+ claims of those patents;*
- In re Certain Telecommunication Systems and Components Thereof (ITC); Xtera, Inc. v. Nokia et al. (W.D. Tex.): Represented Xtera in multiple forums, including as both complainant and respondent in multiple ITC investigations, in the district court, and at the PTAB. Deposed and defended key technical experts and 30(b)(6) witnesses, cross-examined technical experts and argued motions at ITC evidentiary hearing. Achieved favorable settlement with respondents and termination of investigation against Xtera on eve of hearing;*
- Supercell Oy v. GREE, Inc. (N.D. Cal.): Represented GREE in patent infringement suit relating to mobile gaming applications filed by its largest competitor as part of a worldwide patent dispute. Responsible for successful Rule 12(b)(6) motion that invalidated all claims of key asserted patent;*
- 511 Innovations, Inc. v. HTC America, Inc. (E.D. Tex.). Represented HTC in patent litigation relating to sensor technology. Responsible for summary judgment briefing and pre-trial motions and filings. Case settled favorably shortly before trial;*
- Cellular Communications Equipment LLC v. AT&T Mobility LLC (E.D. Tex.). Represented AT&T in multi-defendant patent litigation relating to standards-essential cellular technology. Responsible for Daubert and dispositive motion briefing on behalf of joint defense group. AT&T obtained rare sever and stay shortly before trial;*
- Fitbit, Inc. v. Aliphcom, Inc. (Jawbone): Represented Fitbit in multiple inter partes reviews challenging competitor's asserted patents. Delivered oral argument for patent in which the Board adopted all instituted grounds and invalidated all challenged claims;*
- Represented leading medical device manufacturer in patent litigation relating to vacuum-controlled artificial limb prosthetics for transfemoral amputees (C.D. Cal.). Obtained denial of a motion for preliminary injunction. On appeal to the Federal Circuit, successfully defended denial of preliminary injunction and obtained a favorable, case-dispositive claim construction;*
- Represented leading medical device manufacturer in patent litigation relating to microprocessor-controlled prosthetic limbs for transtibial amputees (D. Mass.). Obtained case-dispositive claim construction resulting in a favorable settlement for client that included a permanent injunction against competitor's infringing product;*
- Represented leading medical device manufacturer in patent litigation relating to powered, prosthetic knee technology (D. Mass.). Obtained favorable settlement for client, including a stipulation of noninfringement by client's accused product;* and
- Represented large global network gateway manufacturer in eight-patent suit relating to foundational Internet protocol technology against more than ten competitors (C.D. Cal.). Obtained favorable settlement for client shortly before trial.*
* Matters prior to joining White & Case
2024 USC Gould School of Law Intellectual Property Institute, Moderator, "Pitfalls of Approaching Trade Secret Litigation Like a Patent Case"
2023 Berkeley-Stanford Advanced Patent Law Institute, Panelist, "Paths for protecting innovation: comparing trade secrets and patents."
Co-author, "American Axle: Highlighting Divisions in the Federal Circuit on Section 101 Natural Law Jurisprudence," Intellectual Property & Technology Law Journal, Vol. 33, No. 1, January 2021 (cover article).
Co-author, Berkheimer and Aatrix En Banc Denial: a Divided Federal Circuit on Alice Step Two, Lexology, June 4, 2018
Co-author, No physical place, no regular and established place of business: the Federal Circuit strikes down Judge Gilstrap's patent venue framework, Lexology, Sept. 26, 2017.
Co-author, Panel-dependent Fed. Cir. decisions for 101 challenges?, Law360 Expert Analysis, Aug. 24, 2017.
Co-author, Reading the tea leaves from the TC Heartland LLC v. Kraft Food Group Brands LLC oral argument, Lexology, Mar. 30, 2017.
Primary and co-author for numerous case updates in the Federal Circuit Bar Association Case Digest.
Regularly quoted in news publications for Bloomberg Law and others.
