David A. Kelly

  • Atlanta

David is chair of the firm’s Life Sciences Practice. His practice covers all aspects of intellectual property with an emphasis on client counseling, patent litigation, and contested PTO proceedings.

David counsels his clients on a diversity of intellectual property issues in technologies ranging from life sciences, pharmaceuticals, molecular diagnostics, synthetic biology, medical devices, personal care, and e-commerce. In addition, David has extensive experience litigating patents in federal district courts and the United States Patent & Trademark Office, representing both patent owners and accused infringers.

Recognized as a thought leader in his practice area, David has been quoted in leading business publications, has authored dozens of articles, and is a frequent speaker on patent law issues around the country. David was named a “Rising Star” in Intellectual Property by GeorgiaSuper Lawyers© magazine in 2013 and 2014, and 2015, and was selected in 2014 as a “Rising Legal Star Under 40” by the Daily Report.

David is admitted to practice before the Federal Circuit, the Eleventh Circuit, all appellate courts of Georgia and Virginia, and the United States Patent and Trademark Office.

Relevant Experience

Representative client counseling matters: 

  • Manage international patent prosecution docket for numerous U.S. and foreign companies in the life sciences and pharmaceutical arts.
  • Opinion and due diligence counsel for Fortune 100 molecular diagnostics company in a potential acquisition valued at $2.2 Billion; diligence involved clearance, validity and patentability analyses, review of all relevant agreements and licenses, and a final report summarizing opinions and conclusions.
  • Due diligence counsel for Fortune 500 tissue-based biotech company in a potential acquisition valued at $1.6 Billion.
  • Due diligence counsel for leading investment firm interested in funding a cancer therapeutics company; review involved clearance of dozens of products and a validity and patentability analysis of over 100 patent families.
  • Opinion and prosecution counsel for Fortune 500 life sciences and plant technology company. Conduct clearance, validity, and patentability analyses; advise on patent procurement, enforcement, and defensive strategies.
  • Opinion and due diligence counsel for medium-sized pharmaceutical company. Prepare clearance and validity opinions, assess product coverage, and advise on patent portfolio.
  • Opinion counsel for sustainable chemicals company. Prepare clearance and validity opinions, assess product coverage, and advise on patent portfolio.
  • Opinion counsel for publicly-traded synthetic biology company. Prepare clearance and validity opinions.

Representative litigation and contested PTO matters:

  • Litigation counsel for medium-sized pharmaceutical company. Prepare paragraph IV letter and offers of confidential access. Successfully represented the company in a Hatch-Waxman suit involving competitor’s Orange Book-listed patents. After Markman, the case settled on favorable terms.
  • Litigation and IPR counsel for Fortune 1000 consumer lawn care company. Successfully obtained summary judgment on competitor’s trade secret claim. Obtained favorable Markman ruling against competitors’ patents, leading to dismissal of the patent infringement suit. Obtained attorneys’ fees for competitor’s litigation misconduct. Successfully provoked inter partes reviews and reexaminations against competitors’ patents, and obtained final written decisions from the PTAB that the patents at issue are unpatentable.
  • Litigation counsel for leading medical device manufacturer in various ongoing litigations and contested PTO proceedings. Successfully invalidated competitor’s patents in district court. After initiating contested PTO proceedings against competitors’ patents, obtained final written decision from the PTAB that the patents were unpatentable, which was affirmed by the Federal Circuit. In another case, successfully reversed a PTAB finding of patentability on appeal to the Federal Circuit.
  • Prosecution and litigation counsel for e-commerce company. Current litigation matter involves patent infringement action brought against competitor over four patents relating to automated shipping calculators in e-commerce transactions. District court litigation currently stayed pending inter partes review of the patents.
  • Litigation counsel for Fortune 500 packaging company in patent infringement litigation involving the company’s patented perfume packaging technology. After 4-week bench trial, obtained a verdict of infringement and a permanent injunction, which was affirmed on appeal. Prior to trial, obtained favorable Markman ruling and summary judgment of validity and enforceability.
  • Litigation counsel for Fortune 500 pharmaceutical company accused of infringing patents to abuse-resistant opioid products. After obtaining a favorable Markman ruling, the case settled on confidential terms favorable to the client.
  • Litigation counsel for life sciences company with patents covering DNA sequencing technology. Obtained favorable Markman ruling, which was affirmed on appeal. Client was ultimately awarded over $60 million in damages, which verdict is currently being appealed.