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Devin A. Kothari is an associate in the Advertising, Marketing & Promotions; Intellectual Property; Digital Media, Technology & Privacy and Litigation Practice Groups of Davis & Gilbert.

Mr. Kothari represents advertising agencies, public relations companies, media companies, brands, advertisers, technology companies and start-ups in all areas of advertising, marketing and promotions law, as well as on intellectual property and technology issues. Mr. Kothari’s practice includes drafting and negotiating a variety of agreements, including intellectual property and technology licenses; R&D, IT, software development, beta product and SaaS contracts; programmatic advertising and data agreements; website terms of use and privacy policies; and talent, sponsorship and agency-client agreements. Mr. Kothari commonly advises on the patent and technology components of intellectual property-focused mergers, acquisitions, IPOs and joint ventures.

Mr. Kothari particularly focuses his practice on technology-related counseling, including with respect to design and utility patents and high-technology copyrights and trade secrets. In that capacity, he routinely advises clients on choosing appropriate forms of intellectual property protection; invention disclosure systems; trade secret protection; the use of open source software; data breach issues; patent prosecution strategies; inventorship disputes; patentability opinions, including on software and business method technologies; and freedom to operate, infringement and invalidity opinions.

Mr. Kothari also has an active litigation practice, focusing on design and utility patent litigation (including with respect to patent trolls), and high technology copyright and trade secret disputes. He has litigated cases on technologies as diverse as fashion and consumer goods, financial products and business methods, electronics, computer hardware and software, network security, video games and virtual reality. His experience includes litigation in all leading patent forums, including the Eastern District of Texas, the District of Delaware, California and New York state district courts, the U.S. Court of Appeals for the Federal Circuit and the International Trade Commission; before the Patent Trial and Appeal Board, including with respect to covered business method proceedings and inter partes reviews; and at JAMS and other arbitral tribunals. Mr. Kothari has drafted a U.S. Supreme Court amicus curiae brief on behalf of the American Bar Association in the Teva v. Sandoz case, which concerned the appropriate standard of appellate review for federal district court claim construction rulings. He also has experience with software trade secret misappropriation and copyright infringement suits, including with respect to source code review and analysis and the abstraction filtration comparison test for substantial similarity. Mr. Kothari has assisted in the representation of retailers, advertisers and consumer products companies in false advertising disputes before the National Advertising Division and in consumer class actions.

Prior to joining Davis & Gilbert, Mr. Kothari was a patent and intellectual property attorney at Skadden, Arps, Slate, Meagher & Flom LLP, where he represented clients in complex litigations and arbitrations involving high-technology patents, copyrights and trade secrets as well as the intellectual property components of mergers, acquisitions, public offerings, securitizations, license agreements and other contracts. Mr. Kothari was formerly an environmental engineer, both for a private engineering firm and as a Fellow at the Environmental Protection Agency.

REPRESENTATIVE ENGAGEMENTS

Patent and Technology Litigation

  • Represented a major obstacle course racing company in a patent infringement suit involving building technologies in the Northern District of Georgia. Defeated preliminary injunction and successfully dismissed case via motion to dismiss.
  • Representing a leading digital media agency as a defendant in a patent infringement suit involving digital watermarking technologies in the Eastern District of Texas. Claims dismissed by plaintiff.
  • Represented a leading advertising agency in a patent infringement suit involving renewable energy technologies in the Central District of California and before the PTAB. All patent claims dismissed and case stayed pending resolution of inter partes review.
  • Represented a leading advertising agency in a patent infringement suit involving QR codes in the Middle District of Florida. Claims favorably settled.
  • Representing a leading advertising agency in defending a claim for design patent infringement involving headgear design. Claims favorably settled.
  • Represented a leading video game studio in a high-profile trade secret misappro­priation, copyright infringement and Lanham Act suit involving source code and virtual reality technologies in the Northern District of Texas. Jury awarded $500 million in damages. (This matter was handled at a previous firm.)
  • Represented several of the nation’s largest banks in a complex, multi-defendant patent suit involving data compression and algorithmic trading technologies in the Southern District of New York and before the U.S. Court of Appeals for the Federal Circuit. Summary judgment of non-infringement and invalidity granted by the district court and affirmed by the Federal Circuit. (This matter was handled at a previous firm.)

Patent & Technology Counseling

  • Representing a leading advertising agency holding company on formulating its strategies for patent diligence and combatting patent trolls, and its contractual approach to managing patent infringement risks.
  • Representing both advertising agencies and advertisers on patent prosecution strategy and patentability and inventorship concerns for their designs, props, software, internet and digital technologies.
  • Representing a leading fashion and apparel company on freedom to operate and potential infringement issues concerning its jacket designs.
  • Representing a leading digital agency on technology standardization, freedom to operate and patent portfolio licensing for digital watermarking patents.
  • Representing leading advertising agencies on design patent infringement issues concerning designs on furniture, headsets and the use of digital icons in advertisements.
  • Representing a leading foreign investor on investments in semiconductor manufacturing technologies.
  • Representing a leading advertising agency on issues concerning data privacy and data breach, open source software and protection of SaaS software.

SPEAKING ENGAGEMENTS

"Wait, I'm A Lobbyist? Understanding The Impact of New York's New Ethics Regulations on Public Relations Professionals," PR Council Webinar, March 3, 2016

PUBLICATIONS

Co-Author, "Supreme Court Seeks to Curb the Worst Abuses of the Patent System," 5th Edition: Trends in Marketing Communications Law

Co-Author, "Trouble in Patent Troll Paradise?" Intellectual Property Magazine, August 2017

Co-Author, "The Days of Patent Plaintiff Forum Shopping May be Over," D&G Intellectual Property Litigation Alert, May 2017

Co-Author, "Patent Troll Cases Unlikely To Drop Significantly," 2017 Trends in Marketing Communications Law

Co-Author, "U.S. Supreme Court Sets the Bar Higher for Obtaining Damages for Design Patent Infringement," D&G Intellectual Property Litigation Alert, December 2016

Co-Author, "Legally Speaking: How to Stay Out of Real-Time Marketing Hot Water," cmo.com, May 11, 2016

Co-Author, "New York Ethics Commission’s Proposed Regulation Draws Fire From Public Relations," D&G Advertising, Marketing & Promotions Alert, February 2016

PROFESSIONAL MEMBERSHIPS/AFFILIATIONS

American Bar Association
American Intellectual Property Association, Electronic & Computer Law, Emerging Technologies, Trade Secret, M&A Committees
New York State Bar Association
New York City Bar Association
New York Intellectual Property Law Association, Patent Litigation, Internet & Privacy Law, Legislation Committees

BAR ADMISSIONS

New York
U.S. District Courts, Southern and Eastern Districts of New York

EDUCATION

Columbia University School of Law, J.D., 2010
University of Pennsylvania, B.A. and B.A.S., 2007


REPRESENTATIVE ENGAGEMENTS

Patent and Technology Litigation

  • Represented a major obstacle course racing company in a patent infringement suit involving building technologies in the Northern District of Georgia. Defeated preliminary injunction and successfully dismissed case via motion to dismiss.
  • Representing a leading digital media agency as a defendant in a patent infringement suit involving digital watermarking technologies in the Eastern District of Texas. Claims dismissed by plaintiff.
  • Represented a leading advertising agency in a patent infringement suit involving renewable energy technologies in the Central District of California and before the PTAB. All patent claims dismissed and case stayed pending resolution of inter partes review.
  • Represented a leading advertising agency in a patent infringement suit involving QR codes in the Middle District of Florida. Claims favorably settled.
  • Representing a leading advertising agency in defending a claim for design patent infringement involving headgear design. Claims favorably settled.
  • Represented a leading video game studio in a high-profile trade secret misappro­priation, copyright infringement and Lanham Act suit involving source code and virtual reality technologies in the Northern District of Texas. Jury awarded $500 million in damages. (This matter was handled at a previous firm.)
  • Represented several of the nation’s largest banks in a complex, multi-defendant patent suit involving data compression and algorithmic trading technologies in the Southern District of New York and before the U.S. Court of Appeals for the Federal Circuit. Summary judgment of non-infringement and invalidity granted by the district court and affirmed by the Federal Circuit. (This matter was handled at a previous firm.)

Patent & Technology Counseling

  • Representing a leading advertising agency holding company on formulating its strategies for patent diligence and combatting patent trolls, and its contractual approach to managing patent infringement risks.
  • Representing both advertising agencies and advertisers on patent prosecution strategy and patentability and inventorship concerns for their designs, props, software, internet and digital technologies.
  • Representing a leading fashion and apparel company on freedom to operate and potential infringement issues concerning its jacket designs.
  • Representing a leading digital agency on technology standardization, freedom to operate and patent portfolio licensing for digital watermarking patents.
  • Representing leading advertising agencies on design patent infringement issues concerning designs on furniture, headsets and the use of digital icons in advertisements.
  • Representing a leading foreign investor on investments in semiconductor manufacturing technologies.
  • Representing a leading advertising agency on issues concerning data privacy and data breach, open source software and protection of SaaS software.

SPEAKING ENGAGEMENTS

"Wait, I'm A Lobbyist? Understanding The Impact of New York's New Ethics Regulations on Public Relations Professionals," PR Council Webinar, March 3, 2016

PUBLICATIONS

Co-Author, "Supreme Court Seeks to Curb the Worst Abuses of the Patent System," 5th Edition: Trends in Marketing Communications Law

Co-Author, "Trouble in Patent Troll Paradise?" Intellectual Property Magazine, August 2017

Co-Author, "The Days of Patent Plaintiff Forum Shopping May be Over," D&G Intellectual Property Litigation Alert, May 2017

Co-Author, "Patent Troll Cases Unlikely To Drop Significantly," 2017 Trends in Marketing Communications Law

Co-Author, "U.S. Supreme Court Sets the Bar Higher for Obtaining Damages for Design Patent Infringement," D&G Intellectual Property Litigation Alert, December 2016

Co-Author, "Legally Speaking: How to Stay Out of Real-Time Marketing Hot Water," cmo.com, May 11, 2016

Co-Author, "New York Ethics Commission’s Proposed Regulation Draws Fire From Public Relations," D&G Advertising, Marketing & Promotions Alert, February 2016

PROFESSIONAL MEMBERSHIPS/AFFILIATIONS

American Bar Association
American Intellectual Property Association, Electronic & Computer Law, Emerging Technologies, Trade Secret, M&A Committees
New York State Bar Association
New York City Bar Association
New York Intellectual Property Law Association, Patent Litigation, Internet & Privacy Law, Legislation Committees

BAR ADMISSIONS

New York
U.S. District Courts, Southern and Eastern Districts of New York

EDUCATION

Columbia University School of Law, J.D., 2010
University of Pennsylvania, B.A. and B.A.S., 2007