Overview

David is a Director in Claro’s Disputes, Claims and Investigations (DCI) practice. David’s litigation consulting experience includes assisting clients with economic damages assessments in intellectual property and other commercial litigation matters. His consulting experience also includes valuations of intellectual property and other intangible assets in licensing and other transactional settings.

In the area of litigation, David has testified on economic damages in litigation matters with claims of patent infringement, breach of contract, breach of implied warranty, antitrust and fraud, among others. David has consulted on damages issues in trademark, trade secret and copyright infringement matters, as well as other litigation issues. These litigation engagements involved reasonable royalty determinations, lost profits calculations, price erosion, convoyed sales, unjust enrichment and financial performance analysis. Furthermore, David’s litigation consulting includes the determination of market royalty rates, relevant costs, lost sales and market share, among others.

David has worked on valuation projects including: patents, computer software, trade secrets, trademarks, and membership lists, conducted in a variety of contexts, including: joint ventures, licensing, related party transactions, and communications to investors. In addition, David’s experience includes business valuations for buy-sell agreements, estate planning and shareholder rights.

Experience +

At the request of counsel for the plaintiff, David submitted two expert reports and provided deposition testimony on lost profits and other damages issues in a matter with a claim of breach of implied warranty pending in federal court. The plaintiff claims it has lost millions of dollars as a result of lost customers, additional rebates and credit memos as a result of the defendant’s substandard food ingredient supplied to the plaintiff for its food product. Trial is expected in May 2017.

In a patent infringement matter relating to pen reader technology, David was engaged to lead a team to evaluate opposing damages expert’s reasonable royalty opinions and assist counsel with discovery requests. David efficiently worked with the client’s technical team and liability expert to adequately understand the asserted claims. David issued an expert rebuttal report and testified on reasonable royalty damages.

David issued a declaration and testified in deposition on irreparable harm issues for Defendants facing a preliminary injunction in a patent infringement matter. David provided an expert opinion that the Plaintiff failed to adequately support the causal nexus between the alleged patent infringement and the Plaintiff’s alleged price erosion and lost profits. The Court agreed with the Defendants, and denied Plaintiff’s motion for preliminary injunction.

In a patent infringement matter relating to a safety feature on box cutter knives, David was retained by the plaintiff as the testifying damages expert. From beginning to end, David led the project team on damages issues through phases of discovery. David assisted Counsel with depositions of fact witnesses and opposing damages expert. David issued an expert report on reasonable royalty damages and testified in deposition.

In an antitrust matter, David provided rebuttal to opposing expert’s lost profits damages opinion. David’s team assisted Counsel with fact discovery, deposition preparation, and drafting of client’s motion on summary judgment. David testified in deposition on a number of damages issues, including parties’ financial data for assessment of liability and damages issues, market participants’ financial results, and causation issues.

A non-profit entity engaged David to perform a valuation analysis in regards to a joint development of certain software rights. The non-profit client requested an evaluation of the contributions for the joint venture between the non-profit and a software developer. The subject technology was protected by a patent pending and trade secret information. David’s team gathered information regarding fair market royalty rates and other relevant value benchmarking information, developed appropriate financial models, and identified market and entity-specific risks to the client.

For a successful preliminary injunction hearing, David played a primary role assisting Counsel for the plaintiff and the testifying expert on irreparable harm issues. David’s efforts were used to formulate an expert opinion regarding the following concepts: (1) the causal nexus between the alleged harm and the alleged infringement, (2) available remedies, such as lost profits and reasonable royalty damages, were inadequate to compensate for the alleged patent infringement, and (3) without an injunction, the patentee would suffer irreparable harm.

In both litigation context and internal management purposes, David and his team have conducted a variety of business valuations. In a fraud litigation matter for example, David testified on the reliability of plaintiff’s claim it lost the value of its business as a result of the alleged fraud. David submitted a rebuttal expert report and testified in deposition on causation and business valuation issues, and the reliability of opposing expert’s opinions. For internal management purposes and estate planning purposes, David has led teams performing valuation analyses of companies’ shareholder rights.

Education +

M.S., Finance, University of Wisconsin at Madison, 2000

B.S., Accounting, Indiana University at Bloomington, 1993

Certifications +

Certified Public Accountant, State of Illinois

Certified in Financial Forensics

Memberships +

Member, American Institute of Certified Public Accountants

Illinois CPA Society, Member

Licensing Executives Society, Member

Chicago Bar Association, Non-lawyer Member

Nicholas Center for Corporate Finance and Investment Banking at Wisconsin’s MBA School of Business, Board Member

Publications & Speaking Engagements+

"What's Next In Carnegie Mellon Extraterritorial Sales Fight,” IPLaw360, December 7, 2015, with Prateek Shah.

“Lessons From Three Large Patent Damage Rulings,” IPLaw360, October 29, 2015, with Chris Leisner.

“Basics of Accounting for Lawyers 2015: What Every Practicing Lawyer Needs to Know: Protecting Your Clients Under The Changing Rules For Revenue Recognition,” Chapter 4, Practicing Law Institute, May 2015, with Terry Lloyd, Managing Director of Finance Scholars Group, and Gerald Richardson and Michael Brady of The Claro Group.

Panelist for the IPO IP Chat Channel webinar on “Damages on Extraterritorial Sales After Carnegie Mellon” on February 24, 2016. Other panelists included Blair Jacobs of Paul Hastings LLP and Prof. Amy Landers of Drexel University, Thomas R. Kline School of Law.

Panelist along with Adam Kelly of Loeb & Loeb LLP and U.S. District Judge Edmond Chang at John Marshall Law School on October 21, 2014. Addressed patent damages issues and relevant patent cases.

“Intellectual Property Valuation.” Annual presentation given to MBA students at the University of Wisconsin – Madison beginning in 2009 to present.

“Intellectual Property Valuation Topics.” Annual presentation to law school students beginning 2009 to present.

“Intellectual Property Licensing Concepts.” Given with Daliah Saper at Saper Law on February 18, 2010.

“Trade Secret Damages Issues.” Presentation given to the Intellectual Property Law Association of Chicago (IPLAC) on December 9, 2008.

“Patent Damages: Look Before You Leap.” Given with Holly Houska of Robinwood Consulting LLC and Jeffrey Dean of Marshall, Gerstein & Borun LLP on October 28, 2008.

“Managing Intellectual Property Rights.” Given with Jeremy Kriegel of Marshall, Gerstein & Borun LLP on December 11, 2007.

Practices +