David P. Swenson
David Swenson is a Farney Daniels shareholder and founder of the firm’s Minneapolis office. His practice focuses on patent litigation, appeals before the U.S. Court of Appeals for the Federal Circuit and the Supreme Court, plus advising clients on IP portfolio management and monetization strategies. With a computer science degree from Boston College, he earned a joint J.D. and M.A. in Public Affairs from the University of Minnesota. Following clerkships with Judge Newman and Judge Rich at the Federal Circuit, he served as a partner in the DC IP Group of Kirkland & Ellis, then from 2004 to 2013 as a partner with Robins Kaplan Miller & Ciresi, first in DC and later back in Minneapolis.
His experience spans IP-related matters in courts nationwide, the ITC, FTC, and arbitrations covering myriad technologies from Fruit by the Foot®, aircraft anti-collision systems, microchips, routers, Internet browsers, and electronic commodity futures trading platforms, to bath faucet designs, unleaded gasoline formulations, and explosion-proof electric paint robots deployed on automobile assembly lines. Mr. Swenson has argued multiple patent appeals to the Federal Circuit, most recently winning a reversal in Extreme Networks, Inc. v. Enterasys Networks, Inc. His extensive appellate experience includes participating in over 25 appeals, for example victories in Imation Corp. v. Koninklijke Philips Elec. N.V.; General Mills, Inc. v. Kraft Foods Global, Inc.; and ACTV, Inc. v. Walt Disney Co., which defined the term “URL”. In 2011, he drafted an amicus brief to the U.S. Supreme Court in Stanford v. Roche Molecular Sys., Inc., which the press said “hewed closely to arguments put forward in [his clients’ brief].”
TiVo Inc. v. Verizon Communications Inc. (E.D. Tex.): Represented TiVo, including presenting TiVo’s Technology Tutorial & Markman arguments regarding Verizon’s patents, in DVR litigation that led to a significant settlement for TiVo in Sept. 2012.
Stanford v. Roche Molecular Sys., Inc., 131 S. Ct. 2188 (2011): Briefed position of American Association of University Professors, IEEE-USA, and IP Advocate as amici curiae in landmark victory interpreting the Bayh-Dole Act, which the press says “hewed closely to arguments put forward in [our brief].”
Extreme Networks, Inc. v. Enterasys Networks, Inc., 395 F. App’x 709 (Fed. Cir. 2010): Argued successfully for reversal of adverse claim construction and vacation of non-infringement summary judgment.
Western Union Co. v. MoneyGram Payment Sys., Inc., 626 F.3d 1361 (Fed. Cir. 2010): Helped win full reversal and entry of judgment that Western Union’s patent claims asserted against MoneyGram were obvious and thus invalid.
Imation Corp. v. Koninklijke Philips Elec. N.V., 586 F.3d 980 (Fed. Cir. 2009): Convinced the appellate court to reverse entry of judgment on the pleadings dismissing two of Imation’s key counts, and instead to order judgment for Imation on the question of whether certain entities formed or acquired later qualify as “subsidiaries” that could benefit from Imation’s patent license with Philips. Negotiated complex multi-agreement, three-party settlement to conclude worldwide litigation.
Andersen Corp. v. Pella Corp., 300 F. App’x 893 (Fed. Cir. 2008): Helped win reversal of a post-KSR obviousness summary judgment.
Argued two additional patent appeals in 2008, and participated in over 25 total appeals in IP-related matters, including assisting in obtaining the reversal of a claim construction and non-infringement summary judgment in an appeal that led to the Federal Circuit construing the key Internet term “URL”, see ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082 (Fed. Cir. 2003), as well as winning a rare denial from the Federal Circuit of permission to file an amicus brief, see St. Clair IP Consultants v. Nokia Corp., 395 F. App’x 707 (Fed. Cir. 2010).
General Mills, Inc. v. Kraft Foods Global, Inc., 495 F.3d 1378 (Fed. Cir. 2007): Obtained affirmance of a district court decision that Kraft failed to maintain its counterclaim after General Mills filed an amended complaint, in a case of first impression before the Federal Circuit interpreting Rule 12(a)(4)(A), involving Fruit by the Foot®.
Cross Med. Prods. v. Medtronic Sofamor Danek, Inc., 480 F.3d 1335 (Fed. Cir. 2007), 424 F.3d 1293 (Fed. Cir. 2005): Helped to twice vacate summary judgments and permanent injunctions, and ultimately win partial summary judgment of non-infringement.
Authored brief for General Mills and four other prominent Minnesota companies as amici curiae in the Eastern District of Virginia in successful support of enjoining the new PTO Final Rules.
Tried two Section 337 hearings before the ITC, including handling all patent-related issues and winning the only patent infringement-based general exclusion order issued in 2000, as well as proposing and conducting the first ITC “chess clock” trial in 2005.
In re Union Oil Co. of California (FTC 2004): Part of in-court team for four months defending UNOCAL against Section 5 antitrust allegations based on UNOCAL obtaining and asserting reformulated gasoline patents (settled post-hearing after Chevron’s acquisition of UNOCAL).
Union Oil Co. of California v. Atlantic Richfield Co. (C.D. Cal.): Core trial team member in four month trial that resulted in liability verdict for UNOCAL against six major oil companies in Oct. 1997, and significant damages award, affirmed, 208 F.3d 989 (Fed. Cir. 2000).
Presentations & Honors
“Akamai/McKesson & the Future of Joint Infringement,” AIPLA
(American IP Law Association), Spring Meeting, May 2, 2013
Council on Crime & Justice, 2012 Equal Justice Award in Advocacy
“Change under the AIA to Joinder, Marking & Prior Use Rights”:
AIPLA, Spring Meeting, May 10, 2012
Iowa IP Law Association, Annual Meeting, Oct. 6, 2012
Patent Resources Group, Inc., Instructor, Patent Litigation Course,
Ft. Myers, FL, March 29-31, 2012
“Effective Advocacy at the Federal Circuit,” Moderator & Panelist, Law Education Institute IP CLE Program, Jan. 2006
Annual Giles S. Rich Memorial IP Moot Court Competition, Federal Circuit, National Quarter-/Semi-Finals Judge, Washington, DC
“Obtaining & Enforcing Patent Related General Exclusion Orders,” speech at ITC Trial Lawyers Association Annual Meeting, Nov. 2000
Recognized in “Big Suits,” The American Lawyer, Dec. 2012, for winning the $250 million settlement in TiVo v. Verizon.
Quoted in the following articles:
“In Wake of Successful Amicus Brief, IP Advocate Hails Supreme Court Decision Upholding Faculty Inventors’ Rights,” benzinga.com, June 22, 2011
“Supremes Rule Against Stanford,” Inside Higher Ed, June 7, 2011
“Supreme Court Rebuffs Stanford’s Bid to Assert Control of Invention,” The Chronicle of Higher Education, June 6, 2011
“Bayh-Dole Benefits Seen But Some Cite Unintended Negatives,” Life Sciences Law & Industry Report, Feb. 11, 2011
Boards & Committees
Minnesota Campaign Finance & Public Disclosure Board, appointed by Governor Pawlenty for 2011-2012 term
Jungle Theater, Board of Directors, Minneapolis, MN
Choreo Theatro Company, Board of Directors, Brooklyn, NY
The Mills Health Clinic, Founding Director, Minnetonka, MN
Blaisdell YMCA, Community Board Member
Law & Inequality, Journal Advisory Board, U of MN Law School
ABA Section of IP Law Committee on Confidential Rights of Contractors with the Government, Committee Chair 2003-2004
John Carroll Society, Red Mass Committee, Washington, DC
U.S. Supreme Court
U.S. Court of Appeals for the Federal Circuit
U.S. District Courts for Minnesota, N.D. Illinois & W.D. Wisconsin
States of Minnesota & Illinois
District of Columbia