David H. Herrington’s practice and experience span a wide range of litigation, advisory and regulatory matters, with a focus on intellectual property disputes.

He has handled suits involving claims of patent infringement, trade secret misappropriation, trademark infringement and breach of patent and know-how licenses, and he has advised on IP matters such as the sale of a multibillion-dollar patent portfolio, purchase of a domain name, response to “patent troll” claims and due diligence assessments of IP litigation exposure and assets. His experience in other areas includes SEC and FINRA enforcement actions, internal investigations, and commercial litigation involving derivatives, debt instruments and many other subjects.

David has conducted a number of patent infringement suits through trial and appeal. He also has successfully represented clients in jury trials, international arbitrations, evidentiary hearings and appeals.

David joined the firm in 1991.

Notable Experience

  • Honeywell International v. Hamilton Sundstrand Corporation, 370 F.3d 1131 (Fed. Cir. 2004) (en banc), in which the firm won a victory for Hamilton Sundstrand Corporation in an important Federal Circuit en banc decision.

  • Tessera, Inc. v. UTAC (Taiwan) Corporation, 2014 WL 1339693 (N.D. Cal. March 2014), successful motion for summary judgment for UTAC (Taiwan) Corporation in dispute concerning patent license.

  • Marguerite Hoffman v. L&M Arts, et al., 2014 WL 4375667 (N.D. Tex. September 2014), successful motion for judgment as a matter of law in favor of clients in case involving purchase and sale of Mark Rothko painting.

  • Peoples Federal Savings Bank v. People’s United Bank, 672 F.3d 1 (1st Cir. 2012), ruling in favor of client People’s United Bank, affirming denial of motion for preliminary injunction in trademark infringement suit.

  • Tessera, Inc. v. UTAC (Taiwan) Corporation, (N.D. Cal. March 2012), successful motion to dismiss complaint.

  • Nortel Networks, Inc. v. Communications Test Design, Inc., 2011 WL 1102829 (Bankr. D. Del. March 22, 2011), denial of motion to dismiss claims brought by client Nortel Networks, Inc. for trade secret misappropriation, fraud and breach of contract.

  • In re Nortel Networks Corp., 445 B.R. 370 (Bankr. D. Del. 2011), ruling in favor of client Nortel Networks Inc., denying motion to compel arbitration of dispute concerning calculation of purchase price for sale of voice over IP business.

  • People’s United Bank v. PeoplesBank, 401 F. App’x 607 (2d Cir. 2010), affirming denial of preliminary injunction against client People’s United Bank in trademark infringement suit.

  • Peoples Federal Savings Bank v. People’s United Bank, 750 F. Supp. 2d 217 (D. Mass. 2010), ruling in favor of client People’s United Bank, denying motion for preliminary injunction in trademark infringement suit.

  • People’s United Bank v. PeoplesBank, 2010 WL 2521069 (D. Conn. June 17, 2010), denying motion for preliminary injunction against client People’s United Bank based on claim of trademark infringement following a six-day evidentiary hearing.

  • Johnson v. State, 2011 WL 6157492 (Tenn. Crim. App. Dec. 9, 2011), overturning conviction of first-degree murder of pro bono client Erskine Johnson, resulting in release of Mr. Johnson from prison.

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Selected Activities

  • Member of the Cleary Gottlieb team that, in its pro bono representation of former Tennessee death row inmate Erskine Johnson, succeeded in overturning Mr. Johnson’s death sentence and conviction. The team’s work has been profiled in The Am Law Daily and the New York Law Journal.
  • Member, the Licensing Executives Society
  • Member, the Licensing Executives Society International, Dispute Resolution Committee

Publications

  • Court Strikes Down The Lanham Act’s Bar On Registration Of Disparaging Trademarks,” Cleary Gottlieb Alert Memorandum, June 21, 2017 (co-authored with Lawrence Friedman and Arminda Bepko). 
  • The Supreme Court’s Lexmark Ruling On Patent Exhaustion: The Strategic Implications For Patentees,” Cleary Gottlieb Alert Memorandum, June 5, 2017 (co-authored with Lawrence Friedman, Daniel Ilan and Arminda Bepko).
  • Supreme Court Limits Where Patent Infringement Lawsuits May Be Filed,” Cleary Gottlieb Alert Memorandum, May 24, 2017 (co-authored with Lawrence Friedman and Arminda Bepko).
  • The Supreme Court Limits U.S. Patent Infringement Liability For Goods Sold Overseas,” Cleary Gottlieb Alert Memorandum, February 27, 2017 (co-authored with Lawrence Friedman and Arminda Bepko).
  • Notable IP Decisions of 2016, and a Look Ahead to 2017,” Cleary Gottlieb Alert Memorandum, February 16, 2017 (co-authored with Lawrence Friedman and Arminda Bepko).
  • “The Supreme Court Relaxes Standard for Enhanced Damages in Patent Infringement Suits,” Intellectual Property and Technology Law Journal, September 2016 (co-authored with Larry Friedman and Tom Kessler).
  • “The Supreme Court Clarifies Standard for Attorneys’ Fee Awards in Copyright Infringement Cases,” Intellectual Property and Technology Law Journal, September 2016 (co-authored with Larry Friedman and Tom Kessler).
  • “President Obama Signs The First Federal Trade Secrets Law, Supplementing State Law protections Against Trade Secret Misappropriation,” Cleary Gottlieb Alert Memorandum, May 13, 2016 (co-authored by Lawrence Friedman and Arminda Bepko).
  • “Congress Passes The First Federal Trade Secrets Law,” Cleary Gottlieb Alert Memorandum, May 2, 2016 (co-authored with Lawrence Friedman and Arminda Bepko).
  • “Federal Circuit Confirms Strength of U.S. Patent Rights by Reaffirming Its Prior Rulings Against Foreign Patent Exhaustion and in Favor of Post-Sale Restrictions,” Intellectual Property and Technology Law Journal, May 2016 (co-authored with Lydia Halpern).
  • “Fourth Circuit Permits Foreign Trademark Owner to Assert Lanham Act Claims,” Cleary Gottlieb Alert Memorandum, April 21, 2016 (co-authored with Lawrence Friedman, Arminda Bepko and Thomas Kessler).
  • “Notable Intellectual Property Cases of 2015, and a Look Ahead to 2016,” Intellectual Property and Technology Law Journal, April 2016 (co-authored with Larry Friedman, Arminda Bepko and Tom Kessler).
  • “Supreme Court Finds ‘First Sale’ Copyright Doctrine Applies to Copies Lawfully Made and First Sold Abroad,” Intellectual Property and Technology Law Journal, June 2013 (co-authored with Daniel Ilan, Megan Prunella and Sarah Koper).
  • “Makes Substantial Changes To Patent Law With The America Invents Act,” Intellectual Property and Technology Law Journal, December 2011.
  • “Preliminary Injunctions: After ‘eBay’ and ‘Salinger,’ Tougher Standard Applies in the Second Circuit,” New York Law Journal, August 16, 2010 (co-authored with Lawrence Friedman).
  • “Trademark Battles in the Banking Field: When a Bank Acquisition Gives Rise to a Trademark Dispute,” The Banking Law Journal, May 2009.
  • “Name Calling: Why Do Banks Get into So Many Trademark Disputes?” IP Review, Issue 26, Summer 2009.
  • “Assessing Damages When an Injunction Is Denied,” IP Law360, March 28, 2008.
  • “Purchase Price Accounting Arbitration: Why Courts Sometimes Find That Disputes About Purchase Price Are Not Subject To Purchase Price Arbitration,” Mealey’s International Arbitration Report, October 2011.
  • “Whether ‘Foreign Cubed’ Securities Class Actions Fit in U.S. Courts,” New York Law Journal, February 17, 2009 (co-authored with Lewis Liman).
  • “The Developing Privilege for Regulatory Communications with the SEC,” The Banking Law Journal, September 2007.