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 multiple suits involving claims of patent infringement, trade secret misappropriation, trademark infringement and copyright infringement, as well as high stakes suits concerning IP licenses.  He also counsels on IP issues in the transactional context, including licensing, M&A and capital markets transactions, the sale of patent portfolios and other matters.  His experience in other areas includes regulatory enforcement actions, internal investigations and commercial litigation.

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

David joined the firm in 1991.

Notable Experience

  • SNMP Research Inc. v. Nortel Networks Inc., representing Nortel Networks Inc. in action alleging breach of software license and claims of copyright infringement and trade secret misappropriation, obtaining ruling in client’s favor following bench trial.

  • Amkor Technology, Inc. v. United Test and Assembly Center Ltd., successfully defending client against claims of breach of patent license, obtaining multiple rulings in client’s favor and successful resolution of suit.

  • Peoples Federal Savings Bank v. People’s United Bank, obtaining rulings in favor of client People’s United Bank in district court and on appeal in suit alleging trademark infringement.

  • Nortel Networks, Inc. v. Communications Test Design, Inc., representing Nortel Networks, Inc. in asserting claims for trade secret misappropriation, obtaining favorable rulings and successful resolution of matter.

  • People’s United Bank v. PeoplesBank, winning ruling in favor of client People’s United Bank in trademark infringement suit following bench trial and defending victory on appeal.

  • Marguerite Hoffman v. L&M Arts, et al., winning grant of judgment as a matter of law in favor of clients in suit involving purchase and sale of Mark Rothko painting.

  • Johnson v. State, (pro bono), overturning conviction of first-degree murder of pro bono client Erskine Johnson (now known as Ndume Olatushani), resulting in release of client 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

Supreme Court Decides Constitutionality and Scope of Inter Partes Review of Patents,” Cleary Gottlieb Alert Memorandum, May 2, 2018 (co-authored with Arminda Bepko).

The Top Intellectual Property Decisions Of 2017: Their Practical Impact And Strategies For Addressing Them,” Cleary Gottlieb Alert Memorandum, January 22, 2018 (co-authored with Lawrence Friedman and Arminda Bepko).

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).

Recent Notable Intellectual Property Decisions and a Look Ahead,” Intellectual Property and Technology Law Journal, May 2017 (co-authored with Lawrence Friedman 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).

Supreme Court Limits U.S. Patent Infringement Liability for Goods Sold Overseas,” Intellectual Property and Technology Law Journal, May 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.