Don Daybell

Senior Attorney

Orange County

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Donald Daybell, a senior associate in Orrick's Orange County office, is a member of the Intellectual Property Group. Mr. Daybell's practice is focused on high-stakes patent litigation, with an emphasis on trials in the US Patent and Trademark Office (PTO).  Mr. Daybell is lead or backup counsel on numerous Inter Partes Reviews before the PTO, and has spoken frequently about the America Invents Act and the new PTO trial procedures enacted by this ground-breaking legislation. 

Mr. Daybell also has substantial experience in all aspects of patent litigation. He has managed the day-to-day activities of complex patent cases, has taken and defended numerous depositions, has presented witnesses at trial, and has argued matters before various tribunals, including district courts and the International Trade Commission.

Mr. Daybell has experience in litigating and prosecuting patents in various technical fields, including semiconductors, computer software and hardware, databases, financial services, e-commerce, business methods and medical devices. His experience further includes preparing requests for ex parte re-examination and prosecuting re-examination requests with the PTO. His experience also includes providing counseling and opinions regarding issued patents, and conducting due diligence reviews of intellectual property.

Representative Engagements

Mr. Daybell’s experience includes lead and backup counsel in 46 America Invents Act (AIA) reviews, including Inter Partes Reviews (IPR) and Covered Business Method (CBM) reviews.

Mr. Daybell was backup counsel in four IPRs as petitioner for a Chinese touchscreen manufacturer, involving touchscreen manufacturing patents. Mr. Daybell was responsible for all aspects of the proceedings, including setting case strategy, arguing the oral hearing, taking and defending all depositions and all other appearances before the Patent Trials and Appeals Board (PTAB), as well as managing the preparation of the petitions and other briefs. The IPRs were settled favorably after the oral hearing.

Mr. Daybell was lead counsel in six IPRs as petitioner for a major data storage company, involving a variety of patents on aspects of data storage and retrieval technology. Mr. Daybell was responsible for all pre-trial hearings with the PTAB and second chaired the oral hearings. The IPRs concluded in a complete victory, with final written decisions issued in all six proceedings, finding all challenged claims unpatentable.

Mr. Daybell was lead counsel in four IPR proceedings as patent owner for a healthcare company, involving an interactive patient monitoring system. Mr. Daybell was responsible for all pre-trial hearings with the PTAB and participated in drafting the briefs for patent owner.  Review was denied in one of the proceedings. The other three proceedings were all terminated after institution, because the PTAB found that petitioner failed to identify all real parties in interest.

Mr. Daybell was lead counsel in seven IPR proceedings as patent owner for a healthcare company, involving an interactive patient monitoring system. Mr. Daybell was responsible for all pre-trial hearings with the PTAB, and second chaired the oral hearings in five of the proceedings. Review was denied in the other two proceedings.

Mr. Daybell was lead counsel in two CBM proceedings as petitioner for a major e-commerce company. Mr. Daybell was responsible for all aspects of the case after taking over the matters from another firm, including setting case strategy after assumption of the matters and conducting all pre-trial hearings with the PTAB. Both CBMs were instituted, and were settled favorably.

Mr. Daybell defended a major video gaming platform company in an infringement action regarding software for creating avatars. Mr. Daybell was responsible for the day-to-day administration of the case, and supervised more junior attorneys. The case was dismissed after the court found that the plaintiff’s patent was not patent-eligible under 35 U.S.C. § 101.

In addition, Mr. Daybell leads the Permanency Project, an award-winning pro bono partnership with the Legal Aid Foundation of Los Angeles and UC Irvine School of Law. The Permanency Project is devoted to assisting deserving low-income clients obtain lawful permanent resident status (i.e. a “green card”). Over the past five years, the Project has obtained green cards for over 40 victims of crimes and asylees. Mr. Daybell’s Project received LAFLA’s Pro Bono Service Award for 2015, as well as Legal Services Corporation’s Pro Bono Service Award for 2015.

Posts by: Don Daybell

PTAB “Clarifies” Procedures for Motions to Amend

On November 21, 2017, the PTAB released its “Guidance on Motions to Amend in view of Aqua Products.”  This guidance states that a Patent Owner’s motion to amend now only has to meet the requirements of 35 U.S.C. §316(d), and of 37 C.F.R. §42.121 (IPR) or 37 C.F.R. §42.221 (PGR/CBM), in order to be considered.  It further states that the burden of persuasion as to patentability of substitute claims is no longer on the Patent Owner.

The guidance provides that the Board will consider all of the evidence in the record, and that if that evidence is in equipoise, then the Board will grant the motion and enter the amended claims into the patent (i.e., the burden of persuasion now lies with the Petitioner).  It also says that Patent Owners have a duty under Rule 42.11 to disclose to the Board all information material to patentability of substitute claims. READ MORE

USPTO Fee Increases Impact IPR Filing Costs

Much like death and taxes, USPTO fee increases are a sure thing.  On November 14, 2017, the USPTO issued a new final rule raising many of the fees charged by the Office.  The Office also provided a chart that shows the changes from the current fees.

While many fees are increasing, the largest fee increase was to the IPR filing fees.  As set forth below, IPR fees are going up as much as 72%, and CBM/PGR fees as much as 33%.

(USPTO Final Rule: At-a-Glance, p. 17, available here)

The out-the-door fees for filing a basic IPR will go up from $23,000 to $30,500.

The out-the-door fees for filing a basic CBM/PGR rises from $30,000 to $38,000.

Excess claims fees in all of these proceedings are also going up by 50%.  For IPRs, the fees go from $200 to $300 per claim over 20 for the filing fee, and from $400 to $600 per claim over 15 for the institution fee.  For CBM/PGR, the fees go from $250 to $375 per claim over 20 for the filing fee, and from $550 to $825 per claim over 15 for the institution fee.

These new fees go into effect on January 16, 2018.

USPTO Issues New Regulation on Scope of Attorney-Client Privilege In PTAB Proceedings

On Tuesday, November 7, 2017, the USPTO published its final rule clarifying the situations in which the Office will recognize the existence of the attorney-client privilege in proceedings before the PTAB.  New section 37 C.F.R. 42.57 provides that all communications between a client and a USPTO patent practitioner (i.e. a registered attorney or agent), or between a client and a person authorized under foreign law to provide legal advice on patent matters, which communications are within the scope of the practitioner’s authority, will be afforded the attorney-client privilege. READ MORE

The Three Precedential Holdings of AQUA


On Wednesday, the en banc Federal Circuit decided Aqua Products, Inc. v. Matal, 2015-1177 (Oct. 4, 2017 Fed. Cir.), which addressed the allocation of burdens when the patent owner in an IPR moves to amend its patent to add substitute claims. The decision is 148 pages long, with three separate opinions and two separate dissenting opinions, no opinion or dissent fully joined by more than five judges, with only two judges signing a single opinion and, instead, most judges agreeing with parts of two or even three separate opinions.

In today’s blog post, we keep it very simple, though, given this blog’s mandate to focus on practical thoughts for the busy practitioner. In this post, we address this:  What in the Aqua decision is precedential, and what does that mean in practice? READ MORE

USPTO Maintains Standard for Indefiniteness in Rare Precedential Opinion

Decision on Appeal, Ex parte McAward et al., No. 2015-006416 (P.T.A.B. August 25, 2017) (Judges Linda E. Horner, Annette R. Reimers and Nathan A. Engels)

The Supreme Court’s decision in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120 (2014), revised the standard for finding a patent indefinite under 35 U.S.C. § 112, ¶ 2 (now 35 U.S.C. § 112(b)).  In the wake of this decision, it was unclear whether the U.S. Patent and Trademark Office (PTO) would change its long-held standard for applying indefiniteness rejections during original patent application examination, based on Nautilus.  The PTO’s Patent Trial and Appeal Board (PTAB) recently issued a rare precedential decision, announcing that the PTO’s examination standard will not change. READ MORE