David R. Medina

Managing Associate

Silicon Valley

Read full biography at www.orrick.com

Since bold innovation frequently outpaces legal precedent, tech companies must do more than resolve current legal obstacles. They need attorneys who can craft an IP strategy which encompasses the legal issues of today, as well as anticipate the challenges of tomorrow. Drawing upon his engineering degree, experience as a product manager, clerkship for a patent pilot program judge and years as an IP litigator, David is uniquely qualified to guide clients through current and potential challenges.

David develops strategies to protect his client’s bold innovations, whether assisting one of the world's leading technology companies, or a mobile gaming start-up. He offers intellectual property counseling and litigation, including trademark, patent, copyright, and trade secret matters.

Before joining Orrick, David served as a law clerk to the Honorable Nora Barry Fischer in the United States District Court for the Western District of Pennsylvania. Prior to his clerkship, David served as a full-time extern to the Honorable Kathleen O'Malley at the United States Court of Appeals for the Federal Circuit.

In addition to his IP practice, David also handles pro bono matters involving technology. He currently represents Impact Justice in an AI related matter which examines law enforcement’s use of predictive data to generate risk assessments for individuals and areas, and deploy forces according to the assigned threat level. David is working to ensure that law enforcement agency metrics and models do not lead to biased policing.

Posts by: David Medina

Seven Months’ Delay Too Much for Venue Transfer After TC Heartland…. Or Is It?

Order Granting Defendant’s Motion to Transfer for Improper Venue or, Alternatively, to Dismiss, Blue Rhino Global Sourcing, Inc. v. Best Choice Products a/k/a Sky Billiards, Inc., M.D.N.C. (June 20, 2018) (Judge Loretta C. Biggs) and Adrian Rivera v. Remington Designs, LLC, C.D. Cal. (June 19, 2018) (Judge John A. Kronstadt)

Courts continue to work through the backlog of venue motions created by the combo of TC Heartland and In re Micron Tech. rulings. In a pair of almost concurrently issued opinions two courts reached differing conclusions as to whether a seven month delay was sufficient to deem a venue transfer motion waived. READ MORE

Too Many ‘Emergencies’ May Lead to Finding a Case to be “Exceptional”

Order Denying EnerPol, LLC’s Emergency Motion to Strike Schlumberger’s Previously Undisclosed Claim Construction Proposal From its Technology Tutorial and Claim Construction, EnerPol, LLC v. Schlumberger Technology Corporation, E.D. Tex. (January 31, 2018) (Judge Rodney Gilstrap)

Almost everyone has heard the story of the boy who cried wolf: a bored shepherd amuses himself by shouting “wolf!” when there was none, laughing every time the villagers rush out to protect his flock. The one time a wolf does actually come to attack, the villagers ignore his call for help because of his previous false alarms.


“[L]ess-than-vigorous effort” Not Sufficient to Avoid Order Granting Attorneys’ Fees

Order Granting Defendant’s Motion for Attorneys’ Fees, Opal Run LLC, v. C&A Marketing, Inc., E.D. Tex. (November 29, 2017) (Magistrate Judge Roy S. Payne)

By now, courts have made clear that patent owners thinking about filing suit must carefully investigate their claims prior to filing suit and must litigate fully, or else face a potential order granting attorneys’ fees to the other side. But some plaintiffs, including the one in Opal Run, seem to still have not gotten that memo. READ MORE

Joining an IPR Could Prevent Recovery Under § 285

Order Dismissing Case as Moot, MD Security Solutions LLC, v. Protection 1, Inc., M.D. Fl. (Sep. 26, 2017) (Judge Paul G. Byron)

There may be an unappreciated cost in pursuing a patent validity challenge at the PTAB rather than at the District Court. Litigants choosing the PTAB route may deprive themselves of the right to recover attorneys’ fees.

In MD Security Solutions LLC, v. Protection 1, Inc., plaintiff MD Security Solutions (“MD”) sued for patent infringement, and defendant Protection 1 counterclaimed for a declaratory judgment of non-infringement and invalidity. Shortly afterwards, a third party filed an IPR on the patents-in-suit, and Protection 1 joined the IPR. Given the IPR, the parties agreed to stay the case pending its resolution. The PTAB invalidated the asserted patent claims, and the patentee/plaintiff allowed that decision to become final by choosing not to appeal. Despite that, Protection 1 sought to keep the case alive by seeking attorneys’ fees under 35 U.S.C. § 285 from MD, whom Protection 1 deemed a “patent troll.” In part because the deadline to appeal had already expired by the time Protection 1 sought leave to take its discovery, the trial court had other ideas. READ MORE

Venue After TC Heartland – Attending a trade show or location of CEO’s abode not enough to prove “regular and established place of business”

We have been tracking how district courts have handled venue challenges in a post-TC Heartland[1] world, and have reported changes to some of the more popular patent venues, as well as a continuing split among district courts on whether TC Heartland provides grounds to raise new challenges. Another development we have noticed is the refining by District Courts of the patent venue statute’s phrase “regular and established place of business.” READ MORE

Copyright Assertion – Wait, or Don’t?

Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC et al., 11th Cir. (May 18, 2017)

Copyright protection can be a critical part of a company’s IP strategy, especially when that company generates time-sensitive news stories and other writings. But, as this 11th Circuit decision demonstrates, it remains unclear whether a copyright lawsuit can be filed on a work the Copyright Office has not yet officially registered.

By statute, a party can’t file suit on a copyright until after “registration.” Although the copyright registration process is relatively straightforward, it does not happen instantly. In a situation where a content creator is rapidly producing new writings, it may wish to sue a copier prior to completion of registration by the Copyright Office. READ MORE