David A. Prange

612.349.8500

David Prange

David A. Prange

Partner

Deputy Chair, IP and Technology Litigation Group
David Prange

Experience

David is a skilled courtroom advocate and trusted business advisor for technology-focused companies facing high-stakes commercial and intellectual property disputes. As a partner in the National IP and Technology Litigation Group at Robins Kaplan, and leader of the firm’s trade secret litigation practice, David leverages his background as a scientist and computer consultant to provide pragmatic advice that aligns legal strategies with business goals, guiding his clients through litigation involving patents, trade secrets, copyrights, trademarks, and contracts addressing intellectual property assets. David’s clients appreciate his leadership, integrity, and proven ability to deliver business-minded solutions for their most sophisticated commercial and IP-related challenges.

As plaintiff’s counsel, David helps his clients capitalize on the value of their IP assets through vigorous enforcement, even against entire industries. He is trial and conflicts counsel for plaintiff TQ Delta in a series of related lawsuits alleging infringement of patents covering Digital Subscriber Line modem technology, for which TQ Delta has the largest patent portfolio in the industry. David’s record of success also includes a judgment of more than $12 million against Apple for infringing upon patents covering audio player technology, as well as multiple confidential settlements in the maritime navigation industry involving the assertion of client Honeywell navigation and display patents applicable for navigating aircraft.

As defense counsel, David has a track record of driving successful outcomes for his clients to protect their valuable interests and mitigate exposure. For example, David was lead trial counsel for two small-business clients in a jury trial on claims of copyright infringement, breach of contract, and tortious interference with prospective economic advantage; a plaintiff’s jury demand of $27.4 million, a jury delivered a complete defense verdict in favor of our clients.  David also defeated a jury demand for lost profits damages in favor of client Unifrax in a patent infringement dispute involving a two-supplier market. David also obtained a complete dismissal of all claims against a Fortune 500 medical device company in a dispute involving patent inventorship and unjust enrichment claims, and allegations of trade secret misappropriation.

As an experienced trial attorney and counselor, David has represented clients from individual inventors and small businesses to Fortune 500 companies in the assertion and defense of their intellectual property and contractual rights. Litigated technologies include the hardware and software of personal electronics; communication protocols (wired and wireless) and sensor technologies; aircraft navigation, fail-safe, and GPS systems; aircraft flame barrier laminates; irrigation controllers and sensor integration; mechanical vehicle transmissions; consumer and commercial water purification and remediation systems; lithium battery technology; various medical device technologies; and computer payroll processing software.

David is licensed before the United States Patent and Trademark Office as a registered patent attorney and has appeared in federal district courts across the country, the International Trade Commission, the Patent Trial and Appeal Board, as well as in state and federal appellate courts. Outside of the courtroom, David’s clients have engaged him to find additional revenue for patent assets, whether by assertion or sale, and further considering and advising on SEP and FRAND strategies. 

When not practicing law, David can likely be found on the sideline of a soccer, hockey, or softball game, or a dance competition, for one of his three children.

 
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Recent Results:

Lead trial counsel for defendants ECCA and Payroll World in MPAY, Inc. v. Erie Custom Computer Applications, Inc. and Payroll World, Inc. involving claims of direct, contributory, and vicarious copyright infringement, breach of contract, and tortious interference involve the use and distribution of payroll processing software. Venued in the District of Minnesota. At trial, on plaintiff’s jury demand of $27.4 million, a jury found defendants ECCA and Payroll World not liable on all claims tried to the jury because the complained conduct was licensed under the disputed contract. This jury verdict concluded a complete defense on all claims asserted (including additional copyright infringement and trade secret misappropriation claims relating to the use of source code), resulting in zero liability on claims valued by plaintiff of over $160 million. Responsible as lead trial and litigation counsel.

Patent:

Trial counsel for plaintiff TQ Delta in TQ Delta, LLC v. 2Wire, Inc. involving a patent addressing line bonding technology used by Digital Subscriber Line (DSL) modems that allows an Internet service provider to double transmission speed. Venued in the District of Delaware. At trial, a jury found defendant 2Wire infringed the patent asserted by TQ Delta and that the patent was not invalid. Responsible for the direct and cross-examination of expert witnesses regarding the source code operation of accused devices using Broadcom semiconductor chips

Trial counsel for plaintiff TQ Delta in TQ Delta, LLC v. 2Wire, Inc. involving patents addressing memory sharing for data packet transmission used by Digital Subscriber Line (DSL) modems. Venued in the District of Delaware. At trial, a jury found defendant 2Wire infringed three TQ Delta patents and that the patents were not invalid. Responsible for the direct and cross-examination of expert witnesses regarding the operation of accused devices using Broadcom semiconductor chips, case strategy, as well as cross-examination of third-party Broadcom appearing on behalf of 2Wire.

Trial counsel for defendant Unifrax in E.I. du Pont De Nemours & Co. v. Unifrax I LLC involving a patent addressing flame barrier laminates used in commercial aircraft. Venued in the District of Delaware. At trial successfully defeated a claim for lost profit damages in a controlled two-supplier market. Responsible for case strategy, day-to-day case management, trial witness presentation and cross-examination for lay and expert witnesses, and lead defense of damages claims.

Trial counsel in Personal Audio LLC v. Apple Inc., a patent infringement case in which a Texas federal jury awarded our client, Personal Audio LLC, $8 million in damages for infringing a patent for an audio player that can download or receive navigable playlists. The jury found that Apple's iPods infringed the patent. The court also awarded prejudgment interest in the amount of $4,182,331 for a total judgment of $12,182,331.

Trial counsel for Petitioner in The Toro Company v. MTD Products Co., IPR No. 2016-00194 challenging U.S. Patent No. 8,011,458 directed to mechanical transmission linkages for zero-turn-radius vehicles. Successfully invalidated all challenged claims at the PTAB; before resolution on appeal the matter resolved on confidential terms.

Trial counsel for Petitioner in The Toro Company v. MTD Products Co., IPR No. 2016-00219 challenging U.S. Patent No. 8,136,613 directed to mechanical transmission linkages for zero turn radius vehicles. Successfully invalidated all challenged claims at the PTAB; PTAB decision affirmed on appeal.

Counsel for defendant Toro in MTD Products Co. v. The Toro Company in a business competitor suit involving three mechanical transmission linkage patents for zero-turn-radius vehicles. Venued in the Northern District of Ohio. Lead case strategy and day-to-day case management and development. Invalidated two patents via IPR and challenged venue, achieving withdrawal of preliminary injunction motion based on third patent written in view of the accused product. Following withdrawal of the preliminary injunction motion, the case resolved on confidential terms.

Counsel for defendant Sensus USA in Badger Meter, Inc. v. Sensus USA, Inc. involving a patent addressing flow control metering technology for fluid distribution. Multiple actions venued in the Eastern District of Wisconsin and Northern District of California. Responsible for strategy development and all aspects of day-to-day case management and claim and defense development. The case resolved between competitors on confidential terms following cross-motions challenging venue and personal jurisdiction. 

Counsel for defendant Sensus USA in GroupChatter LLC v. Sensus USA, Inc. involving patents addressing wireless communication protocols for utility metering. Venued in the Eastern District of Texas. Responsible for strategy development and all aspects of day-to-day case management and claim and defense development, and management of joint defense group. The case resolved on confidential terms following 35 U.S.C. § 101 patent eligibility and venue challenges.

Represented a patent owner in four inter partes review proceedings filed on one patent involving lithium battery separator technology.

Counsel for plaintiff in Honeywell International, Inc. v. Furuno Electric Co., Ltd, Navico, Inc., and Raymarine PLC involving patents addressing GPS navigation and control, and navigation displays for commercial aircraft and other vehicles. Venued in the District of Minnesota. Responsible for strategy development and all aspects of day-to-day case management and claim and defense development.  The dispute against each defendant resolved on confidential terms.

Represented Honeywell International Inc. in In re Certain Navigation Products, Components Thereof, and Related Software in the Internal Trade Commission. Defended Honeywell on claims of patent infringement relating to aeronautical display systems against Furuno Electric Co. Dispute resolved in settlement.

Counsel for multiple clients involved in the licensing and assertion of standard essential patents involving standards 3G, 4G, LTE, ADSL2/ADSL2+, VDSL, H.264, HEVC, and VP9 for wireless handsets, infrastructure transmission, DSL, video encoding/decoding, and other related technologies.

Represented multiple defendants in a federal patent infringement action involving consumer refrigerator replacement water filters. Resolved in settlement following fact discovery. (Prior to joining Robins Kaplan LLP)

Represented multiple defendants in a federal patent infringement, trade secret misappropriation, and false advertising action involving soil monitoring and wireless communication technology. Resolved in mediated settlement following Markman ruling and completion of fact discovery. (Prior to joining Robins Kaplan LLP)

Trade Secret:

Counsel representing Honeywell International Inc. in a trade secret and breach of contract dispute with Ophir Corporation involving LIDAR-based optical air data systems for navigating aircraft.  Settled the case on behalf of Honeywell  after previously prevailing on a motion for a temporary restraining order/preliminary injunction.  The dispute was venued in the United States District Court for the District of Arizona as Case No. CV-17-02083-PHX-GMS.

Lead counsel for defendant Medtronic in Thompson et al. v. Medtronic, Inc. et al. involving patent inventorship and unjust enrichment claims, and allegations of trade secret misappropriation. Venued in the Western District of Tennessee. Coordinated joint defense group and successfully dismissed all claims on motion practice before commencement of discovery following removal to federal court and assertion of preemption of common law claims by the Tennessee Uniform Trade Secret Act.

Represented multiple defendants in a federal patent infringement, trade secret, and false advertising lawsuit involving soil monitoring and wireless communication technology. Resolved in mediated settlement following Markman ruling and completion of fact and expert discovery. (Prior to joining Robins Kaplan LLP)

Trademark:

Represented an international association in a federal trademark infringement lawsuit involving the trademark NEUROLOGY and corresponding publication. Resolved as part of related business agreement. (Prior to joining Robins Kaplan LLP) 

Trial counsel in a trademark application opposition regarding the trademark BRAIN MATTERS before the Trademark Trial and Appeal Board. Resolved during testimony phase of opposition proceeding. (Prior to joining Robins Kaplan LLP)

Represented owner of the trademark COCO BUTTER FORMULA in federal trademark infringement lawsuit. (Prior to joining Robins Kaplan LLP)

Pro Bono:

Lead trial counsel for the Guardian ad Litem of a child in In re A.M.C. Following a three-day trial a district court granted the Guardian’s petition to terminate the parental rights of the parents’ and place the child up for adoption. Decision affirmed on appeal.

Lead counsel for defendant in Clarey v. Krishnaswamy, a defamation action based on internet postings. Obtained dismissal with prejudice. Case recognized as a 2007 “Lawsuits of the Year,” by Minnesota Law & Politics. (Prior to joining Robins Kaplan LLP)

Lead counsel for officers and directors and a nonprofit in a series of cases involving corporate control and contractual claims for attorney fees indemnification. Resolved declaratory relief claims related to corporate control in favor of officers and director clients, and defeated subsequent claim for attorney fees on summary judgment resulting in no loss to the society or individual directors and officers. (Prior to joining Robins Kaplan LLP)

 
Super Lawyers David Prange
Americas Top 100 Bet The Company 2020
  • Named to America's Top 100 List for Bet-the-Company Litigators (2020) 
  • Named a "Minnesota Rising Star," Super Lawyers (2011-2015)
  • ABA Military Pro Bono Project Outstanding Services Award (2018)
  • Recognized by Minnesota Law & Politics in 2007 “Lawsuits of the Year” for representing the defendant in Clarey v. Krishnaswamy
  • Edina Soccer Club, Board Member (2019-Present)
  • Northwest Suburban Chapter of Pheasants Forever, Board Member (2012-2017)
Bar Admissions
  • Minnesota
  • U.S. Supreme Court
  • U.S. Court of Appeals, Federal Circuit
  • U.S. District Court, Eastern District of Texas
  • U.S. District Court, Minnesota
  • U.S. Patent and Trademark Office
Education
  • University of Nebraska - Lincoln College of Law, J.D., with High Distinction, Order of the Coif  
  • Saint Olaf College, B.A. in Biology, magna cum laude and Phi Beta Kappa       
Professional Associations
  • American Intellectual Property Law Association
  • Federal Bar Association
  • United States Patent Litigation: Considerations for Increasing Your Odds and Reducing Your Costs
    Vietnam IP Association, Webinar (September 20-21, 2022)
  • The Expanding Toolbox: Changes in Law Firm Contingency and AFA Models
    Panelist, The 4th Annual LF Dealmakers Forum, New York, New York (September 30, 2021)
  • Trade Secrets Snapshot – Protecting Confidential Information in the Evolving Workplace
    IP for In-House Counsel presented by Minnesota Continuing Legal Education, Webinar (May 26, 2021)
  • How In-House Counsel Responded to the Pandemic
    Panelist, IP for In-House Counsel presented by Minnesota Continuing Legal Education, Webinar (May 26, 2021)
  • Trade Secret as a Mechanism for Protecting AI/ML Development
    Moderator, Second Annual AI Legal Summit, Webinar (May 19, 2021)
  • Key Issues in Cross-Border Trade Secret Protection and Litigation
    Panelist, Robins Kaplan LLP and Lewis Silkin LLP, Webinar (April 20, 2021)
  • Protecting Confidential Information in the Evolving Workplace: Strategies for Avoiding the Loss of Company Secrets
    Co-Presenter, Minnesota IP Law Association (MIPLA), Webinar (September 16, 2020)
  • Lost Profits: How to Win, How to Lose, and the Buzz of Apportionment, 
    Boston Patent Law Association Licensing and Litigation Committees Joint Event: Symposium on Patent Licensing and Damages, Boston, Massachusetts (November 19, 2019) 
  • A Starting Point for Standard Essential Patents
    Minnesota CLE Seminar (March 22, 2019)
  • The US Jury Trial and the Role of Juries in Resolving IP Technology Disputes
    HSML China Symposium (August 3, 2018)
  • The Protection of Trade Secrets Under US Law
    HSML China Symposium (August 1, 2018)
  • Panel on Best Practices in Trade Secret Litigation
    Federal Bar Association, Minnesota Chapter, Minneapolis, Minnesota (April 17, 2018)
  • Protecting Digital Property Innovation
    Webinar, Minnesota CLE (October 9, 2017)
  • With Millions of Dollars at Stake
    Licensing Executives Society, Seattle, Washington (September 20, 2017)
  • Well Kept Secrets A Panel Discussion about the Defend Trade Secrets Act
    Federal Bar Association, Intellectual Property Section, Minneapolis, Minnesota (May 25, 2017)
  • Facebook and Ubers Billion Dollar Headache
    Panelist, Intellectual Property Magazine, Webinar (April 27, 2017)
  • Litigating Trade Secret Cases: Early Strategic Considerations
    Mitchell Hamline School of Law, St. Paul, Minnesota (April 21, 2017)
  • Protecting Innovation in a Digital World
    Palo Alto, California (March 21, 2017)
  • Compiling Strategies for Protecting IP in Software
    PRG Conference, Orlando, Florida (April 12, 2015)
  • Inter Partes Review and Life Sciences: How Your Patent Could Be Killed In About a Year
    MedTech Investing Conference, Minneapolis, Minnesota (May 21, 2014)
  • Introduction to Patent Law - A Practical Perspective
    Federal Bar Association, Minnesota Chapter, Judicial Law Clerk Patent Law Training, Minneapolis, Minnesota (October 13, 2011)
  • Trademark Surveys: How to Use Them…Wisely
    Intellectual Property Institute, with Ernest W. Grumbles, III (September 28, 2007)
September 29-30, 2021
The 4th Annual LF Dealmakers Forum: Advancing Litigation Finance
David Prange - LF Dealmakers Forum
New York, NY
May 5, 12, and 19, 2021
WEBINAR | Second Annual AI Legal Summit
Steven C. Carlson, Kevin M. Pasquinelli, Michael D. Reif, David A. Prange - Berkeley Center for Law & Technology (BCLT)
Remote
April 13, 20, and 27, 2021
WEBINAR | Conversations on Cross-Border IP Protection and Enforcement
Christopher Larus, Christine Yun Sauer, William Manske, and David Prange
Remote

RESOURCES

Links to full publications and news releases.

PUBLICATIONS

July 15, 2021
Biotechnology & Trade Secret Protection
Sharon Roberg-Perez, David Prange, Ellen Levish - Bloomberg Law
November 2020
Explaining the Almost Unexplainable
David Prange, Benjamen Linden, Vivek Biswas - Intellectual Property Magazine
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