Shawn McDonald is a partner with Foley & Lardner LLP, where his focus is patent litigation. He also counsels technology companies on the development and management of their intellectual property assets. His patent litigation clients include Google, Overland Storage, and Lenovo. He is a member of the firm’s IP Litigation Practice and is co-located in the San Diego and Silicon Valley offices.
Mr. McDonald has litigated numerous patent infringement actions, both on behalf of the party enforcing the patent and on behalf of the party defending against a patent enforcement action. He has examined numerous witnesses at trial, including the named inventor in a patent infringement case tried to successful verdict in the Northern District of California. He has also briefed and argued several Markman hearings, and has successfully argued numerous case-dispositive and other motions in patent cases. Mr. McDonald has taken or defended more than 50 depositions of fact and expert witnesses in patent cases, including numerous inventor and expert depositions. He has litigated in each of the most prominent federal courts for patent cases: the Eastern District of Texas, the District of Delaware, the Northern District of California, the Central District of California, the Southern District of California, the Eastern District of Virginia, the Southern District of New York, and the Western District of Wisconsin.
Mr. McDonald clerked for the Honorable Paul R. Michel, Chief Judge, United States Court of Appeals for the Federal Circuit, the appellate court with exclusive national jurisdiction over appeals in patent cases.
He earned his law degree from the University of Virginia (J.D., 1999) where he was articles editor and a member of the editorial board of the Virginia Journal of Law & Technology. Mr. McDonald is a graduate of The College of William and Mary (M.B.A., 1996). He received his undergraduate degree in mechanical engineering from Old Dominion University (B.S., magna cum laude, 1993). Mr. McDonald graduated from The Thomas Jefferson High School for Science and Technology in 1989.
Mr. McDonald is admitted to practice in California and New York and before the U.S. Patent and Trademark Office.
Prior to joining Foley, he was an associate at Latham & Watkins and at the patent litigation firm Fish & Neave in New York City.
Before attending law school, Mr. McDonald was a product engineer with Siemens VDO Automotive. He has applied this technical training to patent litigation and strategic counseling involving diverse technologies, including wireless communications, optical data transmission, implanted medical and dental devices, computer systems hardware, computer software, electronic power conversion, automotive fuel systems, gypsum wallboard, electronic dispensers, and telecommunications equipment.
During law school Mr. McDonald was admitted to practice as a patent agent before the United States Patent and Trademark Office, and served as the in-house advisor on intellectual property issues for a small technology start-up based in Charlottesville, Virginia.
Drawing upon his experience as a product engineer and his graduate business education, Mr. McDonald has extensively counseled technology companies regarding patent procurement and licensing. He helps clients establish and improve their internal patent procurement programs, and he provides strategic advice to clients concerning patent prosecution strategy. Mr. McDonald has performed detailed portfolio analyses for clients in order to identify potential licensing and enforcement opportunities for existing patents. He has aided numerous clients in efforts to value intellectual property in connection with a potential acquisition or sale of assets. Mr. McDonald also has aided clients in the analysis of the patent portfolios of competitors in order to develop a defensive strategy concerning such patents.
He is the 2007 recipient of the LGBT Award, ACLU Foundation of Southern California. Mr. McDonald received this award in recognition of his pro bono representation of a lesbian high school student in the litigation and trial of her discrimination claim in the U.S. District Court for the Central District of California.
Representative Litigations
- Streetspace, Inc. v. Google Inc. et al (Northern District of California) – Representing defendant Google in a patent infringement suit filed in 2010 relating to wireless systems and software. Succeeded in having the case transferred from plaintiff’s chosen forum of the Southern District of California to Google’s home forum. Case is stayed pending conclusion of the reexamination of plaintiff’s patent.
- Avago Technologies Fiber IP PTE, Ltd. et al v. IPtronics (Northern District of California) – Representing plaintiff patent owner Avago in its patent infringement suit against IPtronics relating to hardware for optical data transmission.
- Mformation Technologies, Inc. v. Research in Motion, Ltd. ("RIM") (Northern District of California) – Representing plaintiff patent owner Mformation in its patent infringement suit against RIM, accusing RIM's Blackberry devices and related software of infringing Mformation's patents covering remote management of wireless devices.
- Crossroads Systems, Inc. v. Overland Storage, Inc., et al (Western District of Texas). – Represented defendant Overland Storage in a patent infringement suit relating to network storage libraries, both tape-based and disk-based. The case was settled favorably.
- C.R. Bard, Inc., Bard Peripheral Vascular, Inc., and Dr. David Goldfarb v. W.L. Gore & Associates, Inc. (District of Arizona) – Represented plaintiffs Bard and inventor Dr. Goldfarb in a five-year patent infringement litigation against Gore involving ePTFE (teflon) vascular grafts and stent grafts. After a two-month trial, the jury found for plaintiffs on all issues, found that Gore had willfully infringed the Goldfarb Patent, and awarded plaintiffs 185 million dollars. The verdict was the first willfulness verdict after the Federal Circuit's Seagate decision and the damages award was the 8th largest civil verdict of any type in the United States in 2007.
- LG Electronics, Inc., et al. v. Lenovo (United States) Inc. (Southern District of New York) – Represented defendant Lenovo in a patent infringement suit filed in 2009 by an MPEG technology licensing consortium of ten patentees.
- Quantum Corp. v. Riverbed Tech., Inc. (Northern District of California) – Represented plaintiff and cross-defendant Quantum in multiple patent infringement lawsuits against Riverbed regarding data storage products utilizing de-duplication technology. The matters were resolved in a global settlement that was very favorable to Quantum.
- Every Penny Counts, Inc. v. Bank of America, Inc. (Middle District of Florida) – Represented defendant Bank of America in a patent infringement lawsuit involving Bank of America's "Keep The Change" automated savings system.
- Grayson, Inc. v. Zumar Industries, Inc. (Central District of California) – Represented defendant Zumar Industries in a patent infringement case involving traffic warning systems, obtaining summary judgment of noninfringement on all counts for Zumar.
- MaxLinear, Inc. v. Linear Technology, Inc. (U.S.P.T.O.) – Represented Max Linear in a trademark Opposition proceeding initiated by Linear Technology to prevent the registration of MaxLinear's name, obtaining a settlement favorable to Max Linear.
- G-P Gypsum Corp. v. BPB America, Inc. (District of Delaware) – Represented plaintiff Georgia-Pacific subsidiary G-P Gypsum in patent infringement action involving gypsum wallboard. The case was settled favorably.
- Nguon v. Garden Grove Unified School District (Central District of California) – Devoted more than 700 hours of pro bono service to the representation of Ms. Nguon in the litigation and trial of her discrimination claim, including examining a witness at trial and arguing against and defeating the defendant school district's motion for summary judgment.
Publications and Presentations
- Author, "Marshall, Texas - Why Are You So Special?" published in Chinese, Elite Magazine (February 2009)
- Speaker, "An Introduction to U.S. Intellectual Property Law," 2006 Intellectual Property Summit Forum, Hangzhou, Zhejiang Province (2006)
- Panelist, "Proposals for Post-Grant Opposition in the US," IP Focus Series at the Loyola Law School (2006)
- Author, "Patenting Floppy Disks, or How the Federal Circuit’s Acquiescence has Filled the Void Left by Legislative Inaction," 3 Va. J.L. & Tech. 9 (1998)