Douglas H.Pearson Ph.D. (Doug)

Partner

(T) + 1.202.879.3825

Recognized by IAM Patent 1000 as "an impressive former Navy scientist ... specializing in post-grant, litigating proficiently and overseeing associate training in prosecution," Doug Pearson practices both acquisition and enforcement of intellectual property. With 19 years of IP experience, a Ph.D. in Applied Physics, and depth to tackle sophisticated legal and technical issues across a host of technologies, Doug is a dedicated and accessible resource for clients from start-ups to multinational corporations. He focuses on patent litigation before the USPTO's PTAB, the ITC, and district courts and maintains robust patent prosecution and counseling practices. With wide experience spanning software, electrical, mechanical, optical, semiconductor, and wireless technologies, Doug has helped clients obtain hundreds of U.S. and international patents and prevail on case-dispositive litigation issues.

Doug assists clients with tailored IP strategies, IP diligence in M&A and investment transactions, patent landscaping, freedom-to-operate, opinions, partnering agreements, NDAs, and licensing. He works on cross-practice and cross-border teams involving digital health, export control, and M&A and recently led the IP strategy for a client's rollout of a digital health app for online prescription renewals and sales of medical device consumables. He also provides counseling on trade secrets, IP issues for start-ups, and harvesting untapped IP assets. Areas of technical focus include electronics, semiconductors, digital health, telemedicine, analytics, big data, artificial intelligence (AI), machine learning, robotics, cloud computing, medical devices, materials, optics, wireless, and defense industry technologies.

Doug leads the Firm's associate training in U.S. patent prosecution. He is active in the Pauline Newman IP American Inn of Court and the IPO.

Experience

  • Wonderland Nurserygoods defends patents claims in remanded IPRsJones Day is defending Wonderland Nurserygoods Co. Ltd. before the PTAB in a SAS remand for consideration of previously non-instituted grounds of unpatentability of challenged claims.
  • Cree defends against patent infringement claims relating to its LED light bulb businessJones Day is representing Cree, Inc. in defending against a wide ranging complaint originally brought in D. Arizona by OptoLum, Inc. concerning Cree's LED light bulb business.
  • Cree defends against patent infringement claims involving its LED packaging technology, contests validity of patents-in-suitJones Day represents Cree, Inc. in a patent infringement suit brought by Document Security Systems, Inc. in the Central District of California concerning four patents, which generally involve LED packaging technology.
  • Wonderland Nurserygoods restores patent claims with Federal Circuit reversalWonderland Nurserygoods Co. Ltd., represented by a cross-office, cross-practice team of Jones Day lawyers, obtained a reversal of a decision from the Patent Trial and Appeal Board (PTAB) which restored Wonderland's challenged claims from its U.S. Reissue Patent No. RE43,919, for an easy-to-assemble baby crib.
  • Rivian receives $700 million investment led by AmazonJones Day advised Global Oryx Company Limited and Rivian Automotive Inc. in a $700 million investment led by Amazon.
  • Rivian receives strategic investment from Sumitomo Corporation of AmericasJones Day advised Rivian in the strategic investment by Sumitomo Corporation of Americas.
  • Western Digital and SanDisk resolve multi-patent case related to NAND flash semiconductor devices and manufacturing processesJones Day represented defendants Western Digital Corporation and SanDisk LLC in a multi-patent case related to semiconductor devices and manufacturing processes.
  • Qualcomm enforces patents against Chinese phone manufacturer and distributorJones Day represented Qualcomm Incorporated in the litigation of 17 cases in the Beijing and Shanghai Intellectual Property Courts against a Chinese phone manufacturer and distributor asserting patents concerning radio frequency transceivers, device structures, and other mobile phone technology.
  • Qualcomm resolves worldwide Chinese litigationJones Day represented Qualcomm Incorporated as complainant in an ITC action against a Chinese phone manufacturer and several distributors asserting five patents concerning radio frequency transceivers, device structures, packaging, structures, and camera phone operation.
  • Bonnie Branch Music Boosters obtains non-profit exempt statusJones Day assisted Branch Music Boosters Inc. ("BBMB"), a U.S. organization dedicated to supporting the music program at the Bonnie Branch Middle School in Ellicott City, Maryland, in obtaining a tax-exempt status ruling from the Internal Revenue Service.
  • Cree files IPR petition challenging U.S. Patent Nos. 6,373,188 and RE41,685Jones Day represented Cree, Inc. in filing an IPR petition challenging U.S. Patent Nos. 6,373,188 entitled "Efficient Solid-State Light Emitting Device with Excited Phosphors for Producing a Visible Light Output" and RE41,685 entitled "Light Source with Non-White and Phosphor-based White LED Devices, and LCD Assembly."
  • iBiquity Digital acquired by DTS for $172 millionJones Day advised iBiquity Digital Corporation, the developer of digital HD Radio technology for AM/FM audio and data broadcasting, in its acquisition by DTS, Inc. (Nasdaq: DTSI) for $172 million.
  • Wonderland Nurserygoods asserts patent against competitorJones Day represents plaintiff Wonderland Nurserygoods Co., Ltd., one of the world's largest designers and manufacturers of baby products, in a patent infringement case against Baby Trend, Inc., and its officers over Wonderland's patent related to baby play yards.
  • Profiles International sold to John Wiley & SonsJones Day advised Profiles International, Inc. in the sale of the company to John Wiley & Sons, Inc.
  • Selco Construction Services et al. defends claims of infringement over patents directed to guardrail end terminal assembliesJones Day represented SPIG Industry, LLC, SPIG Industry, Inc., and Selco Construction Services, Inc. in patent infringement litigation over patents directed to guardrail end terminal assemblies and associated counterclaims.
  • SunPower and Total partner to create new global leader in solar industry with $1.4 billion tender offerJones Day advised SunPower Corporation in the completion of the $1.4 billion tender offer by Total for up to 60% of SunPower's outstanding Class A Common Shares and 60% of SunPower's outstanding Class B Common Shares at a price of $23.25/share for each class.
  • Futurewei Technologies dismissed from patent infringement claims by SPH America involving technology for reducing interference between wireless terminalsJones Day represented Futurewei Technologies, Inc. in a patent litigation regarding method and apparatus claims directed generally to reducing interference between wireless terminals such as cell phones, and to reducing peak-to-average power, and successfully obtained Futurewei's dismissal from the suit.
  • Case involving felony charges of distribution of a controlled dangerous substance is dismissedJones Day Washington lawyers won a dismissal of all counts in their pro bono representation of Rudolph Prather in State of Maryland v. Rudolph Prather, a case in the Montgomery County Circuit Court that involved felony charges of distribution of a controlled dangerous substance.
  • Freescale defends against claims of patent infringement brought by Tessera before ITCJones Day represented Freescale Semiconductor, Inc. as Respondent in an investigation alleging patent infringement of Tessera patents relating to packaging of semiconductor devices.
  • MathWorks wins $7.5 million jury verdict in software copyright infringement and breach of contract caseJones Day obtained a $7.5 million jury verdict on behalf of The Mathworks, Inc. in a software copyright infringement and breach of contract case against COMSOL Inc. and COMSOL AB.
  • Speaking Engagements

    • June 2017
      Big Data and Cloud Computing: Strategies for Patent and Trade Secret Protection
    • May 16, 2016
      Are You Ready for Digital Health Patent Disputes?; American Telemedicine Association (ATA) Annual
    • May 19, 2015
      Executive Roundtable Series - Interplay Among Intellectual Property, Government Contracts, and Antitrust: Current Trends and Avoiding Pitfalls
    • May 3, 2015
      Digital Health in Transition - Regulatory Insights for Product Developers: Patent Strategy and Coordination on Regulatory Approval; American Telemedicine Association (ATA) Annual Meeting
    • May 6, 2014
      Executive Roundtable Series: New Frontiers in Health Care and Life Sciences; A Look at the Legal Implication
    • February 26, 2014
      Executive Roundtable Series: Protecting Your Business Against Online Counterfeiting and Patent Trolls
    • September 9-11, 2012
      Clean Tech Reality Check: Are Green Patents the Red Herring of International Climate Change Policy? IPO Annual Meeting
    • October 20, 2011
      Career Opportunities for Scientists and Engineers in Patent Law, University of Wisconsin
    • February 2-5, 2011
      Potential Threats to Patent Rights in Green Technologies, AIPLA 2011 Mid-Winter Institute
    • December 3, 2010
      Key Intellectual Property Issues and Venture Capital Investment in Nanotechnology
    • November 12-13, 2009
      Japanese Intellectual Property Association (JIPA) Washington Seminar, Mock Patent Trial
    • February 6, 2009
      Intellectual Property Rights in Cleantech: A Patent Practitioner's Perspective, Duke University School of Law's 8th Annual Hot Topics in Intellectual Property Symposium, Duke University School of Law
    • October 22, 2008
      Practical Observations Regarding Responding to 35 USC 101 Rejections, AIPLA's Partnering in Patents XV, United States Patent and Trademark Office
    • January 22-23, 2007
      IP Investability: What do VCs, Companies, and Universities Need to Know about the New and Proposed Patent Procedures? Nanotech Investing Forum
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