David Jakopin is a partner in the law firm's Intellectual Property practice. He is located in the Silicon Valley office and currently serves as the head of the Silicon Valley IP Group. Mr. Jakopin has over 25 years of experience in IP litigation related matters. He also advises clients on strategic IP licensing and transactional issues, particularly in the context of corporate finance, mergers & acquisitions and investments.
Mr. Jakopin spent the initial decade of his practice in Washington, DC, dealing primarily with IP litigation matters, particularly those involving complex matters relating to high technology electronics in the patent and trade secret arena. After moving to Silicon Valley in 1997 to lead the efforts in building the firm’s IP practice there, he expanded his practice to also include strategic IP matters for the firm's private and public companies.
With a strong technical background in electronics (BSEE), licensing, civil procedure, trial strategy and general IP focused corporate representation, Mr. Jakopin brings a unique combination of talents when litigating IP disputes. For litigation matters, Mr. Jakopin:
- Uses cost-effective strategies that are consistent with the client goals and litigation budgets;
- Considers and uses IPR/Post-Grant Proceedings at the USTPO in appropriate cases, and has a strong record of success in such proceedings;
- Uses early motion practice when appropriate, including motions to dismiss (particularly on jurisdictional grounds) and/or motions for sanctions;
- Is experienced at managing discovery costs and pitfalls, and uses a hands-on approach for efficiency and effectiveness; and
- Always keeps evidence, dispositive motion practice and trial in mind – with a strong record of successes.
This diverse background also proves highly valuable when advising clients on licensing strategies, intellectual property acquisitions and sales, IPO’s, cross-border issues and other strategic IP issues. He routinely advises on crucial IP issues with respect to:
- Company-side/seller representation on IP issues in financing and M&A transactions for both privately held companies to publicly listed companies.
- Underwriter/buyer representation and diligence on IP issues with respect to different technology companies.
- Various agreements regarding IP licensing issues in a variety of different contexts, including agreements pertaining to hardware, software, open source, covenants not to sue, OEM manufacturing agreements, NDA’s, standstill agreements, patent licenses, distribution agreements and others.
- Strategy advice on obtaining and using IP strategically with respect to specific competitive situations, including strategic patent acquisitions.
Additionally Mr. Jakopin uses this experience to advise clients in developing IP portfolios, and in the context of other strategic IP advice. Over the years he has led the development of numerous strong IP portfolios.
In addition, Mr. Jakopin has broad experience on matters that have an international focus. Over his career he has spent significant time in Europe and Asia dealing with a wide range of IP issues, and continues to represent multinational companies as well as those based in the United States.
Mr. Jakopin is a member of the U.S. District Court for the Northern District of California Intellectual Property ADR panel and is a member of Arbitration and Mediation Committee of the American Intellectual Property Law Association. He has also served from time to time in the capacity of an expert witness.
- Legal 500 US, Patent Licensing & Transactional and Patent Prosecution (2014)
- PLC Which Lawyer?, Intellectual Property—San Francisco & Silicon Valley (2010-2012)
American Bar Association, American Intellectual Property Law Association, Federal Circuit Bar Association
U.S. District Courts for the Northern District of California, Central District of California, and Southern District of California, Court of Appeals for the District of Columbia, U.S. District Court of Appeals for the Federal Circuit