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Home - Merchant & Gould P.C.

Donald R. McPhail, a seasoned intellectual property attorney, excels in litigation, patent prosecution, and post-grant proceedings, providing clients with robust legal strategy and counsel to protect and leverage their intellectual property assets. With a deep understanding of complex technologies, he offers tailored solutions for patent and trademark disputes, portfolio management, and intellectual property monetization. Don's extensive experience, reaching over 30 years, spans industries including pharmaceuticals, medical devices, electronics, and software, ensuring that his clients receive knowledgeable guidance on every front of intellectual property law.

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As a partner at Merchant &amp; Gould in the Washington, D.C. Area office, Don brings his extensive experience to the firm's Litigation group. He distinguishes himself by representing clients effectively in high-stakes legal actions before U.S. district courts and the U.S. Court of Appeals for the Federal Circuit, where his achievements include influential decisions such as the landmark Ferring B.V. v. Watson Labs. et al., 764 F.3d 1382 (Fed. Cir. 2014).

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Don's role extends beyond the courtroom as he advises companies on intellectual property development, enforcement, and strategic licensing. His adeptness in negotiation is reflected in his ability to secure favorable outcomes in dealings with Non-Practicing Entities and in drafting comprehensive settlement agreements. His international patent work is equally commendable, with a history of successfully managing patent portfolios and securing patent rights in multiple jurisdictions.

In his patent practice, Don has prepared and prosecuted patent applications across the chemical, pharmaceutical, biotech, and mechanical sectors, both domestically and internationally. He has played a pivotal role in shaping patent portfolios for various biotech and pharmaceutical startups. His background includes a tenure as an examiner at the U.S. Patent &amp; Trademark Office, where he evaluated applications in the pharmaceutical arts. Before his legal career, he researched x-ray crystallography to determine the structures of pharmacologically active compounds, leading to over sixty peer-reviewed publications in esteemed journals, including the Journal of the American Chemical Society and the Journal of the Chemical Society.

George Mason University - School of Law, J.D.

Duke University, M.S. Organic Chemistry

Duke University, B.S. Chemistry

Washington, D.C. Area

<h2 class="wp-block-heading">Five new hires bring decades of experience, leadership and innovation</h2>



Merchant &amp; Gould welcomes Daniel J. Pereira, Ph.D., John S. Kern, Eric W. Schweibenz, and Donald R. McPhail, as Partners and Alexander B. Englehart, as Of Counsel in its Washington D.C. Area office. The new additions will expand Merchant &amp; Gould’s capabilities in handling International Trade Commission (ITC) cases, complex IP litigation, post-grant proceedings, patent prosecution, and strategic IP portfolio management, as well as increase its presence in Japan, China, Taiwan and Korea.



“We are continually investing in serving our client base worldwide, and this group will deepen our bench nationally and increase our existing presence in Japan, China, Taiwan and Korea,” said Heather Kliebenstein, Managing Director and Partner at Merchant &amp; Gould. “Each of these experienced attorneys brings the right cross-culture experience and technical background that we want at Merchant &amp; Gould.”



All five hires look forward to continuing their work in the D.C. area, serving clients worldwide. Merchant &amp; Gould’s long-standing reputation for stability, creative legal solutions, collaboration and technologically advanced systems attracted the latest hires.&nbsp;



“Transitioning to Merchant &amp; Gould was the right move for us and our clients. We are excited to join such a dynamic firm that has superior technical strength, advanced internal systems and processes, extensive trial experience, and breadth of knowledge in all areas of intellectual property,” said Pereira. Dr. Pereira most recently served as the Managing Partner and previously led the Chemical Practice Group at Oblon. Mr. Kern and Mr. Schweibenz formerly led the Electrical/Mechanical and Litigation Practice Groups, respectively.



One of the oldest full-service intellectual property and trial law firms in America, Merchant &amp; Gould evolves with technology, just like its client base. Through harnessing and pioneering advanced legal solutions, they have established themselves as an indispensable partner in delivering exceptional legal guidance and service to their clients.



“When we look to add new talent to our team at Merchant &amp; Gould, we want to find people who have the right mindset — forward-thinking, collaborative and client-focused,” Kliebenstein shared. “Each of these attorneys embodies those values and will carry our firm’s legacy forward.”

Strategic Power Move: Merchant & Gould Lures Quintet of Highly-Experienced Attorneys to Supercharge DC Office and Accelerate Asia Expansion

Last week, the U.S. Court of Appeals for the Federal Circuit issued a precedential opinion in <a href="https://cafc.uscourts.gov/opinions-orders/23-1035.OPINION.8-23-2024_2372558.pdf">Realtime Adaptive Streaming LLC v. Sling TV, LLC, No. 2023-1035 (August 23, 2024)</a>, reversing an award of attorneys’ fees.



The district&nbsp; court in the District of Colorado had awarded attorneys’ fees to defendants based on six purported “red flags” the district court found should have served as warning signs to Realtime that its case was fundamentally flawed and rendered the case exceptional.&nbsp;



Realtime had filed suit in 2017, asserting infringement of three patents related to digital data compression. In late 2018, however, two courts – the Central District of California and District of Delaware – found one of Realtime’s asserted patents (the ’535 patent) invalid under 35 U.S.C. § 101. The Colorado district court considered these invalidity findings to be the first red flag. In 2020, the Federal Circuit issued an opinion in Adaptive Streaming Inc. v. Netflix, affirming a finding of patent-ineligibility for certain claims related to digital video processing. The district court found this to be the second red flag. The third red flag was a decision by the Patent Trial and Appeal Board finding the claims of the ’535 patent invalid as obvious and the fourth was the issuance of a final rejection in the ex parte reexamination of another patent asserted by Realtime (the ’610 patent). The fifth red flag was a letter from one of the defendants to Realtime asserting that the ’610 patent was invalid and the sixth was a declaration by defendants’ expert witness submitted in support of defendants’ summary judgment motion. Realtime appealed.



The Federal Circuit reversed and remanded. Reviewing the district court’s award of attorneys’ fees under the “abuse of discretion” standard, Court held the district court should not have given any weight to some of the red flags it identified. First, the Court held its opinion in Adaptive Streaming was entitled to no weight because that case involved different technology. Second, the Court held the district court failed to adequately explain the relevance of the PTAB’s invalidation of the ’535 patent claims and the final rejection of the ’610 patent claims during reexamination. Third, the Court held the letter was insufficiently detailed to provide notice to Realtime that its asserted claims were patent-ineligible and the district court failed to explain why the defendants’ expert’s declaration should be considered a red flag.

Donald R. McPhail

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