David G. Rosenbaum

My patent practice specializes in biomedical, biotechnological, pharmaceutical, chemical, biochemical, semiconductor materials and processes, and computer software. As patent counsel to several major public universities, public and private corporations, and independent inventors, Mr. Rosenbaum has prepared and prosecuted patent applications in the fields of surgical implants, including cardiovascular stents and vascular grafts, natural and synthetic pharmaceuticals, electrophoresis devices and methods, diagnostic systems and methods, DNA transformation and transfection, oligonucleotide ligands, vaccines, monoclonal antibodies, drug delivery systems, immunology, ultrasonic, laser and cryogenic ablation catheters, nanolithography, atomic force microscopy, photolithography, vacuum deposition processes, including chemical and plasma vapor deposition, sputtering and ion bombardment processes, chemical sensor technology, resist technology, carbon nitride continuous solids and the use of finite elements analysis modeling for corneal remodeling. In representing both corporate and individual clients, Mr. Rosenbaum’s practice has included such diverse biomedical technologies as novel biomaterials, biomaterial surfacing technology, DNA and RNA hybridization, genetic testing, implantable vascular and endovascular devices, computer controlled laser catheters, synthetic peptides, chemical tracers for above-ground and underground leak detection, contact lenses, dermatological preparations, hydraulic shock absorbing pistons, misting devices for evaporative cooling, and water filtration systems.

Firm clients routinely call upon Mr. Rosenbaum to devise intellectual property portfolio strategies, licensing and merger and acquisition preparation, negotiation, due diligence and closing and counsel regarding patent landscapes, technology white-space identification, freedom-to-operate and non-infringement.  Mr. Rosenbaum has assisted clients in a wide variety of contract negotiations, including technology transfer, cooperative research and development agreements, grant contracts, co-development agreements, sponsored research agreements, clinical trial agreements, cross-license agreements, merger and acquisition agreements and the like.

In addition to his transactional intellectual property practice, David has represented clients in patent, trademark and trade secret litigation.  Most recently, Mr. Rosenbaum was plaintiff’s lead counsel in Augme Technologies, Inc. v. AOL, et al. and Augme Technologies, Inc. v. YAHOO!, both patent infringement lawsuits involved patents covering methods and systems for targeted marketing advertising over the Internet, is defense co-counsel in LAM Research, Inc. v. Xycarb Ceramics and Schunk Semiconductor, a patent infringement lawsuit pertaining to patents on semiconductor processing equipment, represented plaintiff in a patent infringement suit to enforce patents for insulating construction tarps in Midwest Canvas v. NTI, was counter-claim plaintiff’s co-counsel in Ingenix v. Symmetry Health Data Systems, Inc., a patent infringement counter-claim pertaining to methods of correlating medical claim information into Episode Treatment Groups.  Mr. Rosenbaum also represents clients, with European Patent counsel, in several post-grant opposition proceedings before the European Patent Office Opposition Division and European Patent Office Opposition Appeal Board.

Mr. Rosenbaum holds a bachelor’s degree in General Science-Chemistry from Grinnell College and studied in the Ph.D. program in Pharmacology and Toxicology at the State University of New York at Buffalo. Since graduating law school in 1984 from the Illinois Institute of Technology with honors (Chicago-Kent College of Law), Mr. Rosenbaum has been the managing shareholder of Rosenbaum & Associates, P.C., a managing patent partner at the national law firm of Sonnenschein, Nath & Rosenthal, and the managing intellectual property partner at two general practice firms in Phoenix, Arizona. David has served as patent counsel to major universities, local, regional and national corporations, private inventors and start-up and emerging companies. David has been an adjunct professor at The John Marshall Law School in the L.L.M. Program in Intellectual Property Law and at Grinnell College, Grinnell Iowa.

David provides pro bono  legal services to several start-up companies and non-profit organizations engaged in providing mentoring for entrepreneurial start-ups.

Mr. Rosenbaum is admitted to practice in Arizona, Illinois, in several federal trial and appellate courts, as well as the United States Patent and Trademark Office. An active member of multiple bar and industry associations, Mr. Rosenbaum serves as a member of committees on biotechnology law and university patents, and has been a featured speaker at national legal and industry conferences. David is the author of the best-selling book Layman’s Law Guide to Patents, Trademarks and Copyrights and is a co-inventor of U.S. Patent Nos. 7,980,289 and 7,122,049 and U.S. Patent Application Publication Nos. 2009-0043191and 2007-0061006.