Donald R. Banowit

Overview

Donald R. Banowit is a director in Sterne Kessler’s Trial & Appellate Practice Group. Don has represented clients from each of the firm’s core technology practices (mechanical, electronics/software and chemical/biotechnology) in patent infringement actions in federal district court and before the U.S. International Trade Commission (ITC), and has litigated trademark and copyright disputes. He also has represented both petitioners and patent owners in post-grant proceedings before the U.S. Patent and Trademark Office, including inter partes reviews (IPRs) and reexaminations.

Don has achieved favorable results for the firm’s clients in both jury and bench trials. He has also successfully resolved patent cases prior to trial by way of summary judgment and through settlement, arbitration, and mediation.

Don’s knowledge of patent law, developed through more than 25 years of practice, and his education as a “rocket scientist,” provide an invaluable foundation for complex patent litigation.

Don also counsels clients on a wide range of patent, trademark, and trade-secret issues, including clearance and due diligence investigations, infringement and validity opinions, non-disclosure, non-compete and joint development agreements, licensing and assignment of intellectual property, intellectual property valuation, patentability opinions and prosecution strategy. Don advises clients on Internet-related trademark and copyright issues, including disputes involving domain names and other aspects of website design and content. He represents clients across diverse industries, including consumer products, medical devices, industrial and heavy machinery, food processing, software, semiconductor manufacturing, automotive, aerospace, and financial services.

Don is a contributing author of Patent Office Litigation, Second Edition, published in 2017, the book provides a fresh and comprehensive exploration of patent office litigation proceedings, including how the proceedings interact with other aspects of patent procurement and enforcement, while delivering practical analysis and advice. This second edition of Patent Office Litigation is the follow up to the first version of the book that was published in 2012 by Thomson Reuters Westlaw that focused on the contested proceedings that were introduced under the America Invents Act that year. In 2018, The Legal 500 recognized Don as a “Recommended Lawyer” in the U.S. for his part in “ongoing prosecution work for Taiwan Semiconductor Manufacturing, including devising strategies for PTAB proceedings.”

While studying law at Georgetown University, Don was an articles editor on the Georgetown Journal of Legal Ethics. He received his B.S.E. in aerospace engineering, cum laude, from the University of Michigan. Don is a member of Sigma Gamma Tau (the National Aerospace Engineering Honor Society) and the American Institute of Aeronautics and Astronautics (AIAA). Don also is a member of the Steering Committee for The Sedona Conference Working Group 9 on Patent Damages and Remedies and Working Group 10 on Patent Litigation Best Practices.

Representative Matters

• Provisur Technologies, Inc. v. Weber, Inc. et al. (W.D.Mo. No. 19-cv-06021) (Fed. Cir. No. 2023-1438) – currently representing Weber and Textor in patent litigation involving food processing equipment.
• 337-TA-1088: Road Construction Machines and Components Thereof – achieved favorable outcomes in ITC defense for Respondents Wirtgen and Vögele on summary determination, and at trial, and in modification proceeding.
• Wirtgen America, Inc. v. United States et al. (CIT) – obtained release of unlawfully excluded goods through summary judgment against U.S. Customs and Border Protection.
• Grape Technology Group, Inc. and kgb USA, Inc. v. Jingle Networks, Inc. (D. Del.) – obtained jury verdict of non-infringement for Jingle Networks in defense of patent lawsuit involving its 1-800-FREE411 free directory assistance service.
• Tailored Lighting, Inc. v. Osram Sylvania Products, Inc. (W.D.N.Y.) – achieved defense victory for Sylvania on summary judgment in patent lawsuit involving aftermarket automotive headlamps.
• Weiss, et al. v. Reebok International Ltd. (D. Mass.) – represented Reebok in defense of utility patent infringement action regarding footwear technology.
• Solae, L.L.C. v. Archer Daniels Midland Company et al. (E.D. Mo.) – represented ADM in defense of utility patent infringement action concerning health supplement products containing soy isoflavones.
• Borghese Trademarks Inc. et al v. Borghese et al. (S.D.N.Y.) -represented defendants in trademark action involving cosmetics, home fragrances, and bath and body products.
• Brake Pro, Ltd et al v. C.M. Brake Inc. et al. (M.D. Fla.) – trademark enforcement action on behalf of heavy duty brake manufacturer.
• Webhosting.Com Inc. v. Communitech.Net (E.D. Va.) – trademark and copyright enforcement action concerning Internet services.
• Reebok International Ltd. v. Wal-Mart Stores, Inc. (D. Mass.) – design patent enforcement action.
• 337-TA-1177: Certain Semiconductor Devices, Products Containing the Same, and Components Thereof (II) – represented Respondent Taiwan Semiconductor Manufacturing Company Limited in ITC defense.
• 337-TA-1067: Certain Road Milling Machines and Components Thereof – represented Complainant Wirtgen America in ITC enforcement action.
• 337-TA-903: Certain Antivenom Compositions and Products Containing the Same – represented Respondents Laboratorios Silanes and Instituto Bioclon in ITC defense.

Education

• J.D., Georgetown University Law Center
• B.S.E., Aerospace Engineering, University of Michigan, cum laude