David H. Herrington handles high-stakes intellectual property and commercial disputes in domestic and cross-border matters.

David has helped clients achieve victories in pursuing and defending against claims of trade secret misappropriation and infringement of patents, copyrights, and trademarks, as well as disputes concerning IP licenses, employment restrictive covenants, and other commercial matters. He has led multiple IP and commercial suits through trial and appeal and in international arbitrations. He also counsels on IP and employment issues in the transactional context, including mergers and acquisitions, licensing, and capital markets transactions.

David’s first-chair successes for clients include winning a groundbreaking cross-border trade secret suit in the International Trade Commission for Korean pharmaceutical Medytox, translating into a highly valuable settlement (and receiving recognition in Litigators of the Week); defeating contract claims for more than $150 million against leading South American airline LATAM by securing victories in the Bankruptcy Court and District Court in the SDNY and a precedential decision by the Second Circuit (also receiving recognition in Litigators of the Week); representing Nortel Networks, Inc. in defeating claims exceeding $120 million for copyright infringement and breach of license as to software in the District of Delaware Bankruptcy Court; representing People’s United Bank in defeating trademark infringement claims by other “People”-named banks as it expanded throughout the Northeast, culminating in victories in the First Circuit and Second Circuit; and representing a Taiwan semiconductor manufacturer in defeating claims under a patent license in the Northern District of California.

In the pro bono sphere, David led the team that represented Tennessee death row inmate Ndume Olatushani (formerly known as Erskine Johnson), overturning his wrongful conviction and winning his freedom. This work was recognized with the New York City Bar Association’s inaugural Norman Redlich Pro Bono Capital Defense Award and in Am Law Daily and the New York Law Journal and was featured in the ABA’s Pro Bono Publico Award to Cleary Gottlieb. He continues to be active in the death penalty field on the global level, including partnering with organizations to challenge capital punishment on human rights grounds. David has chaired the firm’s pro bono committee and currently serves on the Advisory Board of Directors of the Lawyers’ Committee for Civil Rights Under the Law.

David’s speaking engagements include PLI’s Advanced Trade Secrets 2023: New Challenges, New Solutions, and New Opportunities and Strafford’s Google v. Oracle: Implications for Fair Use Doctrine, Developing, Copying, and Licensing Software API and Copyright Fair Use and the Warhol Decision: Navigating the Evolving Landscape, Minimizing Infringement Risks. His publications include Why Arbitrate International IP Disputes? for Global Arbitration Review’s The Guide to IP Arbitration and Provisional and Final Remedies for Juris’s Arbitration of International Intellectual Property Disputes.

David joined the firm in 1991.

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Notable Experiences

  • In re Certain Botulinum Toxin Products, representing Medytox, Inc. in a groundbreaking cross-border trade secret misappropriation action in the International Trade Commission, obtaining exclusion order against accused products and obtaining favorable resolution for client.

  • Medytox Inc. v. Aeon Biopharma, Inc. and Daewoong Pharmaceutical Co. Ltd., represented Medytox Inc. in asserting claims under the Defend Trade Secrets Act (18 U.S.C. §1836) against Aeon and Daewoong for misappropriation of Medytox’s manufacturing process trade secrets and its proprietary C. botulinum strain.

  • SNMP Research Inc. v. Nortel Networks Inc., representing Nortel Networks Inc. in defending against claims in excess of $120 million based on alleged copyright infringement and breach of software license, obtaining ruling in client’s favor following bench trial.

  • In re LATAM Airlines Group S.A., (TLA Claimholders Group v. LATAM Airlines Group S.A.), defeating creditors’ claim for more than $150 million dollars in post-petition interest in proceedings. 

  • Eternix Ltd. v. CivilGEO, Inc. et al., representing Eternix, an Israel-based creator of a pioneering software program for 3-D visualization of geospatial data, in asserting claims of trade secret misappropriation, copyright infringement, and breach of license against U.S.-based company.

  • Amkor Technology, Inc. v. United Test and Assembly Center Ltd., successfully defending client against claims of breach of patent license, obtaining multiple rulings in client’s favor and successful resolution of suit.

  • People’s United Bank v. Peoples Bank, winning ruling in favor of client People’s United Bank in trademark infringement suit following bench trial and defending victory on appeal.

  • Nortel Networks, Inc. v. Communications Test Design, Inc., representing Nortel Networks, Inc. in asserting claims for trade secret misappropriation, obtaining favorable rulings and successful resolution of matter.

  • People’s United Bank v. PeoplesBank, winning ruling in favor of client People’s United Bank in trademark infringement suit following bench trial and defending victory on appeal.

  • Marguerite Hoffman v. L&M Arts, et al., winning judgment as a matter of law in favor of client following trial in dispute concerning sale of Mark Rothko painting.

  • Chadwick McQueen, et al. v. Tom Ford International, et al., representing Tom Ford and Neiman Marcus in defending against Lanham Act claims brought by estate of Steve McQueen.

  • Tessera, Inc. v. UTAC (Taiwan) Corporation, representing UTAC in a dispute concerning a patent license.

  • Honeywell International Inc. v. Hamilton Sundstrand Corporation, representing Hamilton Sundstrand, a division of United Technologies Corporation, in successfully defending against patent infringement suit, culminating in en banc Federal Circuit decision in client’s favor.

  • Open Text Corp. and Open Text Inc. v. SAS C6, representing Open Text Corp., a Canadian corporation, and its U.S. subsidiary Open Text Inc. as plaintiffs in a lawsuit against a French company, SAS C6, concerning SAS C6’s breach of an exclusive software license agreement.

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Selected Activities

  • Member of Advisory Board of Directors, The Lawyers’ Committee for Civil Rights Under Law
  • Member, the Licensing Executives Society and Licensing Executives Society International

Publications

“U.S. Supreme Court Clarifies Enablement for Functional Claims in Amgen v. Sanofi,” Cleary Gottlieb Alert Memorandum, May 31, 2023 (co-authored with Daniel Ilan, Arminda B. Bepko, Brendan J. Cohen and Natalie Curry)

“The Supreme Court’s Decision in Warhol: A Narrow Interpretation of Fair Use With a Potentially Limited Impact,” Cleary Gottlieb Alert Memorandum, May 26, 2023 (co-authored with Daniel Ilan, Arminda B. Bepko and Brendan J. Cohen)

“Why Arbitrate International IP Disputes?” GAR: The Guide to IP Arbitration - Second Edition, December 22, 2022 (co-authored with Zachary O’Dell and Leila Mgaloblishvili) 

“Unsealed Indictment Illustrates Interplay Between Criminal and Civil Liability For Theft Of Trade Secrets,” Cleary Enforcement Watch blog post, February 22, 2022 (co-authored with Nowell Bamberger and Caleb Robertson) 

“The Supreme Court’s Decision in Google v. Oracle: Transformative Use of Popular Code Can Be ‘Fair Use’,” Cleary Gottlieb Alert Memorandum, April 9, 2021 (co-authored with Daniel Ilan, Arminda B. Bepko, Daniel Montgomery and Leila Mgaloblishvili)

“Why Arbitrate International IP Disputes?” GAR: The Guide to IP Arbitration - First Edition, February 9, 2021 (co-authored with Zachary O’Dell and Leila Mgaloblishvili) 

“Preliminary and Final Remedies,” Chapter in Arbitration of International Intellectual Property Disputes (2nd Ed.), May 2021 (co-authored with Alexandra K. Theobald)

“Supreme Court Sharply Limits Standing for ERISA Plaintiffs in a Decision With Far-Reaching Implications,” Cleary Gottlieb Alert Memorandum, June 11, 2020 (co-authored with Thomas J. Moloney, Arthur H. Kohn and Lucas Hakkenberg) 

“Supreme Court Holds That Willful Infringement Is Not a Prerequisite for Recovery of Infringer’s Profits in Trademark Infringement Suits,” Cleary Gottlieb Alert Memorandum, April 27, 2020 (co-authored with Daniel Ilan, Arminda B. Bepko and Michelle Butler)

“Supreme Court Decides Constitutionality and Scope of Inter Partes Review of Patents,” Cleary Gottlieb Alert Memorandum, May 2, 2018 (co-authored with Arminda Bepko).

“The Top Intellectual Property Decisions Of 2017: Their Practical Impact And Strategies For Addressing Them,” Cleary Gottlieb Alert Memorandum, January 22, 2018 (co-authored with Lawrence Friedman and Arminda Bepko).

“TCL v. Ericsson: Landmark Judgment on FRAND Licensing,” Cleary Gottlieb Alert Memorandum, January 9, 2018 (co-authored with Maurits Dolmans).

“Court Strikes Down The Lanham Act’s Bar On Registration Of Disparaging Trademarks,” Cleary Gottlieb Alert Memorandum, June 21, 2017 (co-authored with Lawrence Friedman and Arminda Bepko). 

“The Supreme Court’s Lexmark Ruling On Patent Exhaustion: The Strategic Implications For Patentees,” Cleary Gottlieb Alert Memorandum, June 5, 2017 (co-authored with Lawrence Friedman, Daniel Ilan and Arminda Bepko).

“Recent Notable Intellectual Property Decisions and a Look Ahead,” Intellectual Property and Technology Law Journal, May 2017 (co-authored with Lawrence Friedman and Arminda Bepko).

“Supreme Court Limits Where Patent Infringement Lawsuits May Be Filed,” Cleary Gottlieb Alert Memorandum, May 24, 2017 (co-authored with Lawrence Friedman and Arminda Bepko).

“Supreme Court Limits U.S. Patent Infringement Liability for Goods Sold Overseas,” Intellectual Property and Technology Law Journal, May 2017 (co-authored with Lawrence Friedman and Arminda Bepko).

“The Supreme Court Limits U.S. Patent Infringement Liability For Goods Sold Overseas,” Cleary Gottlieb Alert Memorandum, February 27, 2017 (co-authored with Lawrence Friedman and Arminda Bepko).

“Notable IP Decisions of 2016, and a Look Ahead to 2017,” Cleary Gottlieb Alert Memorandum, February 16, 2017 (co-authored with Lawrence Friedman and Arminda Bepko).

“The Supreme Court Relaxes Standard for Enhanced Damages in Patent Infringement Suits,” Intellectual Property and Technology Law Journal, September 2016 (co-authored with Lawrence Friedman and Tom Kessler).

“The Supreme Court Clarifies Standard for Attorneys’ Fee Awards in Copyright Infringement Cases,” Intellectual Property and Technology Law Journal, September 2016 (co-authored with Lawrence Friedman and Tom Kessler).

“President Obama Signs The First Federal Trade Secrets Law, Supplementing State Law protections Against Trade Secret Misappropriation,” Cleary Gottlieb Alert Memorandum, May 13, 2016 (co-authored by Lawrence Friedman and Arminda Bepko).

“Congress Passes The First Federal Trade Secrets Law,” Cleary Gottlieb Alert Memorandum, May 2, 2016 (co-authored with Lawrence Friedman and Arminda Bepko).

“Federal Circuit Confirms Strength of U.S. Patent Rights by Reaffirming Its Prior Rulings Against Foreign Patent Exhaustion and in Favor of Post-Sale Restrictions,” Intellectual Property and Technology Law Journal, May 2016 (co-authored with Lydia Halpern).

“Fourth Circuit Permits Foreign Trademark Owner to Assert Lanham Act Claims,” Cleary Gottlieb Alert Memorandum, April 21, 2016 (co-authored with Lawrence Friedman, Arminda Bepko and Thomas Kessler).

“Notable Intellectual Property Cases of 2015, and a Look Ahead to 2016,” Intellectual Property and Technology Law Journal, April 2016 (co-authored with Lawrence Friedman, Arminda Bepko and Tom Kessler).

“Supreme Court Finds ‘First Sale’ Copyright Doctrine Applies to Copies Lawfully Made and First Sold Abroad,” Intellectual Property and Technology Law Journal, June 2013 (co-authored with Daniel Ilan, Megan Prunella and Sarah Koper).

“Makes Substantial Changes To Patent Law With The America Invents Act,” Intellectual Property and Technology Law Journal, December 2011.

“Preliminary Injunctions: After ‘eBay’ and ‘Salinger,’ Tougher Standard Applies in the Second Circuit,” New York Law Journal, August 16, 2010 (co-authored with Lawrence Friedman).

“Trademark Battles in the Banking Field: When a Bank Acquisition Gives Rise to a Trademark Dispute,” The Banking Law Journal, May 2009.

“Name Calling: Why Do Banks Get into So Many Trademark Disputes?” IP Review, Issue 26, Summer 2009.

“Assessing Damages When an Injunction Is Denied,” IP Law360, March 28, 2008.

“Purchase Price Accounting Arbitration: Why Courts Sometimes Find That Disputes About Purchase Price Are Not Subject To Purchase Price Arbitration,” Mealey’s International Arbitration Report, October 2011.

“Whether ‘Foreign Cubed’ Securities Class Actions Fit in U.S. Courts,” New York Law Journal, February 17, 2009 (co-authored with Lewis Liman).

“The Developing Privilege for Regulatory Communications with the SEC,” The Banking Law Journal, September 2007.

Events