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Don Daybell

Senior Attorney

橘郡

Donald Daybell, a senior attorney in Orrick's Orange County office, is a member of the Intellectual Property Group. Mr. Daybell's practice is focused on high-stakes patent litigation, with an emphasis on trials in the US Patent and Trademark Office (PTO). 

Mr. Daybell is lead or backup counsel on over 60 Inter Partes Reviews before the PTO, and has spoken frequently about the America Invents Act and the PTO trial procedures enacted by this ground-breaking legislation. 

Mr. Daybell also has substantial experience in all aspects of patent litigation. He has managed the day-to-day activities of complex patent cases, has taken and defended numerous depositions, has presented witnesses at trial, and has argued matters before various tribunals, including district courts and the International Trade Commission.

Mr. Daybell has experience in litigating and prosecuting patents in various technical fields, including semiconductors, computer software and hardware, databases, financial services, e-commerce, business methods and medical devices. His experience further includes preparing requests for ex parte re-examination and prosecuting re-examination requests with the PTO. His experience also includes providing counseling and opinions regarding issued patents, and conducting due diligence reviews of intellectual property.

  • Mr. Daybell has litigated cases involving computer software, semiconductors, databases, Internet caching systems, Internet alerts systems, medical devices and digital cameras.

    In the software field, Mr. Daybell has prosecuted patent applications involving databases, e-commerce systems, networking software and numerous other software applications. In the semiconductor field, Mr. Daybell has prosecuted patent applications involving reconfigurable processors and hardware emulators.

    Prior to law school, Mr. Daybell worked as a computer programmer for a major university and a large financial services organization. Mr. Daybell has experience with designing business software involving databases and end-user applications.


  • Representative Engagements

    Mr. Daybell’s experience includes lead and backup counsel in over 60 America Invents Act (AIA) reviews, including Inter Partes Reviews (IPR) and Covered Business Method (CBM) reviews.

    Mr. Daybell was backup counsel in four IPRs as petitioner for a Chinese touchscreen manufacturer, involving touchscreen manufacturing patents. Mr. Daybell was responsible for all aspects of the proceedings, including setting case strategy, arguing the oral hearing, taking and defending all depositions and all other appearances before the Patent Trials and Appeals Board (PTAB), as well as managing the preparation of the petitions and other briefs. The IPRs were settled favorably after the oral hearing.

    Mr. Daybell was lead counsel in six IPRs as petitioner for a major data storage company, involving a variety of patents on aspects of data storage and retrieval technology. Mr. Daybell was responsible for all pre-trial hearings with the PTAB and second chaired the oral hearings. The IPRs concluded in a complete victory, with final written decisions issued in all six proceedings, finding all challenged claims unpatentable.

    Mr. Daybell was lead counsel in four IPR proceedings as patent owner for a healthcare company, involving an interactive patient monitoring system. Mr. Daybell was responsible for all pre-trial hearings with the PTAB and participated in drafting the briefs for patent owner.  Review was denied in one of the proceedings. The other three proceedings were all terminated after institution, because the PTAB found that petitioner failed to identify all real parties in interest.

    Mr. Daybell was lead counsel in seven IPR proceedings as patent owner for a healthcare company, involving an interactive patient monitoring system. Mr. Daybell was responsible for all pre-trial hearings with the PTAB, and second chaired the oral hearings in five of the proceedings. Review was denied in the other two proceedings.

    Mr. Daybell was lead counsel in two CBM proceedings as petitioner for a major e-commerce company. Mr. Daybell was responsible for all aspects of the case after taking over the matters from another firm, including setting case strategy after assumption of the matters and conducting all pre-trial hearings with the PTAB. Both CBMs were instituted, and were settled favorably.

    Mr. Daybell defended a major video gaming platform company in an infringement action regarding software for creating avatars. Mr. Daybell was responsible for the day-to-day administration of the case, and supervised more junior attorneys. The case was dismissed after the court found that the plaintiff’s patent was not patent-eligible under 35 U.S.C. § 101.  This dismissal was affirmed on appeal at the Federal Circuit.

    In addition, Mr. Daybell leads the Permanency Project, an award-winning pro bono partnership with the Legal Aid Foundation of Los Angeles and UC Irvine School of Law. The Permanency Project is devoted to assisting deserving low-income clients obtain lawful permanent resident status (i.e. a “green card”). Over the past six years, the Project has obtained green cards for over 60 victims of crimes and asylees. Mr. Daybell’s Project received LAFLA’s Pro Bono Service Award for 2015, as well as Legal Services Corporation’s Pro Bono Service Award for 2015.