David B. Fournier
Dave brings both academic training and 25 years of professional experience to his guidance on patent prosecution and portfolio development.
David Fournier advises clients on pharmaceutical, biologic, medical device, and consumer product patent matters. He emphasizes product exclusivity planning, strategic development of global patent portfolios, and counseling related to pharmaceutical products under the Drug Price Competition and Patent Term Restoration (Hatch-Waxman) Act and biologics therapies under the Public Health Service Act and the Biologics Price Competition and Innovation Act.
Dave has guided patent portfolio development and lifecycle management strategies for a variety of U.S. Food and Drug Administration (FDA)-approved drugs, including Vascepa®, Androgel®, Celebrex®, Zegerid®, Inspra®, and Detrol®, as well as FDA-approved devices, including Cortrak®, Navigator®, and Corflo®. He has developed patent portfolios for several developmental stage biologics, including stem cell therapies, antibody-drug conjugates, and peptide conjugates.
Dave has participated in abbreviated new drug application (ANDA) district court litigations and appeals. He counsels clients on Orange Book listing and Use Code strategy, patent term extensions and adjustments, FDA exclusivity, and pre-ANDA litigation strategy. Dave also has experience with a variety of post-grant proceedings, including reissues, reexaminations, European oppositions, inter partes reviews, and post-grant review.
In addition to his patent procurement practice, Dave leads intellectual property due diligence assessments related to venture capital and private equity financings, public offerings, asset acquisitions, and royalty monetization. He conducts patent landscape analyses; renders opinions on freedom-to-operate, inventorship, validity, and patentability issues; drafts and negotiates patent license agreements; and mines mature patent portfolios for opportunities to maximize value.
Representative technologies with which Dave has experience include small molecule drugs, biotechnologies, and medical diagnostics.
Prior to becoming a lawyer, Dave worked in clinical research and as a patent agent with Pfizer and its legacy companies. Dave's graduate research focused on characterization of protein kinase C isozyme expression in human endometrial carcinomas and correlation with various clinicopathic disease features.
Areas of focus
Education & Credentials
Education
- DePaul University College of Law, J.D., cum laude, 2003
- Northwestern University, M.S., Biotechnology, 1999
- Lake Forest College, B.A., Biology, cum laude, 1997
Bar and Court Admissions
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Illinois
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U.S. Patent and Trademark Office
- U.S. District Court for the Northern District of Illinois
Related Employment
- Pfizer Inc. (formerly Pharmacia Corp.), Patent Scientist and Patent Agent
Professional Recognition
Listed in Chambers USA "America's Leading Lawyers" for Intellectual Property, 2022-2024
Listed in The Best Lawyers in America: Patent Law; Biotechnology and Life Sciences Practice, 2022-2024
Recommended in Intellectual Asset Management Patent 1000, 2018-2024
Listed as an "Illinois Rising Star" by Illinois Law & Politics, 2012-2014
*The Supreme Court of Illinois does not recognize certifications of specialties in the practice of law and no certificate, award or recognition is a requirement to practice law in Illinois.
Insights
News
Professional Experience
Intellectual Property
Private Healthcare Services Organization
Prevailed at the Federal Circuit for private healthcare services organization when the court affirmed that two patents owned by another clinic were invalid for claiming a natural law. The team defended the company against a series of cases and appeals since 2015 and in total, has now invalidated five competing clinic patents and won two Federal Circuit appeals.
Public Pharmaceutical Company
Lead outside IP counsel for public pharmaceutical company. Responsible for building and managing global IP strategy for pharmaceutical product with over $150MM in annual sales, coordinating Orange Book listing strategy and securing patent term extension. Led IP diligence relating to private placements garnering over $150MM, stock and debt offerings raising over $300MM and a royalty monitization garnering over $100MM. Served as lead IP counsel in domestic and foreign joint development transactions and provided IP counsel in relation to clinical, commercial supply and licensing agreements. Served as lead IP counsel in due diligence of various product acquisition opportunities.
Private Pharmaceutical Company
Lead outside IP counsel in patent due diligence on acquisition of several product lines. Due diligence involved evaluating ongoing patent strategies and risks as well as evaluating Hatch-Waxman litigation strategy.
Emerging Pharmaceutical Company
Lead outside IP counsel for clinical stage pharmaceutical company developing novel compounds for a variety of indications in the fields of dermatology, liver disease and lung disease.
Emerging Biotechnology Company
Lead outside patent counsel for emerging biotechnology company developing organs suitable for xenotransplantation.
Medical Diagnostic Company
Managed global patent portfolio for medical diagnostic company. Lead counsel in preparation of post-grant review and inter partes review petitions.
Emerging Biotechnology Company
Lead outside patent counsel for emerging biotechnology company developing peptide conjugates for treatment of a variety of diseases.
Medical Device Company
Lead counsel in preparation of a series of ex parte reexamination requests against a patent asserted with alleged damages in excess of $100MM. Reexamination strategy facilitated favorable settlement of companion litigation.
Emerging Biotechnology Company
Lead outside patent counsel for emerging biotechnology company developing antibody-drug conjugates for treatment of cancer and auto-immune diseases.
Biofuel Company
Represented startup biofuel company in all aspects of its IP strategy, including rendering freedom-to-operate and patentability opinions and drafting patent applications relating to its core technology.
Opioid Drug Product*
Rendered invalidity and infringement opinions regarding a suite of patents involving over 200 claims related to an opioid drug product with annual revenues exceeding $2.5 billion.
Pharmaceutical Company*
Represented brand pharmaceutical company in ANDA litigation relating to topical pharmaceutical product.
Pharmaceutical Company*
Represented public pharmaceutical company in IP due diligence relating to potential stock acquisition of target company.
Small Molecules Relating to Treatment of CNS Disorders*
Represented licensee in due diligence of portfolio of patents relating to small molecules useful in treatment of CNS disorders.
Small Molecules Relating to Treatment of Gastrointestinal Disorders*
Represented licensor in potential out-licensing of patent portfolio relating to small molecules useful in treatment of gastrointestinal disorders.
Startup Company*
Represented startup company in procurement of patents relating to genetically modified organisms and uses thereof.
Stem Cell Company*
Managed global patent portfolio for publicly traded stem cell company.
University*
Managed a global patent portfolio for a university relating to fusion proteins and methods of using the same for treatment of auto-immune disorders.
Venture Capital Firm*
Represented venture capital firm in IP due diligence assessments in the healthcare industry.
* Prior Experience