Donald R. Dunner

I'll research this attorney before drafting.

Let me verify the notable case outcomes and PTAB experience.

One more check on his other notable wins and any PTAB/IPR activity.

Donald R. Dunner — Patent Litigation Practice Summary

Note on status: Mr. Dunner died on October 16, 2019, at age 88. He is included here as a historical/practice-profile matter rather than as an active attorney.

Specialty and focus. Dunner's practice spanned all phases of patent law — prosecution, licensing, counseling, validity and infringement opinions, and litigation — with a technical background rooted in chemical engineering. Firm and bar biographies describe particular depth in chemical engineering, chemistry, biotechnology, and pharmaceuticals, but his best-known litigation work was in software, electronics, and computer-related technologies: the Uniloc software copy-protection/activation patents, i4i's XML document-markup patents, Xerox's scanning and handwriting-recognition patents, and Akamai's web content-delivery patents. He was most widely known as an appellate advocate rather than a first-chair trial lawyer, and he litigated across a broad range of technologies rather than a single vertical.

Side preference. The tracked data is genuinely mixed — two plaintiff-side appearances and one defendant-side appearance — and the public record is consistent with that. He represented patent owners and plaintiffs in his highest-profile matters (Uniloc against Microsoft, i4i against Microsoft, Akamai against Limelight, Xerox as plaintiff against Palm), while also defending accused infringers, including Xerox as defendant in AccuScan v. Xerox. A client quoted in a Law.com profile put it plainly: "Don has done both offense and defense for us." He should not be characterized as an NPE/PAE-side or defense-side specialist; he was a generalist appellate counsel for whoever retained him.

Firm context. He practiced in Washington, D.C., initially at smaller firms (Strauch, Nolan & Neale; Diggins & LeBlanc; and the firm that became Lane, Aitken, Dunner & Ziems), and joined Finnegan, Henderson, Farabow, Garrett & Dunner in 1978, ultimately becoming a name partner. All three tracked matters are Finnegan engagements. Before private practice he worked as a USPTO examiner and clerked for Chief Judge Noble Johnson of the Court of Customs and Patent Appeals.

Notable cases and outcomes. The most prominent tracked matter is Uniloc USA, Inc. v. Microsoft Corp., where he served as lead and lead appellate counsel. On appeal he obtained reinstatement of a jury finding that Microsoft infringed Uniloc's patent after the district court had vacated a $388 million verdict, though the Federal Circuit ordered a new damages trial and rejected the "25 percent rule of thumb" in Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292 (Fed. Cir. 2011) — a damages-law holding with industry-wide effect. Outside the tracked list, he argued the Federal Circuit appeal in i4i Ltd. P'ship v. Microsoft Corp., resulting in affirmance of a roughly $290 million willful-infringement judgment and an injunction against Microsoft Word; the Supreme Court then affirmed in Microsoft Corp. v. i4i Ltd. P'ship, 564 U.S. 91 (2011), upholding the clear-and-convincing standard for invalidity. He also argued the en banc Akamai Technologies v. Limelight Networks appeal (692 F.3d 1301 (Fed. Cir. 2012)), which broadened induced infringement for divided method claims — a ruling later vacated by the Supreme Court in Limelight Networks, Inc. v. Akamai Technologies, Inc., 572 U.S. 915 (2014), and superseded on remand by the 2015 en banc Akamai decision on § 271(a). The third tracked matter (defendant side, lead counsel) is unidentified in the source data, so no outcome can be reported for it.

PTAB / IPR. No verifiable record was found of Dunner appearing in IPR, PGR, or CBM proceedings before the PTAB. His documented practice was concentrated in federal district court and, overwhelmingly, in Federal Circuit and CCPA appeals.

Bar / education. B.S. in chemical engineering, Purdue University (1953); J.D., Georgetown University Law Center (1958), earned at night while working at the USPTO and clerking. By reputation he argued more Federal Circuit and CCPA appeals than any other private practitioner — roughly 165–180 over his career — and chaired the Federal Circuit's Advisory Committee for its first decade (1982–1992), helping draft the court's rules.