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, 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), covered business method patent reviews (CBMs) and reexaminations.

Don has extensive experience managing complex pre-trial issues common to intellectual property litigation, including issues arising from infringement and invalidity contentions, electronic discovery, use of technical and financial experts, and claim construction. He has appeared before magistrates and judges in oral argument of numerous pre-trial motions. He has successfully resolved patent cases prior to trial by way of summary judgment. He has also achieved favorable results for the firm’s clients through settlement and in arbitration and mediation.

At trial, Don’s experience includes obtaining a favorable verdict of non-infringement after a five-day jury trial in the District of Delaware.

Don’s knowledge of patent law, developed through more than fifteen years of practice in the preparation and prosecution of domestic and foreign patent applications, and his education as a “rocket scientist,” provide an invaluable foundation for complex patent litigation. Together with this expertise, he incorporates Patent Forensics and Patent Office Litigation as effective tools to control litigation costs and achieve early settlement or summary judgment disposition.

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, and has obtained favorable results in arbitration proceedings under the ICANN Uniform Domain Name Dispute Resolution Policy (UDRP). He represents clients across diverse industries, including consumer products, medical devices, software, agriculture, 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.

  • 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.
  • Reebok International Ltd. v. Wal-Mart Stores, Inc. (D. Mass.) – enforcement of design patent on footwear midsole.
  • 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.) – Internet-related trademark and copyright enforcement action.
  • Cushion Technologies, LLC. v. Adidas Salomon North America, Inc. et al. (E.D.Tex.) – defense of footwear patent infringement action on behalf adidas, Reebok and Rockport.
  • Adams v. Reebok International LTD. et al. (D. Mass.) – represented Reebok in defense of utility patent infringement action. Case stayed in favor of ex parte request for patent reexamination filed by Sterne Kessler on behalf of Reebok.

  • Patexia, “100 Best Performing Attorneys Representing Petitioners – Inter Partes Review” (2022)
  • The Legal 500, “Recommended Lawyer in Intellectual Property – Patent Prosecution: Semiconductors and Technology-Related” (2018)
  • 2015: Appointed to the The Sedona Conference‘s Steering Committee for both Working Group 9 and Working Group 10

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

  • District of Columbia
  • District of Columbia Court of Appeals
  • Supreme Court of Virginia
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Court of Appeals for the Fourth Circuit
  • U.S. District Court for the District of Columbia
  • U.S. District Court for the Eastern District of Virginia
  • United States Patent & Trademark Office
  • Virginia

  • Sigma Gamma Tau (the National Aerospace Engineering Honor Society)
  • American Institute of Aeronautics and Astronautics (AIAA)

Speaking Engagement

The Sedona Conference WG9 and WG10 Patent Litigation Working Groups 2019 Annual Meeting

Philadelphia, PA, The Bellevue Hotel, March 29, 2019 11:30 AM - 1:00 PM EST

Speaking Engagement

The Sedona Conference’s Patent Conference: Promoting Invention, Entrepreneurship, Economic Growth, and Job Creation

Washington, DC, Covington & Burling LLP, January 17, 2019 12:00 AM - 11:59 PM EST

Speaking Engagement

AIPLA 2017 Annual Meeting

Washington, DC, October 19, 2017 12:00 AM - 11:59 PM EST

Webinar

Webinar on Managing Parallel District Court and USPTO Patent Challenges

Webinar, July 27, 2017 1:00 PM - 2:30 PM EST

Advanced Patent Law Institute

November 6, 2015 12:00 AM - 6:59 PM EST

Related Resources

From Donald R. Banowit

In the News

November 10, 2022

Patexia Insight 158: Top IPR Firms of 2022

Patexia

Press Release

October 11, 2022

Sterne Kessler Notches Top Rankings in 2022 IPR Intelligence Report Based on PTAB Case Volume and Results

Sterne, Kessler, Goldstein & Fox

In the News

March 15, 2021

Federal Circuit Backs Caterpillar Rival's Patent Win

Law360

In the News

December 18, 2020

Fed. Circ. Agrees That Caterpillar ITC Patent Claim Is Invalid

Law360

In the News

May 19, 2020

CIT Clears Wirtgen Imports Over CBP's Patent Objections

Law360

In the News

December 16, 2019

PTAB Axes Caterpillar Road Milling Patent Tied To ITC Probe

Law360

In the News

January 10, 2019

ITC Case Won't Stop PTAB From Reviewing Caterpillar Patent

Law360

Firm Announcements

July 2, 2018

Sterne Kessler Proudly Supports The Sedona Conference

Books and Chapters

February 17, 2017

Patent Office Litigation - Second Edition 2017

Thomson Reuters Westlaw Multiple Authors

In the News

April 28, 2016

Bulletproof TransData Patents get Trial Date in GE Patent Infringement Dispute

IPWatchdog.com Multiple Authors

Press Release

March 25, 2016

Sterne Kessler Leads at the USPTO Patent Trial and Appeal Board With 400+ IPRs

Multiple Authors

In the News

January 6, 2016

Nissan, Hitachi Blasted For ‘Flip Flop’ During AIA Review

Law360 Multiple Authors

Firm Announcements

February 20, 2015

The Sedona Conference Appoints Donald R. Banowit As Steering Committee Member

Multiple Authors

Books and Chapters

January 1, 2012

Patent Office Litigation

Thomson Reuters Westlaw Multiple Authors