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Consider him D.C.’s history book on intellectual property litigation. Donald Dunner has been around so long — and has been so directly involved in the evolution of IP practice — that he is now one of the most knowledgeable, best-known IP litigators in the entire country. A 1958 graduate of Georgetown University Law Center, Dunner jumped into his chosen field even before he finished law school. After working as an examiner in the Patent and Trademark Office from 1955 to 1956, he clerked for then-Chief Judge Noble Johnson of the Court of Customs and Patent Appeals from 1956 to 1958. Dunner went on to establish his name through his law practice and by frequent lecturing. By the late 1970s, he had been asked to join President Jimmy Carter’s Advisory Committee on Industrial Innovation. He was also tapped for the commerce secretary’s Advisory Committee on Patent Law Reform in the early 1990s. A partner at D.C.’s Finnegan, Henderson, Farabow, Garrett & Dunner since 1978, Dunner has written books on patent law and practice, and has chaired the IP law section of the American Bar Association. But these accomplishments pale in comparison with what Dunner points to as the most significant event in his career: the formation of the U.S. Court of Appeals for the Federal Circuit. He helped draft the court’s original rules of practice and procedure and served as chairman of the court’s advisory committee. Established in 1982, the Federal Circuit drastically changed how practitioners litigate their cases by requiring that IP appeals go directly to this court, regardless of their origin. Previously, appeals from district court decisions in IP cases had gone to their respective circuit courts. The creation of a single appellate court has eliminated skirmishing between the circuits and largely undercut the need to be the first to file in order to pick the jurisdiction, but not completely. “There is still a desire on the part of corporations to be in the right district,” says Dunner. “[And] a small company might want to stay in its hometown, especially when suing a big company. There is still a reasonable amount of that kind of forum shopping.” Selection of a jurisdiction also has to do with local discovery guidelines and speed. But even some of this variation will soon disappear. The revised Federal Rules of Civil Procedure — effective at the end of the year — will prohibit district judges from opting out of the rules and creating their own discovery requirements, presently a familiar practice in many courts. Although he spends a good deal of his time litigating at the trial level, including a month-long trial this fall in Delaware, that is only part of his work. “I spend even more time handling appeals from cases,” says Dunner. “I’ve probably handled more appeals to the Federal Circuit than any other private practitioner.” And there’s a reason why he’s called upon so often: Dunner knows the court well. “When a company feels they’re in deep trouble, they engage Don and his firm for appellate work,” says Las Vegas-based attorney Gerald Hosier. Mattel Inc. banked on Dunner’s experience following its defeat in a patent infringement suit at the trial level. Jerome Lemelson, the owner of a patent on a racing track for toy cars (as well as several thousand other patents), sued Mattel, claiming that the company’s Hot Wheels toys infringed his patent. The jury hit Mattel with a $70 million judgment (which had risen to $80 million with interest by the time of appeal). Dunner was brought in to head up the appeal. Rather than expend effort challenging the size of the lower court’s judgment, he focused the judges’ attention on the question of infringement itself. The Federal Circuit was ultimately persuaded that Mattel had not infringed Lemelson’s patent. Hosier, who represented Lemelson, disagrees with the court’s judgment, but lauds Dunner’s skill. Says Hosier: “Don has the courage to pick out issues that he feels are the most vulnerable, and leave the rest alone.”

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