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Derek F. Dahlgren Member

Derek F. Dahlgren’s practice encompasses all aspects of patent law including patent litigation, post-grant practice, patent prosecution, opinions and counseling. Mr. Dahlgren has litigated a variety of patent matters in district courts throughout the country, ranging from Hatch-Waxman cases involving pharmaceuticals to cases involving smartphones and mobile Internet technology. Mr. Dahlgren also has substantial experience with ex parte reexaminations and contested matters before the USPTO, including interferences and post-grant proceedings before the Patent Trial and Appeal Board.

Additionally, Mr. Dahlgren has experience in drafting and prosecuting patent applications before the USPTO, and in overseeing the prosecution of foreign counterpart applications. His expertise also extends to opinion and counseling work, which includes preparing freedom to operate/clearance opinions, as well as counseling as to the scope, validity and enforceability of rights of existing patents.

Mr. Dahlgren’s practice covers a broad range of diverse technologies. He has worked on matters involving pharmaceuticals, material science, medical devices, petrochemical, semiconductor and industrial systems, mechanical equipment, laboratory and diagnostic equipment, dietary supplements, batteries, exhaust gas aftertreatment systems, insulation, and business methods. Mr. Dahlgren also has experience with computer software and Internet technologies such as those relating to firewalls, e-commerce platforms, Internet search methodologies, financial and investment systems, content management systems, and social networks.

Mr. Dahlgren first joined Rothwell Figg as a law clerk and worked full-time while attending the Georgetown University Law Center. Mr. Dahlgren later joined Rothwell Figg as an associate after graduating magna cum laude from Georgetown where his achievements placed him in the top 3% of his graduating class. Mr. Dahlgren left the firm from 2013-2014 to serve as a law clerk to then-Chief Judge Randall R. Rader at the United States Court of Appeals for the Federal Circuit.

Mr. Dahlgren graduated from Bucknell University with a degree in Chemical Engineering. While an undergraduate, he participated on the Varsity Men’s Lacrosse team, which won consecutive Patriot League Championships while he was there. After graduation, Mr. Dahlgren worked in the defense industry as an engineer responsible for developing a variety of chemical and biological detection systems. During that time, he also earned an M.S. in Biotechnology from Johns Hopkins University.

Mr. Dahlgren regularly writes about various developments in the law, including issues pertaining to patents, trade secrets, trademarks, as well as other fields such as antitrust and privacy. Mr. Dahlgren is also an editor of the firm's post-grant practice blog, and a member of the PTAB Bar's Committee on Appeals and the Federal Circuit Bar Association's Rules Committee. Mr. Dahlgren has also been a member and officer of the Giles S. Rich American Inn of Court in Washington, DC, which is dedicated to fostering professionalism, ethics, civility, and legal skills in the area of intellectual property.

Mr. Dahlgren is a member of the District of Columbia Bar and Virginia State Bar.


Representative Cases

Versata Development Group, Inc. v. Rea

Sunovion Pharmaceuticals, Inc. v. Actavis, Inc.

Novartis Pharmaceuticals Corp. et al. v. Watson Laboratories, Inc. et al.

Cyberfone Systems, LLC v. CNN Interactive Group, Inc.

Sanofi-Aventis U.S. LLC v. Fresenius Kabi Oncology plc       

Cirrex Systems LLC v. InfraReDx, Inc.

Sigris Research Inc. v. bioMerieux SA et al.

Armacell Enterprises, GmbH et al. v. K-Flex USA, LLC et al.

Wireless Ink Corp. v. Facebook et al. (represented MySpace, Inc.) 

Call, Inc. v. Advanced Health Media LLC

Dow Jones & Company, Inc. v. Ablaise, Ltd.

Valeant Pharmaceuticals International v. Spear Pharmaceuticals, Inc.

ProteoTech, Inc. v. Unicity International Inc. et al. (represented Rexall Sundown, Inc.)

Representative Reexaminations

Reexamination No. 90/010,849

Reexamination No. 90/011,010

Reexamination No. 90/011,012

Reexamination No. 90/011,014

Reexamination No. 95/000,489

Reexamination No. 95/001,519

Reexamination No. 95/001,520

Publications & Presentations

Expert Analysis: DOJ Invokes Flawed Market Definition to Block Print Deal, Law360, July 25, 2019

Expert Analysis: The Misguided Criticism of Printing Industry Merger, Law360, June 11, 2019.

Expert Analysis: 2 Door Makers And The Gutting of Pre-Merger Clearance, Law360, August 22, 2018.

Expert Analysis: Design Patent Damages And The Jury’s Confusion in Apple, IP Law360, June 27, 2018.

Expert Analysis: The Future of Design Patent Remedies Is Unclear, IP Law360, May 11, 2018.

Expert Analysis: FTC v. Qualcomm: The Balance Between Patents and Antitrust, IP Law360, August 22, 2017.

Expert Analysis: Obviousness May Soon Return To High Court, IP Law360, June 16, 2017.

Interviewee, Five years of the Patent Trial and Appeal Board, Intellectual Asset Management Issue 83 Co-published feature (May/June 2017).

Expert Analysis: Apple V. Samsung: Procedural Fairness At The Fed. Circ., IP Law360, November 6, 2016.

Expert Analysis: Why High Court Should Take Samsung v. Apple, IP Law360, February 18, 2016.

Expert Analysis: The Dysfunctional Functional Standard For Design Patents, IP Law360, December 21, 2015.

Expert Analysis: Apple v. Samsung: Damages for a Canceled Patent?, IP Law360, October 27, 2015.

Expert Analysis: 3 Ways To Improve Design Patents, IP Law360, June 10, 2015.

Expert Analysis: An Opportunity For Clarity In Design Patent Damages,, January 6, 2015.

Expert Analysis: An Opportunity For Clarity In Design Patent Infringement, IP Law360, December 2, 2014.

Patent Eligibility Post-Alice, IPWatchdog, August 4, 2014.

The Proper Role for the Presumption of Validity, Patently-O, June 13, 2014.

The Role of Territoriality in Patent Exhaustion, IPWatchdog, December 18, 2012.

Expert Analysis: The Myth of First-to-File: AIA's First-to-Disclose Patent System, IP Law360, November 2, 2011.

Expert Analysis: Why Fujifilm Did Not End The Patent Exhaustion Debate, IP Law360, October 29, 2010.

Professional Affiliations, Honors & Recognition

Giles S. Rich Inn of Court

Washington, DC Super Lawyers "Rising Star" (2018-2019)