Donald Dunner: Looking Back On an IP Icon

Donald Dunner was born in 1931 and passed away on October 16, 2019 (see his long-time firm Finnegan’s tribute here). He spent the first 17 years of his life growing up in New York City’s borough of Brooklyn. In a November 2009 interview published by Washington Lawyer, Dunner recalled his early love for the Brooklyn Dodgers, his family’s victory garden during World War II and his attendance at Stuyvesant High School, a well-respected NYC institution with a science-oriented curriculum. Upon graduating Stuyvesant, Dunner attended Purdue University, where he majored in chemical engineering and served as a fraternity president, sophomore class president and student body president. Dunner credited his work in student government with lighting his career path towards the legal profession and his engineering background led naturally to his patent law practice.

Early Patent Law Career

After Purdue, Dunner spent two years in the U.S. Army being stationed at Fort Dix in New Jersey. Following his time with the Army, he attended the Georgetown University Law Center, choosing a school close to the nation’s capital because of his interest in working at the U.S. Patent and Trademark Office (USPTO). He worked as an examiner at the USPTO for one year before going to clerk for Noble Johnson, then the Chief Judge of the U.S. Court of Customs and Patent Appeals, the precursor to today’s Court of Appeals for the Federal Circuit. Dunner clerked for Judge Johnson during his final two years at Georgetown Law, briefing Judge Johnson on cases prior to oral argument and drafting opinions after arguments.

A contact with another clerk for Judge Johnson made connections for Dunner at Strauch, Nolan and Neale and, while his first case involved a will, the rest of his career focused on patent and trademark law. Dunner worked at the Strauch firm from 1958 to 1960, when he joined the firm of Diggins & LeBlanc. It was at Diggins & LeBlanc that Dunner would get his start doing appellate work on patent cases; as of 2018, he had argued more than 165 patent appeals, the largest number of patent appeals for any U.S. attorney.

Diggins & LeBlanc folded in 1962 and Dunner was offered a partnership by former colleagues in a firm that would become known as Lane, Aitken, Dunner & Ziems. Dunner worked at this firm through the 1960s and most of the 1970s. This period of his career led to some significant highlights, including the publication of a two-volume work regarding practicing before the Court of Customs and Patent Appeals; this work involved analysis of every case decided by that court between 1929 and the 1960s. This work also served as the textbook for an appellate practice course which Dunner began teaching at George Washington University. Through the 1970s, Dunner also worked on a project to produce a monthly review of patent cases decided in U.S. courts, which was eventually collected into a six-volume work called Patent Law Perspectives.

Helping to Create the Federal Circuit

In the 1970s, Dunner was also active in a couple of commissions put together by the federal government to look at the creation of a specialized patent court that would eventually become the Federal Circuit. When the Hruska Commission was looking into federal court appellate system reforms during the early part of the decade, Dunner helped conduct a survey of litigating patent lawyers which, while it led to a recommendation against creating a specialized patent court, noted that various circuit courts differed sharply on their view of patents.

Later, during the administration of former President Jimmy Carter, Dunner participated on Carter’s Advisory Committee on Patents. This committee picked up an idea from Daniel Meador, a University of Virginia law professor and head of the U.S. Department of Justice’s Office for Improvements in the Administration of Justice, to merge the Court of Customs and Patent Appeals with the U.S. Court of Claims to create the Federal Circuit. Dunner testified at Congressional hearings on the creation of the new court, which got started in October 1982, and for the first 10 years of the Federal Circuit’s existence, Dunner served as chair for the CAFC’s advisory committee. Dunner would also serve as a member of the U.S. Delegation to the Diplomatic Conference on Revision of the Paris Convention between 1981 and 1982, as well as a member of the Secretary of Commerce’s Advisory Commission on Patent Law Reform from 1991 to 1992.

Finnegan and IP Fame

In 1978, Dunner received an invitation to work at the firm where he would remain for the rest of his career: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. Since Dunner joined the firm, Finnegan has grown from 30 lawyers to become one of the top firms specializing in intellectual property law. At Finnegan, Dunner achieved his most significant victories in patent appeals, including a reversal of a $70 million award for patent infringement given by a U.S. district court in Lemelson v. Mattel Toys, where the Federal Circuit found that no reasonable jury could find that Lemelson’s patent covering a flexible track allegedly used by Mattel’s Hot Wheels toys was both valid over the prior art and infringed. Dunner also represented Canadian software company i4i at the Federal Circuit in i4i v. Microsoft Corp., in which the CAFC upheld a damages award of about $290 million as well as a permanent injunction entered by the district court. That case eventually headed to the U.S. Supreme Court, which issued a unanimous decision holding that an invalidity defense required clear and convincing evidence under the Patent Act.

During his career, Dunner received a great number of accolades and honors, including lifetime achievement awards from the Linn Inn Alliance, American Lawyer and the Sedona Conference. He’s also received the Samuel E. Gates Litigation Award for significant contributions to the improvement of litigation processes from the American College of Trial Lawyers, on which Dunner also served as a Fellow. In 2001, Dunner received Purdue University’s Distinguished Engineering Alumni Award. Other awards include the American Bar Association’s Mark T. Banner Award, the Hispanic National Bar Association’s IP Jurisprudence Award, the NJIPL Jefferson Medal and the 2014 Who’s Who Legal Award for Patent Lawyer of the Year. Dunner has also been inducted into the American Academy of Appellate Lawyers, as well as Intellectual Asset Magazine’s IP Hall of Fame. Recently, Dunner had served as an adjunct professor at George Washington University School of Law and as the Chair of the Advisory Board of John Marshall’s Center for IP, Information and Privacy Law.

He will be sorely missed.