David G. Oberdick

Partner

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Areas of practice

Education

  • J.D., University of Pittsburgh School of Law
  • B.A., University of Pittsburgh

Bar Admissions

  • Pennsylvania

Court Admissions

  • U.S. Patent and Trademark Office (registered patent attorney)
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Court of Appeals for the Sixth Circuit
  • U.S. Court of Appeals for the Third Circuit
  • U.S. District Court for the District of Colorado
  • U.S. District Court for the Eastern District of Pennsylvania
  • U.S. District Court for the Middle District of Pennsylvania
  • U.S. District Court for the Western District of Pennsylvania
  • U.S. Supreme Court

Biography

David G. Oberdick is a member of the firm’s Intellectual Property, Corporate & Business Law, Business Litigation, and MUSolutions Groups, and has a diverse client base that bridges these practice areas. His business litigation experience includes cases involving issues of intellectual property, such as infringement and misappropriation litigation, restrictive covenants, licensing disputes, injunction proceedings, and related breach of contract issues.

Over the last 25 plus years, Oberdick has also counseled and litigated significant claims for clients in other complex commercial matters, such as disputes relating to insurance coverage, oil and gas title and leasing, shareholder conflicts, accountant malpractice, defamation, rights of publicity/privacy and antitrust.  He also has served as an Arbitrator, Special Master, Hearing Officer, and Mediator/Neutral in cases involving many of these same issues.

Professional/Community Involvement

  • Pittsburgh Intellectual Property Law Association, Member
  • Todd Dickinson Intellectual Property Inn of Court, Master
  • Local Rules Committee, Local Patent Rules Committee and ESI Sub-Committee for Alternative Dispute Resolution Member, U.S. District Court for the Western District of Pennsylvania
  • S. District Court for the Western District of Pennsylvania, Appointed as a Special Master, Mediator, and Early Neutral Evaluator
  • Allegheny County Bar Association, Member
    • Federal Court Section, Former Council Member
  • University of Pittsburgh School of Law’s Intellectual Property Moot Court, Faculty Advisor, 2004 – Present
  • Carnegie Mellon University, Swartz Center for Entrepreneurship, Mentor; 2022.
  • The Tepper Venture Challenge, Former Sponsor and Regular Judge
  • A business plan competition held yearly by the Undergraduate Entrepreneurship Association of Carnegie Mellon University
  • Avonworth School Board, Member, 2006 –2019
  • President, 2008, 2010, 2012-13, and 2015 – 2018
  • Allegheny County Ethics Commission, Former Chair, 2005 – 2010
  • Ohio Township Planning Commission
  • Avonworth Municipal Authority, Chairman of the Board of Directors, 1995 – 2000
  • Leadership Pittsburgh XXXII
  • Project Olympus, Mentor

Representative Matters

  • Pittsburgh Glass Works, LLC v. David Robertson, et al., Case No. GD-20-010344 (Ct. Com. Pl. Allegheny County 2021) – representation of defendant company against claims for interference with noncompetition agreement and misappropriate of trade secrets. Motion for injunctive relief was denied and the case thereafter settled.
  • Hubay, et al. v. Mendez, et al. 2:19-cv-01327-NR (W.D. Pa. 2020) – representation of Plaintiffs in claims for copyright infringement and breach of rights of publicity and privacy. By Opinion and Order dated November 13, 2020, the Court entered an Opinion and Order on the Parties’ Cross-Motions for Declaratory Judgment, whereby the Court entered a declaratory judgment in favor of Plaintiff Losieniecki, and against Defendants Mendez and MSTM, on aspects of Count IV of the Complaint as follows: (1) Plaintiff Robert Losieniecki has the exclusive right to ownership, control, and use of all photographs that he took in Washington D.C. on September 12 and 13, 2019, including the 26 photographs identified in U.S. Copyright Registration VA 2-173-194 and effective October 9, 2019, and titled “DC 2019”; and (2) the U.S. Copyright Registration filed and obtained on behalf of Defendant MSTM, identified as VA 2-176-197, dated October 31, 2019, and titled “Military Sexual Trauma Movement takes on Washington D.C.” is invalid.  The Court further found that “on or about September 14, 2019, Plaintiffs Hubay, Dorantes, and Herrick expressly revoked their consent for MSTM to use their likenesses in any photographs disseminated by MSTM” and also that the Plaintiffs did not sign a consent form “which requested ‘irrevocable’ consent to use the signer’s ‘likeness and voice’”;   The action thereafter settled with a Consent Judgment entered against Defendants.
  • Tarugu, et al. v. Journal of Biological Chemistry, et al., 478 F.Supp3d 552 (W.D. Pa. 2022) – representation of defendants in claims for defamation and related injunctive relief. The Court granted a partial motion to dismiss the Plaintiffs’ claim for permanent injunction, holding that injunction relief is not an available remedy for defamation under Pennsylvania law.
  • American Textile Company, Inc. v. Hollander Sleep Products, LLC, No. 2:17-cv-00487-MRH (W.D. Pa. 2017) – representation of Plaintiff as primary trial counsel in claims for declaratory judgment of design patent noninfringement and invalidity (a pillow design). By Opinion and Order dated September 14, 2017, Defendant’s counterclaim for patent infringement was dismissed with prejudice.  The parties subsequently settled the remaining aspects of the case.
  • BASF Catalysts, LLC v. Allstate, et al, No. MID-L-2061-05 (Superior Court of New Jersey, Law Division, Middlesex County) – representation of Plaintiff as Chief Counsel in environmental insurance coverage claim relating to operations of predecessor Engelhard Corporation in Plainville, MA. A four-month bench trial resulted in the award of $12.8 Million in past damages to our client (through 1999) together with an award of future damages.  Ongoing proceedings involved a two-week allocation phase trial before a Special Allocation Master, who issued a Report and Recommendation on August 3, 2015, allocating 74.06% of past damages against two remaining insurance company defendants, or approximately $9.48 Million.  The Report and Recommendation was initially confirmed by the trial court and then revised on reconsideration.  A final judgment has since been entered against one remaining defendant that includes an award of legal fees and costs as well as an obligation to pay a share of ongoing remediation costs.  The decisions in this matter are not reported and can be provided upon request.
  • Zambelli Fireworks Mfg. Co., Inc. v. Wood, 592 F.3d 412 (3rd 2010) – representation of individual defendant in connection with claims of breach of restrictive covenant and misappropriation of trade secrets.
  • Special master
    • Matthews Int. Corp. v. Anthony A. Lombardi, No. 2:20-cv-89-NR (W.D. Pa. 2021-23)
    • Buckingham Manufacturing Co. Inc., v. Bashlin Industries, Inc., No. 2:21-Cv-01390-CCW – Special Master for Claim Construction (W.D. Pa. 2022)
    • United States of America, ex rel. Tullo Emanuele, M.D., v. Medicor Associates, Inc., 1:10-cv-00245-JFC – Special Master for Discovery ( W.D. Pa. 2014)
    • Noah Systems, Inc. v. Intuit, Inc., 2:06-cv-00933-AJS – Special Master for Claim Construction (W.D. Pa. 2010)
    • American Eagle Outfitters, Inc., et al, v. Lyle & Scott, Limited, et al., 2:06-cv-00607-ARH – Special Master for Discovery (W.D. Pa. 2007-08)
    • Biagio Ravo and Enrico Nicolo v. Tyco Healthcare Group LP d/b/a Covidien, 2:11-cv-01637-JFC – Special Master for Claim Construction (W.D. Pa. 2013)
    • Air Vent, Inc. v. Owens Corning Corporation, 2:10-cv-01699-TFM – Special Master for Claim Construction (W.D. Pa. 2013)

Education

  • J.D., University of Pittsburgh School of Law, 1986 – magna cum laude
  • B.A., University of Pittsburgh, 1983 – magna cum laude

Communications

  • “IP Considerations During a Public Health Crisis,” Western Pennsylvania Healthcare News, August 25, 2021
  • Presenter, “Intellectual Property: Pitfalls in Corporate Transactions,” Continuing Legal Education, March 1, 2021.
  • “Patent and Trademark Strategies to Consider During the COVID-19 Outbreak,” MUS Blog, April 9, 2020.
  • Judge, Carnegie Mellon University’s Venture Challenge, April 4, 2020.
  • Presenter at Allegheny County Bar Association’s CLE Seminar on the topic of intellectual property pitfalls in corporate transactions, November 8, 2019.
  • Judge, Carnegie Mellon University’s Venture Challenge, April 6, 2019.
  • Moderator, 3 Rivers Venture Fair, April 2-3, 2019.
  • “Watch Out For Fake ‘Official’ Letters Regarding Your Trademarks,” MUS Blog, September 3, 2019.
  • “Supreme Court Rules Trademark Licenses Are Not Voided by Bankruptcies,” MUS Blog, June 19, 2019.
  • “IP Client Alert: Supreme Court Decisions Solidify, Clarify Copyright Law Procedures,” MUS Blog, April 4, 2019.
  • Oberdick frequently writes and lectures on various matters.
  • Moderator, ABA Roundtable on Intellectual Property
  • Moderator, 3 Rivers Venture Fair, entrepreneurs and investors “Venture Connection” sessions, October 11, 2017
  • “Five Key Aspects of New Federal Trade Secret Protection Law,” Co-author, MUS Blog, May 13, 2016.
  • “Good Faith Not Enough on Patent Infringement, Supreme Court Says,” Pittsburgh Post-Gazette, December 8, 2015.
  • “Copyright Law Debate Rages Over DMCA Takedowns,” Co-author, The Legal Intelligencer, October 15, 2014.
  • “Business Workshop: New Domains are Trademark Headaches,” Pittsburgh Post-Gazette Business Workshop, August 12, 2014.
  • “Special Masters In Western District Of Pennsylvania Help Expedite Patent Cases,” Meritas IP Newsletter, April 2014.
  • “7 Persistent Myths About Intellectual Property,” Entrepreneur website, March 18, 2014.
  • “Debunking The Myths Surrounding Natural Gas Title Washing: ‘How Can One’s Title Be Divested If Natural Gas Was Not And Cannot Be the Subject Of A Proper Real Estate Tax Assessment?’” Co-author, Pennsylvania Bar Association Quarterly, February 13, 2014.
  • “Business Workshop: Feds Look to Improve IP Enforcement,” Pittsburgh Post-Gazette Business Workshop, October 21, 2013.
  • “Business Workshop: No Harm, No Lawsuit,” Pittsburgh Post-Gazette Business Workshop, March 11, 2013.
  • “Making E-Discovery As Low-Cost As Possible,” Pittsburgh Business Times, February 15, 2013.

Awards/Honors

  • Named the Best Lawyers® 2022 Patent Law “Lawyer of the Year” in Pennsylvania
  • Named the Best Lawyers® 2021 Litigation-Intellectual Property “Lawyer of the Year” in Pennsylvania
  • Named the Best Lawyers® 2016 Trademark Law “Lawyer of the Year” in Pennsylvania
  • Named the Best Lawyers® 2015 Copyright Law “Lawyer of the Year” in Pennsylvania
  • Named the Best Lawyers® 2014 Litigation-Intellectual Property “Lawyer of the Year” in Pennsylvania
  • Named the Best Lawyers® 2013 Copyright Law “Lawyer of the Year” in Pennsylvania
  • Selected to the Pennsylvania Super Lawyers list – 2012 – 2022
  • Selected for inclusion in Best Lawyers in America® since 2009 in the areas of Commercial Litigation, Copyright Law, Litigation – Intellectual Property, Patent Law, Trade Secrets Law, Trademark Law
  • Selected for inclusion in American Lawyer & Corporate Counsel’s Top Lawyers
  • Maintains a Martindale-Hubbell AV Preeminent® Rating