Daniel Tarr practices in the area of intellectual property law with a focus on patent procurement and prosecution, enforcement and licensing, and patent litigation. Mr. Tarr has counseled clients in all aspects of domestic and international patent portfolio management and has extensive experience in diverse technical areas, including medical devices, medical imaging devices, global positioning systems, communication systems, semiconductor devices and manufacturing, acoustic systems, guided wave systems, electronics, smart cards, software and business methods, distributed ledgers (i.e., blockchain), and housewares.

Mr. Tarr has experience in patent disputes in federal district courts and before the USPTO Patent Trial and Appeal Board. His litigation experience includes, among other fields, medical devices, database management and development software, and speech recognition technology. He is experienced in patent and prior art analysis, infringement analysis, summary judgment briefing, preparation of infringement/invalidity contentions, expert reports, pre-trial orders, and trial briefs.

Mr. Tarr also assists clients in a variety of technology-related transactional matters, including structuring, negotiating, drafting, implementing and providing legal advice regarding software licensing, software development and consulting agreements, patent and related know-how licenses, technology licenses, non-disclosure agreements, and legal issues related to website terms of use and privacy in the U.S. and Europe. Mr. Tarr has experience in preparing and reviewing smart contracts and other self-executing agreements

Mr. Tarr is a 2012 summa cum laude graduate of University of Pittsburgh School of Law, where he was an editorial board member of the University of Pittsburgh Law Review and elected to the Order of the Coif, and a 2009 graduate of Temple University (B.S., Electrical and Computer Engineering).

Areas of Practice

  • Intellectual Property
  • Patents

  • Patent Litigation

  • Technology Transactions and Licensing

Representative Matters

  • Nuance Communications, Inc. v. MModal LLC, (D. Del. 2017) – Representing MModal in patent infringement suit concerning speech recognition and transcription technologies.
  • Finjan, Inc. v. SonicWall, Inc., (N.D. Cal. 2017) – Representing SonicWall in patent infringement suit concerning computer security.
  • Defended leading enterprise software company in a five-patent case concerning multidimensional databases and parallel processing technology, filed in the Eastern District of Tennessee. Case successfully settled at an early stage.
  • Represented Polder Housewares and its affiliates in the sale of substantially all of their assets – including intellectual property assets – to a buyer which is majority owned by entities affiliated with Topspin Partners, a suburban New York-based private equity fund.
  • Represented artist in preparation and execution of copyright transfer agreement to secure rights to deceased relative’s works for biography.

Admissions

  • Pennsylvania
  • U.S. District Court for the Western District of Pennsylvania
  • U.S. Patent and Trademark Office

Education

  • University of Pittsburgh School of Law, J.D., cum laude, 2012
    - Editorial Board Member, University of Pittsburgh Law Review
    - Order of the Coif
  • Temple University, B.S., Electrical and Computer Engineering, 2009

Experience

  • Duane Morris LLP
    - Associate, 2014-present
  • K&L Gates
    - Patent Attorney/Patent Agent, 2011-2014

Civic and Charitable Activities

  • Philadelphia Volunteer Lawyers for the Arts
    - Pennsylvania Patent Pro Bono Program Volunteer
    - Represented Artist in copyright license negotiations and copyright clearance search

  • Georgia Lawyers for the Arts
    - Georgia Patents Volunteer

  • Widener Veteran’s Law Clinic
    - Volunteer

Selected Publications

Selected Speaking Engagements

  • Presenter, “E-Signed, Sealed, Delivered,” Duane Morris Commercial Contracts Checkup Series, Webinar, January 24, 2019

  • Presenter, "Blockchain Business Applications: Dot-Com Bust or Business Boom?" Duane Morris Commercial Contracts Checkup Series, Philadelphia and Webinar, October 11, 2018

  • Presenter, "Spring 2018 Orientation," Philadelphia Volunteer Lawyers for the Arts, March 27, 2018

  • Presenter, “Standards-Essential Patents: Licensing and Policy Considerations,” CLE Presentation, May 9, 2017

  • Presenter, “An Overview of Smart Contracts: The Future of Legal or Crypto Daydream”, Internal Presentation, August 18, 2016

  • Presenter, “A Primer on Inter Partes Review,” CLE Presentation, September 11, 2014