Dana Herberholz
PEOPLE

Dana Herberholz

Partner
herberholz.dana@dorsey.com

Overview

Dana advises and represents clients in technology disputes involving patents, trademarks, copyright, and trade secrets.

His IP Litigation practice spans diverse technology areas including consumer electronics and hardware, computer software, image processing, wireless communication, laboratory equipment, medical devices, railroad inspection, and internet technologies, among others. 

With particular emphasis on patent litigation, Dana maintains a national practice and regularly serves as lead counsel in patent disputes in various courts across the United States, including the Federal Circuit Court of Appeals and the Patent Trial and Appeal Board. Dana also has extensive experience assisting clients in international patent disputes.

Outside of the office, Dana is active in numerous bar associations and committees. Dana was a racecar driver prior to attending law school and remains an active auto racing enthusiast.

Education & Admissions

Gonzaga University School of Law (J.D., 2006)

University of Washington (B.S., Cellular and Molecular Biology, B.A., Law Societies and Justice, 2002)

Admissions

  • Idaho
  • Washington
  • United States Patent and Trademark Office
  • U.S. District Court for the District of Idaho
  • U.S. District Court for the Eastern District of Texas
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Court of Appeals for the Ninth Circuit

Experience

  • Won a jury verdict, enhanced damages, attorneys’ fees, and a permanent injunction as lead trial counsel for railroad technology company in a case against a direct competitor. A Texas federal jury found that the competitor willfully infringed the company’s patent for machine vision railroad track inspection technology. 
  • Represented manufacturer of optical systems in separate appeals before the U.S. Court of Appeals for the Federal Circuit. Secured affirmance of USPTO decisions invalidating asserted patents directed to microscope slide staining technology.
  • Represented agribusiness company and trademark owner in the Northern District of California in trademark infringement matter involving fertilizers. Successfully obtained injunctive relief prohibiting infringing and misleading labelling. 
  • Represented trademark owner and manufacturer of aftermarket power sports equipment in the District of Idaho in trademark infringement matter involving high-performance snowmobiles. Case settled favorably after motion for preliminary injunction was filed.   
  • Represented manufacturers of infrared thermometers on appeal before U.S. Court of Appeals for the Federal Circuit. Successfully reversed multi-million dollar verdict against client and invalidated asserted patent.  

* Certain representations occurred prior to joining Dorsey

Industries & Practices

Cybersecurity, Privacy & Social Media
Patent Prosecution, Portfolio Strategy & Management
  • Cybersecurity, Privacy & Social Media
  • Energy & Natural Resources
  • Food, Beverage & Agribusiness
  • Healthcare & Life Sciences
  • Intellectual Property
  • Intellectual Property Litigation
  • Patent Prosecution, Portfolio Strategy & Management
  • Technology
  • Technology Commerce
  • Trademark & Copyright

Professional & Civic

Professional Achievements

  • Local Civil Rules Committee – U.S. District Court District of Idaho, 2016-present
  • Member, Federal Circuit Bar Association, 2011-present
  • Member, American Bar Association, Intellectual Property Section, 2007-present
  • Member, Idaho State Bar Litigation Section, 2006-present
  • Executive Committee, Idaho Technology Council, 2017-2020
  • Board Member, Federal Bar Association, Idaho Chapter, 2016-2020
  • President, Federal Bar Association, Idaho Chapter, 2018-2019
  • Chair, Idaho State Bar Intellectual Property Law Section, 2010-2011, 2013-2014

Accolades

  • Recognized in Best Lawyers in America for Litigation - Patent, 2021 - present
  • Listed in the category of Intellectual Property Litigation - Mountain States Super Lawyers & Rising Stars, 2009 - present
  • Martindale-Hubbell AV-rated
     
Dana Herberholz