David I. Gindler

Gindler joined Irell & Manella 34 years ago and said one of the most rewarding aspects of his job is working with young lawyers.

“One of the most gratifying things is to work with a lawyer from the first day they walk into the firm until the day they become partner,” Gindler said. “And I’ve had that happen on a number of occasions.”

The attorney handles a wide range of IP disputes and often finds himself practicing on the cutting edge of the law for life sciences clients.

In November, he secured a victory for his client Skysong Innovations LLC, the technology transfer agent of Arizona State University, in a breach of patent license case in which the claimant sought more than $40 million.

Explaining Skysong takes “the work of university professors and tries to proliferate it in the for profit world,” Gindler said.

This case involved a situation that didn’t work out quite as well as the university had hoped.

“They licensed some very innovative water reclamation technology to a licensee which struggled to commercialize the technology,” he explained. Skysong was patient, waiting years for the licensee — Altela Inc. — to pull it off.

Altela essentially stopped paying royalties to Skysong, stopped providing royalty reports, and according to Gindler, fell silent numerous times only to reappear later.

The company suggested “payments will be forthcoming and that report will be forthcoming,” Gindler said. This went on for an “awful long time,” and ultimately, Skysong felt the need to terminate the license.

As a result, Altela alleged that Skysong’s actions resulted in the complete loss of its business.

“The first thing they did was to disregard the arbitration provision and bring an action in district court in Arizona,” Gindler said. “We went to the court in Arizona and said, ‘So if you look at this page of the agreement, there’s actually an arbitration provision. So we’re really in the wrong place.’”

A judge agreed and the matter ultimately went to arbitration.

“The problem that we had with this case was that the other side’s position on what the patents covered kept shifting,” Gindler explained.

This discrepancy wound up being the wedge Gindler drove through their case in arbitration.

“Because we just put up this big diagram of the patent and of the device, which is from the patent, and said, ‘There it is and it covers the whole unit, not part of it,’” Gindler explained. “So this was sort of the fundamental dispute from the beginning of the case to the end.”

A three-person American Arbitration Association panel unanimously rejected all of Altela’s claims, finding that Skysong properly terminated the license agreement for non-payment of royalties and failure to provide quarterly royalty reports.

The panel awarded Skysong its unpaid royalties from Altela of $5.8 million, along with all of Skysong’s attorney fees.

U.S. District Judge Steven P. Logan affirmed the panel’s ruling. Syksong Innovations LLC v. Altela Inc., 18-03384 (D. of Arizona, filed Oct. 19, 2018).

— Skylar Dubelko