Person Photo
Person Photo

Donald Degnan

Partner

1800 Broadway, Suite 300, Boulder, CO 80302

Don works with companies to identify and protect their intellectual property assets.

His practice focuses on policing, enforcing and defending his clients’ intellectual property rights through litigation and other means. Don’s goal is to implement practical, cost-effective, objective-based approaches to protecting and enforcing his clients’ intellectual property.

Don is the former practice group leader, and former chair for the Intellectual Property Group. He previously headed its Intellectual Property Litigation Practice from 2000 to 2005 and served on the firm's Management Committee from 2006 to 2009.

Experience

Don has handled a variety of cases in federal district courts from coast to coast, as well as before the U.S. Patent and Trademark Office Trademark Trial and Appeal Board, the ICANN Uniform Domain Name Dispute Resolution tribunals and the 8th, 10th and Federal Circuit Courts of Appeals.

Patent Infringement Litigation

Don has substantial patent infringement litigation experience. He has litigated the full range of patent litigation issues and addressed the myriad discovery and procedural issues that arise and can be unique to patent cases. In addition to the technical issues pervasive in patent cases, Don focuses on developing simple and compelling story and trial themes early in the case. This is extremely important in conveying complex technical issues in a simple and understandable form to both the judge and the jury. Don has extensive experience with patent claim construction issues and has conducted numerous Markman claim construction hearings. He has also argued and won four appeals in the Federal Circuit Court of Appeals.

Trademark Litigation, Counseling, and Domain Name Enforcement

Don has handled a wide range of trademark litigation involving counterfeit goods, sponsorship confusion, dilution, false advertising, trade libel, the Federal Anti-Cybersquatting Act, Internet-specific infringement involving metatags, and the fair use defense.

Don has conducted intellectual property audits and worked with clients to inventory intellectual property and develop and implement asset protection plans. He has considerable experience in helping clients determine the “scope” of their rights in particular marks and to create guides to assist the client in enforcing and protecting the scope of those rights. He also assists clients with domain name issues, including the negotiation and purchase of rights from third parties, defensive registration strategies and enforcement.

Trade Secret Protection, Audits, and Enforcement

Don has successfully represented clients in trade secret actions involving alleged misappropriation of trade secrets by former employees, competitors, and others. He has obtained, and defended against, motions for temporary and permanent injunctions, as well as money damages in actions for trade secret misappropriation.

In addition to litigating trade secret misappropriation cases, Don has conducted a number of trade secret “audits” to define and inventory clients’ trade secrets. Once the trade secret assets are identified, a protection program is created and implemented to best protect those assets from inadvertent disclosure and intentional theft by employees and others.

Copyright and Trade Libel Cases

Don has handled a number of actions involving copyright infringement relating to software, Internet-based content, jewelry designs, flatware designs, and clothing patterns and designs.

He has also handled cases and counseled clients involving claims of trade libel. This includes the complex and unique contours of the First Amendment defense regularly asserted in these cases.

License Disputes

Don has handled numerous cases involving claims of breach of license agreements involving trademark and patent rights.

Education

Bar Admissions

Recognition

  • Fellow, The Litigation Counsel of America, A Trial Lawyer Honorary Society
  • Corporate INTL, Legal Award, IP Rights Attorney of the Year in Colorado, 2015
  • Managing Intellectual Property, IP Star, 2013-2016
  • IAM Patent 1000, one of the world’s leading patent practitioners, 2012-2016
  • The Best Lawyers in America© Lawyer of the Year, Litigation - Intellectual Property – Boulder, 2019
  • The Best Lawyers in America© Lawyer of the Year, Litigation - Litigation - Patent – Boulder, 2019
  • The Best Lawyers in America© Lawyer of the Year, Copyright Law – Boulder, 2018
  • The Best Lawyers in America© Copyright Law, Litigation - Intellectual Property, Litigation – Patent, 2013-2019
  • Chambers USA: America's Leading Lawyers for Business, Intellectual Property, 2010-2015
  • Colorado Super Lawyers®, Intellectual Property Litigation, 2006-2018
  • Martindale-Hubbell®, Top Rated Lawyer in Intellectual Property, 2013
  • Martindale-Hubbell® AV Preeminent®, 5.0 out of 5.0 
  • Corporate Counsel Black Book, Intellectual Property Litigation, 2007
  • Finalist in Denver’s “Best of the Bar” Awards, sponsored by the Denver Business Journal for the Intellectual Property category, 2003
  • World Trademark Review (WTR) 1000 - The World’s Leading Trademark Professionals, Colorado, Silver Band 2017, 2018
  • WIPR Leaders, Internet, Patent, and Trademark, 2017
  • Who's Who Legal, Trademark, 2018

Professional and Civic Affiliations

  • American Intellectual Property Law Association, Patent Litigation Committee, Member
  • International Trademark Association: 
  • Discovery Practices & Procedures Subcommittee, 2006-2008
  • Alternative Dispute Resolution Committee, 2004-2005
  • Meeting Planning Committee, 1998-2003
  • Colorado Bar Association:
  • Intellectual Property Section
  • Patent Local Rules Committee
  • Federal Circuit Bar Association, Member
  • Mr. Degnan serves on the Board of Directors for The Growe Foundation, a non-profit dedicated to educating children through experiential learning about eating and the environment.
DISCLAIMER

Unless you are a current client of Holland & Hart LLP, please do not send any confidential information by email. If you are not a current client and send an email to an individual at Holland & Hart LLP, you acknowledge that we have no obligation to maintain the confidentiality of any information you submit to us, unless we have already agreed to represent you or we later agree to do so. Thus, we may represent a party adverse to you, even if the information you submit to us could be used against you in a matter, and even if you submitted it in a good faith effort to retain us.