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While studying computer engineering at Florida State University, David Grosby was working at an astroparticle lab programing sensor arrays to detect star death events. Although he found the work interesting, he was not enthralled with the actual programming. When the lab and the university squared off in an intellectual property dispute, however, he took notice.
“It was watching some of my professors go through this experience that ultimately drove me to pursue a career in intellectual property law. It just so happens that to be a practicing patent attorney you need to have a background in the sciences,” says Grosby, director and senior counsel, global patents at Mondelēz International.
He would go on to earn that computer engineering degree, which would provide the perfect background and a launchpad for a career in intellectual property and patent law.
Grosby cut his teeth as a patent law prosecutor at McDonnell Boehnen Hulbert & Berghoff LLP (MBHB), hearing inventors’ ideas, writing patent applications, and working with the US Patent and Trademark Office to get them granted. Grosby then joined Lee Sullivan Shea & Smith LLP (LS3), a spin-off of MBHB, where his focus shifted to client counseling and patent litigation. “I had a number of small clients that relied heavily on my legal advice. I was acting as a de facto inhouse counsel,” says Grosby.
Advising clients on intellectual property and beyond prompted him to pursue his current inhouse position at Mondelēz, manufacturer of the Nabisco, Oreo, Cadbury, and Trident brands, among others.
Since 2023, Grosby has been responsible for Mondelēz’s global patent portfolio across several innovative categories. In addition to overseeing the development of the patent portfolio, he helps negotiate contracts with world-wide external manufacturers and conducts freedom-to-operate opinions. “I determine if we’re all clear to bring certain products in a new area,” says Grosby.
The technical fluency Grosby gained earning his computer engineering degree helps him support innovation, mitigate risk, and align Mondelēz’s IP strategy for its global business goals.
In support of Mondelēz’s mission, he asks inventors pertinent questions to determine the best strategy for filing patent applications on the proposed technologies. “In the software space, my background allows us to unlock deeper levels of understanding innovations in a way that will help us get patents granted,” Grosby says.
As Mondelēz implements AI technologies aligning with its vision, Grosby lends support by ensuring the tech is implemented responsibly, keeping humans in mind.
“The most important thing to keep at the forefront of the discussion is people. It’s really focusing on people and making sure these emerging technologies don’t offend our moral sensibilities with respect to how we view our people at Mondelēz and our customers,” says Grosby.
Adhering to AI regulations can be confusing. The rules require Grosby to review the legal details of AI tools and use cases to outline different mitigation strategies to ensure that its usage is responsible and compliant.
“I want to make sure there are mechanisms in place so that these AI tools aren’t used in a way that runs afoul of our corporate view on AI usage and global regulations,” says Grosby.
If a business function is using an AI assistant, for example, he must ensure adequate disclosures are in place for the users. “While it is a powerful tool, you want to make sure users understand the limitations of the AI assistant,” says Grosby.
Including a human in the AI loop creates a fail-safe. “Imagine a world in which AI outputs would be used freely without that verification. You’re not sure if they’re accurate, or if they contain all these safeguards that we wanted to put in place,” says Grosby.
His training as a computer engineer provides him with a unique perspective. “It helps me better review, advise, and implement strategies for responsible AI usage from legal and technical standpoints,” says Grosby.
Grosby mitigates risk by drawing on his experience at LS3 where he witnessed businesses running afoul of third-party IP.
“Having these experiences and seeing the discovery involved in those cases helps me better implement risk mitigation strategies and programs to make sure we are not infringing, or inadvertently infringing, on third-party intellectual property and also mitigating any risk existing in our contracts with third parties that we don’t want infringing on our intellectual property,” says Grosby.
He aligns strategy by supporting and realizing the goals and targets of the business. “It’s my job to make sure the investments we’re making are protected in every way possible, working toward developing new intellectual property strategies to cover those off. My previous legal experience helps me do that,” says Grosby.
Although Grosby didn’t set out to be a lawyer, he forged a career that worked for him, and he advises computer engineers to consider patent law. “It’s a small niche, and I can’t recommend the path enough,” he says.
“David is a standout in his role as in-house counsel. He is a clear, personable communicator, with a steady presence and strategic approach that makes him a valuable asset to the MDLZ IP group.”
–Daniel Gibson, Partner
“David is widely respected for his keen strategic insights and his ability to navigate complex legal landscapes with clarity and confidence. His unique perspective and genuine curiosity make him a pleasure to work with.”
–Jennifer R. Andrew, Partner
