David McCombs is primary counsel for many leading corporations in patent inter partes review, reexamination, and concurrent patent litigation in the federal courts and before the U.S. Patent Office’s Patent Trial and Appeal Board. His practice spans 30 years and includes Federal Circuit appellate argument, patent litigation, licensing and technology transfer, patent portfolio development and drafting, and dispute resolution.
Mr. McCombs is the firm-wide chair of the technology practice of Haynes and Boone. He has a Physics degree and represents clients in diverse technologies that include electronics, semiconductors, software, telecommunications, medical devices, and energy equipment.
Mr. McCombs helps lawyers inside technology companies that face high-risk and often time-sensitive IP issues, both in the litigation and business context. He works with them to develop and execute intellectual property best practices designed to both maximize value and manage exposure to patent risk, and avoid litigation.
Prior to joining Haynes and Boone in 1989, he served as in-house patent counsel for a diversified technology company located in Research Triangle Park, North Carolina, with a long history of developing breakthrough chemical/material science, diagnostic, robotics, and motion management technologies.
Selected Client Representations:
- Lead counsel in numerous inter partes reviews before the U.S. Patent & Trademark Office’s Patent Trial and Appeal Board
- World's largest dedicated semiconductor foundry - representations in federal and state court proceedings, transactions, and patent procurement related to semiconductor devices and processing technologies
- Leading U.S. silicon innovation manufacturer - multiple inter partes patent reexaminations involving concurrent litigation
- Leading U.S. open source software developer - numerous representations in patent disputes, transactions, portfolio development, patent procurement, and reform policy
- Telephone equipment manufacturer - defense of patent infringement action involving SS7 network for mobile phones
- Global oil field service company - numerous representations in patent and trade secret disputes and licensing transactions
- Telecommunications service provider - enforcement of patents covering the electronic processing of call detail records against major long distance providers, several RBOCs, and other service providers
- Leading medical device company - representations in defense of actions for patent infringement and misappropriation of trade secrets; patent prosecution; and patent licensing
- Counsel to Department of Justice in the matter of Summit Technology, Inc. and VISX, Inc. involving dissolution of patent pooling arrangement for patents on LASIK eye surgery
- Neutral Arbitration of dispute between major airline and information technology service provider
- Mediator in patent litigation between oil field tool manufacturers
- Expert: Spectradyne, Inc. v. On Command Video Corporation and COMSAT Corporation (N.D. California 1994); RAS Holding Corp v. OrbTek, Inc. and Bausch & Lomb, Inc. (N.D. Texas 2003); Wicks v. Railrunner Systems, Inc. (American Arbitration Association, Commercial Arbitration Rules, 2004); Good Sportsman Marketing, LLC v. Testa Associates, LLC, EBSCO Industries, Inc., and Moultrie Products, Inc. (E.D. Texas, 2006)
In Chambers & Partners' America's Leading Business Lawyers for 2003-2014, Mr. McCombs was named among Texas' leading intellectual property attorneys. He was honored in Intellectual Asset Magazine's Patent 1000: The World's Leading Patent Practitioners 2014. Mr. McCombs has also been named as one of the "Best Lawyers in Dallas," by D Magazine, 2002-2012; a "Texas Super Lawyer," by Texas Monthly Magazine for 2003-2013; and one of The Best Lawyers in America in Intellectual Property Law (2005-2014). Mr. McCombs is AV® Peer Review Rated Preeminent by Martindale-Hubbell® Law Directory and was selected as Best Lawyers' 2013 Dallas Intellectual Property Lawyer of the Year and Dallas Technology Law Lawyer of the Year.
Mr. McCombs is a member of the ABA; the State Bar of Texas, Intellectual Property Law Section (Chair, 2005-2006); the Dallas Bar Association, Intellectual Property Section (Chair, 2003); and the Dallas-Fort Worth Intellectual Property Law Association (President, 1994). He is a Member of the Institute of Electrical and Electronic Engineers; the Computer Law Association; and the Licensing Executives Society.
Speeches and Publications
Mr. McCombs is active in many continuing legal education organizations, and regularly writes and speaks on a variety of topics. He is the co-author of “Intellectual Property Law,” published annually by The SMU Law Review (2010-present). He serves on the conference planning committee and faculty for the Annual Silicon Valley Advanced Patent Law Institute, jointly sponsored by the Stanford Program in Law, Science, & Technology, the Berkeley Center for Law & Technology at Boalt Hall, and the University of Texas School of Law (2001-present). He also serves on the conference planning committee and faculty for the Advanced Patent Law Institute at the United States Patent & Trademark Office in Alexandria, Virginia, jointly sponsored with the University of Texas School of Law, George Mason School of Law, and the United States Patent & Trademark Office (2006-present). He also serves as the Chair of the Institute for Law and Technology of the Center for American and International Law (2007-present).
- "The PTAB Petition, Pre-Trial Phase, and Trial Institution," Co-Presenter, USPTO Post-Grant Patent Trials 2014, Practising Law Institute, New York, NY, March 27, 2014.
- "Lessons Learned for the Post-Issuance Proceedings," Co-Presenter, 27th Annual Advanced Intellectual Property Law Course, Texas State Bar, Dallas, TX, March 19, 2014.
- "Federal Circuit Appeals From the PTAB: A New Game or Just the Same Old Practice," Journal of the Patent & Trademark Office Society, November 22, 2013.
- "Critical Issues Still Facing Patent Law," Advanced Practice under the America Invents Act, Institute for Law and Technology, Center for American and International Law, Dallas, Texas, April 12, 2013.
- "Ethics in the Post-AIA World," 15th Annual Richard C. Sughrue Symposium on Intellectual Property Law and Policy, The University of Akron School of Law, Akron, Ohio, March 4, 2013.
- "Federal Circuit Appeals From the PTAB: A New Game or Just the Same Old Practice?" co-author, Haynes and Boone White Paper, February 1, 2013.
- "Litigation Strategies After AIA," 2013 Annual Advanced Patent Law Institute, The United States Patent and Trademark Office, George Mason University School of Law, and The University of Texas School of Law, Alexandria, Virginia, January 24, 2013.
- "Trial Practice in Contested Proceedings before the Patent Trial and Appeal Board," 50th Anniversary Conference on Intellectual Property Law, The Center for American and International Law, Plano, Texas, November 12, 2012.
- "Ethics-Related Implications of the America Invents Act," Intellectual Property Owner’s IP Chat Channel, October 23, 2012.
- "Risk Management and Intellectual Property," 2012 Symposium on Global Markets – Managing Risks and Potential Liabilities in Uncertain Times: The Duties and Responsibilities of the International Lawyer, The Center for American and International Law, Plano, Texas, June 19, 2012.
- "Thinking Strategically About Inter Partes Review," 13th Annual Silicon Valley Advanced Patent Law Institute, The Stanford Program in Law, Science, & Technology, the Berkeley Center for Law & Technology at Boalt Hall, and the University of Texas School of Law, San Jose, California, December 6, 2012.
- "The Corporate Response to New Legislation: Changes in Portfolio Development and Patent Defense Strategies," 2012 Annual Advanced Patent Law Institute, The United States Patent and Trademark Office, George Mason University School of Law, and The University of Texas School of Law, Alexandria, Virginia, January 19, 2012.
- "The New Calculus for Challenging Patents Under the America Invents Act," 23rd Annual All Hands Meeting, Silicon Valley Association of General Counsel, Santa Clara, California, December 7, 2011.
- "Alternative Dispute Resolution in Patent Cases," State Bar of Texas Advanced Patent Litigation Course, San Antonio, Texas, July 2010.
- "Inter Partes Reexamination," 4th Annual Patent Law Institute, Practicing Law Institute, San Francisco, California, March 22, 2010.
- "Bilski: Time to Reboot Section 101?" 14th Annual Advanced Patent Law Institute, Austin, TX, October 2009; and 10th Annual Advanced Patent Law Institute, San Jose, CA, December 2009.
- "The Rise of Reexamination: Aggressive Maneuvering in Litigation and Pre-Litigation," 6th Annual Rocky Mountain Intellectual Property & Technology Institute, Denver, Colorado, June 2008.
- "Conflicts of Interest in Transactional Patent Practice," Advanced Patent Law Institute, The University of Texas School of Law, George Mason School of Law, and The United States Patent & Trademark Office, Alexandria, Virginia, January 2008.
- "The New Role of Reexamination in Patent Litigation," 7th Annual Silicon Valley Advanced Patent Law Institute, The Stanford Program in Law, Science, & Technology, the Berkeley Center for Law & Technology at Boalt Hall, and the University of Texas School of Law, San Jose, California, December 2006.
- "IP Considerations for Joint Ventures and Foreign Direct Investments in China," Licensing Executives Society, New York, New York, May 2006.
- "Partnering and Licensing Strategies in China for Preserving IP Value and Gaining Market Share," Institute for Law and Technology of the Center for American and International Law, San Francisco, California, December 2005.
- "Taking a New Look at Patent Pools, Use and Abuse," Licensing Executives Society, Phoenix, Arizona, 2005.
- "The Market for Buying and Selling Patents," 6th Annual Silicon Valley Advanced Patent Law Institute, The Stanford Program in Law, Science, & Technology, the Berkeley Center for Law & Technology at Boalt Hall, and the University of Texas School of Law, San Jose, California, December 2005.
- "Patent Protection and Enforcement in China," Licensing Executives Society, Boston, Massachusetts, 2004.
- "Avoiding the IP Darwin Award: IP Strategies for the Startup," University of Texas School of Law, 17th Annual Computer and Technology Law Institute, Austin, Texas, May 2004.
- "Evolving Techniques in IP Portfolio Strategies: What Works?" 8th Annual Advanced Patent Law Institute, University of Texas School of Law, Austin, Texas, October 2003.
- "Patents As Part of the Business Strategy - Latest Perspectives On Creation, Licensing, and Enforcement," Advanced Patent Law Institute, University of Texas School of Law, Austin, Texas, November 2001.
- "Intellectual Property Law Strategy, The New High Tech Industry," State Bar of Texas Annual Meeting, Austin, Texas, October 2001.
- "Strategic Patenting," Advanced Patent Law Institute, University of California at Berkeley and University of Texas, San Jose and Austin, November, 2000.
- "Intellectual Property Valuations," Advanced Patent Law Institute, The Stanford Program in Law, Science, & Technology, the Berkeley Center for Law & Technology at Boalt Hall, and the University of Texas School of Law, Austin, Texas, November 2000 and San Jose, California, December 2000.
- "Patenting Methods of Doing Business: Pros and Cons," 13th Annual Intellectual Property Law Course, State Bar of Texas Annual Meeting, March 2000.
Board of Trustees, St. Philips School and Community Center, 2012-present; Advisory Board Member, Metroplex Technology Business Counsel, Richardson Chamber of Commerce, 2005-present; Executive Board Member, Richardson Symphony Orchestra, 2007-2012
Selected Representative Experience
Apple Inc. v. Motorola, Inc., No. 12-1548 (Fed. Cir. 2012)
Submitted amicus curiae brief on behalf of industry leaders in a broad cross-section of American industry urging the Federal Circuit to revisit the reasonable royalty measure of damages in patent infringement cases.
Halliburton Energy Services, Inc., vs. Axis Technologies LLC, 95th District Court, Dallas County, Texas, 2012 (No. DC-11-00267-D)
After a two-week trial, secured a judgment awarding Halliburton $713,300 in damages based on a verdict on three claims: trade secret misappropriation; breach of contract and breach of fiduciary duty, based upon an employee's taking of confidential information relating to Halliburton’s frac plug technology; and competition with Halliburton in manufacturing plugs using those trade secrets.
Hewlett-Packard Company v. Wistron Corporation
Defended international computer company in patent infringement lawsuit.
Representation of Semiconductor Foundry
Representation of the world's largest semiconductor foundry, based in Taiwan, in patent prosecution matters.
03/22/2013 - Federal Circuit Appeals From the PTAB: A New Game or Just the Same Old Practice?
The America Invents Act (“AIA”) revamped the former Board of Patent Appeals and Interferences (“BPAI”) into the new Patent and Trademark Appeal Board (“PTAB”).
01/22/2013 - Texas Lawyer Guest Article: Consider the Benefits of Contested Review Proceedings
The U.S. Patent and Trademark Office is opening a Texas regional satellite office in downtown Dallas, serving the regional patent community in connection with patent procurement and proceedings before the newly formed Patent Trial and Appeal Board (PTAB). While a regional patent office will benefit Texas-based inventors, it also will handle contested trial proceedings such as inter partes review and post-grant review proceedings.
07/24/2012 - The Litigation Newsletter of Haynes and Boone, LLP
Whether by summary disposition, unanimous jury verdicts, arbitration proceedings or appeals, Haynes and Boone, LLP trial lawyers in New York, Dallas, Fort Worth, Houston and Silicon Valley are securing winning results for our clients across the nation.
01/09/2012 - The IP Beacon, January 2012
A Haynes and Boone Newsletter highlighting current issues in Intellectual Property Law.
11/21/2011 - Dallas Morning News Guest Column: David McCombs - An inventive state like Texas deserves its own patent office
The ribbon for the Detroit satellite office of the U.S. Patent and Trademark Office already has been cut.
07/29/2010 - Alternative Dispute Resolution in Patent Cases
Like all litigation, most patent cases settle before trial. Given that, the effective use of alternative dispute resolution (ADR) is an important and often underemphasized component of patent case management.
06/29/2010 - The Supreme Court Rules on Bilski: Business Method Patents Survive
On June 28, 2010, the United States Supreme Court announced its decision on Bilski v. Kappos
regarding what inventions are eligible for patent protection. The decision affirms that business methods are patentable, although the specific business methods at the center of the case are not.
05/07/2010 - The IP Beacon, May 2010
A Haynes and Boone Newsletter highlighting current issues in Intellectual Property Law.
05/04/2010 - Patent Reexamination: Trends for the 2010s
02/22/2010 - Don’t Rely on Reissue to Fix Your Patent Claims
Reissue is a post-issuance procedure that enables the correction of certain limited types of errors in a patent, but cannot be used merely for precautionary claim improvements. The Board of Patent Appeals and Interferences (BPAI) at the U.S. Patent & Trademark Office recently decided in a precedential opinion that reissue cannot be used to add a dependent claim “simply as a hedge against possible invalidity of the original claims.” Ex parte
Yasuhito Tanaka, Appeal No. 2009-000234 (BPAI, Dec. 9, 2009) (per curiam
10/29/2009 - Bilski: Time to Reboot Section 101?
To keep alive the engine of innovation in America, it is important that the patent laws continue to embrace inventions no matter what shape they take.
01/15/2009 - A Brand New Game: Video Game Patent Litigation Moves Beyond Base Technologies
As gamers clamor for cutting edge innovation, game and console developers continue to conquer new creative frontiers and in the process spend significant sums to advance their next great creation... Legal deathmatches are being waged over patents covering everything from console architectures to controller schemes to virtual world content.
Growing Legal Issues In The Video Game Industry
When you start playing games on your Nintendo Wii, your Microsoft Xbox 360 or even your computer, you might not realize the thorny legal and business issues behind the amazing graphics and the gripping musical score. Digital gaming is one of the world’s fastest growth industries — up 26 percent last year, even with the economic slowdown — and it is no surprise that where there is money, there are lawsuits.
06/05/2008 - Patent Reexamination With Litigation, Strategies and Practice Tips
11/16/2006 - The New Role of Reexamination in Patent Litigation
Taking a New Look at Patent Pools- Use and Abuse
11/12/2004 - "Tipping Your Hand" - Considerations Before Filing Rule 99 Submissions
Into the Mouth of the Dragon: Patent Protection and Enforcement in China
Avoiding the IP Darwin Award: IP Strategies for the Startup
Patents as Part of the Business Strategy
Strategic Patenting - a Background and Framework
Patenting Methods of Doing Business: Pros and Cons
Patents for Business Methods and E-commerce Ideas