My experience spans 24 years practicing intellectual property law, with emphasis on patent litigation and dispute resolution; patent drafting; administrative proceedings before the USPTO; licensing and technology transfer; and intellectual property diligence and agreement drafting for a wide variety of corporate investments, mergers & acquisitions.
I have a Physics degree and represent clients in diverse technologies that include electronics, semiconductors, software, telecommunications, medical devices, and energy equipment.
Prior to joining Haynes and Boone in 1989, I served as the 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.
Now, I spend most of my time helping lawyers inside leading-edge technology companies that face high-risk and often time-sensitive IP issues, both in the litigation and business context.
As chair of our firmwide technology practice, I also write patents and architect portfolios for both large and small companies. I acquire patents and develop systems for evaluating new acquisition opportunities. I develop systems for third party risk assessment and avoidance of litigation. I have extensive experience in inter partes reexamination, usually involving litigation. And I regularly litigate patent infringement suits, handling technical aspects of cases in cooperation with various firm and third party trial counsel.
Selected Client Representations:
- 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 Korean electronics manufacturer - multiple inter partes patent reexaminations involving concurrent litigation
- Leading U.S. silicon innovation manufacturer - multiple inter partes patent reexaminations involving concurrent litigation
- Global supplier of custom-engineered rotating equipment for the energy industry - numerous representations in federal court proceedings, transactions, and patent procurement related to centrifugal and reciprocating compressors, gas and steam turbines
- Software developer - enforcement of patent for fundamental operating system technology against computer platform products manufacturer
- Telephone equipment manufacturer - defense of patent infringement action involving SS7 network for mobile phones
- 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
- 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)
Honors
In Chambers & Partners’ America’s Leading Business Lawyers for 2003-2009, Mr. McCombs was named among Texas’ leading intellectual property attorneys. Mr. McCombs has also been named as one of the "Best Lawyers in Dallas," by D Magazine, 2002-2009; a "Texas Super Lawyer," by Texas Monthly Magazine for 2003-2009; and one of The Best Lawyers in America in Intellectual Property Law and Technology Law (Woodward/White, Inc., 2005-2010).
Professional Activities
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-Forth Worth Intellectual Property Law Association (President, 1994). He is currently the Chair, Institute for Law and Technology of the Center for American and International Law (2007-2008). 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 currently active in many continuing legal education organizations, regularly writing and speaking on a variety of topics. He serves on the conference planning committee and faculty for the Annual 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 (2003-2008). 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 in cooperation with the USPTO. He also serves as the Chair of the Institute for Law and Technology of the Center for American and International Law.
- “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, jointly sponsored with the University of Texas School of Law, George Mason School of Law, and in cooperation with the USPTO (Alexandria, Virginia, January 2008).
- “The New Role of Reexamination in Patent Litigation,” 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 (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,” Advanced Patent Law Institute, jointly sponsored by 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, jointly sponsored by 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).
Community Activities
Executive Board Member, Richardson Symphony Orchestra; Advisory Board Member, Metroplex Technology Business Counsel, Richardson Chamber of Commerce