Leveraging IP Through A Strategic Acquisition

Following a successful joining of forces between Haynes and Boone and California IP powerhouse MacPherson Kwok Chen & Heid, Haynes and Boone now boasts 70 full-time intellectual property lawyers and a burgeoning presence in the critical California legal market. The editor of Metropolitan Corporate Counsel interviews partners Randy Brown and Ed Kwok about the strengths of the practice and the firm's plans for continued growth in the IP sector. >>

Haynes and Boone Named a Go-To Law Firm for Technology

Haynes and Boone, LLP has been named a Go-To Law Firm® for Technology by American Lawyer Media’s Corporate Counsel in its annual survey of in-house counsel teams at the world’s largest technology companies. >>



Randall C. Brown

Partner

Dallas


2323 Victory Avenue
Suite 700
Dallas, Texas 75219
T +1 214.651.5242
F +1 214.200.0802

Areas of Practice

Education

  • J.D., George Washington University, 1985, with honors
  • B.A., Chemistry, with Biological Specialization, Duke University, 1981, magna cum laude

Bar Admissions

  • Texas, 1985
  • U.S. Patent and Trademark Office, 1984

Court Admissions

  • U.S. District Court for the Northern District of Texas

Languages

  • English
  • French

Randall Brown is the chair of the firm's Intellectual Property and Technology Transactions Section. He specializes in intellectual property law and has more than 20 years of experience in the field. He has prepared and prosecuted patent applications in a wide variety of technologies with a particular focus on the chemical arts including downhole oilfield compositions and related processes, carbon nanotube technology, petrochemicals including catalysts and polymers, as well as biologicals, pharmaceuticals and nutraceuticals.

Selected Client Representations

  • Patent portfolio development for clients ranging from start-ups to multi-national publicly traded companies, including the design and implementation of intellectual property protection programs.
  • Counseling regarding new and existing products including patent, trademark, copyright and trade dress infringement analyses, freedom of operation studies, patent validity analyses and the design and implementation of non-infringing alternatives to patented technology.
  • Preparing and prosecuting hundreds of patent applications directed to carbon nanotubes, proppant and related methods and processes, oilfield downhole compositions and equipment and dietary supplements.

Speeches

  • "New Developments Regarding the Written Description Requirement," 11th Annual Advanced patent Law Institute, Austin, Texas (October 2006)
  • "The CREATE Act of 2004 - Research Partnerships, Inventorship and Secret Prior Art," American Chemical Society, Memphis, Tennessee (November 2005)
  • "Managing Inventors In-House," 10th Annual Advanced Patent Law Institute, Austin, Texas (October 2005)
  • "Inventorship in BioScience - Collaborations, Research Partnerships and Joint Inventors," 4th Annual Drug Patents, Toronto, Canada (April 2005)
  • "Patent Prosecution: Conflicts and Ethical Issues," PCT Seminar for Patent Attorneys and Administrators, Dallas Bar Association, Dallas, Texas (May 2004).

Professional Activities

  • Chair, Dallas Bar Association, Intellectual Property Section, 2010
  • Director, Dallas Bar Association, Intellectual Property Section 2002-2010
  • State Bar of Texas, Intellectual Property Section
  • American Intellectual Property Law Association

Honors

Named a "Texas Super Lawyer" by Texas Monthly for 2005, 2006 and 2008, 2009.

Selected Representative Experience


Product Clearance - Retail
Our client wished to launch a new footwear item in a highly competitive space. One of the industry leaders in this space had recently filed many lawsuits against third parties due to what it perceived as infringement of its patent and trade dress rights. We worked very closely – nearly every day for approximately seven months – with our client, including its legal, product design, and buying teams. We cleared a footwear design that was viable from both legal and marketing perspectives. Haynes and Boone also ultimately issued trade dress and design patent clearance and opinion letters to the client in connection with this review.

Online Publications

01/27/2010 - Litigation Risk and Liability Danger from False Patent Marking in View of Forest Group, Inc. v. Bon Tool Co.
In a case arising from the Southern District of Texas, the Federal Circuit recently issued an opinion that highlights the risks associated with marking products with patent numbers. See Forest Group, Inc. v. Bon Tool Co., No. 2009-1044 (Fed. Cir. Dec. 28, 2009) (slip opinion). 

10/01/2009 - Software Licenses: Permission vs. Forgiveness and the Law of Unintended Consequences
In a case that may prove to be as serendipitous for struggling software companies as anything else, the United States Court of Appeals for the Sixth Circuit wrote another chapter in the law of unintended consequences with its ruling in Cincom Systems, Inc. v. Novelis Corp. (published September 25, 2009 pursuant to Sixth Circuit Rule 206: File Name: 09a0346p.06).

Intellectual Property Audits: Conflicts and Ethical Issues