In the News

IAM Recognizes Five Haynes and Boone Lawyers as World’s Leading Patent Practitioners

Following Managing IP’s recognition of multiple Haynes and Boone lawyers as IP Stars, five Haynes and Boone, LLP intellectual property lawyers have been honored in Intellectual Asset Magazine’s Patent 1000: The World’s Leading Patent Practitioners 2014 legal directory.

The directory also designated Haynes and Boone as a “recommended firm” for its Patent Practice Group. >>

Managing IP Magazine Praises Haynes and Boone IP Practice, Lawyers as “Highly Recommended” 2014 IP Stars for Second Year in a Row

For two consecutive years, seven Haynes and Boone partners from three offices have been named IP Stars, and the Intellectual Property Practice Group has been voted to the top Texas tier in the IP Stars ranking by Managing Intellectual Property Magazine. >>



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 C. Brown

Randall Brown is the chair of the firm's Intellectual Property and Technology Transactions Section. He focuses on intellectual property law and has more than 25 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 inorganic and organic chemical compositions and processes, 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 inorganic and organic compositions and processes, carbon nanotubes, proppant and related methods and processes, oilfield downhole compositions and equipment and dietary supplements.

Selected Speeches and Publications

  • "Conformity Is A Virtue: The U.S. Patent And Trademark Office Proposes Changes To The Duty Of Disclosure To Match The Therasense Standard," co-author, Lexology, July 26, 2011.
  • "Patent Reform 2011: It Could Happen To You," co-author, Lexology, June 28, 2011.
  • "The Supreme Court Rules On Bilski: Business Method Patents Survive," co-author, Lexology, June 29, 2010.
  • "U.S. Patent And Trademark Office Proposes Three-Track Patent Examination Initiative," co-author, Lexology, June 23, 2010.
  • "Management (And The Federal Circuit) Torched Our Patent: What Should We Have Done Differently?" co-author, Lexology, May 10, 2010.
  • "Don’t Rely on Reissue to Fix Your Patent Claims," co-author, TechLaw, February 22, 2010.
  • "Litigation Risk And Liability Danger From False Patent Marking In View Of Forest Group, Inc. v. Bon Tool Co," co-author, Lexology, January 27, 2010.
  • "Software Licenses: Permission vs. Forgiveness and the Law of Unintended Consequences," co-author, October 1, 2009.
  • "Leveraging Intellectual Property Through a Strategic Acquisition," co-author, The Metropolitan Corporate Counsel, June 1, 2009.
  • "New Developments Regarding the Written Description Requirement," University of Texas School of Law 11th Annual Advanced Patent Law Institute, Austin, Texas, October 25-27, 2006.
  • "The CREATE Act of 2004 - Research Partnerships, Inventorship and Secret Prior Art," American Chemical Society 57th Southeast Regional Meeting, Memphis, TN, November 2, 2005.
  • "Managing Inventors In-House," 10th Annual Advanced Patent Law Institute, Austin, TX, October 26-28, 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.
  • "Intellectual Property Audits: Conflicts and Ethical Issues," 7th Annual Advanced Patent Law Institute, Austin, TX, November 1, 2002.

Professional Activities

  • Dallas Bar Association, Intellectual Property Section
    • Section Chair, 2010
    • Director, 2002-2010
    • Vice-Chair, 2009
  • State Bar of Texas, Intellectual Property Section
  • American Intellectual Property Law Association
  • Intellectual Property Owners Association, U.S. Post-Grant Patent Office Practice Committee
  • Advanced Patent Law Institute
    • Planning Committee Member, 2007-2012
    • Conference Faculty Member, 2005
  • Technology Law Conference
    • Planning Committee member

Honors

  • Intellectual Asset Management (IAM) Patent 1000: The World’s Leading Patent Practitioners 2012, 2014. 
  • Named a "Texas Super Lawyer" by Texas Monthly for 2005 and 2007-2013.
  • Martindale Hubbell® Law Directory with a Peer Review Rating of AV® Preeminent™

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

07/26/2011 - Conformity is a Virtue: The U.S. Patent and Trademark Office Proposes Changes to the Duty of Disclosure to Match the Therasense Standard
The U.S. Patent and Trademark Office (“PTO”) has proposed changes to two rules that are designed to streamline the obligations of innovators and their patent practitioners to disclose information to the PTO in patent applications and reexamination proceedings.

06/28/2011 - Patent Reform 2011: It Could Happen to You
On June 23, 2011, the U.S. House of Representatives passed House Bill H.R. 1249 (the “Leahy-Smith America Invents Act”) by a vote of 304-117. This follows on the Senate’s 95-5 passage of bill S. 23 (the “America Invents Act”) back on March 8, 2011.

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.

06/28/2010 - Accelerated Patent Examination Plan Extended
Most patent applicants can now accelerate the examination of a select number of patent applications in exchange for abandoning an equal number of unexamined, pending applications, according to an announcement issued by the U.S. Patent and Trademark Office (“PTO”) on June 24, 2010. The PTO’s official notice, titled “Expansion and Extension of the Patent Application Backlog Reduction Stimulus Plan” (the “Plan”), eliminates the requirement whereby only small entity applicants could participate in the Plan.

06/23/2010 - U.S. Patent and Trademark Office Proposes Three-Track Patent Examination Initiative
The United States Patent and Trademark Office (“USPTO”) is seeking public comment on a proposed three-track patent examination initiative that would provide applicants with greater control over the speed at which their applications are examined.

05/10/2010 - Management (and the Federal Circuit) Torched Our Patent: What Should We Have Done Differently?
Just one day after the U.S. Court of Appeals for the Federal Circuit indicated that it would consider the current state of the inequitable conduct doctrine en banc in Therasense, Inc. v. Becton Dickinson and Co., a split panel of the Federal Circuit issued a decision in the case of Avid Identification Systems, Inc. v. Crystal Import Corp. affirming a lower court’s finding of inequitable conduct.

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).

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