Recent Publications

IP Today Guest Article: Inter Partes Review: How is it Going So Far?

It has been about one year (September 16, 2012) since the USPTO began accepting petitions for inter partes review, or IPR. This is a new procedure at the Patent Office that was established by the America Invents Act (AIA) to permit members of the public to request the Office review of an issued patent. >>



David M. O'Dell

Partner

Richardson


2505 N. Plano Road
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Richardson, 75082
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Austin


600 Congress Avenue
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Austin, 78701
T +1 512.867.8510

Áreas de Practica

Educación

  • J.D., Southern Methodist University Dedman School of Law, 1995
  • Electrical Engineer, University of Texas at Austin, 1987

Bar Admissions

  • Texas
  • U.S. Patent and Trademark Office

Court Admissions

  • U.S. Court of Appeals for the Fifth Circuit
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the Northern District of Texas
  • U.S. District Court for the Eastern District of Texas
David M. O'Dell

David O'Dell specializes in intellectual property law, including patent prosecution, and in the development of intellectual property strategies for protecting and commercializing technology. His technical areas of experience include semiconductor processing, circuit design, computer software and hardware, and telecommunications. Prior to joining Haynes and Boone, David was a professional engineer and worked for several years in the semiconductor industry as a circuit designer, semiconductor product engineer, and computer programmer. In addition to his law degree, David holds an electrical engineer degree.

David's technology law experience includes:

  • Representing clients in multiple inter partes reviews.

  • Representing clients in more than 70 inter partes and ex parte reexaminations, including hearings before the Board of Patent Appeals and Interferences (BPAI, now the Patent Trial and Appeal Board, or PTAB) at the United States Patent and Trademark Office.

  • Drafting and prosecuting hundreds of original United States patent applications.

  • Developing intellectual property portfolios for both start-up and later stage technology companies.

  • Implementing competitor analysis and evaluation, and identifying and exploiting patent "white space" in the competitive landscape.

  • Representing and defending companies in the assertion of U.S. and foreign patents.

  • Counseling regarding patent validity and infringement opinions and the design and implementation of non-infringing alternatives to patented technology.

  • Working with trial lawyers in complex patent infringement suits.

Recent Honors

  • Named as a Rising Star by Texas Monthly for 2004
  • Listed in the "Hall of Fame" for patent prosecutors by American Lawyer's IP Law and Business, October 2003

Memberships

  • Phi Delta Phi legal honor society
  • American Intellectual Property Law Association
  • Dallas/Fort Worth Patent Law Association
  • Registered Patent Attorney with the U.S. Patent Office
  • Institute of Electrical and Electronics Engineers

Online Publications

09/12/2013 - IP Today Guest Article: Inter Partes Review: How is it Going So Far?
It has been about one year (September 16, 2012) since the USPTO began accepting petitions for inter partes review, or IPR. This is a new procedure at the Patent Office that was established by the America Invents Act (AIA) to permit members of the public to request the Office review of an issued patent.

06/05/2013 - The IP Beacon, June 2013
A Haynes and Boone Newsletter highlighting current issues in Intellectual Property Law.

01/12/2012 - Third-Party Challenges to an Issued Patent Before the USPTO: The America Invents Act
The America Invents Act was signed into law on September 16, 2011 and created several new post-issuance “review” procedures by which a third party can challenge the validity of a patent in an adjudicative proceeding before the PTO.

10/20/2011 - Intervening Rights and Invalidity-Argument Estoppel in Litigation After Patent Reexamination
The Federal Circuit recently resolved two issues of first impression as to how patent reexamination proceedings affect related patent infringement litigation. These two cases, Marine Polymer and Bettcher Industries, are likely to have a significant impact on both litigation and reexamination-proceeding practices, as well as the strategic interplay between them.

11/20/2008 - Fall 2008 Haynes and Boone IP Beacon Newsletter
Intellectual Property articles and news from the Haynes and Boone IP lawyers.

06/05/2008 - Patent Reexamination With Litigation, Strategies and Practice Tips

11/16/2006 - The New Role of Reexamination in Patent Litigation