David McCombs

Practices

Industries

Education and Clerkships

J.D., University of Miami, 1984

B.S., Physics, Denison University, 1981

Bar Admissions

Texas

U.S. Patent and Trademark Office

Court Admissions

U.S. Court of Appeals for the Fifth Circuit

U.S. District Court for the Eastern District of Texas

U.S. District Court for the Western District of Texas

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

Profile

David McCombs is primary counsel for many leading corporations in 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. 

Mr. McCombs is AV® Peer Review Rated Preeminent by Martindale-Hubbell® Law Directory.

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).

Chambers

Chambers USA | Haynes and Boone, LLP

Haynes and Boone Retains Strong Showing in Chambers USA 2016 Rankings

Haynes and Boone, LLP has again been honored in the annual Chambers USA 2016 directory. The widely-respected legal publication singled out 19 firm practice groups and 51 individual lawyers for recognition.


Published by Chambers & Partners in May 2016

Newsroom

Honors

DMag Best Lawyers 2015

Haynes and Boone Maintains Strong Presence on D Magazine’s Best Lawyers List

D Magazine recognizes 36 Haynes and Boone, LLP lawyers in their annual Best Lawyers of Dallas directory; an increase over last year’s showing and doubling the 2014 list.

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)

Professional and Community Activities

  • American Bar Association
  • State Bar of Texas, Intellectual Property Law Section, Chair, 2005-2006
  • Dallas Bar Association, Intellectual Property Section, Chair, 2003
  • Dallas-Fort Worth Intellectual Property Law Association, President, 1994
  • Institute for Law and Technology of the Center for American and International Law, Chair, 2007-2008
  • Institute of Electrical and Electronic Engineers
  • Computer Law Association
  • Licensing Executives Society
  • 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 Publications and Speeches

  • "Inter Partes Review and Post-Grant Review – The Interplay of PTAB and District Court Litigation," PLI, 10th Annual Patent Law Institute, New York, NY, April 14-15, 2016 and San Francisco, CA, May 5-6, 2016.
  • In-House Perspectives on Patent Office Trials: Lessons from 2015,” USPTO Post-Grant Patent Trials 2016, PLI,  New York, New York, March 14, 2016.
  • “The Evolving PTAB and Best Practices,” 11th Annual Advanced Patent Law Institute, United States Patent and Trademark Office, Alexandria, Virginia, March 11, 2016
  • “Strategies for Appealing Cases to the PTAB and TTAB,” PTAB/TTAB Stadium Tour, Dedman School of Law, Dallas, TX, February 24, 2016.
  • “Patent Trial and Appeal Board Mock Trial,” Co-Presenter, 29th Annual Advanced Intellectual Property Law, Texas State Bar, San Antonio, TX, February 18-19, 2016.
  • "Inter Partes Review in Patent Disputes," Corporate Disputes Magazine, July-September, 2014.
  • "Interplay of PTO Review and District Court Litigation," Doug Cawley and David McCombs, 10th Annual Advanced Patent Litigation Course, Texas Bar CLE, San Antonio, Texas, July 17, 2014.
  • "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.

Professional Recognition

  • Recognized as a "2016 Lawyer of the Year" by Best Lawyers, Woodward/White, Inc., in Litigation - Patent, 2016
  • Recognized in Managing Intellectual Property Magazine, Euromoney Institutional Investor PLC, as a "Highly Recommended" IP Star, 2013 and 2015
  • Docket Navigator’s Year in Review listed David as one of the top ten “Attorneys in the PTAB,” 2014
  • Named a leading intellectual property lawyer for Texas in Chambers USA, Chambers & Partners, 2003-2016
  • Honored in Intellectual Asset Magazine's Patent 1000: The World's Leading Patent Practitioners, Globe White Page Ltd, 2014
  • Named as one of the Best Lawyers in Dallas by D Magazine, D Magazine Partners, 2002-2012 and 2015-2016
  • Recognized by Texas Super Lawyers, Thomson Reuters, 2003-2015
  • Recognized by The Best Lawyers in America, Woodward/White, Inc., in Litigation - Intellectual Property Law, 2005-2016; Litigation - Patent, and Technology Law, 2016
  • Recognized as a "2015 Lawyer of the Year" by Best Lawyers, Woodward/White, Inc., in Litigation - Intellectual Property 2015
  • AV® Peer Review Rated Preeminent by Martindale-Hubbell® Law Directory
  • Selected as Best Lawyers' 2013 Dallas Intellectual Property Lawyer of the Year and Dallas Technology Law Lawyer of the Year, Woodward/White, Inc., 2013

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