In the News

Haynes and Boone Attorneys Widely Recognized by Texas Super Lawyers

DALLAS – Ninety-three Haynes and Boone, LLP attorneys were recognized in 2011 by Texas Super Lawyers. >>

Best Lawyers in America 2012 Honors Firm, Haynes and Boone Lawyers

DALLAS – Ninety-four Haynes and Boone, LLP attorneys have been included in Best Lawyers in America's 2012 ranking of the nation’s top legal talent. >>

Haynes and Boone Intellectual Property Practice Recognized in Chambers USA National Rankings

DALLAS – The Haynes and Boone, LLP Intellectual Property Practice broke into the national rankings in the recently published Chambers USA: America’s Leading Lawyers for Business 2011 annual law firm rankings.

The group was acknowledged for “its increasing presence in all aspects of IP” and for “receiving an abundance of praise for its patent work in an array of technologies, including medical devices, semiconductors, nanotechnology, oil well technology, wireless technology, software and telecom networking equipment.” Partner David McCombs was singled out for being highly regarded at the firm. >>

Haynes and Boone Highly Recognized By Chambers USA

DALLAS – Fifty Haynes and Boone, LLP lawyers have been recognized by Chambers USA: America’s Leading Lawyers for Business 2011 in its annual law firm rankings. >>

Best Lawyers in America Honors Haynes and Boone Lawyers

Best Lawyers in America has listed 92 Haynes and Boone, LLP attorneys in its 2011 ranking of the nation’s top legal talent. Best Lawyers in America expanded its industry analysis for 2011 to include “Best Law Firms” rankings. Haynes and Boone earned a national first tier ranking for project finance law. In practices ranked by metropolitan regions, the firm took first tier honors in 27 practices across Dallas, Houston, Austin and San Antonio.
>>



Recent Publications

Dallas Morning News Guest Column: David McCombs - An inventive state like Texas deserves its own patent office

The ribbon for the Detroit satellite office of the U.S. Patent and Trademark Office already has been cut. >>

Alternative Dispute Resolution in Patent Cases

Like all litigation, most patent cases settle before trial. Given that, the effective use of alternative dispute resolution (ADR) is an important and often underemphasized component of patent case management. >>

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. >>



David L. McCombs

Partner

Dallas


2323 Victory Avenue
Suite 700
Dallas, Texas 75219
T +1 214.651.5533

Richardson


2505 N. Plano Road
Suite 4000
Richardson, Texas 75082
T +1 972.739.8636
F +1 972.692.9116

Areas of Practice

Education

  • 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

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 2003-2011, 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, 2011-2012; a "Texas Super Lawyer," by Texas Monthly Magazine for 2003-2011; and one of The Best Lawyers in America in Intellectual Property Law and Technology Law (2005-2012), Litigation - Patent, Technology Law, and Litigation - Intellectual Property(2012).

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.

  • "Alternative Dispute Resolution in Patent Cases," State Bar of Texas Advanced Patent Litigation Course (San Antonio Texas, July 2010).
  • "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

Selected Representative Experience


Hewlett-Packard Company v. Wistron Corporation
Defended international computer company in patent infringement lawsuit.

Representation of Semiconductor Foundry
Representation of the world's largest semiconductor foundry, based in Taiwan, in patent prosecution matters.

Memberships

  • American Bar Association
  • State Bar of Texas, Intellectual Property Law Section, Chair, 2005-2006
  • Dallas Bar Association, Intellectual Property Section, Chair, 2003
  • Dallas-Forth 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

Online Publications

01/09/2012 - The IP Beacon, January 2012
A Haynes and Boone Newsletter highlighting current issues in Intellectual Property Law.  

11/21/2011 - Dallas Morning News Guest Column: David McCombs - An inventive state like Texas deserves its own patent office
The ribbon for the Detroit satellite office of the U.S. Patent and Trademark Office already has been cut.

07/29/2010 - Alternative Dispute Resolution in Patent Cases
Like all litigation, most patent cases settle before trial. Given that, the effective use of alternative dispute resolution (ADR) is an important and often underemphasized component of patent case management.

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.

05/07/2010 - The IP Beacon, May 2010
A Haynes and Boone Newsletter highlighting current issues in Intellectual Property Law.

05/04/2010 - Patent Reexamination: Trends for the 2010s

01/15/2009 - A Brand New Game: Video Game Patent Litigation Moves Beyond Base Technologies
As gamers clamor for cutting edge innovation, game and console developers continue to conquer new creative frontiers and in the process spend significant sums to advance their next great creation... Legal deathmatches are being waged over patents covering everything from console architectures to controller schemes to virtual world content.

Growing Legal Issues In The Video Game Industry
When you start playing games on your Nintendo Wii, your Microsoft Xbox 360 or even your computer, you might not realize the thorny legal and business issues behind the amazing graphics and the gripping musical score. Digital gaming is one of the world’s fastest growth industries — up 26 percent last year, even with the economic slowdown — and it is no surprise that where there is money, there are lawsuits.

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

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

Taking a New Look at Patent Pools- Use and Abuse

11/12/2004 - "Tipping Your Hand" - Considerations Before Filing Rule 99 Submissions

Into the Mouth of the Dragon: Patent Protection and Enforcement in China

Avoiding the IP Darwin Award: IP Strategies for the Startup

Patents as Part of the Business Strategy

Strategic Patenting - a Background and Framework

Patenting Methods of Doing Business: Pros and Cons

Patents for Business Methods and E-commerce Ideas