David McCombs is a partner with Haynes Boone, LLP, where he is primary counsel for many leading corporations in inter partes review (IPR) and is regularly identified as one of the most active attorneys appearing before the Patent Trial and Appeal Board (PTAB). His clients benefit from his 35 years of practice, which include appellate argument, patent litigation, and portfolio development.
Nationally ranked, David is recognized for having a “strong Federal Circuit patent litigation practice and prominent PTAB expertise” (Chambers Global, 2019, Chambers and Partners). Chambers Global 2020, Chambers and Partners, describes him as “one of the best, not just of patent practitioners but practitioners generally” and “extremely organized, responsive, thoughtful and calm.”
David’s clients appreciate that he is an “ultra-organized, extremely responsive and sophisticated counselor who is a true pleasure to partner with” and a “zealous but very professional advocate” (IAM Patent 1000, 2020, Law Business Research). David has also been cited as “a leading practitioner when it comes to the thoughtful and strategic analysis of patents in the marketplace and critical opinion work” (IAM Patent 1000, 2019, Law Business Research). He is AV® Peer Review Rated Preeminent by Martindale-Hubbell® Law Directory.
David’s work for clients is enhanced by his experience as in-house patent counsel prior to joining the firm in 1989. He worked for a diversified technology company with a long history of developing breakthrough chemical/material science, diagnostic, robotics, and motion management technologies.
David is an active educator, writer, and speaker on topics related to patent law and intellectual property litigation. He is the co-author of “Intellectual Property Law,” published annually by Southern Methodist University’s (SMU’s) renowned SMU Law Review (2010-present) and is an adjunct professor at SMU’s Dedman School of Law. He also serves on the conference planning committees and faculty for the Annual Silicon Valley Advanced Patent Law Institute (2001-present), and the Advanced Patent Law Institute at the U.S. Patent and Trademark Office (2006-present).
Once an inter partes review (IPR) has been instituted at the Patent Trial and Appeal Board (PTAB), it will generally proceed to final written decision, unless the parties settle their dispute and agree to terminate the IPR. As a prerequisite to termination, the PTAB requires the parties to file their settlement agreement, as well as any collateral agreements, with the PTAB before an IPR will be terminated. Interestingly, 35 U.S.C. § 317(b) also provides that filed settlement agreements “shall be made available only to Federal government agencies on written request, or to any person on a showing of good cause.” This language has, understandably, caused some concern for parties about filing their settlement agreements with the PTAB. As a general matter, settlement agreements are highly confidential and could be harmful to either or both parties to the IPR if disclosed. Yet the language of Section 317(b) makes it at least facially possible for anyone to request access to these agreements without defining the circumstances under which the agreements could be disclosed.
Almost anyone can, by statute, request an inter partes review (IPR) of an issued patent, but may limit their right to do so contractually, such as through licensing agreements or non-disclosure agreements (NDAs). These agreements may contain clauses that limit the forum in which any dispute between the parties can be litigated. The Patent Trial and Appeal Board (PTAB) itself has consistently declined to enforce such forum selection clauses, finding that it lacks authority to enforce contracts between the parties, and, in any case, its jurisdiction is statutory and not limited by private agreements between the parties. However, in Nippon Shinyaku Co. v. Sarepta Therapeutics, Inc., the U.S. Court of Appeals for the Federal Circuit recently held that a petitioner was barred from bringing an IPR as a result of a contractual agreement with the patent owner.
Incoming U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal’s answers to Senators’ written questions following her recent confirmation hearing provide reasons for hope to those concerned about the current state of the patent system. Vidal’s responses emphasize three priorities: strengthening patents and trademarks, ensuring that U.S. intellectual property is protected abroad, and expanding the reach of the patent system to underrepresented groups. This article focuses on five important issues that any new USPTO Director will need to address—and looks for clues as to how she may approach them.
The past few years saw a meteoric rise of artificial intelligence (AI) products, services, and applications. AI has evolved from merely a buzzword or a cool new idea to a substantively used tool in a variety of applications, including autonomous driving, natural language processing, drug development, finance and cybersecurity among others. Companies, universities, and inventors world-wide noted the importance of AI and began seeking to patent various aspects of AI technology. Until 2018, these patent applications identified a human inventor who invented a particular aspect of the AI technology. Then, Dr. Stephen Thaler filed a patent application for a food container and a light emitting device that identified an AI, known as DABUS, as an inventor.