David McCombs Image

David McCombs


Haynes Boone, LLP

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).

Recent Articles by David McCombs

Takeaways from PTAB’s Precedential Decision on Prior Art Analysis for Post-AIA Patents

In March 2023, the Patent Trial and Appeal Board (Board) addressed in Penumbra, Inc. v. Rapidpulse, Inc.,  IPR2021-01466, Paper 34 (Mar. 10, 2023), a key issue in inter partes reviews: how to establish a reference patent as prior art based on the filing date of an earlier-filed application, such as a provisional. The Board held that the requirements of the Federal Circuit’s decision in Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015), do not apply for post-America Invents Act (AIA) patents. Penumbra, IPR2021-01466, Paper 34 at 29-35. On November 15, 2023, U.S Patent and Trademark Office (USPTO) Director Kathi Vidal designated the Penumbra decision precedential. This article explores the evolution of the law on this issue.

Terminating an IPR: File Your Settlement Agreement Without Concern—At Least For Now

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.

Past Events with David McCombs

PTAB Masters™ 2023

Held on 1/31/23 - 2/01/23

PTAB Masters™ 2022

January 24–27, 2022

IPWatchdog Virtual PTAB Masters™ 2022

January 24, 2022 @ 10:30 am - January 27, 2022 @ 4:30 pm EST