Haynes Boone
Firm overview:
Haynes Boone’s full-service patent practice covers the entire life cycle of patents, from prosecution to defence and enforcement.
Over the past five years, the firm has submitted more than 23,000 US patent applications as well as thousands of foreign filings, across a diverse range of technologies. Haynes Boone is particularly noted for its patent prosecution work in the high-tech sector and is ranked among the most active firms in the US overall.
With contentious matters arise, the firm is well equipped for trials over complex IP across the complete spectrum of dispute resolution forums. Its attorneys have worked as past examiners at the US Patent and Trademark Office (USPTO), and as engineers or in-house counsel with leading technology companies.
Team overview:
Chair of the IP department Andrew Lowes is well versed in IP law across various technical fields with a particular focus on medical devices, computer software and hardware, telecoms, semiconductors and mechanical equipment. He advises several medical device companies on product clearance, IP transactions and other related matters. Lowes also has extensive experience in post-grant proceedings before the USPTO.
Partner David McCombs is highly active before the Patent Trial and Appeal Board (PTAB) and has almost four decades of experience in IP. He has acted as lead counsel for numerous Fortune 100 companies in inter partesreview (IPR) proceedings before the PTAB and represented the world’s largest semiconductor foundry in patent-related matters.
Key matters:
Prosecution:
● The team is advising Taiwan Semiconductor Manufacturing Company (TSMC) on patent prosecution, licensing, IPRs before the PTAB and patent litigation. David McCombs handles important licensing negotiations and IP disputes for the company. David O’Dell leads the patent prosecution work, with the team preparing and filing over 400 patent applications for the client in 2024.
● Haynes Boone serves as primary counsel for patent prosecution for Nabors Industries, which owns and operates the world’s largest land-based drilling rig fleet. An IP diligence team of Jeffrey Wolfson and Evert Tu supports the corporate team to negotiate and draft key IP-related documentation for the client in M&A transactions.
● The firm handles patent preparation and prosecution for Boeing, including coordinating patent strategy with the client’s legal staff and engineering personnel, and advising on technical features and portfolio strategy.
Litigation:
● Innovations In Memory v International Business Machines Corporation (IBM)
Haynes Boone represents multinational tech giant IBM in district court litigation against non-practising entity Innovations In Memory, which is accusing IBM’s memory storage systems of infringing six patents. The firm has successfully represented IBM in the past. Stephanie Sivinski, McCombs and O’Dell lead on the matter.
● MPL Brands NV v Buzzballz, US District Court for the Northern District of California, 2024
The firm advises BuzzBallz, which sells ready-to-drink cocktails in ball-shaped plastic containers, on patent portfolio strategy and represents the company in litigation. This includes advising BuzzBallz on a suit filed in March 2024 by MPL Brands in California for declaratory judgment for non-infringement of a patent and in a case against Beverage Ranch, which the client sued for patent infringement over ‘SlamZees’ beverages in round plastic containers.
● Conformis v DePuy Synthes
Haynes Boone represents medical device designer and manufacturer Conformis in this patent litigation case relating to patient-specific instruments and implants as part of enforcing the client’s patent portfolio. Russell Emerson leads the team.
Clients:
Non-Contentious: Boeing, Cisco Systems, Nabors Industries, Nice Systems, PayPal, Peloton Interactive, Qualcomm, Strides Pharma, Taiwan Semiconductor Manufacturing Company (TSMC).
Contentious: BuzzBallz, Conformis, IBM, Instacart, Orthofix, Western Digital, X.
