Practice Expertise

  • Intellectual Property
  • Patent Office Trials
  • Patent Prosecution and Counseling
  • Patents

Areas of Practice

  • Intellectual Property
  • Patent Office Trials
  • Patent Prosecution and Counseling
  • Patents

Profile

David O'Dell, Chair of the Patent Trials and Counseling Practice Group, has more than 20 years of experience as a patent lawyer, including participating in inter partes review (IPRs), negotiating patent licenses, and preparing and prosecuting patent applications. David has filed more than 100 petitions for IPR, which makes him one of the most prolific attorneys representing IPR petitioners before the United States Patent Trials and Appeals Board (PTAB). David’s technical areas of experience include semiconductor processing, circuit design, computer software and hardware, and telecommunications.

Prior to joining Haynes and Boone, David was a professional engineer and worked for several years in the electronics industry as a computer memory designer, semiconductor product engineer, and computer programmer.

Bar Admissions
Texas; U.S. Patent and Trademark Office

Education
J.D. Southern Methodist University, 1995
Electrical Engineering, The University of Texas, 1987

Areas of Practice

  • Intellectual Property
  • Patent Office Trials
  • Patent Prosecution and Counseling
  • Patents

Professional Career

Significant Accomplishments
Representing clients in inter partes reviews (IPRs), including hearings before the Patent Trial and Appeal Board (PTAB) at the United States Patent and Trademark Office (USPTO).

Drafting and prosecuting United States patent applications.

Developing intellectual property portfolios for both start-up and later stage technology companies.

Implementing competitor analysis and evaluation, and identifying and exploiting patent "white space" in the competitive landscape.

Representing and defending companies in the assertion of U.S. and foreign patents.

Counseling regarding patent validity and infringement opinions and the design and implementation of non-infringing alternatives to patented technology.

Working with trial lawyers in complex patent infringement suits.



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