© 2013 The Texas Lawbook.
By Brooks Igo
Staff Writer for The Texas Lawbook
David O’Brien brings more than 20 years of experience in software, semiconductor and computer electronics technologies to Haynes and Boone’s IP practice in Austin, where he will be a partner. Prior to joining Haynes and Boone, O’Brien spent 15 years at a firm he founded, Zagorin O’Brien Graham.
The 1995 graduate of the University of Texas School of Law focuses his practice on IP portfolio development, reexamination and post-issuance proceedings and defensive matters and strategic patent counseling.
“We are particularly excited about the capabilities David adds to our patent reexamination and PTAB trials practice,” David McCombs, chair of the firm’s technology practice, said in a statement.
O’Brien says one of the most formative moments of his career came early when he fought on several battlefields in what became known as the Microprocessor Patent Wars between Intel and other market challengers, most notably Advanced Micro Devices.
“That involvement gave me a long term strategic perspective on patent-denominated technology competition well beyond the ordinary day-to-day focus on a particular patent procurement, license negotiation, acquisition or litigation issue,” he said.
In his current practice, O’Brien highlights two hot trends/issues.
The first, he says, is savvy clients are mastering use of post issuance proceedings before the Patent Trial and Appeal Board as “adjunct to, and in some cases, as an alternative to, protracted district court litigation.”
The second involves the America Invents Act (AIA).
“Despite a flurry of activity surrounding first-inventor-to-file provisions of AIA, many innovators have not fully operationalized the new AIA prior art provisions in their patent procurement processes,” he said.
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