David O. Taylor

David O. Taylor

Full-time faculty

Robert G. Storey Distinguished Faculty Fellow, Co-Director of the Tsai Center for Law, Science and Innovation and Associate Professor of Law

"The Supreme Court’s treatment of patent eligibility has created a moment not unlike 1952, when Congress amended the patent statute to overturn the Supreme Court’s so-called ‘invention’ requirement."

Biography

David O. Taylor is an Associate Professor at the SMU Dedman School of Law in Dallas, Texas. He also founded and currently serves as a Co-Director of the school’s Tsai Center for Law, Science and Innovation.
 
Professor Taylor earned his bachelor of science, magna cum laude, in mechanical engineering from Texas A&M University and his juris doctor, cum laude, from Harvard Law School. Prior to law school, Professor Taylor worked as an applications engineer at National Instruments Corporation in Austin, Texas. While in law school, he served as an extern for the U.S. Attorney’s Office in Boston, as a member of both the Harvard Journal of Law & Technology and the Harvard Journal of Law & Public Policy, and as President of the law school's Texas Club.
 
After graduating from law school, Professor Taylor clerked for the current Chief Judge of the U.S. Court of Appeals for the Federal Circuit, the Honorable Sharon Prost. Professor Taylor also worked for seven years at the law firm of Baker Botts LLP in its Dallas office. While at Baker Botts, Professor Taylor engaged in patent litigation in various district courts and at the U.S. Court of Appeals for the Federal Circuit. His litigation experience includes both bench and jury trials. A registered patent attorney, he also gained significant experience in the fields of intellectual property licensing and patent prosecution. During his time in practice he assisted with several advanced patent law courses at SMU Dedman School of Law, including Patent Litigation, Intellectual Property Licensing, and Patent Prosecution, and successfully represented clients in pro bono matters, including before the U.S. Court of Veterans Appeals.
 
At SMU, Professor Taylor teaches in the areas of contracts and patent law. His scholarship focuses on patent law, patent policy, patent litigation, and civil procedure. Professor Taylor has published articles in various journals, including the Connecticut Law ReviewGeorgia Law Review, New York University Law Review, and in an assortment of intellectual property specialty journals. His publications have been cited by the U.S. Court of Appeals for the Federal Circuit and various district courts.

A frequent speaker, he has made academic presentations at law schools across the United States, including Boston College, California Berkeley, Cardozo, Chicago-Kent, DePaul, Houston, Kansas, San Diego, Stanford, and Texas, and internationally in Chongqing, China; Ho Chi Minh City, Vietnam; and Taipei, Taiwan. He also is a regular speaker at various continuing legal education (CLE) events, including events sponsored by the Dallas Bar Association, the Eastern District of Texas Bar Association, the Center for American and International Law, and the Federalist Society for Law and Public Policy Studies.

In addition to these activities, Professor Taylor has organized numerous symposia and conferences, helped launch SMU’s Patent and Trademark Clinics, and helped draft the proposal to secure the funding to launch the Tsai Center for Law, Science and Innovation. He serves on several law school committees and is an advisor to both the SMU Science and Technology Law Review and The International Lawyer. Professor Taylor also serves as an advisor to the law school's chapter of the Federalist Society, which regularly hosts speakers addressing hot topics in the field of constitutional law. SMU granted Professor Taylor tenure in 2016.
 
Professor Taylor serves in various leadership positions. He is a member of the Advisory Council for the U.S. Court of Appeals for the Federal Circuit. He serves on the Executive Board of the Institute for Law and Technology at the Center for American and International Law. He also is currently the Reporter for the Patentable Subject Matter Task Force of the American Intellectual Property Law Association (AIPLA), and he serves as a member of the AIPLA's Amicus Committee. He is a Director of the Intellectual Property Law Section of the Dallas Bar Association (DBA), and he previously served as the Chair of the Computer Law Section of the DBA. In addition to these leadership activities, Professor Taylor has served as an expert and consultant in various intellectual property disputes.
 
He has received several accolades. Professor Taylor is the recipient of a Thomas Edison Innovation Fellowship from the Center for the Protection of Intellectual Property at the George Mason University Antonin Scalia Law School. He has also been named a founding Barrister of the Honorable Barbara M.G. Lynn American Inn of Court, an Honorary Barrister of the SMU Dedman School of Law Board of Advocates, and an Outstanding Graduate of the Irving Independent School District. In addition to these awards, he has received numerous research and course development grants.
 
Outside of his work at the law school and the field of intellectual property law, Professor Taylor has engaged in public service with diverse groups including Advocates for Community Transformation, Texas Scottish Rite Hospital for Children, and the Veterans Consortium Pro Bono Program.

Professor Taylor is married. Together with his wife Rachel, he enjoys spending time with his three children: Caroline, Emily, and Joshua.
 

Areas of Expertise

  • Patent Law
  • Patent Litigation
  • Federal Civil Procedure
  • Appellate Practice and Advocacy
  • Contract Law

Education

B.S. in Mechanical Engineering, magna cum laude, Texas A&M University
J.D., cum laude, Harvard Law School

Courses

Contracts
Patent Law
Patent Law and Institutional Choice
Selected Topics in Intellectual Property

 

Books

PATENT REMEDIES AND COMPLEX PRODUCTS:  TOWARD GLOBAL CONSENSUS (Cambridge University Press, forthcoming) (co-authored chapters on injunctions and royalties)
Full-Text:  SSRN | SMU Repository

PATENT LAW:  CASES AND MATERIALS (LawCarta, forthcoming) (authored chapter on utility) (edited by Mark D. Janis)
Full-Text:  SSRN | SMU Repository

Articles

Patent Eligibility and Investment, __ Cardozo Law Review __ (forthcoming)
Full-text:  SSRN | SMU Repository

Patent Reform, Then and Now, __ Michigan State Law Review __ (forthcoming)
Full-text:  SSRN | SMU Repository

Final Report of the Berkeley Center for Law & Technology Section 101 Workshop: Addressing Patent Eligibility Challenges, 31 Berkeley Technology Law Review (forthcoming)
Full-text:  SSRN | SMU Repository

Patents, Industrial Designs, and the Trans-Pacific Partnership, 20 SMU Science and Technology Law Review 165 (2017) (co-authored with Aaron P. Pirouznia)
Full-text:  SSRN | SMU Repository

Amending Patent Eligibility, 50 U.C. Davis Law Review 2149 (2017)
Full-text:  SSRN | SMU Repository

Confusing Patent Eligibility, 84 Tennessee Law Review 157 (2016)
Full-Text:  SSRN | SMU Repository

Legislative Responses to Patent Assertion Entities
, 23 Texas Intellectual Property Law Journal 311 (2015) (invited contribution)
Full-text:  SSRN | SMU Repository

Recent Developments in Intellectual Property Law - A 2014 Retrospective, 31 Santa Clara Computer and High Technology Law Journal 523 (2015) (co-authored with W. Keith Robinson)
Full-text:  SSRN | SMU Repository

Patent Stewardship, Choice of Law, and Weighing Competing Interests, 67 Florida Law Review Forum 13 (2015) (invited contribution)
Full-text:  SSRN | SMU Repository

Using Reasonable Royalties to Value Patented Technology
, 49 Georgia Law Review 79 (2014)
Full-text:  SSRN | SMU Repository

Formalism and Antiformalism in Patent Law Adjudication: Rules and Standards
, 46 Connecticut Law Review 415 (2013)
Full-text:  SSRN | SMU Repository

Formalism and Antiformalism in Patent Law Adjudication: Precedent and Policy, 66 SMU Law Review 633 (2013)
Full-text:  SSRN | SMU Repository

Patent Misjoinder, 88 NYU Law Review 652 (2013)
Full-text:  SSRN | SMU Repository

     Cited in MGT Gaming, Inc. v. WMS Gaming, Inc., 978 F.
          Supp. 2d 647, 662 (S.D. Miss. 2013) and Richmond v.
          Jiawei N.A. Inc.
, No. 13-1953, 2014 WL 326247
          (D. N.J. Jan. 29, 2014)

Clear But Unconvincing: The Federal Circuit’s Invalidity Standard, 21 Fordham Intellectual Property, Media & Entertainment Law Journal 293 (2011)
Full-text:  SSRN | SMU Repository

Patent Fraud, 83 Temple Law Review 49 (2010)
Full-text:  SSRN | SMU Repository

Wasting Resources: Reinventing the Scope of Waiver Resulting from the Advice-of-Counsel Defense to a Charge of Willful Patent Infringement
, 12 Texas Intellectual Property Law Journal 319 (2004)
Full-text:  SSRN | SMU Repository

     Cited in In re Echostar Communications Corporation,
          448 F.3d 1294, 1303 n.5 (Fed. Cir. 2006)
     Selected for republication in Intellectual Property
          Law Review
, 2005 ed.

Book Chapters

Chapter 1:  Reasonable Royalties, in PATENT REMEDIES AND COMPLEX PRODUCTS: 
TOWARD A GLOBAL CONSENSUS (Cambridge University Press, forthcoming) (co-authored)
Full-text:  SSRN | SMU Repository

Injunctive Relief in PATENT REMEDIES AND COMPLEX PRODUCTION:
TOWARD A GLOBAL CONSENSUS (Cambridge University Press, forthcoming) (co-author)
Full-text:  SSRN | SMU Repository

Utility in PATENT LAW: CASES AND MATERIALS (Mark D. Janis, ed., LawCarta, forthcoming) 
Full-text:  SSRN | SMU Repository

 

Other Publications

Guest Post on Patent Eligibility and Investment:  A Survey
Patently-O Blog (2019)
- Available at https://patentlyo.com/patent/2019/03/patent-eligibility-investment.html

The Supreme Court's Revolution in Patent Eligibility Law:  Alternative Protections for Biotechnology
Nature Biotechnology (March 2019) (peer reviewed)
- Available at https://rdcu.be/bpqad

The Need for Legislative Reform:  The Berkeley Section 101 Workshop
Patently-O Blog (2017) (co-authored with J. Lefstin and P. Menell)
- Available at https://patentlyo.com/patent/2017/10/legislative-berkeley-workshop.html

David Taylor on Patent Misjoinder
Written Description Patent & IP Blog (2012)
 
Will High Court Change Burden of Proving Invalidity?
IP Law 360 (2008)

     Cited in Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d
          1316, 1329 n.8 (Fed. Cir. 2008)
 

Presentations

CONGRESSIONAL TESTIMONY

The State of Patent Eligibility in America:  Testimony of David O. Taylor before the United States Senate Judiciary Committee, Subcommittee on Intellectual Property
Full-text: SSRN | SMU Repository

 
 
ACADEMIC PRESENTATIONS

Morality and Patent Eligibility
Presenter, Intellectual Property Scholars Conference
University of California, Berkeley, School of Law
Berkeley, California, August 2018

Patents and Morality
Presenter, CPIP Works in Progress Conference,
Center for the Protection of Intellectual Property
George Mason University Antonin Scalia Law School
Beaver Creek, Colorado, July 2018

Patent Eligibility and Investment
Presenter, Patent Conference 8 (PatCon8)
University of San Diego School of Law
San Diego, California, March 2018

International Patent Remedies for
Complex Products: Reasonable Royalties
Presenter, Patent Conference 8 (PatCon8)
University of San Diego School of Law
San Diego, California, March 2018

The U.S. Supreme Court’s Revolution in Patent Eligibility Law: Alternative Protections for Biotechnology
Presenter, International Conference on New Paradigms of Law
National Chengchi University
Taipei, Taiwan, December 2017
 
The Impact of the Supreme Court’s Eligibility Decisions on Investment in Research and Development
Presenter, Intellectual Property Scholars Conference
Yeshiva University Cardozo School of Law
New York, New York, August 2017
 
Confronting the Patentable Subject Matter Problem
Panelist, Fourth Annual CPIP Summer Institute
Center for the Protection of Intellectual Property
George Mason University Antonin Scalia Law School
Beaver Creek, Colorado, July 2017
 
Intellectual Property and Trade: The Role of Patents
Presenter, Symposium on Intellectual Property and Trade: Law and Practical Experiences
Vietnamese National University – University of Economics and Law
Ho Chi Minh City, Vietnam, December 2016
 
Patents and Improved Healthcare: Incentive or Obstacle?
Moderator of Panel Discussion, Symposium on Emerging Intellectual Property Issues: Intellectual Property and Social Justice
SMU Dedman School of Law
Dallas, Texas, September 2016

The Impact of the Supreme Court’s Eligibility Decisions on Investment in Research and Development
Presenter, Intellectual Property Scholars Conference
Stanford Law School
Palo Alto, California, August 2016
 
Comments on Dmitri Karshtedt’s “Photocopies, Patents, and Knowledge Transfer: The Uneasy Case of Justice Breyer’s Patentable Subject Matter Jurisprudence” 
Commentator, Patent Conference 6 (PatCon6), Boston College Law School, Newton, Massachusetts, April 2016
 
Comments on Norman Siebrasse’s “Bottom-Up and Top-Down Approaches to FRAND Royalty Determinations” 
Commentator, Patent Conference 6 (PatCon6), Boston College Law School, Newton, Massachusetts, April 2016
                
Amending Patent Eligibility
Presenter, Intellectual Property Scholars Conference
DePaul University College of Law
Chicago, Illinois, August 2015
 
Amending Patent Eligibility
Presenter, Patent Conference 5 (PatCon5)
University of Kansas School of Law
Lawrence, Kansas, April 2015
 
Reforming Patent Doctrines: The Supreme Court and Its Role in the Process
Moderator of Panel Discussion, Symposium on Emerging Intellectual Property Issues: The Supreme Court and Intellectual Property Law
SMU Dedman School of Law
Dallas, Texas, October 2014
 
Patent Litigation Procedure After the America Invents Act
Presenter, Intellectual Property Scholars Conference
University of California, Berkeley, School of Law
Berkeley, California, August 2014
 
Using Reasonable Royalties to Value Patented Technology
Presenter, Patent Conference 4 (PatCon4)
University of San Diego School of Law
San Diego, California, April 2014
 
Formalism and Antiformalism in Patent Law Adjudication:
Precedent and Policy

Presenter, Intellectual Property Scholars Conference
Yeshiva University Cardozo School of Law
New York, New York, August 2013
 
Formalism and Antiformalism in Patent Law Adjudication:
Rules and Standards

Presenter, Patent Conference 3 (PatCon3)
Illinois Institute of Technology Chicago-Kent College of Law
Chicago, Illinois, April 2013
 
Institutional Roles: The Federal Circuit and the Supreme Court
Moderator of Panel Discussion, Symposium on Emerging Intellectual Property Issues: The Federal Circuit and Patent Law
SMU Dedman School of Law
Dallas, Texas, March 2013
 
Contentions and Fact Discovery
Presenter, Conference on Sino-U.S. Patent Litigation Procedures
SMU Dedman School of Law and Southwest University of Political Science and Law
Chongqing, China, December 2012
 
Expert Witnesses and Expert Discovery
Presenter, Conference on Sino-U.S. Patent Litigation Procedures
SMU Dedman School of Law and Southwest University of Political Science and Law
Chongqing, China, December 2012
 
The Federal Circuit: Standing in the Breach
Presenter, Intellectual Property Scholars Conference
Stanford Law School
Palo Alto, California, August 2012
 
Patent Misjoinder
Presenter, Works-in-Progress Intellectual Property Colloquium
University of Houston Law Center
Houston, Texas, February 2012
    
Misjoinder – The Next Battleground
Presenter, Intellectual Property Scholars Conference
DePaul University College of Law
Chicago, Illinois, August 2011

 

Media

Other