biography

Rich is a registered patent attorney who has practiced for more than 30 years and has experience with virtually all aspects of U.S. and international patent, trademark and copyright preparation, prosecution, litigation, portfolio design and enforcement, licensing and counseling.

Rich has extensive experience with USPTO proceedings, including post-grant proceedings and inter partes review, as well as covered business method post-grant review, ex parte and inter partes reexaminations.

Rich served as lead counsel on behalf of the patentee in ABB Inc. v. ROY-G-BIV Corp., the first ever Inter Partes Review trials to result in confirmation of all challenged claims. The inter partes review involved motion control software patents that ABB sought to invalidate on multiple grounds. The Patent Trial and Appeal Board held that ABB failed to prove any of the challenged claims in any of the patents were unpatentable.

He has represented companies and investors of all sizes and in diverse fields such as diagnostic ultrasound, mobile devices, medical devices, robotics, infrared sensors, electronic commerce, software, health care, civil engineering, construction, tunnel-bori...

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  • Representative Transactions
    • Virtual General & IP Counsel for startup emerging client with revolutionary propulsion technology.
    • Confidential Arbitration. Discovered and designed claim and enforcement strategy and orchestrated team for patent licensing dispute resulting in substantial eight figure recovery for client for pioneering innovation in aviation industry.
    • ABB Inc. v. ROY-G-BIV Corp.
      • Served as lead counsel in representation of ROY-G-BIV Corp. in Inter Partes Review proceeding involving three patents related to motion control software that ABB sought to invalidate. In all three trials, the Patent Trial and Appeal Board held that ABB failed to prove that any of the challenged claims in any of the patents were unpatentable. This matter, at the time of these decisions, was the first ever Inter Partes Review trial to result in confirmation and survival of all challenged claims.
    • ROY-G-BIV v. GE Fanuc et al.
      • ROY-G-BIV v. GE Fanuc et al., No. 2:07-CV-418 (Eastern District of Texas). Through creative and unprecedented approach to Inter Partes Re-examination, successfully defended a client’s patent portfolio and thereby assisted in the strategy and favorable substantial settlement from multiple large defendants.
    • Verathon Medical (Canada) ULC v. Aircraft Medical Ltd.
      • Verathon Medical (Canada) ULC v. Aircraft Medical Ltd., Court of Session, Edinburgh, Scotland (2007-2011)
    • Verathon Medical (Canada) ULC
      • Verathon Medical (Canada) ULC, European Patent Office (EPO), The Hague, Netherlands (2006-2011)
    • Verathon Inc. (Verathon Medical (Canada) ULC
      • Verathon Inc. (Verathon Medical (Canada) ULC), US Patent & Trademark Office (USPTO), Washington, DC (2006-pending)
    • Verathon Inc. (Verathon Medical (Canada) ULC) v. Aircraft Medical Ltd.
      • Verathon Inc. (Verathon Medical (Canada) ULC) v. Aircraft Medical Ltd., N.D. Ga. (2006 – pending). Patent infringement (domestic and international jurisdictions); related EPO Opposition; related USPTO Inter Partes Reexamination.
    • Video Only, Inc. v. JSSI Group, Domain Name Systems, Inc.
      • Video Only, Inc. v. JSSI Group, Domain Name Systems, Inc., World Intellectual Property Organization, Geneva (2007)
    • Video Only, Inc. v. JSSI Group, Domain Name Systems, Inc.
      • Video Only, Inc. v. JSSI Group, Domain Name Systems, Inc., W.D. Wash. (2006-2007). Uniform Domain Name Dispute Resolution arbitration; related Anti-Cyber Squatting Consumer Protection Act (domain name), trademark infringement, etc.
    • HHI v. Costco, W.D. Wash. (2004-2007)
      • HHI v. Costco, W.D. Wash. (2004-2007). Representing Costco (Lasnik, Chief Judge) Aff’d, Court of Appeals, Federal Circuit (Newman, Circuit Judge, et. al.) Patent infringement.
    • Hockerson-Halberstadt, Inc. v. Costco Wholesale Company
      • Hockerson-Halberstadt, Inc. v. Costco Wholesale Company, E.D. Louisiana (1998-2000). Represented Costco in dismissing case for lack of personal jurisdiction as reported at Hockerson-Halberstadt, Inc. v. Costco, 2000 U.S. Dist. LEXIS 5064 (E.D. La. 2000).
  • Presentations & Teaching Experience
    • “Fundamental Changes in U.S. Patent Law: Are You on Board?” Foster Pepper Client Briefing Speaking Engagement, Seattle, WA, April 2013

 

 

Seattle

Richard Black

Partner

[email protected]

+1.206.353.3302

Credentials

Admissions

Washington State

Supreme Court

Federal Circuit

U.S. Court of Appeals for the 9th Circuit

U.S. District Court, Western District of Washington

U.S. District Court, Eastern District of Washington

U.S. Patent and Trademark Office

Patent Trial and Appeal Board

Education

University of Chicago, JD, 1991

University of Washington, BS Building Construction, BA Economics, (honors) 1988

Prior Law Firm Experience

Foster Garvey

Christensen O’Connor Johnson & Kindness

Black, Lowe & Graham

Oles Morrison

Baker McKenzie

Practice Areas