Rich Black, a registered patent attorney who has practiced for more than 24 years, has experience with virtually all aspects of U.S. and international patent, trademark and copyright preparation, prosecution, litigation, licensing and counseling. He 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.
Recently, 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 three patents related to motion control software 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 both companies and investors of all sizes and in diverse fields such as mobile devices, medical devices, robotics, infrared sensors, electronic commerce, software, health care, civil engineering, construction, tunnel-boring machines, drilling technology, alternative energy and telecommunications.
Rich is experienced in using post-grant procedures as a means for correcting latent defects in issued patents to prepare them for superior enforcement. Additionally, he regularly counsels clients on intellectual property issues related to mergers and acquisitions, venture capital and private equity financing, recapitalization and distressed situations and joint ventures and strategic alliances.
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.
ROYGBIV 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 settlement of a case.
Verathon Medical (Canada) ULC v. Aircraft Medical Ltd., Court of Session, Edinburgh, Scotland (2007-2011)
Verathon Medical (Canada) ULC, European Patent Office (EPO), The Hague, Netherlands (2006-2011)
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., 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., World Intellectual Property Organization, Geneva (2007)
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)
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, 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)
Foster Pepper Client Briefing, Seattle, WA, April 2013
Washington Super Lawyers list, 2008, 2010-2017
J.D., University of Chicago Law School, 1991
B.S. and B.A., University of Washington (with honors), 1988
U.S. Federal Court
- Eastern District of Washington, 1992
- Western District of Washington, 1992
Washington State Superior Court
Washington State Court of Appeals
Washington State Supreme Court
9th District Court of Appeals
U.S. Patent and Trademark Office
Foster Pepper PLLC, Member, 2011-Present
Black Lowe & Graham, Member, 1999-2011
Christensen, O’Connor, Johnson & Kindness, PLLC, Associate, 1996-1999
Oles, Morrison & Rinker, Associate, 1991-1996
Baker & McKenzie, Litigation Associate Law Clerk, 1989, 1991
McDermott, Will & Emery, Litigation Associate Law Clerk, 1990
Seattle Business Magazine, April 2012