Richard Black is a registered patent attorney. His intellectual property practice encompasses all aspects of U.S. and international patent, trademark and copyright preparation, prosecution, litigation, licensing and counseling in diverse fields of technology, including telecommunications, mobile devices, medical devices, robotics, infrared sensors, electronic commerce, software, healthcare, civil engineering, tunnel-boring machines, drilling technology, green energy, and construction. Richard has represented clients of all sizes, from individual inventors and start-up companies to Fortune 100 companies in hundreds of intellectual property related transactions and disputes. With over twenty three years of experience, Richard is knowledgeable in all aspects of USPTO proceedings, especially post-grant proceedings including inter partes review, and covered business method post-grant review, ex parte and inter partes reexaminations, typically concurrently with complex litigation. He is highly skilled, creative and exceptionally effective in the strategic and tactical use of post-grant proceedings.
For example, in ABB Inc. v. ROY-G-BIV CORP, Richard was lead counsel on behalf of the patentee in the first ever Inter Partes Review trial to result in allowance of all challenged claims. Richard led a team from Foster Pepper PLLC, Boies, Schiller & Flexner LLP and Heim, Payne & Chorush that represented ROY-G-BIV Corporation in an Inter Partes Review proceeding involving three patents related to motion control software. ABB sought to invalidate the patents on multiple grounds. 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 case was the first PTAB trial to result in affirmance of all challenged claims of any patent.
Richard is also experienced in using patent post-grant procedures as a means for correcting latent defects in issued patents to prepare them for superior enforcement. In addition to his litigation and post-grant practice, Richard counsels a variety of international and domestic clients on U.S. intellectual property law, including providing clearance, enforceability, infringement, non-infringement, and validity opinions. His licensing experience includes university/industry collaboration, patent licensing programs, and joint ventures.
Richard loves to work with entrepreneurs and innovators. His creativity and comprehensive approach helps ensure his clients’ IP will enhance company valuation under due diligence audits in preparation for public and private capital raising transactions, corporate reorganizations and restructurings, mergers and acquisitions, and the like. He is sought after to provide strategic advice and counsel to both public and private companies and private investors. His extensive experience also encompasses all intellectual property aspects of a broad range of transactions, including, but not limited to: mergers and acquisitions; venture capital and private equity investments; recapitalizations and distressed situations; joint ventures and strategic alliances. Richard enjoys assisting clients in establishing intellectual property programs tailored to their specific needs. He is intimately familiar with working with in-house corporate counsel and sensitive to a client’s need to stretch their IP dollars as far as possible.