Ranked in 1 Practice Areas
2

Band 2

Intellectual Property: Patent Prosecution

District of Columbia

3 Years Ranked

About

Provided by Richard Wells

USA

Practice Areas

Richard has over 20 years of experience practicing intellectual property law with a focus in the patent area, including due diligence, prosecution, counseling and litigation. Prior to rejoining the Firm, he served as intellectual property counsel for WesternGeco, a subsidiary of Schlumberger, in Oslo, Norway. In that role, Richard managed a global patent portfolio of several hundred patents and routinely advised on competitive decision making with an intellectual property angle. He has extensive patent litigation experience, both in asserting and defending against patent infringement claims, in federal district court and before the International Trade Commission. He also routinely appears before the Patent Trials and Appeals Board to assert or defend against inter partes review of patents. Richard's practice is also focused on patent due diligence, prosecution and counseling matters, particularly in the medical device, oilfield, heavy industry and software areas. In that regard, he regularly handles patent due diligence and valuation assessments of potential acquisition targets and investment opportunities. He further provides clearance evaluations on new products entering markets worldwide, including preparation of patent-related opinions. Richard also has vast experience handling the drafting and negotiation of technology related agreements, including joint development and licensing agreements.

Professional Memberships

Federal Circuit Bar Association - Member

State Bar of Texas - Member

United States Patent and Trademark Office - Member

Publications

Co-author, "Shift In China's Trade Secret Law Levels The Playing Field," Law 360, 15 July 2022

Author, "Avoiding the Pitfalls in Inter Partes Review in the United States," GRUR Int at 818, September 2015

Author, "Software Patents in the EU: A US Practitioner’s Perspective," e-commerce law & policy, vol. 6, issue 10, October 2004

Work Highlights

• Representing a streaming media company in defending against patent infringement claims in the District of New Jersey.

• Representing a streaming media company in defending against patent infringement claims in the Western District of Washington.

• Successfully asserted multiple patents for an oilfield services company in the Southern District of Texas - after a two week trial, obtained judgment of willful infringement of five patents and a permanent injunction.

• Successfully asserted inter partes review challenge resulting in a favorable settlement for a handset manufacturer.

• Successfully defended patent infringement claims brought against an electronics retailer at the International Trade Commission.

• Represented numerous entities in patent litigation actions in the Eastern and Western Districts of Texas.

• Manage global patent portfolios for numerous clients.

• Manage several patent due diligence matters for corporate transactions."

Expert in these Jurisdictions

USA

Languages Spoken

English

Industry Sector Expertise

Industrials, Manufacturing & Transportation

Intellectual Property

IP Disputes

IP Transactions

Patent Disputes

Patent Prosecution

Tax Optimized IP

Education

University of Houston Law Center

Juris Doctor, Cum Laude

2001

University of Texas at Austin

B.S. Mechanical Engineering

1998

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