Richard Wells
USA Guide 2023
Band 2 : Intellectual Property: Patent Prosecution
Email address
[email protected]Contact number
+1 202 835 6155Share profile
Band 2
About
Provided by Richard Wells
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