Richard S. Meyer
For more than twenty-nine years, Mr. Meyer has provided strategic, competitive advice to a diverse range of clients from start-ups to emerging growth to universities and research organizations to Fortune 500 companies and investors in all aspects of procurement, counseling and enforcement of intellectual property (“IP”) rights. His work has included strategic development of patent portfolios, technology transactions and related counseling including joint ventures, IP due diligence, validity and product clearance/right to use opinions, patent enforcement programs, license agreements, negotiations, and high stakes patent & trademark litigation, including post-grant proceedings at the US Patent & Trademark Office. Mr. Meyer represented the first patent owner to successfully defend all challenged claims in an inter partes review. He has also advised clients involved in international enforcement proceedings in Germany, The Hague and the EPO.
Mr. Meyer's experience spans numerous industries and technologies, including, air and water pollution control, automotive, biotechnology including cell sorting and separation, diagnostics and drug development, building construction, chemical compounds and processes, computer hardware and software, consumer and juvenile products, electronics, e-Commerce/Internet, life sciences, medical devices, including dental, cardiovascular, spine and surgical devices, and microfluidics, pharmaceuticals (Hatch-Waxman ANDA), and telecommunications. He has particular expertise in high profile patent disputes in the biotechnology, computer, medical devices, pharmaceutical, software, and telecommunications fields. A detailed list of specific technologies with which Mr. Meyer has significant experience can be found here.
Mr. Meyer helps emerging growth companies bring important medical technologies to market. He currently serves as Chief IP Counsel to ImmunArray, Ltd, a personalized medicine based company focused in early diagnostic and therapy monitoring technologies based upon an individual’s antibody repertoire to diagnose auto-immune diseases, such as lupus, inflammatory conditions, such a traumatic brain injury, and other diseases.
Before co-founding Capital IP, Mr. Meyer helped start and develop IP practices at a number of prestigious law firms, including Morgan Lewis, Townsend & Townsend, and Boies Schiller. A representative sample of his litigated matters appears below:
- AVM Technologies, LLC v. Intel Corp. Represented patent owner AVM in infringement action concerning dynamic logic circuits used in Intel microprocessors. (D. Del.)
- United Therapeutics Corp. v. Sandoz, Inc. Represented United Therapeutics in successful Hatch-Waxman patent action preventing Sandoz from entering market for Remodulin® (treprostinil injection). (D.N.J.)
- Roy-G-Biv Corp. v. Honeywell, ABB & Siemens. Represented Roy-G-Biv in patent actions in court seeking to prevent Defendants from infringing five software patents relating to motion control and in IPR proceedings at PTO. Cases settled after PTAB upheld all patent claims in IPR for first time. (E.D. Tex.)
- Cephalon, et. al., v. Mylan Pharmaceuticals. Represented Mylan as lead trial counsel in a Hatch-Waxman patent action on Nuvigil® (armodafinil). (D. Del.)
- The CBORD Group, Inc. v. JSA Technologies, Inc. Lead trial counsel for JSA Technologies in commercial litigation dispute arising from software co-development agreement. (New York State Court)
- Balthaser Online Inc. v. Network Solutions, LLC., et. al. Lead trial counsel for Network Solutions in multi-defendant suit involving website design software. (obtained early favorable settlement for lead defendant) (E.D. Tex.)
- JSA Technologies, Inc. v. Informed Decision Corp. Lead trial counsel for JSA Technologies in software patent dispute, which resulted in favorable settlement for patentee. (D. Del.)
- Total Gard Corp. v. Dentek Oral Care, Inc. Lead trial counsel for patentee Total Gard in multipatent dispute regarding night guard technology, which resulted in favorable settlement for patentee. (D. N.J.)
- Verizon Services Corp. et al. v. Vonage Holdings Corp. et al. Lead patent attorney on two of three Verizon VOIP patents found valid and infringed ($117.5 million settlement after $58 million verdict obtained). (E.D. Va.)
- Abbott Labs. v. Mylan Pharmaceuticals. Lead patent attorney for Mylan in ANDA patent action on divalproex sodium. (N.D. Ill.)
- Sun Coast v. CCL Products. Lead appellate counsel for CCL. Successfully argued appeal reversing remanding summary judgment ruling against CCL. (Fed. Cir.)
- Saso Golf v. Callaway Golf. Lead patent trial counsel for Callaway Golf in successful defense against NPE who asserted claim against Callaway Golf's metal woods. (N.D. Ill.)
- C. Johnson v. Illinois Tool Works. Lead patent trial counsel in successful defense of patent on reclosable plastic bags. (W.D. Wisc.)
- Cordis Corp. v. Medtronic AVE, et al. Lead patent trial counsel for Medtronic AVE in high profile stent wars. Defeated preliminary injunction motion, obtained partial SJ of non-infringement, and overturned jury verdict on JMOL. Defense Win of the Month, April 2002, National Law Journal. (D. Del.)
- Medtronic AVE v. Boston Scientific. Lead patent trial counsel for Medtronic AVE. Successfully argued Markman motion that led to settlement before trial in case related to coronary catheters.
- DiscoVision Associates v. Disc Manufacturing Inc. Represented DiscoVision in successful assertion of compact disc patent. Obtained SJ of infringement on seven of eight claim elements.
- Dow Chemical Co. v. AAB Building System. Represented AAB in trademark opposition. (TTAB)
- Lemelson v. Apple Computer, Eastman Kodak and Unisys. Represented Kodak in defense of patent infringement action relating to video recording and digital imaging technologies, including scanners, cameras, OCR systems and computers. (N.D. Calif.)
- Wang Labs. v. Mitsubishi Electronics. Represented Wang in various cases including ITC and District Court Actions memory modules for PCs (SIMM'S). Responsible for defense of equitable and industry estoppel claims based upon alleged violation of JEDEC standards.
- Volvo v. Dr. Volvo. Represented Volvo in successful defense of Volvo's famous mark against independent dealer. (C.D. Calif.)
- IBM v. Rodime. Represented Rodime in successful re-examination and assertion of 3.5 patents hard disk drive. (D.D.C.)
- Georgetown University Law Center (J.D., cum laude, 1987) (evening division)
- Cooper Union School of Engineering, New York, NY (B.E. 1982)
BAR AND COURT ADMISSIONS
New York, District of Columbia, Virginia, U.S. District Courts for the District of Columbia, Eastern District of Texas, and Eastern District of Virginia, U.S. Court of Appeals for the Federal Circuit, U.S. Patent and Trademark Office.
SELECT PROFESSIONAL AWARDS AND ASSOCIATIONS
- Washington DC Super Lawyers (2018, 2017, 2016, 2015, 2014, 2008 and 2007)
- Recognized Chambers USA 2015, Intellectual Property Litigation
- Legal Media Group (LMG) Life Sciences Star (2015, 2014)
- Virginia Super Lawyers (2007, 2006)
- Former Master, Giles S. Rich American Inn of Court
SELECT PUBLICATIONS/SPEAKING ENGAGEMENTS
- Moderator, “Mastering the Intricacies of USPTO Practice Post-Patent Reform,” ACI Advanced Summit on Medical Device Patents (2012)
- Speaker, “The Future of Inequitable Conduct After Therasense Inc. (Abbott) v. Becton Dickinson, et.al,” ACI Advanced Summit on Medical Device Patents (2012)
- Moderator, “The Patent Reform Act of 2011 – The Growing Tension Between Protecting Invention and Competing in the Global Marketplace,” AdvaMed 2011 Annual Conference (2011)
- Moderator, “Changing Patent Litigation Landscape,” ADVAMED Annual 2010 Meeting, October 19-20, 2010 (Washington, D.C.)
- Speaker, “Hot Topics in Patent Litigation,” American Conference Institute, Software Patents, May 24 -25, 2006 (San Francisco, CA).
- Speaker, “What Festo and Its Progeny Mean for Litigation Today … and Tomorrow,” American Conference Institute, The 8th National Forum on Litigating Patent Disputes, February 19-20, 2003 (Wash., D.C.).
- “Respond or Regret: Reasons for Allowance May Prove Damaging If Not Responded to by Applicants Under the New Rule 104 (e) Presumption, “Federal Circuit Bar Journal, Vol. 12, No. 1, August 2002 by Richard S. Meyer and James L. Reed.
COMMUNITY AND CIVIC ACTIVITIES
- Testified before Maryland House and Government Operations Committee on the Constitutionality of HB603, the Pain-Capable Unborn Child Protection Act (March, 2016)
- Biexergy People of Ukraine, Inc., Chief Legal Officer (charitable organization)
- Montgomery Square Copenhaver Swim Club, Inc. (former President and Board Member)
- Raphael’s Catholic Church, RCIA team member (2005 – present)
- Assistant Scout Master, Boy Scout Troop 944 (2010- present)
- Youth Basketball Coach (2001-2010)