Richard D. Coller III

Overview

Richard D. Coller III is a director in Sterne Kessler’s Mechanical & Design and Trial & Appellate Practice Groups. He is also a member of the firm’s Executive Committee. Rich has been helping clients develop and execute comprehensive patent strategies for over fifteen years. IAM Strategy 300, IAM Patent 1000, and The Legal 500 have recognized Rich for excellence in intellectual property strategy, patent prosecution, and patent post-grant proceedings.

Rich’s interdisciplinary academic training and laboratory research experience as a biomedical engineer prepared him to analyze complex technical issues, including those arising at the intersection of engineering and physiology. Having managed and analyzed patent portfolios valued at hundreds of millions of dollars, Rich is particularly skilled at identifying portfolio strengths and weaknesses. This patent prosecution and client counseling expertise informs his work in support of district court litigation and ITC investigations, and as a leading litigator at the Patent Trial and Appeal Board.

In district court and ITC matters, Rich brings his experience to bear in conducting pre-suit investigations, crafting infringement and invalidity contentions, working with expert witnesses, and handling claim construction proceedings. In the area of USPTO contested proceedings, Rich has served as lead or second chair counsel to some of the largest corporations in the world in their most important inter partes review and reexamination matters, which often involve co-pending district court litigation and/or ITC investigations. Clients often seek out Rich’s expertise in these proceedings because of his proven track record of success for both patent owners and petitioners.

Rich’s client counseling practice focuses on preparing product clearance opinions, providing patent validity and infringement opinions, and drafting and negotiating IP agreements. Rich has also spearheaded IP due diligence investigations ranging from small scale venture capital investments in early stage companies to major corporate acquisitions valued at close to $1 billion.

Rich has extensive experience drafting and prosecuting utility and design patent applications in the medical, mechanical, and electrical arts. His primary areas of technical experience include: surgical implants and tools, dental implants, physiological sensors, laboratory instrumentation, drug delivery devices, biometric systems, remote patient monitoring systems, electronic cigarettes, optical recognition systems, wireless communications systems, telecommunications systems, location-based services, navigational systems, business methods, e-commerce methods, graphical user interfaces, display technologies, lighting technologies, automotive systems, industrial equipment, textiles and apparel, sporting goods, product packaging, toys and games, and various clean technologies.

Rich has served as an advisor to associates participating in the PTAB’s Legal Experience and Advancement Program (LEAP), which provides associates with training and development opportunities in PTAB proceedings, including oral argument.

Rich is actively involved in the patent community, both in the District of Columbia and nationally. He was appointed to the Intellectual Property Owners Association’s U.S. Post-Grant Patent Office Practice Committee in 2016, after having most recently served on its Corporate IP Management Committee.

Rich is also a contributing author of Patent Office Litigation, Second Edition, published in 2017. The book provides a fresh and comprehensive exploration of patent office litigation proceedings, including how the proceedings interact with other aspects of patent procurement and enforcement, while delivering practical analysis and advice. This second edition of Patent Office Litigation is the follow up to the first version of the book that was published in 2012 by Thomson Reuters Westlaw that focused on the contested proceedings that were introduced under the America Invents Act that year.

Prior to joining Sterne Kessler, Rich worked as a law clerk in the corporate legal group at a multinational software analytics company. Rich has also worked as a biomedical engineering university research assistant. His research primarily focused on the design and testing of surgical implants and the development of biosensors for medical and counter-terrorism applications.

Rich earned his J.D., cum laude, from the University of Minnesota Law School and his B.S., cum laude, in biomedical engineering from Tulane University.

Representative Matters

• Successfully defended ten US patents exclusively licensed to a medical device company as lead counsel at the Patent Trial and Appeal Board against 30 different petitions filed by two different competitors. The patents protected an industry-leading device, and were involved in concurrent ITC and district court litigation. Institution was denied or the matters settled prior to institution in all 30 matters.
• Managed the transfer-in and exclusively manage the ongoing prosecution of over 700 global patent assets owned by a wellness consumer product company. Some of the patent families protect category-defining products and are currently being asserted in district court against competitors.
• Exclusively manage the US patent portfolio for a women’s health technology company that protects their award winning products. Assets in the global portfolio are currently being asserted in the US, UK, and China against competitors.
• Served as patent owner’s inter partes review counsel for a global automotive supplier. We successfully obtained denials of a petitioner’s attempts to institute inter partes review several different patents, and obtained final written decisions upholding the patentability of other patents. The patents were successfully litigated in district court and in the ITC.
• Conducted a large-scale due diligence investigation of a target company’s IP on behalf of an acquiring medical device company. The due diligence investigation involved an analysis of target company and third-party patents, as well as an evaluation of multiple ongoing world-wide patent disputes. We strategically advised the client through the close of the deal, which was valued at close to one billion dollars.
• Currently managing prosecution of a large patent portfolio for an innovative wearable technologies company. Issued patents in the patent family have been enforced multiple times and have withstood patentability challenges at the Patent Trial and Appeal Board.
• Acted as de facto in-house IP counsel for a market-leading consumer products company during their entry into a new technology space. I was primarily responsible for interfacing with company inventors and business unit leaders, developing patent prosecution strategies, conducting product clearance evaluations, and negotiating agreements with third parties.
• Served as petitioner’s inter partes review counsel for a major consumer electronics company. We successfully obtained institution of inter partes review of several of a competitor’s patents, which were concurrently being litigated in district court.
• Served as patent owner’s reexamination counsel for a market-leading consumer electronics company. We successfully defended ten of the consumer electronics company’s patents in ex parte reexamination proceedings while these patents and their foreign counterparts were involved in concurrent litigation in multiple jurisdictions. All ten patents survived reexamination, including nine where all original claims were confirmed.
• Served as third party requester’s reexamination counsel for a global consumer products company. We successfully filed and prosecuted both ex parte and inter partes reexaminations against multiple families of patents owned by competitors of the consumer products company. All of the competitors’ claims were found to be unpatentable during the reexamination proceedings.

Education

• J.D., University of Minnesota Law School, cum laude
• B.S., Biomedical Engineering, Tulane University, cum laude