Richard F. Giunta
Shareholder
| Post-Grant Proceedings, Co-chair
Overview
Rich is a nationally recognized leader in handling trials before the Patent Trial and Appeal Board (PTAB). He consistently ranks among the top 1% of lawyers in the country based on winning percentage and was named the PTAB practitioner of the year by Managing Intellectual Property in 2021. Rich has prevailed on issues of first impression numerous times, and in matters with more than one billion dollars at stake.
Among the most experienced PTAB practitioners in the country in representing patent owners and petitioners alike, Rich has handled more than 170 matters before the PTAB, including inter partes review (IPR) and post-grant review (PGR). Rich’s track record of success is unmatched, and he is routinely engaged to represent industry-leading companies (e.g., Google, Sony, Nuance, Becton Dickinson, Smith & Nephew, Shell Oil, Mediatek) and academic institutions (e.g., University of Florida, University of Minnesota).
In practice for over 30 years, Rich also has extensive patent prosecution and reexamination experience. He has advised clients on the development of commercially valuable patent portfolios and led the firm’s Electrical & Computer Technologies Practice for more than 15 years. Rich has written and prosecuted patents that have been successfully asserted to a jury verdict of infringement and that have withstood attacks before the PTAB.
As a former senior hardware design engineer in a CPU development group and the holder of a patent on a memory diagnostic system, Rich is particularly skilled at handling all types of computer and software related technologies.
Experience
Patent Owner Representations
- Led multi-firm effort to overcome rejections in reexamination of a medical device patent owned by C. R. Bard, Inc. on which there was an outstanding judgment in excess of $1 billion. Developed strategy that resulted in immediate withdrawal of the rejections and secured the judgment.
- In a case of first impression, served as lead counsel for the University of Florida Research Foundation (UFRF) in successfully asserted sovereign immunity, persuading the PTAB to dismiss three IPRs filed against UFRF’s patent. State universities had previously had patents challenged before the PTAB, but none had ever asserted that sovereign immunity renders a state entity immune to those challenges. (IPR2016-01274, IPR2016-01275, IPR2016-01276)
- Persuaded the PTAB to deny institution on two patents being asserted in litigation by our client Solarflare. (IPR2016-01908)
- Represented patent owner Nuance Communications, Inc. in 10 reexamination proceedings resolved with all claims confirmed.
- Persuaded PTAB to deny institution in five of five petitions Lenovo filed against patents LiTL asserted against Lenovo. (IPR2021-00681, IPR2021-00821, IPR2021-00822, IPR2021-00800, IPR2021-00786)
Patent Challenger Representations
- For our client Smith & Nephew, filed 16 IPRs challenging 162 claims across several patents and achieved a perfect institution record of 16/16 IPRs and 162/162 claims.
- For our client, RPX, a leading provider of patent risk solutions, obtained final written decisions cancelling all challenged claims in three IPRs challenging two patents, and obtained the first ever sanction of attorneys’ fees awarded by the PTAB against a party. Sanctions were imposed for a protective order violation. (IPR2015-01750, IPR2015-01751, IPR2015-01752)
- For our client, RPX, filed three IPRs against a patent asserted by a non-practicing entity against 29 large technology companies. The petition exposed a fatal defect in patent’s priority claim and led to dismissal of all lawsuits and disclaimer of the patent. (IPR2017-00208, IPR2017-00209, IPR2017-00212)
Appellate – Federal Circuit Representations
- For our client Smith & Nephew, persuaded the PTAB to enter adverse judgment against a patent owner that disclaimed all claims prior to institution, and defended that ruling on appeal to the Federal Circuit, resulting in affirmance by the Federal Circuit in a precedential opinion. Arthrex, Inc. v. Smith & Nephew, Inc., 2017-1239 (Fed. Cir. Jan. 24, 2018)
- For our client, Cirrus Logic, prevailed in an inter partes reexamination that rejected all challenged claims, and defended that ruling on appeal to the Federal Circuit, resulting in a precedential opinion affirming the PTAB’s decision. Knowles Elecs. LLC v. Cirrus Logic, Inc., 2016-2010 (Fed. Cir. March 1, 2018)
- For our client Smith & Nephew, persuaded the PTAB to reverse a decision from the central reexamination unit rejecting all claims in a patent as a result of an inter partes reexamination, and defended that ruling on appeal to the Federal Circuit, resulting in affirmance by the Federal Circuit in a precedential opinion. Hologic, Inc. v. Smith & Nephew, Inc, Covidien, LP, 2017-1389 (Fed. Cir. March 14, 2018)
Activities
- Boston Intellectual Property Law Association
Recognition
- IAM Patent 1000: Recommended nationally for post-grant proceedings
- Managing IP:
Named 2021 PTAB Practitioner of the Year
Repeatedly named to Managing IP’s IP Stars list as a Massachusetts Patent Star
Ranked among the 20 most active attorneys representing petitioners before the PTAB - Patexia IPR Intelligence Report: Consistently ranked in the top 1% of all PTAB attorneys for success rate and most active
- Patexia CAFC Intelligence Report: Ranked in the top 2% of attorneys representing appellees for success rate and among the top 3% most active
- The Legal 500: Recognized nationally as a leading lawyer
- Law360: Recognized as a “Legal Lion” after a significant win at the Federal Circuit
- The Best Lawyers in America®: Included since 2017
- Super Lawyers: Included since 2014
- Daniel J. Fern Award: In law school, graduated first in class
- David J. Sargent Fellowship: In law school, received full tuition scholarship awarded to one member of each entering class
Interests
Rich has always had a passion for athletics (captaining his high school football and lacrosse teams and his college football team).
He was an Academic All-American Football Player at Tufts University and a recipient of the Alumni Association Seniors Award, awarded to 12 graduating seniors based on academic performance and demonstrated leadership, and the Frederick Melvin Ellis Prize, awarded to students showing marked athletic versatility, a modest manner, successful academic achievement, and the potential for effective leadership of youth.
Rich is inducted into his high school’s athletic hall of fame.