Richard Kurtz is a registered patent attorney who began his career as a Patent Examiner with the U.S. Patent and Trademark Office before entering private practice in 1992. He subsequently practiced for 18 years at Greenberg Traurig, the second largest U.S. law firm in the 2016 Law360 rankings.  Rick has diverse technical experience in the areas of computer hardware and software, electronics, telecommunications, energy delivery and management, imaging systems, medical devices, semiconductor design and fabrication, photovoltaic cells, physics, alloys, materials science, touch screen devices and interfaces, and optics.

Rick has over 30 years of experience in developing patent portfolios; executing patent foreign filing strategies; handling patent clearance searches and opinions to steer clients' product development prior to market entry; performing intellectual property due diligence investigations in connection with technology transfers, including infringement and patentability studies; giving talks before clients' engineering, marketing, and management groups to educate on intellectual property; advising clients on trademark, copyright, trade secret, and Internet domain name issues; and handling patent, contract and trade secret litigation.

Rick formerly chaired the Intellectual Property Law Section of the Virginia State Bar, which has more than 1,000 member attorneys.

Areas of Practice

• Patents
• Intellectual property prosecution and litigation
• Licensing
• Litigation
• Government contracts
• Corporate Transactions and Due diligence
• Trademarks
• Copyrights

Professional Memberships & Community Involvement

• Member, American Intellectual Property Law Association
• Board Member, Seminole County Regional Chamber of Commerce 2009-2016
• Chair, Millennium Middle School Advisory Council 2014-2015
• Past Chair, Virginia State Bar, Intellectual Property Law Section

Recognition

Patented one of Time magazine's "Top 100 Inventions of 2001"

Representations

• Rick has filed and prosecuted more than 1,100 patent applications before the U.S. Patent and Trademark Office in a broad array of technologies.
• He has conducted more than 60 patent studies and prepared opinions regarding infringement and patentability.
• He has handled more than 15 major patent litigation matters before district courts, the Federal Circuit, and the International Trade Commission, including:
  • Represented plaintiffs MIT and Convolve in Massachusetts Institute of Technology and Convolve, Inc. v. Compaq Computer Corporation and Seagate Technology, LLC, Civ. Action No. 00 CIV 5141, in the U.S. District Court for the Southern District of New York (appeal affirmed-in-part, vacated-in-part, reversed-in-part, and remanded February 10, 2016).
  • Represented defendant SmartDisk, Inc. in Dynacore Holdings Corp. et al. v. U.S. Philips Corp. et al., 243 F. Supp. 2d 31 (SDNY 2003) (summary judgment of noninfringement granted where network devices compliant with alleged infringer's digital interconnection standard did not fall within limitations common to the independent claims of plaintiffs' patent as construed).
  • Represented appellee SmartDisk, Inc. in Dynacore Holdings Corp. et al. v. U.S. Philips Corp. et al.before the Federal Circuit, 70 U.S.P.Q.2D 1369 (Fed Cir 2004) (affirming grant of summary judgment and claim construction by the district court).
  • Represented defendant in complex, multi-patent infringement litigation in Avery Dennison Corp. v. UCB Films PLC, No. 95 C 6351, 1997 WL 567799 (N.D. Ill. Sept. 4, 1997) (finding no infringement when defendant performed only the initial step of a patented method then sold the intermediate product, which was later processed in accordance with the remaining claim steps of the patent).
  • Represented plaintiff Smart Link in Smart Link, Ltd. v. PCTEL, Inc., Civ. Action No. 0011725, U.S. District Court for the District of Massachusetts (dismissed upon settlement, 2001).
  • Represented respondents Smart Link in 337 action styled In the Matter Of Certain HSP modems, Software and Hardware Components Thereof, and Products Containing Same, U.S. International Trade Commission Investigation No. 337-TA-439 (dismissed with prejudice upon settlement, 2001).
  • Represented defendant Proxymed in Advanced Health Corporation v. Proxymed, Inc., Civ. Action No. 2:99-CV-604-A, U.S. District Court for the Eastern District of Virginia (dismissed with prejudice upon settlement, 1999).
  • Represented defendant Checkolite in Quoizel, Inc. v. Checkolite International, Inc., Civ. Action No. 99-2286, U.S. District Court for the District of New Jersey (dismissed with prejudice upon settlement, 1999).
• Other litigation experience:
  • Represented plaintiff DCM Solutions, an NEC subsidiary, in action for breach of software development contract in DCM Solutions, Inc. v. Headstrong, Inc., Civil Action No. CA-01-1172-A, U.S. District Court for the Eastern District of Virginia (court-mediated settlement, 2002).
  • Designated as an expert witness and rendered an expert opinion in International Billing Services, Inc. v. North American Capital Co., Docket No. 95AS05420 (Calif. Super. Ct. 1995).
  • Designated as an expert witness in Bell & Howell Phillipsburg Co. v. Fabtronics, Inc. and Automated Mailing And Office Systems, Inc., Docket No. 94-CV-4609 (DC EPa 1995).
  • Acted as co-counsel in RE/MAX International, Inc. v. Corbin & Associates Realty, Inc., Civil Action No. 03-CV-932, U.S. District Court for the Eastern District of Virginia.

 

Articles, Lectures & Publications

• Speaker, “Intellectual Property Protection,” The Optical Society annual meeting, 2015.
• Speaker, "Protecting Intellectual Property: Analysis of Copyright, Trademark and Other Legal Protection and Audit Processes," Florida Bar Midyear Meeting, September 21, 2011
• Speaker, "Intellectual Property Due Diligence Issues," Association of Corporate Counsel Seminar on Due Diligence, April 21, 2011
• Speaker, "Intellectual Property: What All Business Owners Should Know," Entrepreneurs Organization New York, February 19, 2009

Education

J.D., University of Richmond School of Law, 1990

B.S., Engineering Physics, Hampden-Sydney College, 1986

B.A., Managerial Economics, Hampden-Sydney College, 1986

Admitted to Practice

• U.S. Patent and Trademark Office
• Florida
• Virginia*
• Supreme Court of Virginia
• U.S. Court of Appeals for the Federal Circuit
• U.S. Court of Appeals for the Fourth Circuit
• U.S. District Court for the Eastern District of Virginia

*currently associate status in Virginia