1. Home
  2. People
  3. Richard F Martinelli

Richard F. Martinelli

Partner

New York

Rich Martinelli develops comprehensive IP strategies which resolve immediate legal needs and safeguard long-term business objectives. He handles all aspects of intellectual property, particularly patent litigation, patent prosecution and client counseling.

He has litigated patents at trial, before the ITC, and on appeal to the U.S. Court of Appeals for the Federal Circuit. Rich has counseled clients and rendered opinions on patent validity, infringement and freedom to use. He is a registered patent attorney with experience drafting patents and practicing before the U.S. Patent and Trademark Office.

Rich’s patent work has involved a wide range of technologies including image processing, 3d graphics, audio / video compression, computer hardware and software, e-commerce, network technologies, digital rights management and encryption.

Rich also helps companies address the novel litigation and transactional IP issues that arise when developing and working with AI and is a frequent lecturer on these topics.

  • Litigation

    • WSOU Investments, LLC v. Canon Inc. et al (W.D. Tex.): Defending Canon in a six-patent case asserting infringement of patents previously owned by Nokia.
    • Metricolor, LLC v. L Oreal S.A. et al. (C.D. Cal.): Represented L’Oréal against Metricolor in a case involving several claims that touch on nearly every aspect of IP litigation, including patent infringement, trade secret misappropriation, Lanham Act violations, and breach of contract.
    • Canon Inc. v. Avigilon USA Corporation, Inc. et al (E.D.NY, PTAB): Effectively used IPRs to support our offensive litigation in dispute with a competitor in the security surveillance market.
    • Linkgine, Inc. v. Skimlinks (E.D. Va, PTAB): Represented Skimlinks in a patent infringement suit involving e-commerce technology. Obtained a stay of the district court action in favor of a CBM proceeding, where the patents were held invalid.
    • Canon Inc. v. Tesseron Ltd. et al (S.D. NY): Represented Canon in a patent licensing dispute. Obtained summary judgment that the license was improperly terminated and that it exhausted pending patent infringement claims.
    • Dyson Technology Limited v. Cornucopia Products (D. Ariz.): Represented Dyson in design and utility patent infringement action. Obtained preliminary injunction against infringer.
    • Panavision Imaging, v. Canon USA, Inc. (C.D. Cal.): Represented Canon in infringement action involving four patents directed to image sensors in digital cameras and obtaining case ending summary judgment of non-infringement.
    • Multimedia Patent Trust v. Canon Inc. (S.D. Cal.): Represented Canon in infringement action involving h.264 video compression. Obtained summary judgment of non-infringement based on international patent exhaustion.
    • S3 Graphics v. Leading Technology Company(ITC): Represented the respondent before the ITC in an investigation concerning image compression technology. After a hearing and briefing, the full Commission determined there was no violation by our client of any asserted patent.
    • GTX v. Canon USA Inc. (E.D. Tex.): Successfully defended Canon USA Inc. in a patent infringement action involving a patent directed to image noise reduction software. Obtained Summary Judgment of non-infringement and Final Judgment in Canon’s favor.
    • Hakim v. Avent America Inc. (W.D. La.): Represented Cannon Avent Group in action involving two patents directed to non-spill cups. Won dismissal based on summary judgment of noninfringement and invalidity. Federal Circuit affirmed in all respects.

    Counseling

    • Reviewed standards essential patent licensing requirements impacting a client's competitor. Identified standards bodies with favorable license terms and developed a strategy for the client to pursue its business objectives by using those advantageous licensing terms to reduce IP risk from competitor.
    • Negotiated a license agreement with a U.S. National Laboratory for patent rights to foundational technology enabling our client enter a new cutting edge line of business.
    • In response to a competitor's attempt to force our client to take a patent license, developed patent infringement claims against competitor from client's patent portfolio resulting in withdrawal of competitor's threat.
    • Developed invention mining program for client allowing them to systematically identify, evaluate and protect their most important innovations.
    • Evaluate pros and cons associated with joining a standards organization. Including, effect on patent ownership and mandatory licensing. Developed procedures that allowed the client fulfill its engineer's interest in participating in the standard's development while managing risks of inadvertent loss of IP rights.