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Richard G. Gervase, Jr.

Member

[email protected]

+1.212.692.6755

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Richard advises clients on all aspects of intellectual property litigation, including patent, copyright, trademark, and trade secret litigation and related antitrust and unfair competition matters. He has represented numerous Fortune 100 companies in intellectual property infringement cases nationwide. A registered patent attorney, Richard also handles post-grant proceedings before the USPTO and the Patent Trial and Appeal Board, including ex-parte re-examinations, inter partes reviews (IPRs), covered business method (CBM) reviews, and post-grant reviews (PGRs).

In addition to litigation, Richard counsels companies in the development, protection, and licensing of their intellectual property portfolios. He also performs intellectual property due diligence and provides patentability, non-infringement, and invalidity opinions. He serves on Mintz's Opinion Committee.

Richard’s experience covers a wide range of technologies, including computer software and hardware, semiconductor architecture and fabrication, telecommunications (e.g. 3G, 4G, and 4G LTE), medical devices (e.g. spine, orthopedic implants, drug delivery, and medical “apps”), medical imaging, artificial intelligence and machine learning (e.g. neural networks, support vector machines, natural language processing), big data analytics (e.g. Hadoop), gene sequencing, small molecules, antibodies, and medical diagnostics.

Richard began his career in the late 1980s as a mergers and acquisitions and securities lawyer at Brown & Wood in New York City, where he focused on the biotechnology sector. He has extensive experience structuring and negotiating a wide variety of technology transactions, including stock and asset acquisitions, strategic alliances, joint ventures, collaboration agreements, sponsored research agreements, materials transfer agreements, and patent, trademark, copyright, software, and database license agreements. Since 2002, he has represented both investors and royalty holders in the structure, negotiation and valuation of royalty stream monetization transactions involving more than 40 pharmaceutical and biological products, including:

Advate ® Neulasta ® Kadcyla ® Estorra ® Cimzia ®
Cubicin ® Rotarix ® PegIntron ® Letairis ® Fovista ®
Gardasil® Actemra® TOBI® Remicade® Movantik®
Mylotarg® Eligard® Avastin® Lexiva® Retisert®
Revlimid® Iclusig® Erbitux® Cervarix® Zenepax®
Adenoscan® Neupogen® Lucentis® Fosamax® Enbrel®
Daptomycin® Synagis® Raptiva® Macugen® Brigatinib®
Herceptin® Amphastar® Tysabri® Restasis® Xolair®

In addition to traditional royalty stream financings, Richard also has significant experience with alternative royalty monetization structures, including secured debt and convertible debt financings, synthetic royalties, revenue interest assignments, late stage clinical trial funding agreements, and other healthcare related financings. Richard also advises investment banks in the assessment and valuation of patents and other IP assets and performs IP due diligence in connection with mergers and acquisitions, joint ventures and collaborations, and underwritten public offerings involving life sciences and technology companies.

Prior to joining Mintz, Richard was a senior patent litigation attorney at the intellectual property law firm of Fish & Neave in New York City.

He completed executive mediation training at Harvard Law School’s Program on Negotiation. He was Senior Articles Editor for the Rutgers Law Journal.

Education

  • Rutgers University (JD)
  • Rutgers University (BSEE)

Experience

Litigation

  • The Brita Products Company v. Seventh Generation, Inc. (N.D. Cal.) – Represented Seventh Generation in a declaratory judgment action brought by plaintiff Brita seeking to invalidate two Seventh Generation patents directed to refillable water bottles containing water filtration devices.
  • Krauser v. BioHorizons, Inc. (S.D. Fla.) – Defended BioHorizons in a dispute over ownership and inventorship of technology and patents directed to dental implants. Disposed of on summary judgment and BioHorizons was awarded its attorney’s fees.
  • Round Rock Research LLC v. HTC Corp. (D. Del.) – Defended HTC in a patent infringement suit alleging infringement of five patents directed to 3G and 4G wireless chipsets and smartphone technologies.

Involvement

  • Lecturer and Advisor to the Harvard-MIT Health Sciences and Technology (HST) Program at the MIT Institute for Medical Engineering and Science
  • Lecturer and Advisor to the Runway Postdoctoral Program at the Joan and Irwin Jacobs Technion-Cornell Innovation Institute (TCII)
  • Intellectual Property Owners Association (IPO), Software and Business Methods Committee, Post-Grant Committee
  • American Intellectual Property Law Association (AIPLA), Patent Litigation Committee
  • New York Intellectual Property Law Association (NYIPLA), Patent Litigation Committee
  • American Bar Association, Patent Litigation Committee (ABA), Member, Alice v. CLS ABA Joint Task Force
  • Federal Circuit Bar Association, Amicus Committee
  • Licensing Executive Society (LES), member and speaker
  • Biotech Industry Organization (BIO), member and speaker
  • Board of Directors, Amateur Ski Club of New York (Waitsfield, Vt.)

Viewpoints

The Supreme Court has made it easier for patent owners to prove willful infringement and entitlement to enhanced damages.
The Supreme Court has made it easier for patent owners to prove willful infringement and entitlement to enhanced damages.
On Wednesday, President Obama signed into law the groundbreaking Defend Trade Secrets Act (DTSA)1, which for the first time creates a federal civil remedy for trade secret misappropriation and provides uniformity (and hopefully predictability) to what has, until this point, been a patchwork body of law applied disparately among the states.
On Wednesday, President Obama signed into law the groundbreaking Defend Trade Secrets Act, which for the first time creates a federal civil remedy for trade secret misappropriation and provides uniformity — and hopefully predictability — to what has been a patchwork body of law applied disparately among the states.
On December 17, 2015, the Federal Circuit issued a precedential decision affirming a determination by the Patent Trial and Appeal Board (“PTAB”) that patent claims related to methods of treating elevated homocysteine levels were invalid as obvious.
Last month, the Ninth Circuit Court of Appeals issued a pivotal decision in Microsoft v. Motorola regarding the licensing of standard essential patents (SEPs) on reasonable and non-discriminatory (RAND) terms.
Late last month, the Ninth Circuit Court of Appeals issued its much-anticipated decision in Microsoft v. Motorola, a breach of contract action brought by Microsoft alleging that Motorola violated its commitment to license its standard essential patents (SEPs) on reasonable and non-discriminatory (RAND) terms.
Last week, in response to a request for a preliminary ruling by a German court hearing a patent infringement action brought by Huawei against ZTE, the Court of Justice of the European Union (ECJ) took up the question of whether the assertion of patents that have been declared essential to the practice of a standard (standard-essential patents or SEPs) may run afoul of Article 102 of the Treaty on the Functioning of the European Union (TFEU).
On June 22, 2015, the Supreme Court issued its decision in Kimble v. Marvel Entertainment, LLC, upholding the rule, first announced in Brulotte v. Thys Co., 379 U. S. 29 (1964), that an agreement allowing a patent owner to collect royalty payments after a patent’s expiration is unlawful per se.
The Supreme Court issued its long-anticipated decision in Commil USA, LLC v. Cisco Systems, Inc. on Tuesday holding that a patent infringement defendant’s good faith belief that the patent in suit is invalid is not a defense to a claim of induced infringement under 35 U.S.C. §271(b).

Events

Speaker
Oct
12
2018

Reconfiguring the Landscape for the Alzheimer's Challenge Workshop

UC Santa Barbara and MIT Laboratory for Financial Engineering

Wequassett Resort, Harwich, MA

Speaker
Oct
27
2015

Sinai Innovations Conference 2015

Icahn School of Medicine at Mount Sinai

New York, New York