Associé

Erick J. Palmer

Patent Litigation, Trial Proceedings Before the PTAB, Intellectual Property Counseling & Prosecution

Aperçu

Industry-leading clients turn to Erick Palmer for advice and representation on patent disputes in federal courts and before the Patent Trial and Appeal Board (PTAB). He represents clients in numerous sectors, including chemicals, pharmaceuticals, biotechnology, medical diagnostics and devices, nutraceuticals, and food science.

Companies rely on Erick's counsel in:

  • Patent infringement cases, from fact discovery, motion practice, and claim construction to expert discovery, dispositive motions, trial, and appeal
  • Transactions/securitization deals
  • Various IP issues encountered when entering into asset purchase, license, joint venture, and collaboration agreements

Expérience

  • Won a $14.5 million verdict on behalf of a DSM Bio-Based Products & Services in a jury trial involving patented yeast used for industrial-scale production of ethanol from corn stock. (DSM v. Lallemand, W.D. Wisconsin, 2018)
  • Led the IP due diligence on behalf of a private investment group in a multi-million dollar deal involving the acquisition of over 8,000 US and international patents and patent applications. (2017)
  • Won thirteen IPRs—seven as patent owner and six as petitioner—on behalf of Elekta involving patents covering cone-beam computed tomography technology used in association with medical linear accelerators for radiation therapy. (Varian Medical Systems v. William Beaumont Hospital & Elekta, 2017)
  • Won three IPRs on behalf of Endo Pharmaceuticals involving patents covering its Opana® ER product. One IPR was dismissed at the institution phase because it was untimely. The other two IPRs went to Final Written Decision, with the PTAB agreeing that the generic challenger had failed to show that the claimed pharmaceutical dissolution rates were disclosed in or suggested by the prior art, a holding that was summarily affirmed on appeal. (Amneal Pharms. v. Endo Pharms., 2015)
  • Won a series of IPRs on behalf of patent owner DSM involving patents covering glass optical fiber coating technology, with more than 70% of the 225 challenged patent claims being upheld. These IPRs were some of the first in which the PTAB granted a patent owner's motion for additional discovery. (Corning v. DSM, 2014)

Formation

  • Capital University Law School, JD, summa cum laude
    Editor, Capital University Law Review; Dean's List
  • The Ohio State University, PhD, Chemistry
  • University of Kentucky, BA, summa cum laude
    Dean's List

Inscription au Barreau

  • Illinois

Courts

  • US District Court for the Northern District of Illinois
  • US Patent and Trademark Office
  • US Court of Appeals for the Federal Circuit

Langues

  • Anglais

Engagement professionnel et communautaire

  • Member, Federal Circuit Bar Association
  • Member, American Intellectual Property Law Association
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