Erick Palmer is a litigator and registered patent attorney in Mayer Brown's Intellectual Property practice. Focusing on patent disputes in federal courts and before the Patent Trial and Appeal Board (PTAB), he has worked with industry-leading clients in numerous fields, including chemicals, pharmaceuticals, biotechnology, medical diagnostics and devices, nutraceuticals, and food science, to solve their IP needs.
Erick has substantial experience in all aspects of patent infringement cases, from fact discovery, motion practice, and claim construction to expert discovery, dispositive motions, trial, and appeal. As a trained PhD chemist, he leverages his scientific acumen to develop and implement winning litigation solutions for his clients. For example, in his most recent jury trial, Erick led the development of the expert witness strategy during discovery and then, at the express charge of the client, executed that strategy at trial through direct examination of his expert and cross-examination of the opposing expert. The result was a victory on both infringement and validity.
Erick understands that considerations in a jury trial are different from those in an America Invents Act (AIA) post-grant challenge. Although he leans on his prior experience as a general chemistry instructor for non-science majors when developing scientific arguments in a jury trial, the technical sophistication of the PTAB judges, most of whom themselves have advanced degrees in the relevant technical field, demands those same arguments survive heightened scrutiny in an AIA proceeding. Erick develops key case strategies with an eye toward this heightened scrutiny, and the results speak for themselves. He has successfully defended patents on behalf of patent owners in more than twenty inter partes reviews (IPRs) that have gone to Final Written Decision, including a rare win in which the PTAB upheld the patent as nonobvious based on “very strong” evidence of secondary considerations. He has had similar success on the petitioner side and has argued before the PTAB at the final hearing numerous times.
Clients value Erick’s ability to seamlessly work with not only their in-house lawyers but also their internal scientists and managers. In preparing for several IPRs and district court litigation, he traveled weekly to an R&D facility and worked directly with their scientists to assist in developing testing protocols and admissible evidence that were crucial to the client’s strategic legal goals.
Erick also maintains an active transactional practice and leads IP due diligence on securitization deals. He routinely advises chemical and life science companies on the various IP issues encountered when entering into asset purchase, license, joint venture, and collaboration agreements.
- 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)
- Represented a foreign medical device manufacturer of CPAP breathing apparatuses in patent litigation before the ITC. Following a bench trial and Commission review, the Commission found that the primary patent was invalid in view of the prior art. (Sleep-Disordered Breathing Treatment Systems and Components Thereof, ITC, 2014)
- 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)
- Won a Federal Circuit appeal in which the district court’s dismissal of a patent infringement suit with prejudice was affirmed.Agreeing that the accused products were essentially the same as products that had been finally determined to be noninfringing in a previous case, the appellate court found that the present infringement case was barred under the Supreme Court’s century-old decision in Kessler v. Eldred. Brain Life v. Elekta, 746 F.3d 1045 (Fed. Cir. 2014)
- Represented cookie and cookie dough manufacturers accused of infringing a patents covering certain fat compositions that reduce cholesterolemia. After succeeding on claim construction and excluding most of the opposing expert’s opinion on damages, the parties favorable settled. (Brandeis Univ. v. Nestle & Keebler, N.D. Illinois, 2013)
- Won dismissal for an international medical device company accused of infringing six patents covering ERCP catheters. The plaintiff dismissed its complaint with prejudice prior to summary judgment. (Medical Instruments Development v. Cook Medical, E.D. New York, 2013)
- Won a Hatch-Waxman case on behalf of Valeant for its Aplenzin® antidepressant. After stipulating to infringement, the district court found that the patent was not invalid, which was affirmed on appeal. (Valeant v. Watson, M.D. Florida, 2011)
- Won an early motion to dismiss a claim of patent infringement and a claim for provisional rights damages on behalf of a global pet food manufacturer of dog chews. (Prestige Pet Prods. v. Pingyang Huaxing Leather & Plastic Co., E.D. Michigan, 2011)
- Successfully defeated an early summary judgment motion brought by a generic manufacturer in a Hatch-Waxman case involving Galderma’s MetroGel®. The parties favorably settled thereafter. (Galderma v. Tolmar, N.D. Texas, 2011)
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
- US District Court for the Northern District of Illinois
- US Patent and Trademark Office
- Member, Federal Circuit Bar Association
- Member, American Intellectual Property Law Association