Erick J. Palmer

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.

With a wealth of contextual knowledge as a PhD chemist, clients value Erick's ability to seamlessly work with not only their in-house lawyers but also their internal scientists and managers, and his unique scientific acumen. In IPRs and district court litigation, he draws on experience travelling weekly to an R&D facility and working directly assisting their scientists in developing testing protocols/admissible evidence crucial to client strategic legal goals.

• 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 non-infringing 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)
• 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)
• Won a case in which the PTAB upheld the patent as nonobvious based on "very strong" evidence of secondary considerations.

 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)
• Cookie and cookie dough manufacturers accused of infringing a patent 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 favorably settled. (Brandeis Univ. v. Nestle & Keebler, N.D. Illinois, 2013)

Other engagements include:

• In his most recent jury trial, 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 expert/cross-examination of opposing expert. The result was a victory on both infringement and validity.
• 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)