Eric assists clients in all aspects of intellectual property law, with a particular focus on the litigation and enforcement of patent, trademark, copyright and trade secret rights. From initial infringement investigations through trial, Eric has helped clients obtain numerous successful outcomes, including:
- Prevailing in a multi-week jury trial — obtaining a guilty verdict against group of trademark infringers on all eight causes of action at issue;
- Defeating claims of patent infringement on summary judgement;
- Stopping an ongoing infringement of trademarks through a preliminary injunction;
- Preventing institution of inter partes reviews of multiple patents asserted in litigation;
- Cementing a district court procedural victory in a patent case brought to the Federal Circuit Court of Appeals; and
- Invalidating another’s trademark registration through a cancellation proceeding
With a technical background in chemistry, Eric also supports clients in the acquisition of intellectual property rights. He has helped clients obtain hundreds of utility patents, design patents/registrations, trademarks, and copyright registrations worldwide.
Eric represents clients from a variety of industries in the preparation and prosecution of utility and design patent applications before the U.S. Patent and Trademark Office, including applications related to the chemical, healthcare, mechanical, computer software, sporting goods, and household products fields. He has successfully prepared and/or prosecuted applications in many technology areas, including for pharmaceuticals, food and beverage compositions, chemical catalysts, composite materials, malware detection methods, semiconductor devices, flameproofing compounds, first responder emergency equipment, nuclear magnetic resonance probes, medical treatment methods, beverage holders, and cleaning products.
Eric also provides counseling and opinion work for utility patent, design patent, trademark and copyright matters, including freedom to practice and validity assessments, domestic and foreign infringement investigations, drafting of license and transfer agreements, and other strategy counseling.
Before joining Banner Witcoff, Eric worked in the chemical industry at Ecolab, Inc. and Stepan Company allowing him to understand an inventor’s perspective and the practical business needs of his clients. At Ecolab, Eric synthesized and tested surfactant cleaning formulas for the food and beverage and cosmetic industries, and helped develop a food sterilization method using peracetic acid solution. At Stepan, Eric synthesized formulas and tested their performance and properties in the development of environmentally friendly anionic cleaning surfactants. While earning his chemistry degrees, Eric’s academic research focused on synthesis of organometallic compounds and the functionalization of polymer coatings.
- B.A. 2005, Carleton College
- M.S. 2007, University of Chicago
- J.D. 2011, Northwestern University
- 2011, Illinois
- U.S. Court of Appeals for the Federal Circuit
- Supreme Court of Illinois
- U.S. District Court for the Northern District of Illinois
- U.S. District Court for the Western District of Texas
- U.S. Patent and Trademark Office
- Represented leading cooler and beverageware company in various intellectual property matters, including a multi-case enforcement campaign against infringers based on company’s trademarks, product configuration trade dresses, utility patents, design patents, and copyrights, while also assisting with company’s successful patent prosecution efforts.
- Represented convenience store chain through successful trial against eight defendants in trademark suit, prevailing on all eight claims taken to trial, resulting in permanent injunction, cancellation of defendant trademark registrations, and a substantial monetary award.
- Represented a Fortune 500 company in securing a consent judgment against a China-based importer of shoes infringing various patents and trademarks, and enforced judgment, obtaining lien on owner’s property in response to importer’s efforts to avoid monetary remedies.
- Represented cleaning product supplier in developing a portfolio including dozens of utility and/or design patents worldwide, handling freedom-to-operate and agreement counseling, and managing infringement investigations and enforcement efforts, including District Court litigation.
- Led representation of artwork studio company, obtaining portfolio of U.S. and foreign trademarks as well as copyright registrations related to company’s original works and related merchandise, successfully enforcing aspects of company’s IP portfolio and artist’s right of publicly through DMCA takedowns and other measures, and securing favorable outcome in a Trademark Trial and Appeal Board cancellation proceeding to allow registration of company trademark.