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Eric S. Walters

Eric Walters focuses his practice on intellectual property disputes and strategic advice involving patents, trade secrets, copyrights, trademarks, and licensing. He represents clients in a wide range of industries, including software, Internet, mobile, digital media, biotechnology, hardware, semiconductor, medical device, energy and consumer products, among others.

Eric's strategic approach has a demonstrated track record of success, often resulting in victory at an early stage of the litigation, including through summary judgment, dismissal, injunction or a favorable settlement.

Eric also counsels on IP portfolio management and strategy and the new America Invents Act procedures, and has significant experience in interference and reexamination proceedings before the U.S. Patent and Trademark Office.

In 2013, the Daily Journal named Eric one of the Top 75 IP Litigators in California.

Representative Experience

MasterMine, Inc. v. Microsoft Corp.

Represent the defendant in patent lawsuit relating to Customer Relationship Management (CRM) software. (D. Minn. Ongoing)

Message Notification Technologies LLC. v. Microsoft Corp.

Represent the defendant in patent lawsuit relating to e-mail notification systems. (D. Del. Ongoing)

Secure Web Conference Corp. v. Citrix, Inc.

Represent the defendant in patent lawsuit relating to online web conferencing technology. (E.D.N.Y. Ongoing)

SkipPrint LLC v. AlphaGraphics, Inc.

Represent the defendant in patent lawsuit relating to internet form ordering and web-to-print technology. (D. Utah Ongoing)

Source Vagabond Systems v. Hydrapak, Inc.

Obtained summary judgment of non-infringement on behalf of patent infringement defendant, based on motion filed three months after suit filed, as well as a complete stay on discovery and recovery of $200,000 in Rule 11 sanctions. Also served as lead counsel on appeal, where grant of summary judgment was affirmed in its entirety. (S.D.N.Y. 2012; Fed. Cir. 2013)

Clear With Computers v. Swisher Acquisition, Inc.

Successfully represented defendant in patent infringement lawsuit involving internet sales proposals, resulting in the plaintiff dismissing the action. (E.D. Tex. 2013)

Alzheimer’s Institute of America v. CoMentis, Inc.

Represented defendant in patent infringement lawsuit involving Alzheimer’s drug development tools, successfully obtained dismissal of lawsuit for lack of standing. (W.D. Okla. 2012)

WhiteHat Security, Inc. v. Cenzic, Inc.

Represented Declaratory Judgment plaintiff in lawsuit involving patent relating to website security, successfully obtained settlement on favorable terms. (N.D. Cal. 2013)

Unified Messaging Solutions LLC v. Interactive One, Inc.

Represented defendant in patent infringement lawsuit involving social network messaging, successfully obtained settlement on favorable terms. (S.D.N.Y./N.D. Ill. 2013)

CoMentis, Inc. v. Purdue Research Foundation

Represented the plaintiff in trade secret and licensing dispute with company founder and his university employer arising out of development of small molecule drugs for the treatment of Alzheimer’s disease. (N.D. Ind. 2012)

Confidential JAMS Mediation involving Co-Generation Facility

In commercial dispute involving large co-generation facility, opposing party withdrew its claims in their entirety after successful mediation. (JAMS 2012)

AAA arbitration involving dispute concerning license to contact lens patents*

As lead counsel, prevailed on all issues, including grant of attorney’s fees and costs on behalf of client. (A.A.A. 2010)

Digital Security Systems Corporation, LLC v. Funai Corporation*

Successfully represented defendant in patent litigation involving Blu-Ray® encryption standards. Case dismissed after patents were acquired by RPX. (E.D. Tex. 2009)

AAA arbitration involving MMS software*

Obtained early settlement on favorable terms after successful mediation in case involving licensing dispute relating to MMS infrastructure software. (A.A.A. 2010)

Aliphcom v. WiLAN, Inc.*

Represented Aliphcom (Jawbone) as declaratory judgment plaintiff and defendant in parallel lawsuits in E.D. Texas and N.D. Cal. involving patents relating to Bluetooth technology. Legal strategy resulted in early settlement on favorable terms. (E.D. Tex. and N.D. Cal. 2010)

Vlingo Corp. v. Nuance, Inc.*

Represented defendant in unfair competition action arising out of patent infringement claims relating to speech recognition technology. (D. Mass. 2012)

Electroglas, Inc. v. Form Factor, Inc.*

Obtained temporary restraining order barring transfer from escrow of intellectual property involving semiconductor wafer prober software technology. Case later resolved favorably with defendant’s purchase of client’s assets. (Santa Clara Cnty. (Calif.) Super. Ct. 2009)

Regents of the University of California v. Genentech, Inc.*

Counsel for the plaintiff in patent infringement lawsuit over pioneering biotechnology patent. After six-week trial, case settled for $200 million. (N.D. Cal. 1999)

Applied Materials v. Advanced Micro Fabrication Equipment*

Represented defendant in connection with pretrial proceedings, including lead responsibility for preparing critical motion that resulted in damages exposure  being reduced by 70%. Case settled shortly thereafter on confidential terms. (N.D. Cal. 2011)

Iconix, Inc. v. Tokuda*

Obtained preliminary injunction against former employees who developed software and launched website while working for Iconix. The case settled on favorable terms shortly thereafter. The resulting opinion has become a leading case in the area of copyright infringement and the rights of companies to work product created using company resources. (N.D. Cal. 2006)

U.S. ex rel Boisvert v. FMC Corporation*

Member of trial team in high profile False Claims Act lawsuit resulting in jury verdict worth an estimated $400 million. (N.D. Cal. 1998)

AGEN Biomedical Ltd. v. Biopool Intl, Inc.*

Representing the plaintiff, obtained favorable settlement in patent litigation against competitor involving antibodies for diagnosis of deep vein thrombosis. (N.D. Cal. 2001)

Sinclair Systems v. FMC Corporation*

Obtained preliminary injunction against competitor in patent infringement lawsuit involving labeling technology. Case settled shortly thereafter on favorable terms. (N.D. Cal. 2000)

JAMS mediation*

Lead attorney in dispute relating to patent license involving small molecules and other technology use for use in treating inflammatory and neurological diseases. Resolved dispute on favorable terms in mediation, while avoiding damage to ongoing relationship between licensor and licensee. (J.A.M.S. 2006)

Quadrant Drug Delivery v. Nektar Therapeutics*

Lead attorney in patent interference involving inhalable drug formulations. (Board of Patent Appeals and Interferences 2007)

Sims v. DNR Sportsystems (Marker Intl.)*

Obtained state court preliminary injunction against licensee’s marketing of snowboard products and, after four-week trial, obtained AAA arbitration award successfully terminating trademark license. (AAA and Santa Barbara Cnty. (Calif.) Super. Ct. 1997) 
* Denotes experience completed at a prior firm

Additional Qualifications

  • Partner, Morrison & Foerster LLP, Palo Alto, Calif., 1999-2012
  • Associate, Jackson, Tufts, Cole & Black, LLP, San Jose, 1996-1999
  • Attorney, National Wildlife Federation, University of Michigan Law School, Ann Arbor, Mich., 1994-1996
  • Project Attorney, Sierra Club Legal Defense Fund, Honolulu, Hawaii, 1992-1994
  • Associate, Howard, Rice, Nemerovski, Canady, Robertson & Falk, PC, San Francisco, 1990-1992

Professional & Community Activities

  • ABA
  • San Francisco Bay Area Intellectual Property Inn of Court
  • Licensing Executive Society

Professional Recognition

  • Selected to "Northern California Super Lawyers," Thomson Reuters, 2014
  • Named as one of the "Top 75 Intellectual Property Litigators" by The Daily Journal, 2013