Related Practices

Admitted to Practice

California, 1991
U.S. Patent and Trademark Office, 1999

Eric S. Walters

Partner

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San Francisco

T415.276.6531

F415.276.6599

Eric Walters focuses his practice on intellectual property disputes and strategic advice involving patents, trade secrets, copyrights, trademarks, and licensing. He represents clients in the software, biotechnology, semiconductor, medical device, energy and consumer products industries, among others.

Eric's strategic approach to litigation has resulted in 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 has extensive experience in high stakes trials, including a high profile patent lawsuit involving a pioneering biotechnology patent that resulted in a settlement after trial of $200 million.

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

Source Vagabond Systems v. Hydrapak, Inc.

As lead counsel for patent infringement defendant, obtained summary judgment of non-infringement based on motion filed three months after suit filed, a complete stay on discovery, as well as a 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)

Unified Messaging Solutions LLC v. Interactive One, Inc.

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

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

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

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)

WhiteHat Security, Inc. v. Cenzic, Inc.

Lead counsel for Declaratory Judgment plaintiff in lawsuit involving patent relating to website security. (N.D. Cal. Ongoing)

CoMentis, Inc. v. Purdue Research Foundation

Lead counsel for 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)

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)

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 MMS software*

As lead counsel, obtained early settlement on favorable terms after successful mediation in case involving licensing dispute relating to MMS infrastructure software. (A.A.A. 2010)

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)

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.*

As lead attorney for the plaintiff, 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.*

As lead counsel, 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*

As lead counsel, 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

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

Professional Recognition

Named as one of the "Top 75 Intellectual Property Litigators" by The Daily Journal, 2013

Education

J.D., University of Michigan Law School, 1990, magna cum laude
- Articles Editor, Michigan Law Review
B.S., Chemical Engineering, University of Michigan, 1985