Eric M. Acker

Partner

San Diego, (858) 720-5109

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Education

University of California, Berkeley (B.S., 1985)
;
University of Michigan Law School (J.D., 1988)

Practices

Patent Litigation

Trials

Intellectual Property Litigation

Bar Admissions

California
District of Columbia

Clerkships

Hon. D. Lowell Jensen, U.S. District Court, N.D. California, (1988-1989)

Eric Acker is a trial lawyer and the head of litigation for the San Diego Office. Mr. Acker has tried more than 50 trials (including more than 45 jury trials) in courtrooms across the country. He has been selected by his peers in 2009 and 2010 for inclusion in the Best Lawyers in America.

Mr. Acker's recent trials have involved a variety of technologies and significant legal issues. In the high-profile SCO v. Novell trial, the district court affirmed our client Novell's ownership of the UNIX software code and granted it a multimillion-dollar award. In the Bridge Medical case, the district court found the patent asserted against our client Bridge Medical (the manufacturer of a patent identification system using wireless technology) unenforceable based on inequitable conduct during prosecution. This decision was affirmed by the Federal Circuit in McKesson Info. Systems, Inc. v. Bridge Medical, Inc., 487 F.3d 897 (Fed. Cir. 2007)-a decision that has become highly influential in the area of inequitable conduct. In a series of trials, two separate juries found the patent asserted against our client Scantibodies (a manufacturer of diagnostic PTH assays) invalid for violation of the best mode, enablement, and written description requirements, and denied the plaintiff's request for tens of millions of dollars in damages.

Mr. Acker also has obtained outstanding results for clients short of trial. A preliminary injunction was granted on behalf of Maxwell Technologies (a developer and manufacturer of ultracapacitors) that led to an early favorable resolution after Maxwell asserted its patents against a rival manufacturer. Veeco (a developer of atomic force microscopes) reached a positive license deal on the eve of a jury trial only after several summary judgment motions seeking to invalidate its patents were defeated and the litigation team was prepared for trial. Mr. Acker also defended The Regents of the University of California in patent, licensing, and trade secret litigation over the experimental treatment of metabolic disorders-the case settled just before trial with no payment made by the Regents.

Mr. Acker is a past Lawyer Representative to the Ninth Circuit Judicial Conference for the Southern District of California, and also a Master in the Louis Welsh Inn of Court, San Diego Chapter.

Prior to joining Morrison in 1999, he spent ten years as a federal prosecutor in the U.S. Attorney's Offices for the District of Columbia and the Southern District of California.

Mr. Acker was Phi Beta Kappa at the University of California at Berkeley. While at the University of Michigan Law School, he served as an Associate Editor of the Michigan Law Review and was elected to the Order of the Coif.

Matters.

SCO v. Novell, Inc.

(District of Utah). Won multi-million dollar award in representation of Novell in a high-profile trial in the District of Utah regarding Novell's right to royalty payments from UNIX software licenses granted by SCO. (2008; ongoing, 2009)

Maxwell Technologies, Inc. v. NessCap Co., Ltd.

(Southern District of California). Won preliminary injunction motion and favorable settlement on behalf of Maxwell Technologies in a patent infringement action to enforce its ultracapacitor patent portfolio against NessCap, a Korean competitor using Maxwell's patented technology to compete unfairly with Maxwell. In April 2007, the district court in the Southern District of California entered a preliminary injunction in Maxwell's favor enjoining NessCap from making, using, selling, or offering to sell its prismatic ultracapacitor products. (2007, 2008)

Veeco Instruments, Inc. v. Asylum Research Corp.

(Central District of California). Successfully represented Veeco in a patent infringement action involving atomic force microscope technology. The matter settled on the eve of trial in the Central District of California with a cross-license in which Asylum admitted the validity of Veeco's patents and agreed to an upfront fee and continuing royalty payments. (2007 - 2008)

McKesson v. Bridge Medical, Inc.

(Eastern District of California). Successfully defended Bridge Medical in a patent action involving the use of barcode technology in bedside patient identification and verification systems. Following trial in May 2006 in the Eastern District of California, the court found the asserted patent unenforceable based on inequitable conduct during its prosecution. The Federal Circuit affirmed the trial court in McKesson Info. Solutions v. Bridge Medical, Inc. 487 F3.d 897 (Fed. Cir. 2007). (2007)

Nichols Institute Diagnostics, Inc. v. Scantibodies Clinical Laboratory, Inc.

(Southern District of California). Defended Scantibodies, a San Diego-based manufacturer of diagnostic parathyroid hormone assays, through trial in a patent infringement action brought by Nichols Institute Diagnostics. Following a two-week bench trial and three-week jury trial, the patent was invalidated on three grounds (best mode, enablement, and written description), and one of the Scantibodies\' products was found not to infringe. On appeal following the district court\'s ruling on post-trial motions, the Court of Appeals for the Federal Circuit held that the asserted patent is anticipated by prior art and therefore invalid. (2005)

Pharmingen v. Fujisawa Pharmaceutical Co., Ltd., et al.

(San Diego Superior Court). Defended Fujisawa in trade secret litigation involving the licensing of clones from Japanese developers for the production of antibodies to be used as research tools. (2003-2005)

Wellstat Therapeutics Corp. v. The Regents of the University of California

(San Diego Superior Court). Favorably settled patent, licensing, and trade secret litigation against The Regents of the University of California, involving the use of a uridine prodrug to treat various metabolic disorders. The matter settled on the eve of trial in San Diego Superior Court with no payment made by The Regents. (2003 - 2004)

Oakley v. Target Corporation

(Southern District of California). Achieved favorable pre-trial settlement on behalf of Target in defense of allegations of infringement of Oakley's design patent for sports sunglasses. (2003)

Caliper Technologies v. Aclara

(Northern District of California) Represented biotechnology company in state and federal actions in California related to microfluidic technology. A decision from these matters is reported at Aclara Biosciences v. Caliper Technologies, 125 F. Supp. 2d 391 (N.D. Cal. 2000). The matter was settled prior to trial. (2001)