Eric M. Acker

Partner | San Diego
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(858) 720-5109
I prepare intellectual property cases for trial in order to put clients in the best position to achieve their goals – either by winning in court or leveraging a favorable resolution short of trial.

Experience

(District of Delaware). Represented Chugai in patent litigation involving Chugai’s revolutionary antibody recycling technology. The team secured a $775 million settlement for Chugai hours before jury selection and opening statements at trial.

(Middle District of Tennessee). Represented MicroPort, a worldwide manufacturer of orthopedic implants, in a five patent action against a competitor that was inducing infringement of MicroPort’s patented minimally-invasive hip surgery procedures. Case settled favorably for MicroPort short of trial.

(Southern District of California). Represented the San Diego County Regional Airport in patent litigation involving camera-based parking guidance technology installed at the Airport. After two years of litigation, plaintiff dismissed all claims of infringement with prejudice.

(Central District of California and District of Utah). Represented Entrata in six-year long trade secret, copyright and antitrust cases. We reached a favorable settlement for Entrata after a jury was selected and just hours before opening statements at trial.

(Central District of California). Represented Alcon in patent litigation regarding Alcon’s femtosecond lasers used for LASIK and cataract surgery. Prevailed on summary judgement that the three asserted patents were not infringed by the accused Alcon lasers.

(District of Nevada). Represented the manufacturer of a generic injectable oncology drug in Hatch-Waxman litigation. After a five-day trial, the district court found clear and convincing evidence of obviousness and invalidated the asserted claims.

(Eastern District of Texas). Represented the manufacturer of a generic version of the glaucoma treatment Lumigan.01 in a week-long trial under the Hatch-Waxman Act.

(Northern District of California). Represented the manufacturer of a generic version of the acid reflux disease treatment Prevacid in a week-long trial under the Hatch-Waxman Act.

(District of Massachusetts). Represented Nikon Metrology in a two-week jury trial in a patent case involving laser line scanner and articulated arm metrology solutions.

(District of New Jersey). Represented the manufacturer of a generic version of the ICU sedative Precedex in a trial under the Hatch-Waxman Act. After an eight-day trial, the court invalidated a method of use patent covering the use of the compound for ICU sedation.

(Southern District of New York). Successfully represented the manufacturer of a generic version of Copaxone in a three-week trial under the Hatch-Waxman Act. On appeal, the Federal Circuit invalidated the patent with the longest remaining term, allowing the client to launch its generic product more than one year earlier than expected.

(Eastern District of Texas). Reached a favorable settlement on behalf of Kyocera (minutes before opening statements in a jury trial), after Kyocera was accused of infringement by a Spanish internal cell phone antenna developer.

(District of Utah). Prevailed in three-week jury trial when a jury determined that Novell owned the copyrights to the UNIX computer operating system. In an earlier trial, won multimillion-dollar award for Novell based on its right to royalty payments from UNIX software licenses granted by SCO.

(Southern District of California). Won preliminary injunction motion and favorable settlement when Maxwell asserted its ultracapacitor patent portfolio against NessCap, a Korean competitor.

(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 with a cross-license in which Asylum admitted the validity of Veeco’s patents and agreed to an upfront fee and continuing royalty payments.

(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, the court found the asserted patent unenforceable based on inequitable conduct during its prosecution.

(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 invalid.

(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.

(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 with no payment made by The Regents.

(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.

(Northern District of California). Represented a biotechnology company in state and federal actions in California related to microfluidic technology. The matter was settled prior to trial.


Benchmark Litigation 2015-2021

California Litigation Star