Erik R. Puknys

Partner

Erik Puknys is one of the founding attorneys of the firm’s Palo Alto office. He has substantial litigation experience representing both plaintiffs and defendants in the U.S. Court of Appeals for the Federal Circuit, the U.S. International Trade Commission, and several district courts, including the Northern District of California, the Eastern District of Texas, the Eastern District of Virginia, and the District of Delaware.

Mr. Puknys is a frequent lecturer at legal and corporate seminars on patent litigation, patent prosecution, and trade secret law. He currently serves as an instructor for the Patent Resources Group for classes on chemical patent practice and opinions of counsel.

Prior to joining the firm, Mr. Puknys was an examiner at the U.S. Patent and Trademark Office.

Highlights

• Obtained an affirmance in the Federal Circuit of a district court’s order dismissing a declaratory judgment complaint filed against a patentee client.
• Obtained a judgment that a manufacturer of blood glucose meters did not infringe one patent and that another patent asserted against it was unenforceable because the inventor committed inequitable conduct.
• Successfully defended a leading computer manufacturer against charges of patent infringement and trade secret theft.
• Obtained a reversal at the Federal Circuit of a $45 million judgment against a leading cell-phone manufacturer.
• Obtained a reversal at the Federal Circuit of a judgment entered against a leading semiconductor manufacturer that its patent was not infringed.
• Defeated a preliminary injunction motion, positioning the case for early, and favorable settlement.
• Successfully defended a leading pharmaceutical company against charges of patent infringement.

Professional Activities

• American Bar Association
• American Intellectual Property Law Association
• Federal Circuit Bar Association
• Santa Clara University School of Law High Tech Advisory Board

Select Publications

• Coauthor. "Waiver of Attorney-Client Privilege After Seagate," Law 360, April 21, 2010.
• Coauthor. "Wearing Two Hats," The Recorder, March 29, 2010.
• Coauthor. "When Opinion Counsel, Trial Counsel are One and the Same," The Recorder, March 29, 2010.
• Coauthor. "U.S. Patent-Law Reform Update," China IP News, Nov. 2009.
• Coauthor. "Discovery in U.S. Patent Litigation - Being Prepared," Digitimes, Aug. 18, 2009.
• Coauthor. "Application of the Inequitable Conduct Doctrine after Kingsdown," Santa Clara Computer & High Technology Law Journal, 2009.
• "Chemical Patent Law," Patent Resources Group, October, 2008.
• "Patent Opinions, Strategy and Tactics," Patent Resources Group, October, 2008.