Erik R. Puknys

Partner

Erik Puknys, managing partner of the firm's Palo Alto, California office, represents clients in federal district and appellate courts throughout the United States and before the U.S. International Trade Commission (ITC). He has litigated intellectual property disputes involving such diverse technologies as medical devices, biotechnology, pharmaceuticals, semiconductors, telecommunications, and software.

In addition to his practice, Mr. Puknys is a seasoned lecturer on patent and trade secret law at conferences hosted by industry, government, and academic organizations. Through his experiences related to China, he has been invited to participate on discussion panels related to China's ongoing economic growth as a driver of innovation and the importance of IP as part of a global business strategy.

Prior to joining Finnegan, Mr. Puknys worked as a patent examiner at the U.S. Patent and Trademark Office.

Highlights

• Innovative Therapies, Inc. v. Kinetic Concepts, Inc. (Fed. Cir. 2010). Argued the appeal from a district court judgment dismissing the case for lack of declaratory judgment jurisdiction. The Federal Circuit affirmed the judgment and dismissed the case.
• Uniloc USA, Inc. v. Microsoft (Fed. Cir. 2011). On the team that obtained a reversal of a district court's grant of JMOL for noninfringement, thereby reinstating the jury verdict finding that Microsoft infringed Uniloc’s patent.  The Federal Circuit also affirmed that Microsoft failed to prove Uniloc's patent invalid.
• i4i Ltd. P'ship v. Microsoft (Fed. Cir. 2010). On the team that obtained a unanimous decision from the Federal Circuit affirming a district court judgment of willful infringement and a damages award of approximately $290 million (the largest patent damages award ever affirmed on appeal), and the entry of a permanent injunction against Microsoft's flagship Word software. The Federal Circuit also upheld the validity of the patent. 
• In the Matter of Certain Dynamic Random Access Memory Semiconductors and Products Containing Same, Including Memory Modules (ITC). Represented Elpida in this ITC investigation involving four Infineon semiconductor processing patents and some of Elpida's most important and successful products.
• Kinetic Concepts, Inc. v. BlueSky Med. Group, Inc. (Fed. Cir. 2009). Successfully defended jury verdict of validity on appeal.
• SanDisk v. Memorex Prods., Inc. (Fed. Cir. 2005). Obtained reversal of the district court's non-infringement determination.
• Harris Corp. v. Ericsson Inc. (Fed. Cir. 2005). Obtained reversal of a $45+ million dollar judgment against client Ericsson.
• Power Integrations, Inc. v. BCD Semiconductor Corp. (D. Del). Represented the defendant by successfully arguing against preliminary-injunction motion. After the court denied the PI (on the basis that there was a substantial question of patent invalidity) the case settled without our client paying any damages.
• Roche v. Home Diagnostics, Inc. (S.D. Ind.). Obtained judgment that one patent asserted against our client, HDI, was unenforceable for inequitable conduct and the other patent was not infringed.
• Served as a member of the firm's management and compensation committees and as partner-in-charge of recruiting in the firm's Palo Alto office, of which he is a founding member.

Professional Recognition

• Selected as one of the 75 Leading Intellectual Property Litigators in California by the Daily Journal, 2011-2013.
• Selected by his peers for inclusion in The Best Lawyers in America, 2013.

Professional Activities

• American Bar Association
• American Intellectual Property Law Association
• Bar Association of San Francisco
• Federal Circuit Bar Association (co-chair, Patent Litigation Committee, 2011; and chair, Federal Circuit Bar Association Model Jury Instructions Project, 2011)

Select Publications

• Coauthor. "IP Rights on Chinese Agenda," Executive Counsel, Aug./Sept. 2011.
• "Recent Developments in Patent Damages Law in the United States," China IP News, March 2011.
• Coauthor. "Waiver of Attorney-Client Privilege After Seagate," Law360, April 21, 2010.
• Coauthor. "Wearing Two Hats," The Recorder, March 29, 2010.
• "i4i Awarded $290 Million to Compensate for Microsoft's Willful Infringement," Managing Intellectual Property Chinese Edition, March 2010.
• Coauthor. "U.S. Patent-Law Reform Update," China IP News, Dec. 2009.
• Coauthor. "Discovery in U.S. Patent Litigation - Being Prepared," Digitimes, Aug. 18, 2009.
• "U.S. Considering Changes to Patent Infringement Litigation," Electronic IP Rights, May 2009.
• "Managing Patent Lawsuits in the U.S. for Favorable Results," China IP News, March 2009. 
• Coauthor. "Application of the Inequitable Conduct Doctrine after Kingsdown," Santa Clara Computer & High Technology Law Journal, 2009.