Erik R. Puknys

Partner

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Erik R. Puknys

Partner

+1 650 849 6644 +1 650 849 6644
erik.puknys@finnegan.com erik.puknys@finnegan.com

Stanford Research Park
3300 Hillview Avenue, 2nd Floor
Palo Alto, CA 94304-1203

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Erik Puknys' career in intellectual property began more than 25 years ago, when he joined the U.S. Patent & Trademark Office as a patent examiner.

Erik started his legal career at Finnegan's Washington, D.C. office in 1994, and moved to California in 1997 to help open the firm's Silicon Valley office. He has represented both plaintiffs and defendants in district courts around the United States, in the Court of Appeals for the Federal Circuit, and in the U.S. Supreme Court. He has worked for startups and Fortune 100 companies in a wide variety of technical fields, including software, telecommunications, computer hardware, semiconductors, medical diagnostics, medical devices, and pharmaceuticals.

Erik is consistently recognized for his work as a leading patent litigator. He has been recognized by The Legal 500 U.S. for patent litigation, and as a leading patent litigator in California by Intellectual Asset Management. He was selected as one of the 75 Leading Intellectual Property Litigators in California by the Daily Journal. Erik was named in The 2015 BTI Client Service All-Stars for "superior client service."

Firm leadership roles over the years include serving as leader of the firm's appellate section; managing partner of the firm's Palo Alto office; 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 Erik is a founding member.

In his pro bono practice, Erik represented an honorably discharged, disabled veteran, in an appeal from a denial of benefits from the U.S. Department of Veterans affairs.

Experience

Represented ABBYY and Lexmark in a jury trial for a patent and trade dress case involving optical character recognition technology, obtaining complete defense jury verdict on all issues, and client not liable for $260 million in alleged damages. The Federal Circuit affirmed the district court’s judgment.

3:08-cv-02912, N.D. Cal., Judges Addy, Brazil, James, Vegas, White
14-1629, -1630, Fed. Cir., Judges Chen, Dyk, Prost

Lead counsel for Kinetic Concepts (KCI) on appeal. 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.

09-1085, Fed. Cir., Judges Michel, Newman, Prost

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 second 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. The Supreme Court affirmed on all counts.

10-290, S. Ct., Judges Alito, Breyer, Ginsburg, Kagan, Kennedy, Roberts, Scalia, Sotomayor, Thomas
09-1504, Fed. Cir., Judges Moore, Prost, Schall

Appeared at trial and argued numerous motions, including JMOL, jury charge, and evidentiary motions. Jury returned verdict for client KCI. Successfully defended jury verdict of validity on appeal.

11-1105, Fed. Cir., Judges Bryson, Dyk, O'Malley
5:08-cv-00102, W.D. Tex., Judges Furgeson, Rodriguez

Represented SanDisk in appeal involving flash memory patents. Obtained reversal of district court's non-infringement finding.

04-1422, Fed. Cir., Judges Dyk, Gajarsa, Rader

Obtained reversal of a more than $45 million dollar judgment against client Ericsson.

03-1625, -1626, Fed. Cir., Judges Prost, Clevenger, Gajarsa

Successfully convinced the Federal Circuit to vacate and remand adverse PTAB decisions, with the Federal Circuit finding the patent owner was not entitled to any presumption that the patented invention (related to bicycle chainring technology) was responsible for the alleged secondary considerations. On remand, the PTAB ruled in favor of client FOX Factory, finding all of SRAM’s claims unpatentable.

18-2024, -2025, Fed. Cir., Judges Prost, Wallach, Hughes
IPR2017-00118, -00472, PTAB, Judges Kim, Ippolito, Cherry

Represented Respondents in Investigation involving two-way radios and related audio features, including obtaining favorable decision on new designs.

337-TA-1053, ITC, Judge McNamara

Lead counsel representing Cepheid in this declaratory judgment challenging the validity and enforceability of certain patents belonging to Roche Molecular Systems.

3:12-cv-04411, N.D. Cal., Judge Chen

Represented Roland DG of Japan in patent infringement lawsuit over large-format printers used for making indoor/outdoor banners, displays, and signs and vehicle graphics. The case was dismissed after the parties reached a mutually agreeable settlement shortly before case was in ready for trial.

3:06-cv-02024, D. Conn., Judges Covello, Martinez

Represented Cepheid in lawsuit filed by Roche Molecular Systems alleging infringement of a patent directed to diagnostic testing.

3:14-cv-03228, N.D. Cal., Judge Laporte

3:08-cv-02912, N.D. Cal., Judges Addy, Brazil, James, Vegas, White
14-1629, -1630, Fed. Cir., Judges Chen, Dyk, Prost

Lead counsel in an appeal from an adverse decision in an interference concerning DNA sequencing technologies.

15-1200, Fed. Cir., Judges Lourie, Prost, Wallach

Member of trial team that secured successful jury verdict for client, Asetek, in a case against a competitor selling infringing computer cooling systems. Jury awarded damages at 14.5% royalty rate and rejected all of CMI USA’s invalidity defenses. Judge imposed enhanced damages for post-trial willful infringement.

3:13-cv-00457, N.D. Cal., Judges Chen, Corley, Tigar

Member of appellate team seeking to reverse the district court's decision to vacate a $170 million jury infringement verdict.

14-1612, -1655, Fed. Cir., Judges Bryson, Chen, Lourie

Represented respondent in a case regarding standards for awarding attorneys’ fees; previously succeeded in convincing the district court to lift all sanctions against counsel and obtained a reversal of four of the five grounds on which the district court found the case exceptional at the Federal Circuit.

12-1163, S. Ct., Judges Alito, Breyer, Ginsburg, Kagan, Kennedy, Roberts, Scalia, Sotomayor, Thomas
11-1219, Fed. Cir., Judges Dyk, Mayer, Newman
4:03-cv-01384, N.D. Tex., Judges Lancaster, Means

Lead counsel defending software manufacturer ABBYY against allegation of infringement brought by plaintiff, Digital Imaging Systems.

3:07-cv-01274, N.D. Tex., Judges Godbey, O'Connor

Represented Brooks Automation in asserting patents related to cryogenic refrigeration and successfully negotiating an early conclusion to the litigation that resulted in a license.

3:11-cv-05776, S.D. Cal., Judges Ryu, Seeborg

Represented Mr. James Greene, an honorably discharged, disabled veteran, in an appeal from a denial of benefits from the U.S. Department of Veterans affairs.

11-7084, Fed. Cir., Judges Linn, Dyk, Reyna

A Juniper former employee downloaded numerous sensitive files from Juniper in the days and hours leading up to his resignation. On Juniper’s behalf, Finnegan sued for trade secret misappropriation and related causes of action.

2010-1-CV-178564, Sup. Ct. of Cal., Santa Clara County, Judge Kirwan

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.

10-1035, -1055, -1326, Fed. Cir., Judges Linn, Moore, Rader

Lead counsel for Winbond in this patent infringement case concerning semiconductor memory devices.

5:10-cv-03738, N.D. Cal., Judge Lloyd

Represented Elpida and 18 other respondents in this ITC investigation, which involved four Infineon semiconductor processing patents and some of Elpida's most important and successful products.

337-TA-707, ITC, Judge Essex

Represented Elpida in these two offensive actions against Infineon, which were filed after Infineon sued Elpida in the ITC.

1:10-cv-00327; 2:10-cv-00152, E.D. Va., Judges Lee, Jones; Friedman, Stillman

09-1085, Fed. Cir., Judges Michel, Newman, Prost

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.

1:07-cv-0063, D. Del., Judges Farnan, Stark

Represented lead defendant, Boston Communications, in appealing a judgment that resulted in damages of more than $125 million and an injunction that would have eliminated the majority of Boston Communications' revenue.

06-1020, -1078, -1079, -1098, -1099, -1194, -1195, Fed. Cir.

Represented MOSAID in an appeal from an adverse judgment finding that none of the patents MOSAID asserted against Infineon were infringed.

06-1115, Fed. Cir.

Defended Home Diagnostics, a manufacturer of blood testing equipment, against infringement allegations by competitor. Obtained summary judgment of noninfringement of one patent and a holding of unenforceability of the other patent following a bench trial.

1:04-cv-00358, S.D. Ind., Judges McKinney, Shields

Represented Otsuka Pharmaceuticals in a patent infringement suit concerning cell-based assay methods and kits. Housey requested that judgment be entered against it after the district court issued a Markman ruling favorable to the defendants. The Federal Circuit later affirmed the judgment.

1:01-cv-00401, D. Del., Judge Robinson

Counsel for Bellcore in a patent infringement action involving patents directed to communications technology, including ATM, SONET, and IEEE 802 networking.

1:98-cv-00586, D. Del., Judge Farnan

Lead counsel for Ryobi in a patent infringement suit concerning electronic beam-finders used in construction.

3:03-cv-04446, N.D. Cal., Judge Illston

Represented Placeware in a patent infringement suit concerning remote conferencing software.

1:02-cv-02438, D. Md., Judge Garbis

Represented LaserSight in a patent infringement suit concerning corrective laser eye surgery.

2:03-cv-00678, E.D. Va., Judges Doumar, Miller

Represented a major computer and computer-peripheral manufacturer accused of stealing trade secrets relating to internet and printer technologies by a former developer. The plaintiff was asking for more than $1,500,000,000 in damages. Obtained a rare summary judgment of independent development from the district court, which was affirmed on appeal.

4:98-cv-03349, N.D. Cal., Judge Wilken
01-1459, -1548, Fed. Cir., Judges Michel, Plager, Rader

Counsel for Lorenz in a patent infringement suit concerning skull fixation devices.

3:00-cv-02394, N.D. Cal., Judges Jenkins, Spero
3:01-cv-00778, M.D. Fla., Judge Melton

Handled an appeal for an oil-refining equipment manufacturer accused by a rival of misappropriating trade secrets. The district court had found that the manufacturer had hired away the rival’s employees and encouraged them to use their former employer’s trade secrets to design refinery equipment. The district court awarded nearly $70,000,000 in damages. After a one-sided oral argument in which all three judges on the panel repeatedly criticized the district court’s reasoning, the case settled for a tiny fraction of the original award.

Lead counsel representing software manufacturer ABBYY, a Russian company (with a Silicon Valley subsidiary) that makes software for optical character recognition technology, and Lexmark International, a leading manufacturer of printers and scanners. The plaintiff, Nuance Communications, asserted eight patents against several different product lines, claiming damages in excess of $260 million. A jury found for ABBYY and Lexmark on all issues and the district court entered final judgment against Nuance. The Federal Circuit affirmed the district court's judgment.

3:08-cv-02912, N.D. Cal., Judges Addy, Brazil, James, Vegas, White
14-1629, -1630, Fed. Cir., Judges Chen, Dyk, Prost

09-1085, Fed. Cir., Judges Michel, Newman, Prost

Member of 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 second 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.

10-290, S. Ct., Judges Alito, Breyer, Ginsburg, Kagan, Kennedy, Roberts, Scalia, Sotomayor, Thomas
09-1504, Fed. Cir., Judges Moore, Prost, Schall

Appeared at trial and argued numerous motions, including JMOL, jury charge, and evidentiary motions. Jury returned verdict for client KCI. Successfully defended jury verdict of validity on appeal.

11-1105, Fed. Cir., Judges Bryson, Dyk, O'Malley
5:08-cv-00102, W.D. Tex., Judges Furgeson, Rodriguez

Represented SanDisk in appeal involving flash memory patents. Obtained reversal of district court's non-infringement finding.

04-1422, Fed. Cir., Judges Dyk, Gajarsa, Rader

Obtained reversal of a more than $45 million dollar judgment against client Ericsson.

03-1625, -1626, Fed. Cir., Judges Prost, Clevenger, Gajarsa

41 more

Insights

Event

Patent Invalidation and Assignor Estoppel: Differing Standards, Minerva Surgical v. Hologic, Contract Considerations Patent Invalidation and Assignor Estoppel: Differing Standards, Minerva Surgical v. Hologic, Contract Considerations

July 8, 2021

Webinar

Event

Protecting Technology in a Time of Vanishing Borders and Rising Nationalism Protecting Technology in a Time of Vanishing Borders and Rising Nationalism

April 1, 2021

Webinar

Articles

Where Will Be the Most Favorable FRAND Forum? Where Will Be the Most Favorable FRAND Forum?

March 2021

Bloomberg Law

Seminar

International Patent Forum 2021 International Patent Forum 2021

March 2-3, 2021

Virtual

Conference

2021 AIPLA Virtual Mid-Winter Institute 2021 AIPLA Virtual Mid-Winter Institute

February 1-5, 2021

Virtual

Event

SEP Battles: Strategic Considerations and Recent Decisions SEP Battles: Strategic Considerations and Recent Decisions

December 16, 2020

Webinar

88 more

Professional Recognition

“Maintaining a California presence for eminent boutique Finnegan, Erik Puknys has practised in Silicon Valley for over two decades. A former USPTO examiner and polished litigator, he develops lasting protection for clients.”

“One of its chief figures on the West Coast is Palo Alto-based Erik Puknys, a robust litigator who also leads the firm’s appellate division – which many consider to be the best in intellectual property in the country. With so much post-grant appeals activity going on right now, he and his group are in hot demand.”

“‘Erik Puknys is a really good guy,’ says a client. ‘He has phenomenal knowledge of case law; he’s very sharp on strategy. [He has] really good client skills [and is a] great guy.’”

“‘Erik Puknys is genuinely interested in your technology and in getting the right patent for your business. He really takes the time to understand what you are doing and then works his magic. Most would fail to get the intellectual property he gets granted and he is great at coming up with creative, effective arguments when you do get a claim rejected.”

“Erik Puknys flies the flag of celebrated boutique Finnegan, Henderson, Farabow, Garrett & Dunner in California. He leads the firm’s appellate practice, which is one of the best in the country.”

“Puknys leads the firm’s appellate practice, which is one of the best in the business.”

“‘Erik Puknys is a really good guy,’ says a client. ‘He has phenomenal knowledge of case law; he’s very sharp on strategy. [He has] really good client skills [and is a] great guy.’”

“Puknys leads the firm’s appellate practice, which is one of the best in the business.”

News

Press Release

38 Finnegan Attorneys Named Managing Intellectual Property IP Stars; Firm Maintains Tier 1 Rankings 38 Finnegan Attorneys Named Managing Intellectual Property IP Stars; Firm Maintains Tier 1 Rankings

July 8, 2021

Managing Intellectual Property

Press Release

40 Finnegan Attorneys Ranked in IAM Patent 1000 40 Finnegan Attorneys Ranked in IAM Patent 1000

July 8, 2021

Announcement

Best Lawyers Recognizes 21 Finnegan Attorneys Best Lawyers Recognizes 21 Finnegan Attorneys

August 28, 2020

Press Release

Finnegan Maintains Top Rankings in 2020 IAM Patent 1000 Guide Finnegan Maintains Top Rankings in 2020 IAM Patent 1000 Guide

June 17, 2020

Intellectual Asset Management

Press Release

31 Finnegan Attorneys Named Managing Intellectual Property IP Stars 31 Finnegan Attorneys Named Managing Intellectual Property IP Stars

May 4, 2020

Managing Intellectual Property

Media Mention

Fed. Circ. Faults PTAB Decision Upholding Bike Chain Patent Fed. Circ. Faults PTAB Decision Upholding Bike Chain Patent

December 18, 2019

Law360

42 more

Professional Activities

American Bar Foundation
(Fellow, 2021-present)
Federal Circuit Bar Association
(chair, Rules Committee, 2021-present; vice-chair, Rules Committee, 2020-2021; vice-chair, Amicus Committee, 2017-2020; chair, Model Jury Instructions Project, 2011-2017; chair, Patent Litigation Committee, 2011-2017)
American Bar Association

Admissions and Education

Admissions

California
District of Columbia

U.S. District Court, C.D. California
U.S. District Court, E.D. California
U.S. District Court, N.D. California
U.S. District Court, S.D. California
U.S. Court of Appeals, Federal Circuit
U.S. Court of Appeals, Sixth Circuit
Supreme Court of the United States
U.S. Patent and Trademark Office

Education

George Mason University School of Law: J.D., with high honors, 1997

Vanderbilt University: M.S., Materials Science, 1991

Vanderbilt University: B.E., Mechanical and Materials Engineering, 1989

Erik's Practices

Patent Litigation: Appeals; Arbitration and Other ADR; ITC Section 337; Patent Trial; Pre-Trial Strategy
Post-Grant Proceedings: Appeals of PTAB Trial Decisions; IPR, PGR, and CBM
Trade Secrets

Erik's Industries

Consumer Goods and Services: Gaming
Electronics and Information Technology: Electrical and Computer Technology; Electronic Devices and Components; Nanotechnology; Robotics
Energy: Chemical; Clean Energy and Renewables
Hospitality, Gaming, and Leisure: Sports, Fitness, and Outdoor Recreation
Life Sciences: Digital Health; Medical Device and Diagnostics; Pharmaceutical