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Erik_Puknys
Erik R. Puknys
Partner
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  • Stanford Research Park
  • 3300 Hillview Avenue, 2nd Floor
  • Palo Alto, CA 94304-1203
+1 650 849 6644
erik.puknys@finnegan.com erik.puknys@finnegan.com

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
  • vCard
Erik_Puknys
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

Nuance Communications Inc,. v. Abbyy USA Software House Inc.
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

Innovative Therapies, Inc. v. Kinetic Concepts, Inc.
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

i4i v Microsoft Corp.
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

Kinetic Concepts, Inc. v. Smith & Nephew 
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

SanDisk v. Memorex Prods., Inc.
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

Harris Corp. v. Ericsson Inc.
Obtained reversal of a more than $45 million dollar judgment against client Ericsson.

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

Fox Factory, Inc. v. SRAM, LLC
Successfully convinced the Federal Circuit to vacate and remand an adverse PTAB decision, 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.

18-2024, -2025, Fed. Cir., Judges Prost, Wallach, Hughes

Two-Way Radio Equipment and Systems, Related Software, and Components Thereof
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

Cepheid v. Roche Molecular Systems, Inc.
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

Gerber Scientific International, Inc. v. Roland DG Corp.

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

Roche Molecular Systems, Inc. v. Cepheid
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

Nuance Communications Inc,. v. Abbyy USA Software House Inc.
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

Industrial Technology Research Institute v. Pacific Biosciences of California, Inc. 
Lead counsel in an appeal from an adverse decision in an interference concerning DNA sequencing technologies.

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

Asetek Danmark A/S v. CMI USA, Inc.
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

ParkerVision, Inc. v. Qualcomm Inc.
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

Highmark, Inc. v. Allcare Health Management System, Inc.
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

Digital Imaging Systems, Inc. v. ABBYY USA Software House, Inc. 
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

Brooks Automation, Inc. v. Telemark, Inc.
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

James L. Greene v. Dept. of Veterans Affairs
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

Juniper Networks, Inc. v. S. Vasanthkumar
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

Uniloc USA v. Microsoft Corp.
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

Goodman v. Winbond Electronics Corp.
Lead counsel for Winbond in this patent infringement case concerning semiconductor memory devices.

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

Certain Dynamic Random Access Memory Semiconductors
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

Elpida Memory, Inc. v. Infineon Technologies AG
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

Innovative Therapies, Inc. v. Kinetic Concepts, Inc.
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

Power Integrations, Inc. v. BCD Semiconductor Corp.
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

Freedom Wireless v. Boston Communications Group, Inc. 
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.

MOSAID v. Infineon
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.

Roche Diagnostics Corp. v. Home Diagnostics Inc.
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

Housey Pharmaceuticals, Inc. v. Otsuka Pharmaceutical Co. Ltd.
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

Bell Communications v. Fore Systems Inc.
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

Zircon Corp. v. Ryobi Technologies, Inc. 
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

Hamilton v. Placeware, Inc. 
Represented Placeware in a patent infringement suit concerning remote conferencing software.

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

Alcon Corp. v. LaserSight, Inc. 
Represented LaserSight in a patent infringement suit concerning corrective laser eye surgery.

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

Insight Development Corp. v. Hewlett-Packard

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

Aesculap AG v. Walter Lorenz Surgical, Inc.
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

Finnegan provides appellate relief for manufacturer of oil & gas equipment manufacturer hit with $70 million district court judgment

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.

Nuance Communications Inc,. v. Abbyy USA Software House Inc.

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

Innovative Therapies, Inc. v. Kinetic Concepts, Inc.

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

i4i v Microsoft Corp.

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

Kinetic Concepts, Inc. v. Smith & Nephew 

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

SanDisk v. Memorex Prods., Inc.

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

Harris Corp. v. Ericsson Inc.

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

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

42 more

Insights

Conference

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

February 1-5, 2021

Virtual

Webinar

SEP Battles: Strategic Considerations and Recent Decisions

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

December 16, 2020

Webinar

Seminar

Practical Considerations for Companies Facing Trade Secret Issues Practical Considerations for Companies Facing Trade Secret Issues

November 20, 2020

Virtual

Articles

SEP Users Should Jettison Antitrust For Patent, Contract Law

SEP Users Should Jettison Antitrust For Patent, Contract Law SEP Users Should Jettison Antitrust For Patent, Contract Law

October 15, 2020

Law360

Conference

IP Counsel Café 2020 IP Counsel Café 2020

September 14-22, 2020

Virtual

Articles

German FRAND Decision May Shape Global SEP Landscape

German FRAND Decision May Shape Global SEP Landscape German FRAND Decision May Shape Global SEP Landscape

August 25, 2020

Law360
84 more

Upcoming Events

Conference

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

February 1-5, 2021

Virtual

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.”

Intellectual Asset Management Patent 1000

“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.”

Intellectual Asset Management Patent 1000

“‘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.’”

Managing Intellectual Property IP Stars

“‘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.”

Intellectual Asset Management Patent 1000

“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.”

Intellectual Asset Management Patent 1000

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

Intellectual Asset Management Patent 1000

“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.”

Intellectual Asset Management Patent 1000

“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.”

Intellectual Asset Management Patent 1000

“‘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.’”

Managing Intellectual Property IP Stars

“‘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.”

Intellectual Asset Management Patent 1000

“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.”

Intellectual Asset Management Patent 1000

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

Intellectual Asset Management Patent 1000

News

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

Commentary

4 Tips for Presenting a Patent Infringement Case to Jurors 4 Tips for Presenting a Patent Infringement Case to Jurors

September 11, 2019

Law360

Press Release

IAM 2019 Patent 1000 Guide Continues to Rank Finnegan as a Top Tier IP Firm IAM 2019 Patent 1000 Guide Continues to Rank Finnegan as a Top Tier IP Firm

June 24, 2019

40 more

Professional Activities

  • Federal Circuit Bar Association
    (vice-chair, Amicus Committee, 2017-present; chair, Model Jury Instructions Project, 2011-present; co-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

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