Overview

Eric Gill is an associate in the Intellectual Property Practice Group in the firm’s San Diego (Del Mar) office.

Areas of Practice

Spanning more than a decade, Eric’s IP practice draws heavily on his industry experience and education in electrical engineering and encompasses litigation and strategic portfolio development and counseling.

Eric’s litigation practice focuses on high technology, including among other things wireless and cellular communications, smartphones, automotive, Internet-of-Things, semiconductors, video coding and social media mobile applications and backend systems. Since 2014, he has been litigating and advising clients on Standard Essential Patents (SEPs) and related Fair, Reasonable and Non-Discriminatory (FRAND) licensing issues, including many patents and portfolios covering a broad spectrum of technologies in the cellular standards developed by 3GPP and adopted by ETSI and patents directed to the H.264 and H.265 video coding standards.

Eric is a registered patent attorney and has substantial experience developing valuable portfolios, including drafting and successfully prosecuting patent applications covering many different technologies. His litigation expertise informs and enhances his approach to this work. He also advises clients on matters involving trademarks, trade secrets, copyrights and unfair competition.

Before joining the firm, Eric analyzed patent portfolios of competitors and acquisition targets while working in the IP strategy group of one of the world’s leading semiconductor and wireless technology companies. Before entering the legal sector, he worked as a microwave and radio frequency design engineer at Northrop Grumman, where he designed integrated circuits and systems for aircraft and satellite communications and for counter-improvised-explosive-device-warfare technologies. He also worked as an RF chip designer at NextWave Wireless, a San Diego startup that developed chipsets and wireless technology for WiMAX and 4G LTE.

Experience

Experience

Representative Patent Litigation Matters:

  • Represents multinational e-commerce, cloud computing, online advertising, digital streaming and artificial intelligence technology company in lawsuits in the International Trade Commission and District of Delaware involving patents allegedly essential to the H.264 and H.265 video coding standards or implemented by products compliant with such standards, including related FRAND claims.
  • Represented multinational semiconductor company in patent litigation in the District of Delaware involving chip packaging, interconnect routing for integrated circuits, platform architecture for distributed dynamic functionality, and clock generator circuits. Favorably settled.
  • GCE Gas Control Equipment Inc. v. 3B Medical Manufacturing, LLC, No. 8:22-cv-02550-TDC (D Md). Represents GCE in an action seeking a declaratory judgment of non-infringement of two patents relating to portable oxygen concentrators.
  • Playvuu, Inc. v. Snap Inc., No. 2:22-cv-06019 (CD Cal). Represents Snap in a lawsuit involving the Snapchat mobile app and creating and disseminating audio and video content over a network. We invalidated the Asserted Patent on a motion to dismiss for lack of patent eligible subject matter and the court dismissed the case with prejudice.
  • UberFan, LLC v. Snap Inc., No. 1:21-cv-842-MN (D Del). Represented Snap in a lawsuit involving four patents relating to mobile imaging and media management systems and asserted to cover the Snapchat mobile app. The matter settled after we filed IPR petitions challenging the asserted patents.
  • Continental Automotive Systems, Inc. v. Nokia Corp. et al., No. 2021-0066-JRS (Del. Ch.). Represented Continental in a lawsuit seeking declaratory relief for determination and imposition of FRAND licensing terms for Nokia’s 2G, 3G, and 4G SEPs.
  • Lenovo (United States) Inc. et al. v. IPCom GmbH & Co., KG, No. 19-cv-1389-EJD (ND Cal). Represented Lenovo and Motorola Mobility in a breach of contract lawsuit involving IPCom’s failure to license cellular SEPs on FRAND terms and conditions.
  • 10Tales, Inc. v. TikTok Inc. et al., No. 3:21-cv-03868 (ND Cal). Represented TikTok and ByteDance in a lawsuit involving a patent asserted to cover the backend system and recommendation engine for the TikTok mobile app. We got the case transferred from the Western District of Texas before Judge Albright to the Northern District of California and then invalidated the patent under §101 on a motion for judgment on the pleadings.
  • Continental Automotive Systems, Inc. v. Avanci, LLC et al., No. 3:19-cv-2933 (ND Tex). Represented Continental in a lawsuit seeking declaratory relief for determination and imposition of FRAND licensing terms for the 2G, 3G, and 4G SEPs managed by the Avanci patent licensing platform.
  • Certain LTE- and 3G-Compliant Cellular Communications Devices, Inv. No. 337-TA-1138 (USITC). Represented Respondent HTC in an investigation involving five alleged SEPs asserted to cover the 3G UMTS and 4G LTE/LTE-A standards. We forced the Complainant INVT (a Fortress entity) to drop two of the asserted patents. Then, after a two week hearing Judge McNamara determined HTC did not infringe any of the remaining patents, which the Commission affirmed. On appeal, the Federal Circuit affirmed non-infringement of one patent and ordered that the other patent be dismissed.
  • INVT SPE LLC v. HTC Corp. et al., No. 2:17-cv-3740 (DNJ). Represented HTC in an eight-patent infringement action relating to alleged SEPs asserted to cover the 2G EGPRS, 3G UMTS/WCDMA/HSPA and 4G LTE/LTE-A standards. HTC counter claimed for breach of FRAND and we filed numerous IPRs against the asserted patents. Favorably settled after we prevailed at the ITC and in IPRs.
  • Bell Northern Research, LLC v. Lenovo Group Ltd. et al., No. 6:21-cv-847 (WD Tex). Represented Lenovo and Motorola Mobility in an 11 patent lawsuit involving smartphone and laptop features, including among other things proximity sensors, multi-chip packaging, and Android.
  • u-blox AG et al. v. Koninklijke KPN N.V., No. 3:21-cv-1220 (SD Cal). Represented plaintiff u-blox in a lawsuit for breach of FRAND, FRAND rate setting for KPN’s 2G, 3G, and 4G SEP portfolio, antitrust violations, and unenforceability of certain KPN patents due to implied waiver.
  • TCL Commc’n Tech. Holdings, Ltd. et al. v. Telefonaktiebolaget LM Ericsson et al., No. 8:14-cv-341 (CD Cal). Represented TCL in a landmark breach-of-contract and declaratory judgment action relating to ETSI’s IPR Policy and Ericsson’s obligation to license its 2G GSM/GPRS/EDGE, 3G UMTS and 4G LTE/LTE-A SEPs under FRAND terms. After a three week bench trial, Judge Selna largely adopted our technical and economic analysis and set royalty rates for Ericsson’s SEP portfolio that were a fraction of what Ericsson had demanded from TCL.
  • Sun Patent Trust v. HTC Corp., 2:20-cv-286 (ED Tex). Represented HTC in a six-patent lawsuit involving alleged SEPs asserted to cover the LTE and LTE-Advanced cellular standards. Favorably settled.
  • Evolved Wireless, LLC v. HTC Corp. et al., No. 1:15-cv-543 (D Del). Represented HTC in a five-patent infringement lawsuit relating to alleged SEPs asserted to cover the 4G LTE standard. HTC counter claimed for breach of contract, alleging that Evolved Wireless failed to license its patents on FRAND terms, and filed IPRs against all the asserted patents. Evolved dropped three of the patents and the PTAB invalidated a fourth. As for the remaining patent, the court granted our motion for summary judgment based on a license and patent exhaustion defense stemming from an agreement between HTC’s chip supplier Qualcomm and the original patent owner LG Electronics. The Federal Circuit affirmed in part and the case was dismissed.
  • Pixmarx IP LLC v. Snap Inc., No. 3:20-cv-1157 (ND Tex). Represented Snap in a lawsuit involving four patents related to embedding an overlay in a digital photograph and asserted to cover the Snapchat mobile app. The matter settled quickly after we filed six IPR petitions challenging the asserted patents.
  • u-blox AG et al. v. Sisvel Int’l S.A. et al., No. 3:20-cv-494 (SD Cal). Represented u-blox in a breach of FRAND and antitrust action relating to Sisvel’s portfolio of 2G, 3G, and 4G alleged SEPs.
  • u-blox AG et al. v. InterDigital, Inc. et al., No. 3:19-cv-1 (SD Cal). Represented u-blox in a breach of contract and antitrust lawsuit arising from InterDigital’s obligation to license its SEPs on FRAND terms. Defended u-blox against InterDigital’s counterclaims of infringement of two patents directed to resource allocation and carrier aggregation.
  • Prestige Flag Mfg. Co., Inc. v. Golf Solutions I, LLC, No. 3:18-cv-98 (WD Wis). Represented Prestige in a case for design patent infringement and federal and common law unfair competition.
  • McCree’s Multi Services, LLC v. Poway Weapons & Gear, Inc. et al., No. 3:17-cv-1749 (SD Cal). Represented Poway Weapons & Gear as local counsel in a two-patent case involving firearm technology.
  • Hitachi Maxell, Ltd. v. ZTE Corp. et al., No. 5:16-cv-179 (ED Tex). Represented ZTE in an eight-patent infringement lawsuit relating to patents alleged to cover aspects of cellular phone technology such as power management circuitry, image sensors and graphics processors, transmit power control circuitry and multi-format, multiplexed audio/video decoding receiver circuitry.
  • Ericsson Inc. et al. v. TCL Commc'n Tech. Holdings, Ltd. et al., No. 2:15-cv-11 (ED Tex). Represented TCL in a five-patent infringement action relating to patents Ericsson alleged cover aspects of cellular phone hardware and the Android OS, including multimode direct conversion receiver circuitry, A-GPS and control programs for wireless communications. TCL counter sued on two patents relating to LTE cellular network infrastructure and base stations. The court granted our motion to stay after we filed 17 IPRs against Ericsson’s asserted patents and the PTAB instituted all 17. The PTAB invalidated four of the five patents and the Federal Circuit invalidated the fifth.
  • Ericsson Inc. et al. v. TCL Commc'n Tech. Holdings, Ltd. et al., No. 2:14-cv-667 (ED Tex). Represented TCL in a two-patent infringement action relating to speech coding and modulation patents Ericsson alleged cover the 2G, 3G and 4G standards. TCL counter sued on two patents related to LTE cellular networks and communications. We got the case transferred to CD Cal, consolidated with the FRAND case and stayed pending the outcome of that case.
  • Prestige Flag Mfg. Co., Inc. v. Par Aide Products Co., No. 14-cv-2711 (SD Cal). Represented Prestige in an action for design patent and trade dress infringement, and state and federal unfair competition.
  • Prestige Flag Mfg. Co., Inc. v. Standard Golf Co. et al., No. 14-cv-1574 (SD Cal). Represented Prestige in an action for design patent infringement.
  • Abdou v. Alphatec Spine, Inc., No. 3:12-cv-1804 (SD Cal). Represented Alphatec Spine in a patent infringement action.
  • LendingTree, LLC v. Zillow, Inc. et al., No. 3:10-cv-439 (WD NC). Represented LendingTree in a lawsuit and six-week jury trial involving antitrust and patent infringement claims.
  • Represented numerous clients in connection with third party subpoenas served in patent cases involving such technologies as semiconductors, telecommunications, video game hardware, gene sequence enrichment, spinal surgery tools and wearable electronic devices.

Representative Inter Partes Review Matters:

  • Snap Inc. v. UberFan, LLC, Nos. IPR2022-00750, IPR2022-00751, IPR2022-00752, IPR2022-00753. Represented Petitioner Snap in four IPRs challenging UberFan’s patents relating to mobile imaging and media management systems and asserted to cover the Snapchat mobile app. Settled pre-institution.
  • Snap Inc. v. Sanderling Management Ltd., Nos. IPR2021-00778, IPR2021-00779, IPR2021-00780, IPR2021-00781. Represented Petitioner Snap in four IPRs challenging Sanderling’s patents relating to location based image processing functions and asserted to cover the Snapchat mobile app. The PTAB found all challenged claims unpatentable.
  • Apple Inc. et al. v. INVT SPE LLC, IPR2019-01574. Represented Petitioner HTC in a challenge to INVT’s alleged SEP relating to a hybrid automatic repeat request system. INVT disclaimed the challenged claims.
  • HTC Corp. et al. v. INVT SPE LLC, IPR2018-01555, IPR2018-01581. Represented Petitioner HTC in its challenge to INVT’s alleged SEP relating to adaptive modulation and coding. Trial instituted.
  • Apple Inc. et al. v. INVT SPE LLC, IPR2018-01476. Represented Petitioner HTC in a challenge to INVT’s alleged SEP relating to multiple antenna transmission. The PTAB invalidated the challenged claims and the Federal Circuit affirmed.
  • Snap Inc. v. Pixmarx IP LLC, IPR2021-00140, IPR2021-00141, IPR2021-00142, IPR2021-00143, IPR2021-00232, IPR2021-00233. Represented Petitioner Snap in six IPRs filed against Pixmarx’s patents relating to embedding an overlay in a digital photograph and asserted to cover the Snapchat mobile app. Settled before the patent owner preliminary responses were filed.
  • Apple Inc. et al. v. INVT SPE LLC, IPR2018-01475. Represented Petitioner HTC in a challenge to INVT’s alleged SEP relating to modulation. The PTAB invalidated the challenged claims.
  • Apple Inc. et al. v. INVT SPE LLC, IPR2018-01473. Represented Petitioner HTC in a challenge to INVT’s alleged SEP relating to transmission power and rate control. Trial instituted.
  • Apple Inc. et al. v. INVT SPE LLC, IPR2018-01472. Represented Petitioner HTC in a challenge to INVT’s alleged SEP relating to discontinuous transmission. The PTAB invalidated the challenged claims.
  • Prime Focus Creative Servs. Can. Inc. v. Legend3D, Inc., No. IPR2016-01243. Represented Patent Owner Legend3D in opposing a challenge to one of its patents related to image processing. The PTAB upheld several claims.
  • TCL Corp. et al. v. Telefonaktiebolaget LM Ericsson, Nos. IPR2015-1584, IPR2015-1600. Represented Petitioner TCL in its challenge to an Ericsson patent directed to multimode direct conversion receiver circuitry. The PTAB invalidated all the challenged claims and denied Ericsson’s request for rehearing. The Federal Circuit affirmed.
  • TCL Corp. et al. v. Ericsson Inc., No. IPR2015-1583. Represented Petitioner TCL in its challenge to an Ericsson patent directed to control programs for wireless communication devices. The PTAB invalidated all challenged claims.
  • TCL Corp. et al. v. Telefonaktiebolaget LM Ericsson, Nos. IPR2015-1650, IPR2015-1772, IPR2015-1878. Represented Petitioner TCL in its challenge to an Ericsson patent directed to using QoS parameters in A-GPS for mobile terminals. The PTAB invalidated all challenged claims.
  • Represented petitioners and patent owners in IPR proceedings involving patents directed to chemical compounds for pharmaceutical and industrial/commercial applications.

Representative IP and Other Litigation Matters:

  • Represented multinational semiconductor company in a Delaware lawsuit relating to bulk acoustic wave filters and involving claims of patent infringement, false advertising, false patent marking, unfair competition, trade secret misappropriation, racketeering and civil conspiracy. We obtained a $40M jury verdict for our client based on the defendant’s misappropriation of our client’s trade secrets and infringement of our client’s patents.
  • Citizens Equity First Credit Union v. San Diego County Credit Union, No. 92066165 (TTAB). Represented SDCCU in a trademark cancellation proceeding brought by CEFCU.
  • Prestige Flag Mfg. Co., Inc. v. Golf Solutions I, LLC et al., No. 3:14-cv-2945 (SD Cal). Represented Prestige in an action for breach of contract.
  • Golf Solutions I, LLC v. Prestige Flag Mfg. Co., Inc. et al., No. 14-cv-869 (WD Wis). Represented Prestige in an action for breach of contract.
  • Konstantino v. AngioScore, Inc., No. 9681-CB (Del Ch). Represented AngioScore in an action for advancement of legal fees related to AngioScore’s claims for patent infringement, breach of fiduciary duty and unfair competition.
  • RamSoft, Inc. v. Imaging Advantage, LLC et al., No. 14-cv-335 (CD Cal). Represented RamSoft in an action for breach of contract, copyright infringement, copyright management information removal/alteration, trade secret misappropriation and intentional interference with contract.
  • Cobra Systems, Inc. v. Accuform Manufacturing, Inc., No. 13-cv-5932 (CD Cal). Represented Cobra in an action for copyright infringement, copyright management information removal/alteration, trademark infringement, state and federal unfair competition and breach of contract.

Patent Drafting and Prosecution:

  • Representative clients include Dexcom, Disney, JayBird, MasterCard, Toyota and Western Digital.

Representative IP Counseling:

  • Provides strategic counseling to major handset manufacturers, semiconductor companies, automotive suppliers and IoT clients regarding cellular SEPs and FRAND issues in connection with license negotiations, portfolio acquisitions and government investigations, including with respect to the 4G LTE and 5G NR cellular standards developed by 3GPP and adopted by ETSI.
  • Counsels clients in connection with obtaining trademarks and copyrights.
  • Provided strategic counseling to automotive supplier regarding IP issues relating to the AUTOSAR automotive standard setting organization.
  • Provided strategic counseling regarding the scope and validity of patents related to thin-film transistor and pixel display circuit technologies for LED TVs.

Honors

Honors

Ones to Watch — Intellectual Property Law, Best Lawyers, 2021-2025

Insights

Events

Memberships

Memberships

Co-Chair of the Model Patent Jury Instructions Subcommittee, American Intellectual Property Law Association (AIPLA)

Board of Directors, J. Reuben Clark Law Society, San Diego Chapter

Barrister, J. Clifford Wallace American Inn of Court, 2019-2020

Education

J.D., Brigham Young University, J. Reuben Clark Law School, 2013, cum laude; Senior Editor, Brigham Young University Law Review

B.S., Electrical Engineering, University of California, Santa Barbara, 2007

Admissions

  • California
  • United States Patent and Trademark Office
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