Palmer, Erick J.

Erick Palmer is a litigator and registered patent attorney in Mayer Brown's Intellectual Property practice. Focusing on patent disputes in federal courts and before the Patent Trial and Appeal Board (PTAB), he has worked with industry-leading clients in numerous fields, including chemicals, pharmaceuticals, biotechnology, medical diagnostics and devices, nutraceuticals, and food science, to solve their IP needs.

Erick has substantial experience in all aspects of patent infringement cases, from fact discovery, motion practice, and claim construction to expert discovery, dispositive motions, trial, and appeal. As a trained PhD chemist, he leverages his scientific acumen to develop and implement winning litigation solutions for his clients. For example, in his most recent jury trial, Erick led the development of the expert witness strategy during discovery and then, at the express charge of the client, executed that strategy at trial through direct examination of his expert and cross-examination of the opposing expert. The result was a victory on both infringement and validity.

Erick understands that considerations in a jury trial are different from those in an America Invents Act (AIA) post-grant challenge. Although he leans on his prior experience as a general chemistry instructor for non-science majors when developing scientific arguments in a jury trial, the technical sophistication of the PTAB judges, most of whom themselves have advanced degrees in the relevant technical field, demands those same arguments survive heightened scrutiny in an AIA proceeding. Erick develops key case strategies with an eye toward this heightened scrutiny, and the results speak for themselves. He has successfully defended patents on behalf of patent owners in more than twenty inter partes reviews (IPRs) that have gone to Final Written Decision, including a rare win in which the PTAB upheld the patent as nonobvious based on “very strong” evidence of secondary considerations. He has had similar success on the petitioner side and has argued before the PTAB at the final hearing numerous times.

Clients value Erick’s ability to seamlessly work with not only their in-house lawyers but also their internal scientists and managers. In preparing for several IPRs and district court litigation, he traveled weekly to an R&D facility and worked directly with their scientists to assist in developing testing protocols and admissible evidence that were crucial to the client’s strategic legal goals.

Erick also maintains an active transactional practice and leads IP due diligence on securitization deals. He routinely advises chemical and life science companies on the various IP issues encountered when entering into asset purchase, license, joint venture, and collaboration agreements.

Areas of Focus