Erick J. Palmer, Ph.D.

Erick Palmer is a trial lawyer who focuses his practice on patent disputes in federal courts and before the Patent Trial and Appeal Board (PTAB). Erick has counseled and advocated for clients on issues involving patent and trade secret disputes, as well as a range of intellectual property considerations related to asset purchases, licensing, joint ventures, and collaboration agreements.

He represents clients across industries, including pharmaceuticals, biotechnology, chemicals, food sciences, nutraceuticals, and medical diagnostics and devices. Erick has successfully defended patents on behalf of patent owners in more than twenty inter partes reviews (IPRs) that have gone to Final Written Decision.  

As a Ph.D. chemist, Erick brings a unique skillset and knowledge to his practice. His experience teaching general chemistry to non-science majors translates seamlessly to the courtroom, where he excels at presenting clear, accessible arguments to juries. At the same time, his background as a chemist enables him to engage with the technical rigor expected by PTAB judges, particularly in the highly scrutinized environment of America Invents Act (AIA) proceedings.

Practice Areas

Representative Matters

• DSM Biomedical v. Honeywell, 2024. Successfully defeated petition for inter partes review of patent covering pigmented ultra-high molecular weight polyethylene yarn used to make medical-grade sutures and anchors used in orthopedic and cardiac surgeries.*
• DSM Nutritional Products v. Mara Renewables, 2023. Successfully defeated three inter partes review petitions on behalf of Patent Owner. After submitting preliminary responses in all three proceedings, the PTAB agreed that, based on the merits, the patent challenger had not shown a reasonable likelihood that it would succeed on demonstrating unpatentability.*
• Galderma v. Medinter. D. Delaware, 2020. Successfully asserted patent covering SCULPTRA^® aesthetic product against competitor resulting in favorable judgment.*
• DSM v. Lallemand, W.D. Wisconsin, 2018. Won a $14.5 million verdict on behalf of DSM Bio-Based Products & Services in a jury trial involving patented yeast used for industrial-scale production of ethanol from corn stock.*  
• Led the IP due diligence on behalf of a private investment group in a multi-million-dollar deal involving the acquisition of over 8,000 U.S. and international patents and patent applications. (2017).*
• Varian Medical Systems v. William Beaumont Hospital & Elekta, 2017. Won thirteen IPRs—seven as patent owner and six as petitioner—on behalf of Elekta. These involved patents covering cone-beam computed tomography technology used in association with medical linear accelerators for radiation therapy.*
• Amneal Pharms. v. Endo Pharms., 2015. Won three IPRs on behalf of Endo Pharmaceuticals involving patents covering its Opana® ER product. One IPR was dismissed at the institution phase because it was untimely. The other two IPRs went to Final Written Decision, with the PTAB agreeing that the generic challenger had failed to show that the claimed pharmaceutical dissolution rates were disclosed in or suggested by the prior art, a holding that was summarily affirmed on appeal.*
• Corning v. DSM, 2014. Won a series of IPRs on behalf of patent owner DSM involving patents covering glass optical fiber coating technology, with more than 70% of the 225 challenged patent claims being upheld. These IPRs were some of the first in which the PTAB granted a patent owner's motion for additional discovery.*

• Won a Federal Circuit appeal in which the district court's dismissal of a patent infringement suit with prejudice was affirmed. Agreeing that the accused products were essentially the same as products that had been finally determined to be non-infringing in a previous case, the appellate court found that the present infringement case was barred under the Supreme Court's century-old decision in Kessler v. Eldred. Brain Life v. Elekta, 746 F.3d 1045. (Fed. Cir. 2014).*
• Medical Instruments Development v. Cook Medical, E.D. New York, 2013. Won dismissal for an international medical device company accused of infringing six patents covering ERCP catheters. The plaintiff dismissed its complaint with prejudice prior to summary judgment.*
• Valeant v. Watson, M.D. Florida, 2011. Won a Hatch-Waxman case on behalf of Valeant for its Aplenzin® antidepressant. After stipulating to infringement, the district court found that the patent was not invalid, which was affirmed on appeal.*
• Prestige Pet Prods. v. Pingyang Huaxing Leather & Plastic Co., E.D. Michigan, 2011. Won an early motion to dismiss a claim of patent infringement and a claim for provisional rights damages on behalf of a global pet food manufacturer of dog chews.*
• Won a case in which the PTAB upheld the patent as nonobvious based on "very strong" evidence of secondary considerations.*

 *matter handled prior to joining Honigman LLP

Represented:

• Sleep-Disordered Breathing Treatment Systems and Components Thereof, ITC, 2014. A foreign medical device manufacturer of CPAP breathing apparatuses in patent litigation before the ITC. Following a bench trial and Commission review, the Commission found that the primary patent was invalid in view of the prior art.*
• Brandeis Univ. v. Nestle & Keebler, N.D. Illinois, 2013. Cookie and cookie dough manufacturers accused of infringing a patent covering certain fat compositions that reduce cholesterolemia. After succeeding in claim construction and excluding most of the opposing expert's opinion on damages, the parties favorably settled.*

*matter handled prior to joining Honigman LLP

Other engagements include:

• 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 expert/cross-examination of opposing expert. The result was a victory on both infringement and validity.*
• Galderma v. Tolmar, N.D. Texas, 2011. Successfully defeated an early summary judgment motion brought by a generic manufacturer in a Hatch-Waxman case involving Galderma's MetroGel®. The parties favorably settled thereafter.*

*matter handled prior to joining Honigman LLP

Prior Experience

• Mayer Brown, Partner

Education

Admissions

Court Admissions

Professional & Community Involvement

• American Intellectual Property Law Association, Member
• Federal Circuit Bar Association, Member

Press Releases