Photo of Eric K. Gill

Eric K. Gill

Associate
San Diego (Del Mar)
T: 858.720.8935
F: 858.523.6723

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
  • California
  • United States Patent and Trademark Office
Overview
Experience
Thought Leadership

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

Areas of Practice

Mr. Gill enjoys a dynamic IP practice that draws heavily on his industry experience and education in electrical engineering, and emphasizes patent litigation and post-grant proceedings, as well as strategic IP portfolio development and counseling (including patent drafting and prosecution). His practice also encompasses IP litigation, technology licensing, and transactional matters.

Mr. Gill’s IP litigation practice focuses on patent infringement and FRAND/standard-essential-patent litigation. His experience includes pre-filing investigation, motion practice and fact/expert discovery, infringement/invalidity contentions, claim construction, trial, post-trial motions, and settlement negotiation. He has litigated patents involving such technologies as the 2G (GSM/GPRS/EDGE), 3G (WCDMA), and 4G (LTE) wireless standards; CDMA; speech coding; TDD; multimedia broadcast multicast service; adaptive modulation; MIMO; random access; receiver architecture and circuitry; GPS and location services; control programs for wireless devices; power management and power control circuitry; image sensors and graphics processors; and multi-format, multiplexed audio/video decoding receiver circuitry. He has also litigated trademark, trade secret, copyright, unfair competition, tortious interference, and contract cases.

In addition, Mr. Gill is a registered patent attorney and represents clients before the US Patent Office, including in PTAB proceedings (e.g., Inter Partes Reviews) and in drafting and prosecuting patent applications. In this regard, he deals in such technologies as telecommunications and wireless, analog and RF circuits and systems, Bluetooth, semiconductors, MEMS, big data/analytics, data security/encryption, social media, software/firmware, and mechanical and medical devices.

Mr. Gill also provides strategic IP counseling, due diligence, and analysis, in connection with corporate transactions and acquisitions, technology licensing, patentability, freedom-to-operate, and patent portfolio landscaping.

While a law student, Mr. Gill landscaped patent portfolios in the telecom RF/analog space when he worked in the IP strategy group of one of the world’s leading semiconductor and wireless-technology companies.

Before becoming a lawyer, Mr. Gill was a microwave and radio-frequency design engineer at Northrop Grumman, where he designed microwave integrated circuits and systems for aircraft and satellite communications and for counter-improvised-explosive-device-warfare technologies. Before that, he was a radio-frequency integrated-circuit design engineer at NextWave Wireless, a San Diego semiconductor company that developed chip-sets and wireless technology for WiMAX and 4G LTE.

Experience

Patent Prosecution:

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

Patent Litigation:

  • Evolved Wireless, LLC v. HTC Corp. et al., No. 1:15-cv-543 (D Del). Represents HTC in a five-patent infringement lawsuit relating to alleged standard essential patents (SEPs) directed to the 4G LTE standard. HTC has counter-claimed for breach of contract, alleging that Evolved Wireless failed to license its patents on FRAND terms.
  • 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.
  • TCL Communication Technology Holdings, Ltd. et al. v. Telefonaktiebolaget LM Ericsson et al., No. 8:14-cv-341 (CD Cal). Represents TCL in a 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 SEPs under FRAND terms.
  • Ericsson Inc. et al. v. TCL Communication Technology Holdings, Ltd. et al., No. 2:15-cv-11 (ED Tex). Represented TCL in a five-patent infringement action relating to patents Ericsson alleges 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. TCL obtained a stay of the trial after it filed 17 IPRs against Ericsson’s asserted patents and the PTAB instituted all 17.
  • Ericsson Inc. et al. v. TCL Communication Technology 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 alleges cover the 2G, 3G, and 4G standards. TCL counter-sued on two patents related to LTE cellular networks and communications. TCL 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 six-week jury trial over antitrust and patent infringement claims.

Inter Partes Review

  • Prime Focus Creative Servs. Can. Inc. v. Legend3D, Inc., No. IPR2016-01243. Represents Patent Owner Legend3D in opposing a challenge to a Legend3D patent related to image processing.
  • TCL Corporation 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 on multiple grounds and denied Ericsson’s request for rehearing.
  • Represented petitioners and patent owners in IPR proceedings regarding patents related to chemical compounds for pharmaceutical and industrial/commercial applications.

IP and Other Litigation:

  • 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.

IP Counseling:

Provided strategic counseling regarding the scope and validity of patents related to thin-film transistor and pixel display circuit technologies for LED TVs.

Articles

Intellectual Property Law Blog Post