Rimon

Eric D. Kirsch

Partner

Intellectual Property, Intellectual Property Litigation, Japan, Patent Counseling and Prosecution
New York

EDUCATION

Johns Hopkins University

B.S. in Electrical Engineering

University of Pittsburgh

J.D., Notes and Comments Editor of the Law Review and graduated cum laude

PREVIOUS EXPERIENCE

  • Assistant District Attorney for the Philadelphia District Attorney’s Office
  • Fish & Neave, Associate
  • Cooper & Dunham, Partner
  • Nikon Corporation, Chief IP Counsel
  • Davidson Berquist Jackson & Gowdey, Partner

    ADMISSIONS

  • State of New York
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the Eastern District of New York
  • U.S. District Court for the Southern District of New York
  • U.S. Patent and Trademark Office (USPTO)
  • Certiified Foreign Attorney - Japan
  • U.S. District Court for the Eastern District of Pennsylvania

    Languages

  • English
  • Japanese

Eric is a partner in Rimon’s Intellectual Property and Litigation groups. Eric represents international technology companies in patent infringement lawsuits, licensing matters and patent prosecution. With a degree in electrical engineering and extensive experience in biotech, Eric works closely with a variety of companies to protect their intellectual property rights and operate freely in the U.S.

Eric’s litigation experience includes trials, claim construction hearings, summary judgment hearings, motions in limine and arguing before the Federal Circuit. As a permanent resident of Japan based in Tokyo, Eric speaks Japanese and has a deep understanding of Japanese business culture and how Japanese businesses operate.

Eric has prior experience as an Assistant District Attorney for the Philadelphia District Attorney’s Office, as well as in private practice at Davidson Berquist Jackson & Gowdey, LLP, Fish & Neave and Cooper & Dunham. Notably, Eric served as Chief IP Counsel for Nikon Corporation in Tokyo for 11 years, where he led many patent litigation defense and assertion defense teams, drafted a number of complex licenses, and gave Nikon advice concerning complex, cross-border U.S. IP matters.

Eric is a member of the New York bar.  Eric is also admitted to practice before the U.S. Patent Office, the Eastern District of Pennsylvania, the Southern and Eastern Districts of New York, the Court of Appeals for the Federal Circuit, and is a certified foreign attorney in Japan.

REPRESENTATIVE CASES

  • Monterey Research v. AMD (Fed. Cir.);
  • ASML v. Nikon (ITC & C.D. Cal.);
  • Cellspin v. Garmin (N.D. Cal. & Fed. Cir.);
  • Digitech v. Nikon (C.D. Cal.);
  • Anvik v. Nikon (S.D.N.Y.);
  • Tarkus Imaging v. Adobe (D. Del.);
  • Media Technologies v. Upper Deck (C.D. Cal. & Fed. Cir.);
  • Synaptic Pharmaceuticals v. MDS Panlabs (D.N.J.);
  • Motorola v. U.S. Robotics (D. Del.); and
  • Motorola v. Rockwell (D. Del.).

SPEECHES AND PUBLICATIONS

  • Seminar Organizer & Speaker: Data Analytics in Patent Litigation and Patent Prosecution, AI & Data Driven IP Seminar, Tokyo International Forum (May 16, 2023);
  • Author: Effective Patent Assertion Defense – A Tutorial, Lexology (April 24, 2023, published in Japanese);
  • Author: Understanding American Patent Litigation Motives & Dynamics For Settlement, Lexology (April 11, 2023, published in Japanese);
  • Moderator: Patent Litigation & Strategy, World Intellectual Property Forum, Bangkok, Thailand, October 2022;
  • Author: A Comparative Study of Patent Litigation Defenses in the Top 5 District Courts, Journal of the AIPPI, Vol. 67, No. 4 at 51 (2022)(published in Japanese);
  • Panelist: Dispute Dynamics, IP Business Congress Asia 2019; Tokyo Japan, October, 2019;
  • Speaker: U.S. Patent Law Developments, IP Asia Summit 2018; Tokyo, Japan, October 2018;
  • Panelist: The Situation Room: Global Patent Litigation, IP Business Congress Asia 2017, Tokyo, Japan, October 2017;
  • Moderator: The Building Blocks of an Optimal IP Strategy, ALB Japan IP Conference, Tokyo, Japan, November 2015;
  • Panelist: Perfecting the IP Acquisition Process, RPX’s 2013 Fall Asian Conference, Kyoto, Japan, November, 2013;
  • Chair: Venue-Based Patent Litigation Strategies Seminar, Practicing Law Institute, July 14, 2010;
  • Speaker: In the Aftermath of In re Bilski, Practicing Law Institute’s Patent Litigation 2009 Program;
  • Speaker: Keeping Dangerous Patents out of Enemy Hands:  Prudent Advice for Tough Times, Bus. Dev. Academy (2009);
  • Speaker: Reexams and Reissues – Deja Vu All Over Again, 2009 American Intellectual Property Law Association/Practical Patent Prosecution Training for New Lawyers;
  • Panelist: Developments in U.S. Patent Law, 17th Annual International Intellectual Property Conference, Cambridge, U.K. (sponsored by Fordham Law School)(2009);
  • Chair: Parallel Patent Litigation and Reexamination Proceedings, Practicing Law Institute (2006 & 2007);
  • Lecturer: A Call for Uniformity in Local Patent Rules (AIPLA Annual Meeting 2004);
  • Lecturer: Patent Law Fundamentals (for Federal Judges and their Law Clerks of the Southern District of New York, the District of New Jersey, and the Eastern District of New York) (2003-04);
  • Lecturer: Legal Constraints on Corporate Participation in Standards Setting Bodies (AIPLA Annual Meeting 2003);
  • Author: Pitfalls for Patent Holders Participating in Setting Standards: Lessons from Townsend, 17 E-commerce Law & Strategy 1 (2002); and
  • Author: A Pocket Guide to Festo as Decided by the Supreme Court, 2 International Lawyers Network Bulletin (2002).

AWARDS AND RECOGNITION

For the past 3 years in a row, Eric was named as one of the World’s 300 Leading IP Strategists by IAM.

EDUCATION

Johns Hopkins University

B.S. in Electrical Engineering

University of Pittsburgh

J.D., Notes and Comments Editor of the Law Review and graduated cum laude

PREVIOUS EXPERIENCE

  • Assistant District Attorney for the Philadelphia District Attorney’s Office
  • Fish & Neave, Associate
  • Cooper & Dunham, Partner
  • Nikon Corporation, Chief IP Counsel
  • Davidson Berquist Jackson & Gowdey, Partner

    ADMISSIONS

  • State of New York
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the Eastern District of New York
  • U.S. District Court for the Southern District of New York
  • U.S. Patent and Trademark Office (USPTO)
  • Certiified Foreign Attorney - Japan
  • U.S. District Court for the Eastern District of Pennsylvania

    Languages

  • English
  • Japanese