Eric C. Cohen

Eric C. Cohen has concentrated his practice in the field of intellectual property law for more than 30 years. Mr. Cohen is a member of the trial bar of the US District Court for the Northern District of Illinois and is admitted to practice before the Court of Appeals for the Federal Circuit, the 7th Circuit, and other federal appellate courts. He has represented several well-known public corporations in patent infringement cases, copyright infringement cases, trademark infringement cases, and trade secret cases in federal courts. Many cases have included antitrust, licensing, contract, employee agreement and fraud issues. The patent infringement actions have involved pharmaceutical products, motors, computer technology, mining vehicles, spiral groove non-contacting gas seals, chemical processes, chemical compounds, video cassette components and electronic equipment.

Mr. Cohen has represented many clients in matters before the United States International Trade Commission (ITC). Mr. Cohen obtained an exclusion order on behalf of a US rubber chemicals manufacturer against a Chinese company that was using his client’s patented process in China to manufacture chemicals that it was then importing into the United States. In the past, Mr. Cohen has also represented companies that defended against claims of infringement in the ITC. Earlier in his career, Mr. Cohen was a member of the team of lawyers who obtained ITC exclusion orders and federal court injunctions against video game manufacturers who infringed the copyrights in well-known video games.

Mr. Cohen also represents plaintiffs and defendants in patent infringement actions involving Abbreviated New Drug Applications (ANDAs) filed with the United States Food and Drug Administration (FDA) and advises clients regarding patent issues relating to ANDAs and New Drug Applications.

Many of Mr. Cohen’s copyright infringement actions have involved copyrighted software. Some of those cases involved claims of counterfeiting where he obtained a substantial number of ex parte orders, directing federal marshals to seize counterfeit goods and documents evidencing their sale and manufacture.

Recent Decisions:

• In the Matter of Certain Rubber Antidegradants, Components Thereof, and Products Containing Same, Inv. No. 337-TA-533 (USITC 2006) (obtained exclusion order on behalf of client Flexsys America LP barring the importation of rubber antidegradants; Commission rejected respondents’ invalidity arguments, adopted Flexsys’ proposed construction of patent claims, and held that process of Chinese company was covered by the claims of Flexsys’ patents)
• In the Matter of Certain Rubber Antidegradants, Components Thereof, and Products Containing Same, Inv. No. 337-TA-533 (USITC 2005) (obtained summary determination on behalf of Flexsys dismissing respondent’s affirmative defense of patent misuse)
• Korea Kumho Petrochemical Co., Ltd. v. Flexsys America LP et al., No. 06-CV-2535 (C.D. Cal. 2006)(obtained order on behalf of client Flexsys transferring antitrust action from Central District of California to Northern District of Ohio where Flexsys’ first-filed patent infringement case was pending)
• Flexsys America LP v. Kumho Tire USA, Inc., No. 05-CV-156 (N.D. Ohio 2006) (obtained order re-opening Flexsys’ patent infringement action over defendants’ objections)

Notable Appellate Court decisions:

• Hard Rock Cafe Licensing Corp. v. Parvez, 955 F.2d 1143 (7th Cir. 1992) (representing Hard Rock Café, who prevailed in first case to find liability of flea market for infringement by vendors)
• General Electric Company v. Speicher, 877 F.2d 531 (7th Cir. 1989) ( representing GE, who prevailed in trademark counterfeiting case)
• Midway Mfg. Co. v. Artic International, Inc., 704 F.2d 1009 (7th Cir. 1983) (representing Midway, who prevailed in early case establishing infringement of copyright in video games)

Notable District Court decisions:

• General Electric Company v. Souris (court granted temporary restraining order to halt theft of GE’s trade secrets)
• General Electric v. R Squared Scan Systems, Inc. (defendants, including a former GE employee, agreed to permanent injunction against infringing GE's copyrights in service software and also agreed to dismissal of antitrust counterclaim)
• John Crane v. Durametallic Corporation, No. 95 C 2840 (N.D. Ill., filed 1995)(successfully defended former employee on issue over ownership of patents)
• Jason, Inc. v. Youhan Electronics, Co. Ltd. (defendant in patent infringement case agreed to cease manufacturing items which allegedly infringed our client’s patent in components of video cassettes)
• Long-Airdox Co. v. Stamler Corporation (plaintiff in patent infringement case dismissed its complaint with prejudice after taking only two depositions of our client, who denied infringement)
• North American Philips v. Konami (America) Inc. et al. (defended claim of patent infringement involving video game technology)
• Konami (America) Inc. v. Hartford Insurance (summary judgment against insurer who wrongfully failed to defend our client in patent infringement action)
• Satyan G. Pitroda v. Casio, Inc. et al., (represented individual inventor in patent infringement action)
• Hard Rock Cafe Licensing Corp. v. Pacific Graphics, 776 F. Supp. 1454 (W.D. Wash. 1991) (court granted preliminary injunction and rejected defendant's parody defense in a trademark infringement action)

Mr. Cohen lectures frequently and has presented at the Patent Resources Group, the Practicing Law Institute, and the International Anticounterfeiting Coalition, and has written articles on intellectual property law.

He earned his JD, cum laude, from the University of Miami School of Law, where he was the note editor of the Law Review. He received a BS in physics from Case Western Reserve University.

Mr. Cohen is admitted to practice in Illinois and before the United States Patent and Trademark Office. He is a member of the American Bar Association, the Chicago Bar Association the Intellectual Property Law Association of Chicago, and the Licensing Executives Society. In addition, Mr. Cohen has been selected for inclusion in Illinois Super Lawyers (2006–2013).

Representative Litigation Matters

Biovail Labs., Inc. v. TorPharm, Inc., No. 01-9008 (N.D. Ill.) (lead trial counsel). We represented Biovail in this patent infringement action involving TorPharm’s Abbreviated New Drug Application for a generic version of our client’s Cardizem CD product. After more than 30 months of litigation, in which the court refused to consider TorPharm’s motion for summary judgment, the case settled on favorable terms.

Biovail Labs., Inc. v. TorPharm, Inc., No. 02-7119 (E.D. Pa.) (lead trial counsel). We represented Biovail in this patent infringement action involving TorPharm’s Abbreviated New Drug Application for a generic version of our client’ Tiazac product. After more than 30 months of litigation, the case settled on favorable terms after the court denied TorPharm’s motion for summary judgment of non-infringement.

Bayer AG, Bayer Corp. & Pfizer, Inc. v. Biovail Corp., Nos. 98-1282, 98-1340, 98-1492, 98-1768, 01-1205, 01-1206 (D.P.R.) (lead trial counsel). Represented Biovail in several Hatch-Waxman patent infringement actions filed by Bayer and Pfizer involving Biovail’s Abbreviated New Drug Application to market generic versions of Adalat CC and Procardia XL. Each of the actions was dismissed with prejudice, and the cases were settled on terms very favorable to our client.

Biovail Labs. Inc. v. Bayer AG, Bayer Corp. & Pfizer, Inc., No. 98-731 (W.D. Pa.) (lead trial counsel). Represented Biovail in this patent antitrust action against Bayer and Pfizer. This case was settled along with the Puerto Rico cases on favorable terms.

Bayer AG v. Biovail Corp., 279 F.3d 1340, 1345 (Fed. Cir. 2002) (co-counsel). Represented Biovail in this patent infringement action, which was defended primarily by counsel for co-defendant Elan Pharmaceutical Corp. Bayer contended that a drug manufactured by Elan and marketed by Biovail infringed Bayer’s patent. The district court entered summary judgment of non-infringement for our clients. The Federal Circuit reversed because the trial court had not addressed the plaintiff’s claim construction argument. The case settled on favorable terms thereafter.

Biovail Corp. v. Andrx Pharmaceuticals, Inc., 239 F.3d 1297, 1301 (Fed. Cir. 2001) (lead trial counsel). Represented Biovail, and replaced another firm two months before trial in this patent infringement case. After a bench trial, the court held that Andrx did not infringe Biovail’s patent. The Federal Circuit affirmed.

Novartis Corp. v. Biovail Laboratories, Inc., No. 01-1442 (D.P.R.) (lead trial counsel). Represented Biovail in a patent infringement action field against it by Novartis. After a few months of paper discovery, and before any depositions were taken, Novartis voluntarily dismissed the action with prejudice.

General Electric v. R. Squared Scan Systems, Inc., No. 87-249-WS (M.D.N.C. 1987) (lead trial counsel - copyright cases). Represented GE in copyright infringement and antitrust litigation involving computer programs used in servicing and calibrating CT scanners. The court granted GE's motion for a preliminary injunction, and the case settled on favorable terms prior to trial.

General Electric Company v. Souris (E.D. Mich. 1987) (lead trial counsel). Represented GE. The court granted our ex parte motion for a temporary restraining order against a former employee and his company for theft of trade secrets. The case was settled on favorable terms, and the former employee consented to a permanent injunction. The court also ordered an ex parte seizure on our motion for contempt after the settlement. The contempt motion was settled on favorable financial terms.

General Electric Company v. Speicher, 877 F.2d 531 (7th Cir. 1989) (briefed and argued appeal). Represented GE. We obtained an ex parte temporary restraining and seizure order and damages against a fabricator who sold counterfeit cutting inserts in genuine GE boxes. After a trial, the district court refused to award damages. The Seventh Circuit reversed the district court on each of the five grounds for appeal.

General Electric Company v. Sannet (C.D. Cal. 1984) (lead trial counsel). Represented GE. An ex parte temporary restraining order and seizure was granted against the defendant electronic parts wholesaler who sold "reconditioned" used aircraft vacuum tubes, which were re-plated, stamped with the GE trademark, and sold as if they were new. Summary judgment was granted against the defendant.

General Electric Company v. Hercules Air Products (D. Kentucky 1984) (lead trial counsel). Represented GE. The court issued an ex parte temporary restraining and seizure order against an enterprise which placed counterfeit GE labels on non-GE motors. The defendant stipulated to an injunction and paid damages to GE.

Finnsugar BioProducts, Inc. v. Amalgamated Sugar Company, No. 97-8746 (N.D. Ill.) (lead trial counsel). Represented Finnsugar in this patent infringement action involving a chromatographic separation process for separating components of beet molasses. The court held a claim interpretation hearing, and issued an opinion favorable to our client. Later, the court granted defendant’s summary judgment motion that our client’s patent was invalid. The case later settled on terms favorable to our client, and the court vacated its invalidity decision.

Finnsugar BioProducts, Inc. v. Monitor Sugar Corp., No. 00-10381 (E.D. Mich.) (lead trial counsel). Represented Finnsugar in this patent infringement action alleging that Monitor infringed four patents relating to the chromatographic separation of components of beet molasses, including the patent that the Illinois court had held invalid. Monitor counterclaimed for violation of the antitrust laws. After a three-day claim construction hearing, the case settled on terms favorable to our client.

Implant Innovations, Inc. v. Nobelpharma AB, 1998 US Dist. LEXIS 15794, No. 93 C 7489 (N.D. Ill., 1998) (trial counsel). Represented Nobelpharma AB in this patent infringement case involving dental implants. We obtained a stay of Implant Innovations’ antitrust claim against our client, Nobelpharma, and, after a nine-day claim construction hearing, obtained a favorable ruling in the interpretation of the claims of Nobelpharma’s patents in its patent infringement counterclaim. The case settled on terms favorable to our client.

SPI Lighting, Inc. v. Visa Lighting Corp., No. 96-CV-0585 (E.D. Wis., filed 1996) (lead trial counsel). Represented Visa. We defended Visa against claims that Visa had infringed three design patents. The case settled on terms favorable to our client.

Jason, Inc. v. Youhan Electronics, Co. Ltd., No. 95-C-0345 (E.D. Wis., filed 1995) (lead trial counsel). Represented Jason, Inc. in a patent infringement suit against a Korean manufacturer who was making infringing leaf springs in Korea, and selling them to videocassette manufacturers, who in turn imported them into the United States. The case settled on terms favorable to our client.

Long-Airdox Co. v. Stamler Corporation, No. 2:97 CV 66 (E.D. Tenn., filed 1996) (lead trial counsel). Represented Stamler, the defendant, in a patent infringement action involving mining equipment. After the case was transferred to our client’s home district, on our motion, the case settled on favorable terms for our client.

John Crane v. Durametallic Corporation, No. 95 C 2840 (N.D. Ill., filed 1995) (co-trial counsel). Defended Durametallic Corporation in a 10-count complaint including charges of patent infringement, theft of trade secrets, and copyright infringement involving gas seal technology. Following a nine-day bench trial on two counts of the complaint, the case settled on terms favorable to our client.

Louisville Bedding Company v. Perfect Fit Industries, Inc., No. C-94-0244L(S) (W.D. Kentucky, filed April 12, 1994), and Louisville Bedding Company v. Hollander Home Fashions Corp., No. 3:94-CV-0703-D (N.D. Texas, filed April 12, 1994) (co-trial counsel). Represented Louisville Bedding Company in two patent infringement actions. In each case, our client moved for a preliminary injunction and the defendant consented to the entry of an injunction against infringing our client's patents. Each case was resolved within six weeks.

North American Philips Corp. v. Konami (America) Inc. et al., 93 C 3261 (N.D. Ill., filed 1993) (co-trial counsel). Defended Konami against a claim of infringement of an expired patent. The court granted our motion to initially limit discovery to the issue of whether the plaintiffs had complied with the patent marking statute, and to hold a separate trial on that issue, if warranted by the results of the discovery. The case settled thereafter on favorable terms for our client.

Pitroda v. Casio, Inc. et al., No. 93 C 4991 (N.D. Ill., filed 1993) (lead trial counsel). Represented Satyan G. Pitroda in a patent infringement action involving a patent on an electronic diary. Our client recovered a substantial amount in settlements against the defendants.

Fisher & Paykel, Ltd. v. Saratoga Medical (N.D.N.Y. 1985) (lead trial counsel). Represented Fisher & Paykel in patent infringement suit and related trade secret litigation. The case was settled on favorable terms.

Itofca, Inc. v. MegaTrans Logistics, Inc., 322 F.3d 928 (7^th Cir. 2003) (lead trial counsel). Represented Itofca in this copyright infringement action. The Seventh Circuit held for the defendant, and decided that where a bankruptcy court's order authorized the making and selling of modified versions of computer software, Itofca, which had notice of the order, could not later claim that its copyright was infringed.

Mitel, Inc. v. Iqtel, Inc., 124 F.3d 1366 (10^th Cir. 1997). Represented Mitel in a copyright infringement case involving the issue of whether command codes used in telephone call controllers were protectable by copyright. Although the court affirmed the denial our client’s motion for a preliminary injunction, it reversed that portion of the District Court’s decision that held that the command codes could not be protected by copyright, leaving open the possibility that our client could win at the trial. The case settled on favorable terms for our client.

Midway Mfg. Co. v. Artic International, Inc., 704 F.2d 1009 (7th Cir. 1983) (lead trial counsel). Represented Midway. Successfully argued in a case of first impression that video games should be covered by copyright and that the unauthorized modification of our client's video game constituted copyright infringement.

Conan Properties, Inc. v. Mattel, Inc., 712 F. Supp. 353 (S.D.N.Y. 1989), motion for reconsideration granted in part, 1990 US Dist. LEXIS 16481 (1990) (lead trial counsel). Summary judgment was granted in favor of our client Mattel on copyright infringement, breach of contract, fraud and RICO claims. The case settled on favorable terms for our client.

Williams Elects. Inc. v. Bally Mfg. Corp., US Dist. LEXIS 15569 (N.D. Ill. 1983) (co-trial counsel). Court awarded summary judgment of non-infringement in copyright case against our client Bally, and awarded all of our client's attorneys fees for defending the case.

Midway Mfg. Co. v. Strohon, 564 F.Supp. 741 (N.D. Ill. 1983) (lead trial counsel). Representing Midway, we successfully argued that a copyright in a program in a computer chip was infringed by a program in the defendant's computer chip which was substantially similar, but not identical, to our client's program.

3M Company v. Manufacturera 3M S.A. de C.V., No. 01-8417 (S.D. Fla.) (lead trial counsel). Represented Manufacturera 3M S.A. de C.V. in a trademark infringement, dilution and unfair competition action filed against it by 3M Company. Our client had used the 3M mark in Mexico for over 40 years and had sold unlabeled products into this company for over 20 years. After a paper discovery, but before any depositions, we settled this case on terms very favorable to our client.

Starbucks Corp. v. Necta Sweet, Inc., 00-1977 (W.D. Wash.) (lead trial counsel). Represented Necta Sweet in this trademark infringement action. The case was settled without discovery on terms very favorable to our client.

Aliant Communications Inc. v. Interstate Energy, Inc., 4-98-CV-80345 (S.D. Iowa) (lead trial counsel). In this trademark infringement case, we represented our client Aliant Communications, a telephone company located in Lincoln, Nebraska, against a power company located in Iowa. The power company had adopted the name “Alliant.” The complaint charged that the power company infringed our client’s Aliant trademark. We obtained a temporary restraining order and a preliminary injunction, and the case settled on very favorable terms for our client shortly before trial.

Hard Rock Cafe Licensing Corp. v. Parvez, 955 F.2d 1143 (7th Cir. 1992) (lead trial counsel). We represented Hard Rock Cafe. We successfully argued in a case of first impression that the owner of a flea market could be liable for the sales of counterfeit items by vendors who rented space to sell their goods at the flea market. This case has been cited by many courts for the legal proposition that we established.

Hard Rock Cafe Licensing Corporation v. Pacific Graphics, 776 F. Supp. 1454 (W.D. Wash. 1991) (lead trial counsel). We represented Hard Rock Cafe in trademark infringement action against defendant who was selling "HARD RAIN CAFE" heat transfers in the Pacific Northwest. The court rejected the defense that HARD RAIN CAFE was a parody of HARD ROCK CAFE, and granted our motion for a preliminary injunction.

Hard Rock Cafe v. Hite, No. 91-00101 ACK (D. Hawaii 1991) (lead trial counsel). We were retained to take over trademark infringement litigation in Hawaii for Hard Rock Cafe after the court denied Hard Rock's motion for a preliminary injunction against the sale (during the gulf war) of HARD LUCK CAFE Baghdad (Basement Seating Only) T-shirts and after defendant had filed a counterclaim for interference with business relations. The court granted our motion for summary judgment dismissing the counterclaim, and the defendant agreed to cease all sales of the HARD LUCK CAFE T-shirts.

Cardtoons, L.C. v. Major League Baseball Players Ass'n, 95 F.3d 959 (10th Cir. 1996) (co-counsel). We were co-counsel in this case in which the court found that our client’s set of parody cards of major league baseball players did not violate the players’ right of publicity.

Foley Medical v. Fisher & Paykel Medical et al. (S.D. Ohio 1985). We defended Fisher & Paykel Ltd. in a dealer termination case which was initially brought against its defunct US subsidiary. We counter-sued Foley in Los Angeles and obtained summary judgment for non-payment for goods. We then filed a motion for summary judgment in the Ohio case. The defendant then agreed to drop its wrongful termination suit and to pay the Los Angeles judgment.