R. Eric Gaum

Eric focuses his practice on complex intellectual property litigation involving patents, trademarks, copyrights, trade secrets, and related business torts and unfair competition. Eric has practiced exclusively in the area of intellectual property for more than 20 years and has extensive experience litigating and trying cases across the country.

Eric has represented clients in litigation involving diverse technologies ranging from cellular telephone location-based services to chiral additives for cholesteric liquid crystal displays. He has appeared in courts in Ohio, California, Colorado, Connecticut, Delaware, Florida, Georgia, Indiana, Iowa, Michigan, Minnesota, Missouri, Nevada, New York, Oregon, Pennsylvania, Texas, Virginia, Washington, and Wisconsin.

Representative Experience

Copyright: Lead counsel in obtaining a successful jury verdict against a software company for copyright infringement, violation of the Computer Fraud & Abuse Act, trespass to chattels, and breach of an End User License Agreement (EULA). The defendant had unlawfully accessed an electronic parts catalogs and used a scraper tool to copy the original structure, sequence, and organization of the proprietary database.

Patent and Trade Dress: Lead counsel in the successful defense of patent and trade dress infringement claims related to column protection devices. Successfully opposed preliminary injunction motion and obtained summary judgment of patent non-infringement and invalidity. Successfully argued before the U.S. Court of Appeals for the Federal Circuit in defeating plaintiff’s appeal.

Copyright: Represented a major hospital system in asserting claims for copyright infringement, trade secret misappropriation, breach of contract, conversion and unfair competition related to patient call-back software. The litigation was resolved on mutually agreeable terms.

Government Contracts: Lead counsel for a software company specializing in dental x-ray imaging, in claims against the U.S. Army Dental Command (DENCOM) for breach of contract related to software licenses. Prepared administrative claim to Army contracting officer per Government regulations. Once rejected, filed suit against the Government in the U.S. Court of Federal Claims. The litigation was successfully resolved during mediation with the DENCOM and the Department of Justice.

Patent: Represented manufacturing company in asserting claims for patent infringement. Successfully argued the claim construction (Markman) hearing. The litigation settled shortly after the court issued its claim construction.

Trademark: Lead counsel for machine vision company in asserting claims for federal unfair competition and common law trademark infringement against a competitor unlawfully using two infringing trademarks. After discovery and a hearing on cross motions for summary judgment, the litigation was resolved on mutually agreeable terms.

Patent: Represented U.S. division of multinational manufacturing company in defending against claims of patent infringement related to paper shredders. After discovery, Markman claim construction ruling, and non-infringement and patent invalidity contention discovery, the litigation was resolved on mutually agreeable terms.

Copyright: Lead counsel representing numerous residential home builders and architects in asserting and defending against claims of copyright infringement under the Architectural Works Copyright Protection Act of 1990 in trials, summary judgment proceedings and mediations.

Trademark and Copyright: Represented fitness infomercial company in successfully asserted claims throughout the country for trademark and copyright infringement of trademarks and copyrighted video tapes and other materials.

Patent and Copyright: Lead counsel for international ATM manufacturer asserting claims of patent and copyright infringement against an ATM service company. Asserted claims for copyright infringement of ATM operating systems and claims for infringement of a patent directed to remote computer access to a network of ATMs for performing monitoring and detection of errors.

Patent: Represented electronic design company in asserting a patent for a card shaped computer peripheral device. Successfully obtained summary judgment of infringement and defeated cross-motion for summary judgment of patent invalidity. The litigation was settled shortly thereafter.

Design Patent: Lead counsel in defending four-wheel drive parts supplier from allegations of design patent infringement related to an aftermarket replacement for a Jeep brand dashboard. Successfully invalided the design patent on summary judgment and recovered partial attorneys’ fees after establishing that the case was exceptional.

Trademark: Lead counsel for internet hardware networking company in defending against claims of federal trademark infringement, unfair competition, trademark dilution, and related state and common law claims. The case was resolved amicably after plaintiff’s motion for summary judgment was denied.

Domain Names: Domain name dispute panel member for the World Intellectual Property Organization (WIPO); decided over 70 disputes filed under the Uniform Domain-Name Dispute-Resolution Policy (UDRP).

Expert Witness: Expert witness in a patent infringement action. Prepared expert witness report on patent invalidity based on inequitable conduct. Provided deposition testimony in support of expert report.

• “Superior Common Law Rights in South Carolina Defeat Infringement Claims,” World Trademark Review Weekly, Sept. 15, 2022
• “District Court Rejects Laches Defense in Infringement Case on Remand from Appellate Court,” World Trademark Review Weekly, June 23, 2022.
• “Court Grants Motion to Exclude Expert Witness Testimony due to Lack of Relevant Expertise,” World Trademark Review Weekly, April 21, 2022.
• “Court Grants Motion for Judgment for Failure to Sufficiently Plead Secondary Meaning in Product Design Trade Dress,” World Trademark Review Weekly, March 24, 2022.
• “Identical Product Ruled as Not Infringing Due to Lack of Evidence of Confusion,” World Trademark Review Weekly, Feb. 24, 2022.
• “A Tale of Two Committees: Board of Directors Splits in Two then Battles for IP Rights,” World Trademark Review Weekly, Feb. 10, 2022.
• “Federal Circuit Reverses TTAB Decision on MONEY MART Cancellation,” World Trademark Review Weekly, Dec. 16, 2021.