Eric C. Arnell

Member

Eric C. Arnell

Overview

Eric Arnell is based in Leydig’s Frankfurt Germany office, where he advocates for the intellectual property interests of European-based clients doing business in the United States. His practice includes patent preparation and prosecution, legal opinion drafting, proceedings before the U.S. Patent Trial and Appeal Board, and litigating in U.S. Federal Courts.

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Prior to joining Leydig, Mr. Arnell was an intellectual property litigator based in Austin, Texas for several years, where his practice focused on high-tech and pharmaceutical litigation before U.S. District Courts and Courts of Appeal, as well as post-grant proceedings before the U.S. Patent Trial and Appeal Board. Mr. Arnell began his legal career at a boutique intellectual property law firm in Pasadena, California, where he primarily prepared and prosecuted U.S. patents. Prior to entering the field of law, Mr. Arnell worked for several years as an engineer at a leading producer of kinetic energy storage solutions.  Mr. Arnell received a Doctor of Jurisprudence with honors from the University of Texas School of Law, and a Bachelor of Science in Electrical Engineering from the University of Texas.

Technologies that Mr. Arnell has particularly familiarity with include power systems, clean energy tech., electronics, electro-mechanical systems, control systems, circuit design, displays, software, and telecom systems.

Experience

Litigation Experience

Mr. Arnell has represented clients in U.S. District Courts and Courts of Appeal in various intellectual property matters, including patent infringement suits, hatch-waxman actions, copyright infringement suits, and claims of misappropriation of trade secrets.  Client successes include obtaining a district court ruling of validity and infringement for a pharmaceutical innovator which prevented early entry of generic competition, successful enforcement of a contested settlement agreement at district court and on appeal, and multiple early resolutions of intellectual property infringement claims prior to trial, including dismissals on the pleadings. What follows are some of Mr. Arnell’s representative matters.

  • Defended a leading developer of blockbuster video games against multiple actions for patent infringement by a patent holding entity (D. Del.).
  • Represented an innovator pharmaceutical company in multiple hatch-waxman lawsuits brought against generic pharmaceutical companies asserting infringement of multiple orange book listed patents for multiple pulmonary hypertension medications (D. Del.; D. N.J.).
  • Represented an innovator pharmaceutical company in an appeal of an action brought against the U.S. Patent and Trademark Office over their promulgation and application of rules governing patent term extension (Fed. Cir.).
  • Defended a generic pharmaceutical company in a hatch-waxman lawsuit brought by a pharmaceutical company seeking to block a generic version of a migraine headache drug, including enforcing a settlement agreement at district court and defending that enforcement on appeal (D. Del; Fed. Cir.).
  • Defended a generic pharmaceutical company in a hatch-waxman lawsuit brought by a pharmaceutical company seeking to block a generic version of an anti-seizure medication (D. Del; Fed. Cir.).
  • Defended a generic pharmaceutical company in a hatch-waxman lawsuit brought by a pharmaceutical company seeking to block a generic version of an antibiotic (D. Del; Fed. Cir.).
  • Defended a generic pharmaceutical company in a hatch-waxman lawsuit brought by a pharmaceutical company seeking to block a generic version of an iron chelation therapy (D. Del.).
  • Defended an importer of woven baskets against a competitor’s claims for copyright infringement, misappropriation of trade secrets, and unfair competition (C.D. Cal.).
  • Defended a remote control manufacturer against claims of patent infringement by a direct competitor, including successfully obtaining denial of a temporary restraining order and preliminary injunction (C.D. Cal.).
  • Represented a start-up image processing company in asserting claims for patent infringement against a multi-national internet technology company (C.D. Cal.).
  • Defended a manufacturer of drilling equipment against claims of patent infringement by a direct competitor (W.D. Tex.)

Post Grant Proceedings

Mr. Arnell has represented clients before the U.S. Patent Trial and Appeal Board, and its predecessor Board of Patent Appeals and Interferences, in more than twenty proceedings.  Mr. Arnell’s representation includes both challenging and defending the patentability of patents, often in conjunction with a parallel district court litigation.  Highlights of Mr. Arnell’s representation include achieving multiple full denials of institution for patent holders as well as frequent successes in leveraging institution decisions to achieve favorable, early resolution in district court litigation for accused infringers.  Below are some of Mr. Arnell’s representative proceedings.

  • Represented a start-up image processing company in multiple inter partes reexamination and ex parte reexamination proceedings challenging the patentability of several of their patents brought by a multi-national internet technology company.
  • Represented a leading multi-national generic pharmaceutical company in multiple inter partes review proceedings challenging the patentability of several orange book-listed patents directed to an antibiotic,
  • Represented a leading multi-national generic pharmaceutical company in an inter partes review proceeding challenging the validity of an orange book listed patent directed to anti-seizure medication, and in the subsequent appeal to the Federal Circuit.
  • Represented an innovator pharmaceutical company in an inter partes review proceeding defending the patentability of an orange book listed patent directed to pulmonary hypertension medication.
  • Represented a manufacturer of wearable bio-trackers in multiple inter partes review proceedings both challenging the patentability of a direct competitors patents and defending the patentability of their own patents.
  • Represented a leading developer of blockbuster video games in inter partes review proceedings challenging the validity of multiple patents on video game networking owned by a patent holding company.
  • Represented a manufacture of parking meters in multiple inter partes review proceedings challenging their patents brought by a direct competitor.

Domain Name Disputes

  • Represented a boutique jewelry designer in multiple UDRP actions before ICAAN and obtained transfer of domain name rights from cyber-squatters and counterfeit vendors.
  • Represented a large department store in multiple UDRP actions before ICANN and obtained transfer of domain name rights from cyber squatters.

Education

  • University of Texas, J.D., 2011
  • University of Texas, B.S. in Electrical Engineering, 2004

Admissions

  • Registered to practice before the U.S. Patent and Trademark Office
  • California
  • Texas

Professional Affiliations

  • Vereinigung von Fachleuten des Gewerblichen Rechtsschutzes (VPP)

Articles, Publications & Lectures

  • “Recent Developments in U.S. Patent Law”, Seminar or International IP Trends, Munich, Germany (September 12, 2018).

Education

  • University of Texas, J.D., 2011
  • University of Texas, B.S. in Electrical Engineering, 2004

Admissions

  • Registered to practice before the U.S. Patent and Trademark Office
  • California
  • Texas