Eric Gaum 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 the last 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.
Eric 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. A licensed patent attorney with a background in electrical engineering and software development, Eric has experience in litigation, prosecution matters, and licensing related to technologies as varied as smart phones, personal digital assistants, building column protection devices, cheese slice processing equipment, industrial drill and boring tools, automatic teller machines, electroplating systems, electronic parts catalogs, and patient call-back systems. Eric also practices before the Patent Trial and Appeal Board (PTAB) in appeals in patent applications, reexamination, Inter Partes Review (IPR), Covered Business Method (CBM), and Post Grant Review (PGR) proceedings.
In addition to patent litigation, a significant portion of Eric’s practice involves copyright and trademark litigation. Eric has litigated copyright infringement matters related to product labels, books, photographs, websites, software, databases, blue prints, and architectural works. Eric has litigated trademark and trade dress infringement matters in state and federal courts across the country, and handled opposition and cancellation proceedings before the Trademark Trial and Appeal Board (TTAB). Eric has also briefed and argued appeals in intellectual property cases before the U.S. Court of Appeals for the Federal Circuit and the U.S. Courts of Appeals for the Sixth and Eleventh Circuits.
At Hahn Loeser
Eric has been recognized for his professional accomplishments in such publications as Ohio Super Lawyers, and is AV® Preeminent™ Rated by Martindale-Hubbell, its highest available rating for legal ability and professional ethics. He formerly served as an extern for The Honorable Judge Peter C. Economus, United States District Court, Northern District of Ohio. Since 2000, Eric has also served as a domain name dispute administrative panelist for the World Intellectual Property Organization.
Representative Experience Copyright: Lead counsel for Snap-on Business Solutions, a division of Snap-on Tools, 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 one of Snap-on Business Solutions’ 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 The Cleveland Clinic Foundation 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 Apteryx, Inc., 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 Crown Divisions of Transpro, Inc. 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 Applied Vision Corporation 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 Royal Appliance Manufacturing Company, dba TTI Floor Care North America, 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 company responsible for the Tae Bo® brand fitness system that incorporates martial arts techniques. Successfully asserted claims throughout the country for trademark and copyright infringement of the Tae Bo® trademark and copyrighted video tapes and other materials. Patent and Copyright: Lead counsel for Diebold Incorporated and Diebold Self-Service Systems (collectively “Diebold”) asserting claims of patent and copyright infringement against an ATM service company. Diebold asserted claims for copyright infringement of its TCS and Agilis 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 Khyber Technologies 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 Starbak Communications 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.
University of Cincinnati B.S.E.E.T. 1989
University of Akron Law School J.D. 1996
American Intellectual Property Law Association, Member
Cleveland Intellectual Property Law Association, Member
Federal Circuit Bar Association, Member
International Trademark Association, Member
U.S. Court of Appeals for the Eleventh Circuit
U.S. Court of Appeals for the Federal Circuit
U.S. Court of Appeals for the Sixth Circuit
U.S. Court of Federal Claims
U.S. District Court for the District of Colorado
U.S. District Court for the Eastern District of Michigan
U.S. District Court for the Northern District of Ohio
U.S. District Court for the Southern District of Ohio
U.S. Patent and Trademark Office