Sheppard MullinAssociate

Eric Kyle Gill

About Eric Kyle Gill

Eric Kyle Gill is a lawyer practicing intellectual property, copyrights, ip licensing, technology and commercial transactions and 8 other areas of law. Eric received a degree from Senior Editor, Brigham Young University Law Review, and has been licensed for 13 years. Eric practices at Sheppard Mullin in San Diego, CA.

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Services

Areas of Law

  • Intellectual Property 1
    • Copyrights
  • Transportation
  • Other 8
    • IP Licensing, Technology and Commercial Transactions
    • Patent Litigation
    • Patent Prosecution and Counseling
    • Post-Grant Proceedings
    • Trademarks and Trade Dress
    • Aerospace & Defense
    • Government Business Group
    • Telecom

Practice Details

  • Firm Information
    Position
    Associate
    Firm Name
    Sheppard Mullin
  • Representative Cases & Transactions
    Cases
    Experience: Representative Patent Litigation Matters: Represented multinational semiconductor company in patent litigation in the District of Delaware involving chip packaging, interconnect routing for integrated circuits, platform architecture for distributed dynamic functionality,
    clock generator circuits.
    Represents multinational semiconductor company in a Delaware lawsuit relating to bulk acoustic wave filters
    involving claims of patent infringement, false advertising, false patent marking, unfair competition, trade secret misappropriation, racketeering
    civil conspiracy.
    GCE Gas Control Equipment Inc. v. 3B Medical Manufacturing, LLC, No. 8:22-cv-02550-TDC (D Md). Represents GCE in an action seeking a declaratory judgment of non-infringement of two patents relating to portable oxygen concentrators.
    Playvuu, Inc. v. Snap Inc., No. 2:22-cv-06019 (CD Cal). Represents Snap in a lawsuit involving the Snapchat mobile app
    creating
    disseminating audio
    video content over a network.
    UberFan, LLC v. Snap Inc., No. 1:21-cv-842-MN (D Del). Represented Snap in a lawsuit involving four patents relating to mobile imaging
    media management systems
    asserted to cover the Snapchat mobile app. The matter settled after we filed IPR petitions challenging the asserted patents.
    Continental Automotive Systems, Inc. v. Nokia Corp. et al., No. 2021-0066-JRS (Del. Ch.). Represents Continental in a lawsuit seeking declaratory relief for determination
    imposition of FRAND licensing terms for Nokia's 2G, 3G,
    4G SEPs.
    Lenovo (United States) Inc. et al. v. IPCom GmbH & Co., KG, No. 19-cv-1389-EJD (ND Cal). Represented Lenovo
    Motorola Mobility in a breach of contract lawsuit involving IPCom's failure to license cellular SEPs on FRAND terms
    conditions.
    10Tales, Inc. v. TikTok Inc. et al., No. 3:21-cv-03868 (ND Cal). Represented TikTok
    ByteDance in a lawsuit involving a patent asserted to cover the backend system
    recommendation engine for the TikTok mobile app. We got the case transferred from the Western District of Texas before Judge Albright to the Northern District of California.
    Continental Automotive Systems, Inc. v. Avanci, LLC et al., No. 3:19-cv-2933 (ND Tex). Represented Continental in a lawsuit seeking declaratory relief for determination
    imposition of FRAND licensing terms for the 2G, 3G,
    4G SEPs managed by the Avanci patent licensing platform.
    Certain LTE-
    3G-Compliant Cellular Communications Devices, Inv. No. 337-TA-1138 (USITC). Represented Respondent HTC in an investigation involving five alleged SEPs asserted to cover the 3G UMTS
    4G LTE/LTE-A st
    ards. Complainant INVT dropped two of the asserted patents
    the Commission affirmed Judge McNamara's determination of no violation based on non-infringement of the remaining patents. On appeal, the Federal Circuit affirmed non-infringement of one patent
    ordered that the other patent be dismissed.
    INVT SPE LLC v. HTC Corp. et al., No. 2:17-cv-3740 (DNJ). Represented HTC in an eight-patent infringement action relating to alleged SEPs asserted to cover the 2G EGPRS, 3G UMTS/WCDMA/HSPA
    4G LTE/LTE-A st
    ards. HTC counter claimed for breach of FRAND
    we filed numerous IPRs against the asserted patents.
    Bell Northern Research, LLC v. Lenovo Group Ltd. et al., No. 6:21-cv-847 (WD Tex). Represented Lenovo
    Motorola Mobility in an 11 patent lawsuit involving smartphone
    laptop features, including among other things proximity sensors, multi-chip packaging,
    Android.
    u-blox AG et al. v. Koninklijke KPN N.V., No. 3:21-cv-1220 (SD Cal). Represented plaintiff u-blox in a lawsuit for breach of FRAND, FRAND rate setting for KPN's 2G, 3G,
    4G SEP portfolio, antitrust violations,
    unenforceability of certain KPN patents due to implied waiver.
    TCL Commc'n Tech. Holdings, Ltd. et al. v. Telefonaktiebolaget LM Ericsson et al., No. 8:14-cv-341 (CD Cal). Represented TCL in a l
    mark breach-of-contract
    declaratory judgment action relating to ETSI's IPR Policy
    Ericsson's obligation to license its 2G GSM/GPRS/EDGE, 3G UMTS
    4G LTE/LTE-A SEPs under FRAND terms. After a three week bench trial, Judge Selna set royalty rates for Ericsson's SEP portfolio that were a fraction of what Ericsson had dem
    ed from TCL.
    Sun Patent Trust v. HTC Corp., 2:20-cv-286 (ED Tex). Represented HTC in a six-patent lawsuit involving alleged SEPs asserted to cover the LTE
    LTE-Advanced cellular st
    ards.
    Evolved Wireless, LLC v. HTC Corp. et al., No. 1:15-cv-543 (D Del). Represented HTC in a five-patent infringement lawsuit relating to alleged SEPs asserted to cover the 4G LTE st
    ard. HTC counter claimed for breach of contract, alleging that Evolved Wireless failed to license its patents on FRAND terms,
    filed IPRs against all the asserted patents. Evolved dropped three of the patents
    the PTAB invalidated a fourth. As for the remaining patent, the court granted HTC's motion for summary judgment based on its license
    patent exhaustion defense stemming from an agreement between HTC's chip supplier Qualcomm
    the original patent owner LG Electronics. The Federal Circuit affirmed in part
    the case was dismissed.
    Pixmarx IP LLC v. Snap Inc., No. 3:20-cv-1157 (ND Tex). Represented Snap in a lawsuit involving four patents related to embedding an overlay in a digital photograph
    asserted to cover the Snapchat mobile app. The matter settled quickly after we filed six IPR petitions challenging the asserted patents.
    u-blox AG et al. v. Sisvel Int'l S.A. et al., No. 3:20-cv-494 (SD Cal). Represented u-blox in a breach of FRAND
    antitrust action relating to Sisvel's portfolio of 2G, 3G,
    4G alleged SEPs.
    u-blox AG et al. v. InterDigital, Inc. et al., No. 3:19-cv-1 (SD Cal). Represented u-blox in a breach of contract
    antitrust lawsuit arising from InterDigital's obligation to license its SEPs on FRAND terms. Defended u-blox against InterDigital's counterclaims of infringement of two patents directed to resource allocation
    carrier aggregation.
    Prestige Flag Mfg. Co., Inc. v. Golf Solutions I, LLC, No. 3:18-cv-98 (WD Wis). Represented Prestige in a case for design patent infringement
    federal
    common law unfair competition.
    McCree's Multi Services, LLC v. Poway Weapons & Gear, Inc. et al., No. 3:17-cv-1749 (SD Cal). Represented Poway Weapons & Gear as local counsel in a two-patent case involving firearm technology.
    Hitachi Maxell, Ltd. v. ZTE Corp. et al., No. 5:16-cv-179 (ED Tex). Represented ZTE in an eight-patent infringement lawsuit relating to patents alleged to cover aspects of cellular phone technology such as power management circuitry, image sensors
    graphics processors, transmit power control circuitry
    multi-format, multiplexed audio/video decoding receiver circuitry.
    Ericsson Inc. et al. v. TCL Commc'n Tech. Holdings, Ltd. et al., No. 2:15-cv-11 (ED Tex). Represented TCL in a five-patent infringement action relating to patents Ericsson alleged cover aspects of cellular phone hardware
    the Android OS, including multimode direct conversion receiver circuitry, A-GPS
    control programs for wireless communications. TCL counter sued on two patents relating to LTE cellular network infrastructure
    base stations. TCL obtained a stay of the trial after it filed 17 IPRs against Ericsson's asserted patents
    the PTAB instituted all 17. The PTAB invalidated four of the five patents
    the Federal Circuit invalidated the fifth patent.
    Ericsson Inc. et al. v. TCL Commc'n Tech. Holdings, Ltd. et al., No. 2:14-cv-667 (ED Tex). Represented TCL in a two-patent infringement action relating to speech coding
    modulation patents Ericsson alleged cover the 2G, 3G
    4G st
    ards. TCL counter sued on two patents related to LTE cellular networks
    communications. We got the case transferred to CD Cal, consolidated with the FRAND case
    stayed pending the outcome of that case.
    Prestige Flag Mfg. Co., Inc. v. Par Aide Products Co., No. 14-cv-2711 (SD Cal). Represented Prestige in an action for design patent
    trade dress infringement,
    state
    federal unfair competition.
    Prestige Flag Mfg. Co., Inc. v. St
    ard Golf Co. et al., No. 14-cv-1574 (SD Cal). Represented Prestige in an action for design patent infringement.
    Abdou v. Alphatec Spine, Inc., No. 3:12-cv-1804 (SD Cal). Represented Alphatec Spine in a patent infringement action.
    LendingTree, LLC v. Zillow, Inc. et al., No. 3:10-cv-439 (WD NC). Represented LendingTree in a lawsuit
    six-week jury trial involving antitrust
    patent infringement claims.
    Represented numerous clients in connection with third party subpoenas served in patent cases involving such technologies as semiconductors, telecommunications, video game hardware, gene sequence enrichment, spinal surgery tools
    wearable electronic devices.

    Representative Inter Partes Review Matters: Snap Inc. v. UberFan, LLC, Nos. IPR2022-00750, IPR2022-00751, IPR2022-00752, IPR2022-00753. Represented Petitioner Snap in four IPRs challenging UberFan's patents relating to mobile imaging
    media management systems
    asserted to cover the Snapchat mobile app. Settled pre-institution.
    Snap Inc. v. S
    erling Management Ltd., Nos. IPR2021-00778, IPR2021-00779, IPR2021-00780, IPR2021-00781. Represented Petitioner Snap in four IPRs challenging S
    erling's patents relating to location based image processing functions
    asserted to cover the Snapchat mobile app. The PTAB found all challenged claims unpatentable.
    Apple Inc. et al. v. INVT SPE LLC, IPR2019-01574. Represented Petitioner HTC in a challenge to INVT's alleged SEP relating to a hybrid automatic repeat request system. INVT disclaimed the challenged claims.
    HTC Corp. et al. v. INVT SPE LLC, IPR2018-01555, IPR2018-01581. Represented Petitioner HTC in its challenge to INVT's alleged SEP relating to adaptive modulation
    coding. Trial instituted.
    Apple Inc. et al. v. INVT SPE LLC, IPR2018-01476. Represented Petitioner HTC in a challenge to INVT's alleged SEP relating to multiple antenna transmission. The PTAB invalidated the challenged claims
    the Federal Circuit affirmed.
    Snap Inc. v. Pixmarx IP LLC, IPR2021-00140, IPR2021-00141, IPR2021-00142, IPR2021-00143, IPR2021-00232, IPR2021-00233. Represented Petitioner Snap in six IPRs filed against Pixmarx's patents relating to embedding an overlay in a digital photograph
    asserted to cover the Snapchat mobile app. Settled before the patent owner preliminary responses were filed.
    Apple Inc. et al. v. INVT SPE LLC, IPR2018-01475. Represented Petitioner HTC in a challenge to INVT's alleged SEP relating to modulation. The PTAB invalidated the challenged claims.
    Apple Inc. et al. v. INVT SPE LLC, IPR2018-01473. Represented Petitioner HTC in a challenge to INVT's alleged SEP relating to transmission power
    rate control. Trial instituted.
    Apple Inc. et al. v. INVT SPE LLC, IPR2018-01472. Represented Petitioner HTC in a challenge to INVT's alleged SEP relating to discontinuous transmission. The PTAB invalidated the challenged claims.
    Prime Focus Creative Servs. Can. Inc. v. Legend3D, Inc., No. IPR2016-01243. Represented Patent Owner Legend3D in opposing a challenge to one of its patents related to image processing. The PTAB upheld several claims.
    TCL Corp. et al. v. Telefonaktiebolaget LM Ericsson, Nos. IPR2015-1584, IPR2015-1600. Represented Petitioner TCL in its challenge to an Ericsson patent directed to multimode direct conversion receiver circuitry. The PTAB invalidated all the challenged claims
    denied Ericsson's request for rehearing. The Federal Circuit affirmed.
    TCL Corp. et al. v. Ericsson Inc., No. IPR2015-1583. Represented Petitioner TCL in its challenge to an Ericsson patent directed to control programs for wireless communication devices. The PTAB invalidated all challenged claims.
    TCL Corp. et al. v. Telefonaktiebolaget LM Ericsson, Nos. IPR2015-1650, IPR2015-1772, IPR2015-1878. Represented Petitioner TCL in its challenge to an Ericsson patent directed to using QoS parameters in A-GPS for mobile terminals. The PTAB invalidated all challenged claims.
    Represented petitioners
    patent owners in IPR proceedings involving patents directed to chemical compounds for pharmaceutical
    industrial/commercial applications.

    Representative IP
    Other Litigation Matters: Citizens Equity First Credit Union v. San Diego County Credit Union, No. 92066165 (TTAB). Represented SDCCU in a trademark cancellation proceeding brought by CEFCU.
    Prestige Flag Mfg. Co., Inc. v. Golf Solutions I, LLC et al., No. 3:14-cv-2945 (SD Cal). Represented Prestige in an action for breach of contract.
    Golf Solutions I, LLC v. Prestige Flag Mfg. Co., Inc. et al., No. 14-cv-869 (WD Wis). Represented Prestige in an action for breach of contract.
    Konstantino v. AngioScore, Inc., No. 9681-CB (Del Ch). Represented AngioScore in an action for advancement of legal fees related to AngioScore's claims for patent infringement, breach of fiduciary duty
    unfair competition.
    RamSoft, Inc. v. Imaging Advantage, LLC et al., No. 14-cv-335 (CD Cal). Represented RamSoft in an action for breach of contract, copyright infringement, copyright management information removal/alteration, trade secret misappropriation
    intentional interference with contract.
    Cobra Systems, Inc. v. Accuform Manufacturing, Inc., No. 13-cv-5932 (CD Cal). Represented Cobra in an action for copyright infringement, copyright management information removal/alteration, trademark infringement, state
    federal unfair competition
    breach of contract.

    Patent Drafting
    Prosecution: Representative clients include Dexcom, Disney, JayBird, MasterCard, Toyota
    Western Digital.

    Representative IP Counseling: Provides strategic counseling to major h
    set manufacturers, semiconductor companies, automotive suppliers
    IoT clients regarding cellular SEPs
    FRAND issues in connection with license negotiations, portfolio acquisitions
    government investigations, including with respect to the 4G LTE
    5G NR cellular st
    ards developed by 3GPP
    adopted by ETSI.
    Provided strategic counseling to automotive supplier regarding IP issues relating to the AUTOSAR automotive st
    ard setting organization.
    Provided strategic counseling regarding the scope
    validity of patents related to thin-film transistor
    pixel display circuit technologies for LED TVs.

Experience

  • Bar Admission & Memberships
    Admissions
    U.S. Patent and Trademark Office
    2013, California
    Memberships

    Memberships

    Co-Chair of the Model Patent Jury Instructions Subcommittee, American Intellectual Property Law Association (AIPLA)

    Board of Directors, J. Reuben Clark Law Society, San Diego Chapter

    Barrister, J. Clifford Wallace American Inn of Court, 2019-2020

  • Education & Certifications
    Law School
    Brigham Young University, J. Reuben Clark Law School
    Class of 2013
    J.D.
    cum laude
    Other Education
    Senior Editor, Brigham Young University Law Review

    University of California, Santa Barbara
    Class of 2007
    B.S.
    Electrical Engineering

Eric Kyle Gill

Associate at Sheppard Mullin
Not yet reviewed

12275 El Camino Real, Suite 100 (Del Mar)San Diego, CA 92130U.S.A.

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