Eric A. Menist is an associate in the New York office and part of the IP litigation group.
Eric focuses on patent litigation, and hybrid cases involving patents and other IP related disputes, such as trademark infringement and ownership, unfair competition, and other commercial claims. For patent cases, Eric immerses himself in the technology and translates it to themes easily understood by the court and jury. Eric also has particularized trademark litigation experience dealing with business divorces and trademark ownership disputes. Eric’s diverse litigation background allows him to handle complex cases involving multiple types of related IP and commercial claims to help resolve each client’s diverse business needs unique to their case.
Eric has represented companies in the software, semiconductor, pharmaceutical, consumer products, and cosmetics industries, including Amazon, Intuit, Lumileds, Almirall, Lashify, Novo Nordisk, and UCB Pharma.
Eric primarily handles cases at the U.S. International Trade Commission in Section 337 investigations and federal courts around the country, including in the Southern and Eastern Districts of New York, District of Delaware, Western District of Texas, and Central and Southern Districts of California. Eric also assists with matters at the U.S. Patent and Trademark Office, including inter partes and post grant reviews, both for patent owners and challengers.
Eric has also counseled on a range of non-litigation matters, such as patent prosecution, trademark and copyright clearance and procurement, due diligence of IP for corporate transactions, licensing of IP, and other commercial contracts. Eric’s knowledge about how issues may resolve before the court help him devise strategies that try to avoid potential pitfalls should future litigation become necessary.
Eric also has represented clients in various pro bono matters for individuals in need, including litigation defending constitutional rights and securing immigration protection.
Eric graduated with honors, including valedictorian, order of the coif, and summa cum laude, and was a senior editor for the Rutgers University Law Review. While in school, Eric worked full time as a litigation paralegal and law clerk at a boutique IP firm in New York, assisting with IP litigation and procurement. Before law school, Eric was a paralegal at a boutique commercial firm in New York, working on both litigation and transactional matters focused on franchising and its related commercial and real estate aspects.
Representative Litigations
- Won rare summary judgment of no willful patent infringement for Amazon before Judge Albright in the Western District of Texas, effectively removing unsubstantiated assertions of alleged bad acts from the case and jury trial.
- Represented Lashify, Inc. in a hybrid IP case against competitor Urban Doll in the Central District of California involving patents, trademarks, false advertising, unfair competition, and tortious interference. Obtained a preliminary injunction against defendants for use of Lashify’s trademark; crafted complex tortious interference and unfair competition claims that survived multiple motions to dismiss; and obtained favorable claim construction.
- Represented Lashify, Inc. in hybrid patent and false advertising cases against overseas manufacturers in the Western District of Texas and obtained a favorable claim construction.
- Represented Shinmax Indus. Co. in a hybrid patent, trademark, unfair competition, and cyberpiracy case related to the parties’ business divorce and IP ownership disputes in the Central District of California. Won landslide claim construction victory and secured highly favorable settlement for Shinmax.
- Assisted Intuit’s appeal victory at the Ninth Circuit regarding the validity and enforcement of its online TurboTax software terms and conditions. The Circuit Court held customers assented to the browsewrap conditions and remanded the case to the district court to compel arbitration.
- Tried and won high-profile patent case for Lumileds before the U.S. International Trade Commission for claims involving semiconductor light-emitting diodes. The Commission held Lumileds did not infringe the patents, and that certain patents were invalid for lack of priority and anticipated by the on sale bar. Assisted with the Federal Circuit appeal resulting in dismissal, a settlement, and complete victory for Lumileds.
- Represented transgender inmate against the California Department of Corrections in the Eastern District of California involving constitutional protections provided by the First, Eighth, and Fourteenth Amendments for failure to provide her with proper medical treatment, including gender reassignment surgery. Survived the Court’s mandatory inmate complaint screening, obtained a favorable settlement, and helped the individual receive her necessary surgery.
Eric is admitted to practice in the State of New York, the Southern District of New York, Eastern District of New York, and Western District of Texas.
Capabilities
- Litigation
- Fashion, Retail, and Consumer Products
- Media, Entertainment, and Technology
- Technology Litigation
Credentials
Education:
- Rutgers University - 2019 Juris Doctor
- Ramapo College - 2010 Bachelor of Arts
Admissions:
- New York Bar