Eric Zelepugas maintains a versatile intellectual property practice, specializing in post-grant proceedings before the USPTO, domestic and foreign patent prosecution, and patent litigation in district court and the ITC. While his practice extends to many different technological sectors, Eric particularly enjoys leveraging his Electrical Engineering background in areas such as artificial intelligence, electronic devices, cellular communications, signal processing, DICOM imaging systems, and media delivery and consumption systems.
Eric’s diverse range of experiences positions him well to provide strategic counsel to his clients. For example, his years of patent litigation help him craft easily enforceable claims designed to withstand legal challenges. Conversely, having drafted and prosecuted applications for over a decade helps him develop creative and expansive strategies for contested USPTO proceedings and litigation.
Recently, Eric served as lead counsel for a number of companies at the ITC and successfully defeated a motion for a temporary exclusion order, with a loss likely to have meant an end to the clients’ operations. Eric was pivotal in obtaining a favorable claim construction which he used to convince the court that the Complainants had failed to show a likelihood of success on the merits.
J.D. University of Illinois Chicago School of Law (formerly The John Marshall Law School)
B.S. Electrical Engineering, University of Illinois Urbana-Champaign
- Illinois Supreme Court
- U.S. District Court for the Northern District of Illinois
- United States Patent and Trademark Office
Illinois Super Lawyers “Rising Star” (2023-2024)
(NDOH) – Diamabrush LLC v. Malish Corporation – Eric’s team took over a case that included de minimis pleadings of patent infringement. After performing his own investigation, Eric amended the pleadings to more substantively reflect the strength of his client’s patent case. These efforts paved the way to a relatively quick and favorable settlement, including helping to resolve other non-patent related issues in a parallel arbitration proceeding.
(NDIL) – RTC Industries, Inc. v. Fasteners for Retail, Inc. – Eric's team filed multiple district court cases asserting nine patents against two of Fasteners for Retail’s (FFR) products. Eric was crucial in opposing a motion to consolidate the cases, which would have impeded the progress of the first filed case and would have required significant narrowing of the asserted patents and claims to comply with the local rules (which limited final infringement contentions to 10 claims per patent and no more than 20 claims overall). All district court cases settled before trial.
(PTAB) – Comcast Cable Communications, LLC v, Rovi Guides, Inc. – Eric’s team prepared and filed over 100 IPR petitions, with Eric leading efforts on a dozen of those petitions. The large number of petitions was part of a filing strategy to limit estoppel effects by filing multiple parallel petitions, which ultimately might not have been instituted, but would preserve arguments that any references relied upon within procedurally dismissed parallel petitions were not and could not have been reasonably raised in an instituted parallel petition. This filing strategy was also helpful in achieving a favorable global settlement.
(ITC) – Certain Disposable Vaporizer Devices – R.J. Reynolds (RJR) initiated a Section 337 investigation at the ITC asserting infringement of a recently issued patent against forty-six respondents. In addition to its complaint, RJR filed a rare motion for a temporary exclusion order, which streamlined the already compact ITC investigation schedule. Within two months, Eric’s team conducted fact discovery, expert discovery, and an evidentiary hearing. Eric was crucial in successfully defeating the TEO motion and set the stage for success for the permanent phase of the investigation. Not only did Eric take lead on the claim construction and non-infringement arguments that led to the successful denial of the TEO motion, but he continued to lead such efforts throughout the formal Markman proceedings and Expert discovery in the permanent phase.
(NDIL) – Journay Financial Services, LLC et al v. American Green Smoke Wholesale, Inc. et al – Eric represented American Green Smoke Wholesale (AGS), which had purchased vaping products from a third party for resale. Journay sued AGS, asserting that such products were counterfeit and infringed on its Trademarks. Eric led negotiations resulting in a quick (within three months of his appearance) and favorable settlement and dismissal of his client from the case, thereby avoiding the potentially large statutory damages available under 15 U.S.C. § 1117(c).
(PTAB) – Fasteners for Retail, Inc. v. RTC Industries, Inc. – In response to Eric's team asserting nine patents against FFR, FFR responded with four inter partes review petitions challenging a subset of those asserted patents. Eric's team was successful in getting all four inter partes review petitions procedurally dismissed by providing substantial evidence that an unnamed real-party-in-interest was controlling the filing of the Petitions, which FFR was unable to credibly dispute or disprove.
U.S. Patent No. 9,041,545
