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Erik J. Halverson

Fax +1.312.345.8529
Erik Halverson is an associate in the Chicago office, a PTO-registered patent attorney with a background in engineering physics and materials science, and a member of the post-grant review, IP litigation, and IP procurement and portfolio management practice groups. He concentrates his practice in post-grant practice at the Patent Trial and Appeal Board (PTAB) and has experience arguing before the PTAB as well as trial experience in federal district court.

As a PTO-registered lawyer, Mr. Halverson has experience with post-grant proceedings at the PTAB. His involvement includes the preparation and prosecution of numerous inter partes review petitions, defense of challenged patents, preparation of expert declarations, defending and taking expert depositions, and all manner of motion practice before the PTAB. Additionally, Mr. Halverson has experience arguing inter partes review trials at the PTAB. In all instances, Mr. Halverson’s involvement has been coupled with overall trial strategy for co-pending district court litigation. Mr. Halverson is also experienced in all facets of intellectual property litigation, including fact and expert discovery, motion practice, claim construction practice, and trial practice. His trial experience includes the presentation of and cross examination of technical experts in federal district court.

Mr. Halverson also has experience handling standard patent prosecution matters as well as arguing prosecution appeal matters before the PTAB. Mr. Halverson also handles patent licensing, due diligence and counseling matters. His experiences include license negotiation and drafting; joint development agreements and independent contractor agreements; and international IP portfolio review. As an attorney licensed to practice before the U.S. Patent and Trademark Office, Mr. Halverson’s experience includes electrical and mechanical devices, medical devices, semiconductors, industrial materials, consumer electronics, and a variety of internet-related work including application development, networking, cellular communication, and remote computing technologies. He also provides strategic counseling, due diligence research and analysis for portfolio acquisitions, and opinion work such as patentability, validity, non-infringement, and freedom-to-operate opinions.

Professional Background

Prior to joining K&L Gates, Mr. Halverson was a Public Interest Law Initiative (PILI) Graduate Fellow with Catholic Charities Legal Aid in Chicago where he provided legal assistance to underserved members of the Chicago community.

Speaking Engagements

  • Real Parties in Interest post-RPX before the PTAB, Chicago Bar Association, (March 26, 2019)

Additional Information

Mr. Halverson was a summer associate at the firm in 2014. Mr. Halverson serves on the board of directors for the Illinois Rowing Association.
  • 1:16-cv-00284-LPS Siemens Mobility, Inc. v. Westinghouse Air Brake Technologies Corporation et al. Trial counsel for Defendant Westinghouse in a federal jury trial on patent infringement in the district of Delaware involving eight train control patents.
  • IPR2017-00580; IPR2017-01263; IPR2017-01454; IPR2017-01533; IPR2017-01866; IPR2017-01669; IPR2017-01821; IPR2017-02044 - IPR counsel for Petitioner Westinghouse, successfully rendering unpatentable challenged claims of six patents.
  • IPR2017-01391; IPR2017-01392; IPR2017-01406; IPR2018-00327; IPR2018-00328; IPR2018-00329 - IPR counsel for petitioner successfully rendering unpatentable challenged claims of three patents.
  • IPR2017-00276; IPR2017-00477 - IPR counsel for petitioner successfully rendering unpatentable challenged claims of three patents.
  • IPR2018-01062 - IPR counsel for patent owner.
  • IPR2018-01797 - IPR counsel for petitioner.
  • IPR2018-01608 - IPR counsel for petitioner.
  • ITC-337-TA-1087 Batteries and Electrochemical Devices Containing Composite Separators, Components Thereof, and Products Containing Same.
  • 1:18-cv-00409-LPS-CJB Signode Industrial Group LLC v. 3M Company - counsel for Plaintiff, successfully settled mid-discovery.
  • 1:17-cv-10649-LTS iRobot Corporation v. Bissell Homecare, Inc. et al. - counsel for Defendant, successfully settled mid-discovery.