Eric Shih’s practice focuses on IP litigation, licensing and counseling including the representation of plaintiffs in monetizing IP portfolios as well as defending clients in complex patent and trade secret litigation. Leveraging extensive experience drawn from both private practice and in-house careers, Mr. Shih represents clients in patent and high technology and trademark/trade dress litigation and advises executive management and investors in high-tech, media and scientific industries on licensing and technology transactions.
Representative projects have involved the use of reexamination requests to achieve favorable outcomes for patent defendants; the resolution of adverse IP threats/assertions; using IP assets as tools in litigation and licensing scenarios to achieve optimal business objectives; analyzing and developing IP assets for maximum competitive impact; reviewing IP portfolios and risks relative to M&A and technology investment; negotiating IP licenses, technology development agreements and other arrangements for complex sharing of IP rights; and implementing IP strategies for entities ranging from incubators and start-up ventures to Fortune 100 multinational companies.
Mr. Shih’s in-house experience includes having served as the Deputy General Counsel-Chief IP Counsel for Verigy, Inc., a semiconductor test solutions company in Silicon Valley. Before serving as a Chief IP Counsel, he worked in the IP monetization industry, most recently as the Senior Vice President-Business Development, Legal for the IP Investment Group of Coller Capital. Mr. Shih also served as Group IP Counsel for Intel’s Mobility Group, responsible for IP management of a diverse range of hardware and software products including Pentium M microprocessors, the Centrino Mobile Technology platform, Xscale processors, flash memory and a variety of graphics and wireless chipsets for mobile computing, communications & entertainment applications. In this role, Mr. Shih counseled Intel's executive management on all IP matters concerning the Mobility Group as well as corporate strategic initiatives.
Before working in-house, Mr. Shih was a partner in a major global law firm’s Patent Litigation and IP Group representing clients in complex IP and technology matters involving litigation and licensing. His clients, both domestic and foreign-based, spanned a broad spectrum of technology sectors, including data storage, software, VoIP communications, distributed gaming, and encryption/security. Most notably, he was a lead attorney in the patent lawsuit, Odetics v. Storage Technology Corp., where his client, Odetics, after two trials and two appeals to the Federal Circuit Court of Appeals, won a $70 million jury verdict and garnered a settlement of $100 million.
J.D., Northwestern University School of Law
B.S., Industrial Engineering, Lehigh University