Eric R. Moran

Overview

Eric R. Moran is a partner with McDonnell Boehnen Hulbert & Berghoff LLP and serves as Chair of the firm’s Trademark, Unfair Competition, Advertising Law & Copyright Practice Group. Mr. Moran has experience in all areas of intellectual property law, with particular emphases on litigating and counseling clients on patent, trademark, and domain name issues. Mr. Moran’s litigation experience includes successful district court trials, Federal Circuit appeals, and proceedings before the Trademark Trial and Appeal Board. His practice includes a significant concentration in the mechanical, software, electronics, telecommunications, consumer products, and injection molding arts, with a particular expertise in diagnostic and medical device litigation and counseling.

Mr. Moran has experience with Inter Partes Review (IPR) proceedings, which includes successfully arguing at an oral hearing before the Patent Trial and Appeal Board that claims were unpatentable, as well as successfully obtaining a denial of institution decision in favor of a patent owner.

In addition to litigation, Mr. Moran assists Fortune 500 companies, start-ups, and individuals in the procurement of utility patents, design patents, and trademarks—from clearance through appeal. Mr. Moran actively manages global trademark portfolios and develops global brand building and protection strategies for clients, and regularly conducts sophisticated trademark searches and renders clearance, validity, and infringement opinions involving both patent and trademark rights.

Mr. Moran frequently counsels clients on and prepares intellectual property license and transfer agreements, and has coordinated due diligence on complex intellectual property transactions. He also routinely handles unfair competition, false advertising, trade dress, design patent, and copyright matters.

Prior to joining MBHB, Mr. Moran worked for five years as an engineering consultant in the process and petrochemical industries, specializing in assisting clients to design, engineer, and construct processing facilities.

Away from work, Mr. Moran can usually be found biking along the lakefront or coaching his two sons on soccer and baseball fields throughout Chicago.

Education
  • J.D., Chicago-Kent College of Law,

    With High Honors, Order of the Coif; Chicago-Kent Law Review, Editor in Chief

  • B.S., University of Notre Dame,

    Mechanical Engineering

Bar Admissions
  • Illinois ,
  • U.S. Patent & Trademark Office ,
Memberships
  • International Trademark Association (INTA)
    • Sub-Committee Co-Chair, Academic Committee 2016-present
    • Vice Chair, Academic Committee 2018-2019
    • Member, Academic Committee 2012-present
    • Member, 2007-present 
  • Chicago-Kent Law Review Alumni Board of Directors
    • Board Member, Committee Chair since 2011
  • PTAB Bar Association, member since 2016
  • Chicago Small Business Advocacy Council (SBAC)
    • Member, Technology Community since 2014
  • American Intellectual Property Law Association (AIPLA), member since 2001
  • American Bar Association (ABA), member since 2001
  • Board Member, American Youth Soccer Organization, Region 418 (Chicago)
  • Board Member, Northwind Soccer Club (Chicago)
  • Volunteer coach for youth soccer and baseball
  • Volunteer fundraiser and philanthropist

Recognition

  • Illinois Super Lawyers Rising Star

Experience

  • Successfully arguing at an oral hearing before the Patent Trial and Appeal Board in favor of unpatentability of claims directed to LED lighting systems.
  • Obtaining a decisive victory in favor of a patent owner in an Inter Partes Review (IPR) proceeding involving telecommunications technology. The Patent Trial and Appeal Board denied institution.
  • Coordinating patent litigation in defense of a start-up medical device company leading to the launch of its first product.
  • Coordinating claim construction arguments and defenses in patent Markman hearings leading to favorable claim constructions.
  • Developing comprehensive branding strategies for high-tech clients in the software and telecommunications industries.
  • Managing a global trademark portfolio for consumer products company. 
  • Conducting freedom to operate branding studies and management of trademark portfolios for several software gaming entities.
  • Successfully defending against patent infringement allegations to obtain favorable settlements on behalf of brand-name pharmaceutical companies in several medical device patent cases.
  • Defeating a preliminary injunction motion in a medical device patent case, allowing brand-name pharmaceutical client to continue with its new product launch.
  • Conducting freedom to operate and patentability analyses for multiple software gaming entities.
  • Advising several startup companies in software fields regarding patent and trademark portfolios.
  • Managing global trademark portfolios for several pharmaceutical and medical device companies.
  • Advising several clients on advertising law, claims, and disputes.