Erin Ator Thomson

Erin Ator Thomson Counsel, Intellectual Property Counseling

Erin's principal areas of practice are strategic intellectual property counseling, technology transactions (including patent, trademark, copyright, and trade secret licensing), and intellectual property litigation, primarily in the areas of pharmaceuticals, biotechnology, research tools, medical devices, consumer products, and software. She has extensive experience assisting clients in evaluating, structuring, and negotiating intellectual property and technology transactions, and conducting due diligence associated with such transactions. Erin also has experience in all stages of patent litigation, including conducting pre-suit investigations, drafting and arguing motions, taking and defending depositions, preparing for and conducting Markman hearings, and trial. She also conducts due diligence evaluations and has experience prosecuting patents for life sciences-related inventions.

Experience Highlights

  • Represented a pharmaceutical company in connection with drafting and negotiating various in-bound and out-bound and commercialization matters, supply and manufacturing agreements, and acquisitions, including intellectual property diligence related to such transactions (lead associate)
  • Represented a research organization in connection with drafting and negotiating clinical trial-related agreements with various pharmaceutical companies and contract research organizations (lead associate)
  • Advised an investment institution in connection with assessment of IP portfolios of potential investment targets (assisted)
  • Advised a pharmaceutical company in connection with intellectual property-related due diligence in connection with various products in development (lead associate)
  • Advised a national sports league in connection with negotiation and drafting of various agreements relating to implementation of technology-related infrastructure upgrades to stadiums (assisted)
  • (E.D. Tex.); (Fed. Cir.) — Represented a pharmaceutical company against four ANDA filers in the successful defense of its patents covering a migraine therapy in the first Paragraph IV Hatch-Waxman litigations tried in the Eastern District of Texas; obtained affirmances of judgment in two separate appeals (assisted)
  • Counseled a consumer goods retailer on product development, freedom to operate issues, and IP-related agreements with vendors and suppliers (lead associate)

Licensing & Technology Transfer

  • Teva Pharmaceuticals in strategic negotiation of joint- development and commercialization agreement in its $144 million acquisition, plus up to approximately $124 million in contingent value payments, through an unsolicited offer of NuPathe, Inc., a developer of products for the treatment of the central nervous system (assisted)
  • A pharmaceutical company in a $300 million co-development and out-licensing deal granting rights to develop and commercialize client’s drug candidate throughout Asia (lead associate)

Patent Litigation

  • (D. Del.) — Represented a generic pharmaceutical company in litigation under the Hatch Waxman Act related to infringement of Orange Book-listed patents (lead associate)
  • (D. Me.) — Represented a dry groceries manufacturer in a patent infringement case involving plant sterols; successfully sought transfer of the case from its originally filed jurisdiction to the defendant’s home forum, and meanwhile, filed an ex parte reexamination request with the USPTO; the Court in the transferee forum then stayed the case pending reexamination, resulting in the cancellation of all of the asserted patent’s claims (lead associate)

ITC Litigation

  • (ITC) — Represented a large retail grocery chain in patent investigation brought by a grill manufacturer before the United States International Trade Commission relating to multiple mode (solid and gas fueled) outdoor grills; obtained favorable settlement and complete resolution for our client (lead associate)

Pro Bono

  • Represented and successfully obtained asylum for a young woman from the Democratic Republic of Congo who suffered political and social persecution for her activities as a human rights advocate in the DRC
  • Represented and successfully obtained asylum for Uyghur family who suffered political, religious, and ethnic persecution in China
  • Served as City of Austin “Prosecutor on Loan”; tried four criminal misdemeanor cases to a jury

Contact Details


T +1.512.542.8762
F +1.512.236.3221
2801 Via Fortuna
Suite 100
Austin, TX 78746-7568
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Erin's Practices

  • Baylor Law School, J.D. summa cum laude, 2006 (Senior Executive Editor, Baylor Law Review)
  • Pepperdine University, B.S., Biology, 2001
  • Admitted to practice: Texas; U.S. Patent and Trademark Office
    • Judicial clerk to The Honorable Chief Justice Wallace Jefferson, Supreme Court of Texas, 2006–2007
    • University of California, San Francisco, post-graduate researcher, 2001–2003
      • Selected to the Texas Rising Stars list, Super Lawyers (Thomson Reuters), 2012–2016
        • Member: Intellectual Property Owners Association (Co-Chair, Licensing Committee); Austin Technology Council (Member, Life Sciences Advisory Council); Texas Healthcare and Bioscience Institute (Board Secretary); Licensing Executive Society; Austin IP Inn of Court; Texas Young Lawyers Association