Eleanor M. Yost
Overview
Eleanor Yost is trusted by some of the most recognizable brands in the world to protect and enforce patent, trademark, copyright, and domain name portfolios. For more than two decades, she has litigated high-stakes intellectual property disputes in federal courts across the country, the U.S. International Trade Commission (ITC), and the U.S. Patent and Trademark Office (USPTO).
Repeatedly recognized as a “Global Leader” by the World Trademark Review, Eleanor has been lauded by clients as “a formidable force in managing trademark portfolios for key international players” and “one of the most practical, strategic, and responsive partners you could hope to work with,” taking “a deep interest in knowing her clients.” She is also listed in The Best Lawyers in America for intellectual property litigation and is board certified in intellectual property law by the Florida Bar.
Widely regarded as a thought leader on post-grant proceedings before the Patent Trial and Appeal Board (PTAB), Eleanor has represented clients in dozens of inter partes review (IPR), post-grant review (PGR), and covered business method (CBM) proceedings. She has been named one of the “Top 50 Women in PTAB Trials” and was selected to be a founding member of the board of directors for the PTAB Bar Association, the leading national bar association for PTAB practitioners, judges, and other stakeholders.
Eleanor also assists clients navigating the intersection of intellectual property rights and government contracts, particularly those involving the Federal Acquisition Regulations (FARs), Defense Federal Acquisition Regulation Supplement (DFARS), and the Bayh-Dole Act, among others. She counsels clients with respect to prime awards, grants (e.g., DARPA), subcontract arrangements, novations and M&A issues, contract interpretation, performance, bid protests, and potential claims.
Eleanor is the chair of Carlton Fields’ Intellectual Property Practice.
Experience
Patent Infringement
- Lead counsel for MIA Shoes, QVC, Famous Footwear, DSW, and Stitch Fix in Rothy's Inc. v. MIA Shoes Inc., a patent and trade dress litigation in the District of Delaware concerning footwear.
- Lead counsel for Black & Decker in Tillman v. Stanley Black & Decker Corp., a patent infringement action in the Middle District of Florida.
- Counsel for Microsoft in D3D Technologies Inc. v. Microsoft Corp., a patent infringement litigation in the Middle District of Florida concerning 3D imaging technologies.
- Lead counsel during preliminary injunction and claim construction phases in Rare Breed Triggers LLC v. Big Daddy Unlimited Inc., a patent litigation in the Northern District of Florida involving forced reset triggers for firearms.
- Counsel for Bionpharma in Azurity in Azurity Pharmaceuticals Inc. v. CoreRx Inc., a patent litigation involving enalapril formulations in the Middle District of Florida.
- Nichia Corp. v. Healthe Inc., Lighting Science Group Corp., and Vividgro Inc., three patent litigations in the Middle District of Florida about LED technology.
- Hunt Construction, the United States Tennis Association, and USTA National Tennis Center in Uni-Systems Inc. v. USTA, a multiparty patent litigation in the Eastern District of New York concerning retractable stadium roofs.
- Conair and Rite Aid in Tonytail Co., Inc. v. Conair Corp., patent and trade dress litigation in the Northern District of California; obtained a complete victory on all disputed claim construction issues following Markman hearing.
- Patent owner in trial, appellate, and contempt proceedings in ePlus Inc. v. Lawson Software, Inc. in the Eastern District of Virginia.
- JPMorgan Chase in JPMorgan Chase & Co. v. Affiliated Computer Services, Inc., a declaratory judgment action in the District of Delaware involving 10 patents related to financial services and payment processing systems.
- Textron Innovations and Bell Helicopter in Bell Helicopter Textron, Inc. v. Airbus Helicopters cases in the District of Columbia involving patented helicopter landing gear.
- Patent owner in NTP, Inc. v. Sprint Nextel Corp. and NTP, Inc. v. AT&T Mobility, a suit in the Eastern District of Virginia concerning wireless email technology.
- Patent owner in Personalized Media Communications v. Motorola, Inc., EchoStar Corp., and DISH Network Corp., a suit in the Eastern District of Texas concerning telecommunications technology.
- Raisecom in Magnacross LLC v. Raisecom Inc. in the Middle District of Florida.
- International Dental Supply Co. in Midmark Corp. v. International Dental Supply Co. in the Southern District of Florida.
- Patent owner in Augme Technologies, Inc. v. Yahoo! Inc. in the Northern District of California and the Federal Circuit.
- Patent owner in Augme Technologies, Inc. v. Gannett Co., Inc. in the Southern District of New York.
- Patent owner in LucidMedia Networks, Inc. v. Augme Technologies, Inc. in the Eastern District of Virginia concerning online advertising technology.
- Fresenius in Cadence Pharmaceuticals, Inc. v. Fresenius Kabi USA, LLC, an ANDA litigation in the Southern District of California.
- Patent owner in Crutchfield Corp. v. Focusrite PLC, a patent litigation in the Western District of Virginia involving speaker technology.
- Anika in Glycobiosciences, Inc. v. Anika Therapeutics, Inc., a multiple-patent case in the District of Columbia concerning wound treatment products.
Trademark Infringement, Trade Secret Misappropriation, Copyright Infringement, and False Advertising
- Trademark and copyright owner Lasswell Foundation in successful appeal to the Eleventh Circuit, reversing and remanding order dismissing litigation to the Middle District of Florida in Lasswell Foundation for Learning and Laughter Inc. v. Timothy Schwartz, No. 20-10263 (11th Cir. 2020).
- Lead counsel for Foundation Partners Group in After Services Inc. v. Foundation Partners Group LLC, a trademark infringement action in the District of Nevada.
- Lead counsel for Lennar in Baker v. Lennar Realty Inc., a copyright infringement case in the Southern District of Florida.
- Elio Serpa PLLC v. De Ataide, a trademark infringement action in the Southern District of Florida.
- Lead counsel for trademark owner GoFundMe in several successful trademark infringement, dilution, and unfair competition litigations including GoFundMe Inc. v. Monsterfundrise (Southern District of Florida), GoFundMe Inc. v. GoFundHer LLC (Eastern District of New York), and GoFundMe Inc. v. CMG Mortgage Inc. (Northern District of California).
- Lead counsel for trademark owner Island IP Acquisitions in Island IP Acquisitions LLC v. Antle, a trademark infringement action in the Southern District of Florida.
- Lead counsel for Alliance Background in Alliance Risk Group Inc. v. Alliance Background LLC, a trademark infringement action in the Northern District of New York.
- Lead counsel for trademark owner Not Your Mother’s in DeMert Brands LLC v. Not My Mama's LLC in the Middle District of Florida.
- Trademark owner Cigar City Brewing in Cigar City Brewing, Inc. v. Cigar City Smoked Salsa, a trademark infringement action in the Middle District of Florida that settled favorably.
- Counsel in Zinnia Wealth Management LLC v. Zinnia Tech Solutions LLC, a trademark infringement action in the Middle District of Florida.
- Counsel in Florida Virtual School v. K12 Inc., a trademark infringement action in the Middle District of Florida.
- Counsel for Transamerica in Transamerica Corp. v. Retire on Track LLC, a trademark action in the Middle District of Florida.
- Counsel in KELK Corp. v. CCA Industries Inc., a trademark and breach of contract action in the Middle District of Florida.
- Delta Products in SAE Power Inc. v. Avaya Inc. & Delta Products, a trade secret litigation in the District of New Jersey.
- Celentano Food Products Inc. in Celentano Food Products, Inc. v. Dominick Celentano, a trademark infringement and trade secret misappropriation action in the District of New Jersey.
- Thomas Aaron Billiards and The Billiard Connection in Douglas Kelly d/b/a Liberty Billiards v. Thomas Aaron Billiards, defense of trademark infringement action in the District of Maryland, successfully won on summary judgment.
ITC
- OSRAM, as trial counsel, in suit involving eight LG patents concerning LED technology. The case settled favorably prior to initial determination. In re Certain Light-Emitting Diodes and Products Containing Same.
- Complainant against several semiconductor chip packaging companies. In re Certain Semiconductor Chips With Minimized Chip Package Size and Products Containing Same.
- Complainant against suppliers of Ground Fault Circuit Interrupter (GFCI) technology. In re Certain Ground Fault Circuit Interrupters and Products Containing Same.
PTAB and TTAB
- Publix Asset Management Company v. CFA Properties, Inc., TTAB 91299855
- Foundation Partners Group, LLC v. After Services, TTAB 91298956, 91298957, 91298958, 91298959, 91298968, 91298842, 91296449, 91296450, and 91295505
- Island IP Acquisitions v. Island Company Rum, Inc., TTAB 91296198, 91288442, 91288456, 91286087
- Omni Logistics v. Omnichain Solutions Inc., TTAB 92086817 and 92086818
- Alliance Risk Group Inc. v. Alliance Background, LLC, TTAB 91285650, 91285659, and 91285653
- GoFundMe Inc. v. Carlton Financial Group, TTAB 91281690
- Advanced Concept Innovations, LLC v. All Healthy Medical Technology (Guangdong) Co., TTAB 92076912
- GoFundMe Inc. v. William, TTAB 90790352
- GoFundMe Inc. v. FM7 LLC, TTAB, 91266789
- GoCardless Ltd. V. Guild Technology Inc., TTAB 91271015
- Strike Force Beverage, LLC v. Matbock Origins, LLC, TTAB 91270330
- Traffk, LLC v. Belsito, TTAB 92076669
- Blitz NV, LLC v. All Saints Retail Limited, TTAB 91252633
- Bombas LLC v. Just Bee Queen, LLC, TTAB 91251661 and 91251662
- Unwired Planet, LLC v. Square, Inc. (Fed. Cir. 2016)
- IPR2016-00254, Petition for Inter Partes Review by J. Kyle Bass.
- Unwired Planet, LLC v. Google, Inc. (Fed. Cir. 2016).
- CBM2014-0015 and CBM2014-00160, Petition for Covered Business Method Patent Review by J.P. Morgan Chase & Co.
- IPR2014-01164 and IPR2014-01165, Petition for Inter Partes Review by Square Inc.
- IPR2014-01527, IPR2014-01528, IPR2014-01530, IPR2014-01531, IPR2014-01532, IPR2014-01533, and IPR2014-01534 Petition for Inter Partes Review by Amazon.com Inc.
- IPR2015-00239, IPR2015-00240, IPR2015-00241, IPR2015-00242, IPR2015-00243, and IPR2015-00247, Petition for Inter Partes Review by 2Wire Inc.
- IPR2015-00503, Petition for Inter Partes Review by Agila Specialties Inc.
- IPR2015-00520 and IPR2015-00521, Petition for Inter Partes Review by Unified Patents Inc.
- IPR2015-00715, Petition for Inter Partes Review by Dr. Reddy’s.
- IPR2015-00643, IPR2015-00644, and IPR2015-00830, Petition for Inter Partes Review by Mylan Pharmaceuticals Inc.
Areas of Focus
Practices
Industries
Insights
News
Recognition
- Board Certified in Intellectual Property Law by The Florida Bar
- The Best Lawyers in America, Intellectual Property Litigation (2023–2026)
- WTR 1000 (2022–2025); WTR Global Leaders (2024–2025)
- IAM Patent 1000 (2026)
- Legal 500 City Elite, Intellectual Property (2026)
- Legal Elite Notable Women Leaders in Law, Florida Trend Magazine (2025)
- Top 50 Women in PTAB Trials, PTAB Bar Association (2019)
- Washington, D.C., Rising Stars, Super Lawyers Magazine (2014–2018)
Professional & Community Involvement
- PTAB Bar Association
- Founding Co-Chair, Women’s Committee
- Founding Director, Board of Directors
- Intellectual Property Owners Association
- Vice Chair, Post-Grant Patent Office Practice Committee
- Lead Author, IPO Response to USPTO Request for Comments on America Invents Act Post-Grant Proceedings
- Committee of the Year Honoree (2018)
- Federal Bar Association, Tampa Chapter
- Federal Circuit Bar Association
- International Trademark Association
Speaking Engagements
- "Brexit & Beyond: The Top IP Issues," Hillsborough County Bar Association (February 4, 2021)
- "Intellectual Property and Employment Law Considerations for Online Learning," Carlton Fields (August 11, 2020)
- "Ethics Before the PTAB," PTAB Bar Association Annual Meeting, Washington, D.C. (March 2019)
- "Navigating the Interplay of Parallel Litigation With a PTAB Proceeding,” PTAB Bar Association Annual Meeting, Washington, D.C. (March 22–23, 2018)
- "Advice of Counsel Defense in Patent Litigation: Protecting Attorney-Client Privilege," Webinar (March 16, 2017)
- "PTAB Bootcamp – Nuts and Bolts of IPRs, PGRs, and CBMs,” PTAB Bar Association Inaugural Annual Meeting, Washington, D.C. (March 1–3, 2017)
- "Advanced Licensing Agreements," Program Faculty, Practising Law Institute
- "Patent Law," Program Faculty, Practising Law Institute
- "Interpreting What the Past 12 Months of CBM Challenges and IPR and PGR Proceedings Reveal About Party Successes and Failures Across Industries," IP Counsel Exchange on Post-Grant Patent Challenges at the PTAB, San Jose, CA (March 30–31, 2015)
- "Oyez, Oyez, Oyez! Analyzing the Impact of the Supreme Court’s Decisions in Alice Corp. and Nautilus on AIA Post-Grant Proceedings," ACI's Inaugural Conference on Post-Grant PTO Proceedings, New York, NY (March 25–26, 2015)
- IP Strategy Summit: Enforcement, New York, NY (June 10, 2014)
- Licensing Executive Society's Life Sciences Sector Conference (2014)
- "Software Licensing Boot Camp: Drafting Contracts That Meet Current Business Needs While Avoiding Unwanted Outcomes," ACI Annual the Practical and Tactical Art of the Deal in Software Agreements – Cloud, SaaS, Open Source & Licensing
- "Patent Infringement: Structuring Opinions of Counsel: Leveraging Opinion Letters to Reduce the Risks of Liability and Enhanced Damages," Strafford Publications Inc.
- "Trademark Transactions: Doing Deals – From Due Diligence to Ink. An International Perspective," IPO Annual Meeting, Los Angeles, CA (September 11–13, 2011)
Credentials
Education
- St. John's University School of Law (J.D.)
- State University of New York at Stony Brook (B.A.)
Bar Admissions
Industry Specialization Certifications
Court Admissions
Background
- Partner, Goodwin Procter LLP, Washington, D.C.
- Associate, Hiscock & Barclay LLP, Rochester, NY
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