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Eleanor M. Yost

Eleanor M. Yost

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Overview

Eleanor Yost litigates high-stakes intellectual property disputes in state and federal courts, the U.S. International Trade Commission, and the U.S. Patent and Trademark Office (USPTO). She also manages national and international patent, trademark, and domain name portfolios for some of the most recognizable brands in the world. Eleanor’s clients rely on her for a broad range of intellectual property and government contracts advice, including patent and trademark prosecution, opinions, IP and software licensing, due diligence, and transactions.

An in-demand thought leader on the subject of USPTO Patent Trial and Appeal Board (PTAB) post-grant proceedings, Eleanor has been featured on the topic in IPLaw360, AmLaw Daily, Corporate Counsel, Inside Counsel, The Recorder, Intellectual Property Magazine, Bloomberg BNA, Westlaw Journal Intellectual Property, The Pink Sheet, Managing IP, Lawdragon, and elsewhere. She launched the PTAB practice at an AmLaw 50 firm and was selected to be a founding member of the PTAB Bar Association Board of Directors, the leading national bar association for PTAB practitioners, judges, and other stakeholders. She is also the lead author of PTAB Post Grant Proceedings: A Tactical Guide for Practitioners, and represents patent owners and petitioners in reexamination, inter partes review, post-grant review, covered business method review, and related appeals to the Federal Circuit.

In addition to her intellectual property practice, Eleanor assists clients navigating government contracts and procurement issues, particularly those involving the Federal Acquisition Regulations (FARs), Defense Federal Acquisition Regulations Supplement (DFARS), and the Bayh-Dole Act, among others. She counsels clients with respect to prime awards, grants (e.g., DARPA), subcontract arrangements, contract interpretation, performance, bid protests, and potential claims.

Featured Insights

Experience

Patent Infringement - Select Cases

  • 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 Distict 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.

Trademarks, Trade Secrets, Copyrights, and False Advertising 

  • Trademark owner GoFundMe in GoFundMe, Inc. v. CMG Mortgage, Inc., a trademark infringement, dilution, and unfair competition litigation in the Northern District of California.
  • 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.
  • CCA in K.E.L.K. Corp. v. CCA Industries, Inc., a trademark infringement litigation in the Middle District of Florida.
  • Competitor in Purple Innovation LLC v. Honest Reviews, LLC, a false advertising litigation in the District of Utah.
  • Delta Products in SAE Power Inc. v. Avaya Inc. and 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

  • 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.

Featured Insights

All Insights











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Recognition

  • Selected for inclusion in Washington, D.C. Super Lawyers Rising Stars (2014-2018)

Professional & Community Involvement

  • PTAB Bar Association
    • Co-Chairman, Women’s Committee 
    • Founding Director, Board of Directors
  • Intellectual Property Owners Association (IPO)
    • 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)
  • Ferguson-White American Inn of Court
  • U.S. Court of Federal Claims Bar Association
  • Federal Circuit Bar Association
  • International Trademark Association (INTA) 

Speaking Engagements

  • "Navigating the Interplay of Parallel Litigation With a PTAB Proceeding,” PTAB Bar Association Annual Meeting, Washington (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 (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," American Conference Institute's inaugural conference on Post-Grant PTO Proceedings, New York (March 25-26, 2015).
  • IP Strategy Summit: Enforcement, New York (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," 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.
  • "Trademark Transactions: Doing Deals - From Due Diligence to Ink. An International Perspective," IPO Annual Meeting, Los Angeles (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
  • District of Columbia
  • Florida
  • New Jersey
  • New York
Court Admissions
  • U.S. Court of Federal Claims
  • U.S. Patent and Trademark Office
  • U.S. Court of Appeals, Federal Circuit
  • U.S. Court of Appeals, Tenth Circuit
  • U.S. District Court, Middle District of Florida
  • U.S. District Court, Southern District of Florida
  • U.S. District Court, District of Columbia
  • U.S. District Court, District of New Jersey
  • U.S. District Court, Northern District of New York
  • U.S. District Court, Western District of New York
  • Florida State Courts
  • New Jersey State Courts
  • New York State Courts
  • District of Columbia Courts

Background

  • Partner, Goodwin Procter LLP, Washington
  • Associate, Hiscock & Barclay, LLP, Rochester, NY

Disclaimer

The information on this website is presented as a service for our clients and Internet users and is not intended to be legal advice, nor should you consider it as such. Although we welcome your inquiries, please keep in mind that merely contacting us will not establish an attorney-client relationship between us. Consequently, you should not convey any confidential information to us until a formal attorney-client relationship has been established. Please remember that electronic correspondence on the internet is not secure and that you should not include sensitive or confidential information in messages. With that in mind, we look forward to hearing from you.