Ben Yorks concentrates on intellectual property matters, particularly patents, with a practice spanning patent litigation, patent office representation (prosecution and post grant reviews), licensing and IP diligence. Ben has prosecuted patents in the mechanical, electrical, optics and life science arts.

Prior to his legal career, Ben was an engineer at Texas Instruments.

Experience

Litigation

  • TiVo Inc. v. EchoStar Communications, Inc.; TiVo Inc. v. ATT, Inc.; TiVo Inc. v. Verizon Communications Inc.; Motorola Mobility, Inc. v. TiVo Inc.; Cisco Systems, Inc. v. TiVo Inc. (E.D. Tex.). Represented TiVo in a series of patent infringement suits related to DVRs that resulted in a cumulative compensation to TiVo of $1.6 billion.
  • Apeldyn v. Chi Mei Optoelectronics. (Del.). Represented Chi Mei in a patent infringement suit related to liquid crystal displays (LCDs). Obtained a summary judgment of noninfringement.
  • Ultratech Stepper, Inc. v. ASM Lithography, Inc. (N.D. Cal.). Represented ASML in a patent infringement suit related to photolithographic equipment used for semiconductor fabrication. A jury found the asserted patent claims to be invalid on numerous grounds.

Patent Office Proceedings

  • TiVo Inc. v. EchoStar Communications, Inc. Represented TiVo in an inter partes reexamination that resulted in the cancellation of all claims being asserted in the civil action for technology that relates to DVRs.
  • LG Philips LCD Co., Ltd. v. Chi Mei Optoelectronics Corp. Represented Chi Mei in a number of inter partes reexaminations that resulted in the affirmance of claims asserted by Chi Mei and the cancellation of claims asserted by LG in the civil action in technology that relates to LCD displays.
  • ADP. Represented ADP in an ex parte reexamination that resulted in the affirmance of claims for technology that relates to insurance estimating software.
  • InTouch Health. Represented InTouch Health in an ex parte reexamination that resulted in the affirmance of claims for technology that relates to telerobotics.
  • Newport Corp. Represented Newport in an ex parte reexamination that resulted in the affirmance of claims that relates to optics.
  • Rudell Design. Represented Rudell Design in an ex parte reexamination that resulted in the affirmance of claims for a toy product.
  • Prosecuted hundreds of patents, including patents that were successfully litigated for Intel (chip packaging), Computer Motion (surgical robots) and Refractec (medical device).

Education

University of Houston (J.D., 1987)

California State University, Fullerton (M.S., Electrical Engineering, 2000)

Auburn University (B.S., Mechanical Engineering, 1981); Pi Tau Sigma; Tau Beta Pi

Admissions

  • California, 1988
  • U.S. Patent and Trademark Office
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