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Robert J. Yorio

Robert J. Yorio

Partner, Carr & Ferrell LLP
Co-Chair, Litigation Practice Group
650.812.3453 |

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Robert Yorio is co-chairman of the Litigation Practice Group of Carr & Ferrell. He focuses his practice on patent, trade secret, trademark and copyright litigation and commercial litigation involving all areas of electronics, integrated circuits, web-based telecommunications and computer technologies. His intellectual property litigation experience spans over 25 years during which time he has successfully tried and arbitrated numerous cases before federal and state courts and American and International arbitration tribunals. Mr. Yorio’s intellectual property litigation experience has involved integrated circuits, computer software, internet delivery of audio and video media content, semiconductor design and manufacture, programmable gate arrays, web-conferencing software, programmable connector technologies and video game design and development. He continues to represent clients before District Courts, Courts of Appeal and arbitration tribunals in intellectual property and complex commercial litigation cases. Mr. Yorio’s clients include public and private companies of all sizes, technology companies, international corporations and individuals. He has established long term relationships with a number of clients who came to rely upon him during a litigation matter, and now regularly consult with him on a variety of strategic and business issues.

 

REPRESENTATIVE EXPERIENCE

 

  • Burst.com, Inc. v. Microsoft Corporation - Representation of Burst.com in an action alleging violation of federal and state antitrust laws, patent infringement with respect to three patents owned by Burst, breach of a non-disclosure agreement, misappropriation of trade secrets and unfair competition.  The patents-in-suit related to various apparatus and methods to improve the speed and efficiency of the delivery of audio and video information over a computer network.  The matter was successfully resolved by obtaining a $60 million settlement with Microsoft following the issuance of claim construction rulings. 
  • Papaya Studio Corporation v. Sony Computer Entertainment America - Mr. Yorio was lead counsel representing Sony Computer Entertainment America in defending against breach of contract claims arising out of a development agreement to develop and publish a video game for use in Sony’s PlayStation 2 game console.  Issues in the case involved the design and development of source code for certain aspects of the video game and the ownership rights relating thereto.  The firm successfully enforced a jury trial waiver in the contract between the parties on a motion to strike the plaintiff’s jury demand.  Following the Court’s ruling on that successful motion, the case settled on terms favorable to Sony. 
  • eAcceleration Corporation v. Trend Micro, Incorporated - Representation of Trend Micro in the defense of claims for allegedly unlawful use of the plaintiff’s trademark in connection with Trend Micro’s marketing and sale of a version of its antivirus software.  Mr. Yorio and his team were successful in defeating plaintiff’s attempt to obtain a preliminary injunction against Trend Micro’s use of plaintiff’s stop sign trademark.  The ruling denying the plaintiff’s motion for a preliminary injunction was issued in January of 2006, and the case settled on terms favorable to Trend Micro shortly thereafter. 
  • Venstar, Inc. v. Atmel Corporation - Mr. Yorio represented semiconductor manufacturer Atmel Corporation in defending against claims of improperly designed and manufactured application specific integrated circuits (ASICs) for use in certain commercial heating, ventilating and air conditioning controls and devices.  Following the filing of a summary judgment motion by Atmel, the plaintiff requested mediation of the dispute.  The matter settled on terms favorable to the client at the mediation. 
  • Acticon Technologies, LLC v. Adaptec, Inc. and Iomega Corporation - Mr. Yorio represented the plaintiff in a patent infringement action relating to three patents involving programmable connector technology used in a number of products manufactured and sold by the defendants.  This case was settled following two mediation sessions between the parties.
  • Positive Light, Inc. v. Quantronix - Representation of Positive Light in this action which alleged patent infringement and unfair competition against the defendant.  The patent-in-suit related to a system and method for amplifying an optical pulse using a diode pumped Q-switched, intracavity doubled laser to pump an optical amplifier.  The accused products involved Quantronix's Titan DQE and Odin amplifier products and its Darwin laser series of products.  Quantronix asserted counter claims for declaratory judgment of non-infringement and invalidity.  The matter was settled prior to the claim construction hearing.
  • Sega of America, Inc. v. Fox Interactive, et al. - Mr. Yorio represented Radical Games, Ltd. and Radical Entertainment, Inc., two of the defendants in this action.  The plaintiff asserted an infringement with respect to a patent covering directional arrows and other driving guidance features in a video game.  The plaintiff also alleged violations of copyrights relating to its own Crazy Taxi game.  The accused product was Radical’s The Simpsons Road Rage video game, published by Electronic Arts.  The defendants filed counter claims seeking declarations of non-infringement and invalidity.  The case was settled at a private mediation prior to the commencement of claim construction proceedings.
  • Stephen Key Design, LLC, et al. v. Lego Systems, Inc., et al - Mr. Yorio represented the plaintiff in this action.  Claims of patent infringement were asserted for two patents-in-suit covering methods and apparatus of applying a rotatable label to, in this case, a container for Lego’s Bionicle series of products.  The trial court issued a claim construction ruling, Stephen Key Design, LLC, et al. v. Lego Systems, Inc., et al., 261 F.Supp.2d 1196 (N.D. Cal. 2003).  The case was resolved at the Mandatory Settlement Conference following the trial court’s denial of the defendant’s motion for summary judgment.
  • Del Madera Properties v. Rhodes and Gardner, Inc. - Mr. Yorio represented the defendants in this case against allegations that they had misappropriated a copyrighted land map to plan a new development.  The plaintiff asserted unfair competition claims and argued that they were different from copyright protection laws because these claims required the breach of fiduciary duty, an element not required under copyright law.  Following a successful defense verdict in a jury trial, the Ninth Circuit upheld the jury verdict holding that the state causes of action asserted by the plaintiff did not include an extra element sufficient to make the claims qualitatively different from the copyright claim, and that the state law claims were therefore preempted under the Copyright Act.  The case is reported as Del Madera Properties v. Rhodes and Gardner, Inc., 820 F.2d 973 (9th Cir. 1987). 
  • Blue Cross and Blue Shield Association v. Harvard Community Health Plan, Inc. - Representation of Blue Cross and Blue Shield Association in an opposition proceeding relating to a competitive healthcare provider’s attempt to seek registration of the mark “A Cure For The Blues” for healthcare services.  Following discovery, both parties filed motions for summary judgment and the Trademark Trial and Appeal board granted Blue Cross and Blue Shield’s motion for summary judgment and sustained its opposition to the applicant’s mark.  The decision is reported in Blue Cross and Blue Shield v. Harvard Community Health Plan, 17 U.S.P.Q. 2d 1075 (TTAB 1990).

 

PRACTICE AREAS

 

  • Patent Litigation
  • Trademark & Copyright Litigation
  • Trade Secret Litigation
  • Complex Commercial Litigation
  • Antitrust and Unfair Competition

Education

  • J.D., Georgetown University Law Center
  • B.A., Syracuse University

Admitted

  • State Bar of California
  • New York State Bar
  • All Federal Courts in California
  • United States Court of Appeals for the Fourth Circuit
  • United States Court of Appeals for the Sixth Circuit
  • United States Court of Appeals for the Ninth Circuit
  • United States Court of Appeals for the Federal Circuit

Professional

  • State Bar of California – Antitrust and Unfair Competition Law sections
  • American Bar Association
  • Federal Circuit Bar Association