Attorneys

Meet Bob

Robert J. Yorio

Partner

Litigation Practice Group

650.812.3453
yorio@carrferrell.com
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Bob 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. Bob’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. Bob’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.

Education
  • J.D., Georgetown University Law Center
  • B.A., Syracuse University
Admitted
  • State Bar of California
  • New York State Bar
  • United States Supreme Court
  • 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
Representative Experience
  • DN Lookup v. Verizon - Mr. Yorio represented Verizon Communications, Inc. in the defense of claims for a discovery dispute. The plaintiff asserted patent infringement action and argued that Verizon did not produce core technical documents for its infringing. Verizon asserted in its responsive letter brief that the plaintiff should be required to seek relevant documents from third parties via subpoena rather than obtaining documents from Verizon itself. The matter settled on terms favorable to the defendant.
  • CrossFit v. Anthos Capital - Mr. Yorio represented the plaintiff in this action. CrossFit asserted that Anthos Capital committed, aided and abetted breach of fiduciary duty, misappropriated trade secrets, was unfairly competitive, and interfered with prospective economic advantage. The case settled on terms favorable to CrossFit.
  • InNova v. 3Com - Mr. Yorio represented AIG in the defense of claims for patent infringement. The plaintiff, InNova, requested that the defendant, AIG, produce documents and other electronically stored information electronically for inspection and photocopying by plaintiff’s attorneys within thirty days from the date of service. The matter settled on terms favorable to AIG.
  • Trend Micro v. Bluegem Security - Representation of Trend Micro in the defense of claims for alleging copyright infringement, breach of contract, unfair competition, misappropriation of intellectual property, conversion and intentional interference with prospective economic advantage. The case settled on terms favorable to Trend Micro.
  • Macrosolve v. Xora - The plaintiff, Macrosolve, represented by Mr. Yorio, filed a complaint for patent infringement against Xora. Both parties signed a privileged settlement communication. The case was successfully resolved by obtaining a total of $45,000.00 in full consideration of the license, release, and other rights granted under this agreement.
  • Goel v. Lahri - Lahri filed the issuance of claim for breach of contract against Goel. The case was successfully resolved in favor of Mr. Yorio’s client, Goel, by obtaining a $1.7 million settlement, plus interest, costs and attorney’s fees.
  • Epic Systems v. Altos Solutions - The plaintiff, Epic Systems, represented by Mr. Yorio, filed an action for federal trademark infringement, false designation and for trademark infringement under Wisconsin common law. Epic Systems also sought both injunctive relief and damages. The case was settled on terms favorable to the plaintiff, Mr. Yorio’s client.
  • Business Systems Consultants v. Trend Micro - Mr. Yorio represented Trend Micro, one of the two defendants. The plaintiff challenged both defendants on the use of WORRY FREE or WORRY-FREE, a trademark originally registered by BSCI. The case was resolved in the United States District Court for the District of Massachusetts.
  • Ingrid & Isabel v Mothers Work - Mr. Yorio represented Mothers Work in defending against claims of patent infringement. The case was resolved at the United States District Court of Northern District of California on terms favorable to the client. Both parties have agreed to a compromise and settlement.
  • Spalding v Arbico - Mr. Yorio represented the plaintiff, Spalding Laboratories, Inc. The plaintiff asserted that Arbico committed unfair business practices, false advertising claims, common law disparagement, and interference with existing and prospective economic advantage. Spalding requested injunctive relief. The matter settled on terms favorable to the client.
  • 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.
  • Apple Computer v. Burst.com, Inc. - Current representation of Burst.com in a declaratory relief/patent infringement case presently pending in federal court in San Francisco.  The case involves the same patents-in-suit at issue in theBurst.com vs. Microsoft litigation together with a fourth Burst patent.
  • 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 vHarvard 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).