Alex S. Yap

Partner | Los Angeles

ayap@mofo.com | (213) 892-5688

ayap@mofo.com
(213) 892-5688

I apply my experience as a former administrative patent law judge at the U.S. Patent and Trademark Office (USPTO) to develop litigation strategies for leading technology companies.

Alex Yap is a partner in the Intellectual Property Group. As a former administrative patent law judge at the U.S. Patent and Trademark Office (USPTO), he helps clients navigate post-grant adversarial proceedings before the Patent Trial and Appeal Board (PTAB). He focuses his practice on America Invents Act (AIA) trials before the PTAB, as well as IP litigation matters.

Prior to rejoining the firm, Alex served as an administrative patent judge at the USPTO in San Jose, CA. In that capacity, he presided on more than 200 ex parte appeals, inter partes review (IPR), and covered business method (CBM) patent proceedings.

Utilizing his electrical and computer engineering degrees and experience from senior engineering roles, Alex spent 11 years at MoFo advising technology clients on patent litigations. During that time, he was involved in more than 30 PTO reexamination/review proceedings, and obtained cancellations of the asserted claims in numerous cases.

Prior to becoming a lawyer, Alex spent more than four years as a circuit design engineer for Freescale (formerly Motorola Inc.) and Analog Devices Inc., designing embedded non-volatile (flash) memories and asymmetric digital subscriber line (ADSL) chipsets. During that time, he developed extensive expertise in computer hardware and software architecture, communication systems, digital and analog circuit design, and digital signal processing. He has published numerous technical articles in trade journals and is an inventor on multiple U.S. patents.

Alex received his B.S. and M.S. degrees in electrical and computer engineering from the University of Wisconsin, Madison, in 1993 and 1998 respectively, and his J.D. degree magna cum laude from the University of Minnesota School of Law in 2005. He was an editor of The Minnesota Law Review and was elected to the Order of the Coif.

Alex is a member of the California State Bar and is registered to practice before the USPTO. He is also a member of the American Association of Patent Judges.

Representative Experience

  • Vehicle IP LLC v. General Motors, et al. (Western District of Wisconsin). Successfully defended Networks In Motion and Cellco Partnership (d/b/a Verizon Wireless) in patent litigation involving downloadable turn-by-turn GPS navigation technology for cellular phones. Victory on summary judgment of non-infringement affirmed by Federal Circuit.
  • Black Hills Media v. Yamaha Corp. of America (Central District of California). Successfully defended Yamaha in patent suit alleging infringement by AV receivers and home theater systems.  Case was dismissed after five of six patents in suit were found unpatentable by the PTAB.
  • EMSAT, et al. v. AT&T, et al. (Northern District of Ohio). Represented Cellco Partnership (d/b/a Verizon Wireless) in patent litigation involving cellular E911 and location-based services for cellular phones. The case was substantially narrowed after inter partes reexaminations of the patents in suit.
  • Ruyan Investment Holdings Ltd. v. CB Distributors, Inc., et al. (Central District of California). Represented CB and DR Distributors in patent suit involving electronic cigarettes. Successfully achieved stay of case pending inter partes review proceeding.  Case was later dismissed.
  • Fontem Ventures B.V., et al. v. CB Distributors, Inc., et al. (Central District of California). Represented CB and DR Distributors in patent suit involving five patents relating to electronic cigarettes. Case was later dismissed.
  • Altera v. LSI Corp. (Northern District of California). Successful early resolution of declaratory judgment patent infringement action involving 12 patents relating to computer architecture, circuit design, and semiconductor layout.
  • Altera v. Mosaid Technologies (Northern District of California). Successful early resolution of declaratory judgment patent infringement action concerning computer architecture and memory circuit design.
  • Semiconductor Energy Laboratory Co., Ltd. v. Toppoly Optoelectronics Corp., et al. (Central District of Califoria). Represented defendants in patent litigation involving low-temperature polysilicon TFT technology for display panels. A favorable settlement was reached prior to trial.
  • Online News Link LLC v. Apple Inc., et al. (Eastern District of Texas). Represented Investor’s Business Daily, Inc., in patent litigation concerning HTML-based newsletters. A favorable settlement was reached early in the case.
  • Additional Verizon Wireless cases. Represented Verizon Wireless in a series of patent litigation matters filed by non-practicing entities that have settled favorably or have been dismissed, including:
    • TracBeam v. Verizon Wireless et al. (Eastern District of Texas)
    • Levine v. Samsung et al. (Eastern District of Texas)
    • IpVenture v. Verizon Wireless et al. (Northern District of California)
    • ADC Technology v. Verizon Wireless (Northern District of Illinois)
    • Child Protect LLC v. Verizon Wireless et al. (Eastern District of Texas)
    • Tendler Cellular v. AT&T Mobility et al. (Eastern District of Texas)
    • Traffic Information LLC v. AT&T Mobility et al. (Eastern District of Texas)
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