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Brent
K.
Yamashita
Partner
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Brent K. Yamashita is a patent litigator, with experience in computer hardware and software, semiconductors, storage systems and devices, communication systems, networking, and mobile devices.
He has argued seven claim construction hearings and conducted three ITC patent trials. Mr. Yamashita also prepares and prosecutes patents and reexamination petitions and regularly advises companies on IP issues. His clients range from Fortune 100 companies such as HP and Samsung to technology startups such as mSpot.
Mr. Yamashita was named a "Rising Star" in the area of Intellectual Property Litigation in 2011 by Super Lawyers magazine. He also was named one of "The Best Lawyers in the Bay Area" in the area of Patent Litigation in 2005 and 2006 by Bay Area Lawyer Magazine.
He frequently publishes articles on topics relevant to patent litigation and has been quoted by InsideCounsel, CNET News, IP Law360, The Daily Journal and the BNA Patent, Trademark & Copyright Journal on new developments in patent law.
Recent Patent Litigation Matters
Computer Hardware, Software, and Networking
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HP v. Acer. Represented HP in ITC and EDTX district court actions against Acer. Responsible for patents involving cache controllers, LCD scalar chips and rewritable DVD drives. Obtained favorable settlement after ITC trial before issuance of Initial Determination
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HP v. Gateway: Represented HP in two ITC cases and two district court cases. Obtained Initial Determination in ITC that two HP parallel port patents were infringed by Gateway, with a recommendation for an Exclusion Order. Handled other patents involving rewritable DVD drives, LCD scalar chips, multi-sync CRT monitors, wireless LANs and hard disk drives. Obtained settlement of US$47 million
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Rackable v. Supermicro: Represented Supermicro against claims of patent infringement. Technology involved computer chassis and rack designs. Obtained Markman decision finding two claim terms indefinite, which rendered over half of the asserted claims invalid. Obtained favorable settlement
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Cisco: Second-chaired an arbitration for Cisco to enforce a non-competition agreement in a case involving network switch technology. Obtained favorable judgment
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Oki Data v. Ricoh: Represeted Ricoh against claims of patent infringement. Technology involved various aspects of printers and copiers
Semiconductors
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Freescale v. Sanyo: Currently representing Sanyo in ITC action involving bus termination circuitry
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IDT v. GSI Technology: Represented GSI against claims of patent infringement. Technology involved SRAM memory controllers. Obtained favorable settlement
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Broadcom v. QUALCOMM: Represented QUALCOMM against claims of patent infringement. Handled patents involving RF transceivers (patent was stayed pending reexamination by USPTO) and analog filters (patent was dismissed by Broadcom)
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Currently representing large corporation in ITC action involving microprocessors
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Maxtor Corporation v. Philips Semiconductors: Represented Maxtor on claims of breach of contract and other theories based on defective spindle motor controllers. Obtained settlement of over $24 million. (Commercial case, not patent case)
Storage Systems and Devices
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Overland Storage v. BDT, IBM, and Dell: Represented Overland in an ITC hearing involving tape library technology. Awaiting Initial Determination
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NetApp v. Sun: Represented Sun in multiple cases involving dozens of patents. Technology involved file systems, network monitoring and RAID technology. Obtained favorable settlement
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Hitachi Global Storage Technology (HGST) v. Samsung: Represented Samsung in EDTX against claims of patent infringement. Technology involved hard disk drive formats. Successfully initiated reexamination of all five HGST patents by USPTO. Obtained favorable settlement
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Papst v. Maxtor: Represented Maxtor (Seagate) against claims of patent infringement. Technology involved spindle motors and baseplates in hard disk drives. Obtained favorable settlement
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MKE v. Maxtor and Quantum: Represented Maxtor against claims of patent infringement and trade secret misappropriation. Technology involved servo designs in hard disk drives. Obtained favorable settlement
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Cambrian Consultants v. Maxtor: Represented Maxtor against claims of patent infringement. Technology involved emergency retract mechanism for hard disk drives. Obtained summary judgment that patent was unenforceable due to inequitable conduct
Mobile Devices
Admissions
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California
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United States Patent and Trademark Office
- United States District Court for the Northern District of California
- United States District Court for the Southern District of California
- United States District Court for the Central District of California
- United States District Court for the District of Hawaii
- United States Court of Appeals for the Federal Circuit
- United States Court of Appeals for the Ninth Circuit
Memberships
Publications
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"Leveraging the Personality Type of a Technical Witness to Your Advantage," San Francisco Daily Journal, December 14, 2010
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"The Altered Standard for Design Patents," IP Law360, September 30, 2008
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"Secondary Considerations of Obviousness in a Patent Case: The Seldom-Used Simultaneous Invention Factor," IPO Daily News, July 14, 2008 and Patently-O, July 29, 2008
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"Interpreting Functional Language in Apparatus Claims," IP Law360 and Technology Law360, July 29, 2008
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"Enhanced Damages in Patent Cases: Willfulness and Opinions of Counsel," PLI Patent Litigation 2000, Vol. 619 (with Charlene Morrow)
Seminars
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"Getting Closer? US vs. EU, Post-patent Reform," panel discussed sponsored by the Bucerius Law School, January 24, 2012
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"Patent Litigation 2010-2011," panel discussion sponsored by the San Francisco Intellectual Property Law Association, June 5, 2011
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"Patent Threats: Initial response Strategies," Strafford Webinar, March 30, 2011
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"Claim Construction Strategies," Berkeley Center for Law and Technology, January 11, 2011
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"Deciphering Bilski v. Kappos," Panel discussion sponsored by the San Francisco Intellectual Property Law Association, July 16, 2010
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"A Cost-Effective Patent Defense: Indefiniteness," ALI-ABA and West LegalEdCenter audio webcast, June 9, 2009
Prior Experience
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Associate, Fenwick & West L.L.P. (1999-2001)
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Associate, Carlsmith Ball (1997-1999)
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EDUCATION
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