Chaikovsky is a partner in the law firm of McDermott Will & Emery LLP
and is based in the Firm's Silicon Valley office. He focuses his practice
on intellectual property litigation. In addition to appearing in federal
courts and the U.S. International Trade Commission, Yar has coordinated
multinational offensive and defensive patent actions.
Prior to joining McDermott, Yar was a partner in the
intellectual property and technology group at an international law firm.
He has extensive experience litigating and counseling on matters for companies
in all stages of development, from start-ups to established companies.
Yar has litigated in technology fields as diverse as networking, software,
hardware, internet, communications, video compression, semiconductors, consumer
electronics, analog devices and medical devices.
Yar was honored as one of the 75 Leading Intellectual Property
Litigators by the Daily
Journal in 2009 and 2010. He
was previously profiled in the Daily
Journal as one of the top 20 lawyers in California under the age of 40 as
well as in the Silicon Valley Business
Journal's 40 Under 40. Yar was also
ranked as a leading intellectual property lawyer by Chambers USA in 2009 and 2010, where he was described
as a "fast processor" and "insightful and
USA praised him for his "assertive, thorough and
thoughtful approach" and his ability to adopt the viewpoint of in-house
counsel. He was Yahoo!'s first head
In 2008, Yar was elected as a member of The Fellows of the
American Bar Foundation (ABF). The Fellows of the ABF is an honorary
organization consisting of distinguished lawyers, judges and legal scholars
whose public and private careers have demonstrated outstanding dedication to
the welfare of their communities and the highest principles of the legal
profession. Membership in The Fellows is limited to one-third of 1
percent of lawyers licensed to practice in each jurisdiction.
Yar has been an adjunct lecturer of intellectual property at
Stanford Law School. He is a frequent speaker at conferences around the
nation on various aspects of intellectual property law. Yar is also the
author of numerous publications.
Before practicing law, Yar was an engineer in the missile
systems defense department of Hughes Aircraft Company.
Yar is a member of several professional organizations including
the American Bar Association, American Intellectual Property Law Association,
Federal Circuit Bar Association, International Trade Commission Lawyer
Association, San Francisco Bay Area IP Inn of Court, American Electronics
Association and American Bar Association.
Yar is admitted to practice in California and before the U.S.
Patent and Trademark Office.
Technologies LLC v. Softlayer Technologies, Inc., et al. (E.D. Tex.) - Lead counsel for Yahoo! Inc. in
a multi-defendant action relating to information storage systems
Meteora, LLC v. Marshal8E6, et al. (C.D. Cal.) - Lead counsel for Trend Micro
Incorporated in a multi-defendant action relating to content filtering
Protection and Authentication of Texas, LLC v. Symantec Corp., et al. (E.D. Tex.) - Lead counsel for
Trend Micro Incorporated in a multi-defendant action relating to security
USA, Inc. v. Amazon.com, Inc., et al. (E.D. Tex.) - Representing Newegg, Inc., in a
multi-defendant action involving transmission of information over a network
Technologies, Inc. v. Blip Networks et al. (E.D. N.Y.) - Lead counsel for MySpace and Photobucket.com
in a patent infringement action involving file-sharing technology
Bowes Inc. et al. v. Zumbox, Inc. (C.D. Cal.) - Lead counsel for Zumbox Inc. in an
action involving paperless mail delivery technology
Health, Inc. v. Vatech Co., Ltd., et al. (W.D. N.Y.) - Represented Vatech Co., Ltd., and E-Woo
Technology, Co., Ltd., in an action involving CT scanning
technology. The parties successfully reached a settlement.
Group LLC v. Apple, Inc. et al. (E.D. Tex.) - Lead counsel for Broadcom Corporation in a
multi-defendant action involving multiple patents relating to encryption
Analogic Technologies, Inc., v. Kinetic Technologies Inc. (N.D. Cal.) - As lead counsel,
represented Kinetic Technologies in a patent infringement action involving LED
driver circuit technology and successfully secured a stay of the case pending
reexamination even before the U.S. Patent and Trademark Office had granted the reexamination
Physics Corp. et al. v. AU Optronics Corp. (E.D. N.Y.) - Represented AUO in a multi-defendant action
involving plasma-enhanced chemical vapor deposition technology for
(International) Limited, et al. v. Idearc Media Services-West (E.D. Tex.) - Represented Geomas in a
matter relating to systems and methods, such as search engines and databases,
for conducting geographical and topical searches
LLC v. Medtronic Somafor Danek, Inc. (D. N.J.) - Lead patent litigation counsel for Fastenetix
who successfully settled an action to enforce patents covering spinal implant
devices. Medtronic publicly reported that it made payment of $125 million
for the settlement of the litigation and purchase of the patents.
the Matter of Certain Semiconductor Chips with Minimized Chip Package Size and
Products Containing Same (USITC)
- Lead ITC counsel for Spansion LLC and Spansion Inc. in an ITC action
involving semiconductor packaging technology
the Matter of Certain Baseband Processor Chips and Chipsets, Transmitter and
Receiver (Radio) Chips, Power Control Chips, and Products Containing Same,
Including Cellular Telephones Handsets (USITC) - Represented Broadcom in an ITC action before
U.S. Customs and Border Protection to enforce an ITC exclusion order
LLC v. LowerMyBills, Inc. (W.D.
N.C.) - Lead patent litigation counsel for an Experian subsidiary,
LowerMyBills, in a patent infringement action relating to online mortgage loan
the Matter of Certain Color Television Receivers and Color Display Monitors,
and Components Thereof (USITC) -
Represented Thomson Licensing S.A. and Thomson Licensing Inc. in an ITC action
involving flat-panel display technology
of Texas, LLC v. Yahoo! Inc. et al. (E.D. Tex.) - Represented Yahoo! Inc. in a patent
infringement action involving internet personals technology
Tse v. Apple Computer, Inc. et al. (N.D. Cal.) - Represented MusicMatch (a
subsidiary of Yahoo!) in a patent infringement action involving digital rights
Inc. v. MusicMatch, Inc. (W.D.
Wash.) - Represented MusicMatch (a subsidiary of Yahoo!) in a patent
infringement action involving digital rights management technology
Curve, Inc. v. CallWave, Inc. (C.D. Cal.) - Represented CallWave, Inc., in a patent
infringement action involving communications and messaging technologies
Corp. v. Carl Zeiss AG et al. (Cal. Sup. Ct.) - Represented defendants in a breach of
contract and unfair competition action involving femtosecond laser technology
for refractive laser eye surgery
International v. Applied Materials, Inc. (E.D. Tex.) and (D. Ariz.) - Represented Applied Materials
in a 13-patent infringement dispute involving semiconductor processing
Corp. v. Certance LLC (D. Colo.) -
Represented Certance in a patent infringement action involving digital tape
Systems Engineering, Inc. v. Dell, Inc et al. (E.D. Tex.) - Represented Intel Corp. in a patent
infringement action involving eight patents relating to microprocessor
Corp. v. Lexar Media, Inc. (N.D.
Cal.) - Represented Lexar Media in a patent infringement action involving nine
patents relating to flash memory technology
Physics Corp. et al. v. Micron Technology, Inc. (E.D. N.Y.) - Represented Micron in a
multi-defendant action involving plasma-enhanced chemical vapor deposition
technology for semiconductor fabrication
Synopsys, Inc. v. Deng et al. (N.D. Cal.) - Represented defendants in
a trade secret action relating to Electronic Design Automation (EDA)
Systems, Inc. v. Yahoo! Inc. et al. (E.D. Tex.) - Represented Yahoo! Inc. in a patent
infringement action involving digital rights management technology
v. Sony Pictures et al. (Cal.
Sup. Ct.) - Represented defendants in a misappropriation of invention, unfair
competition and breach of contract dispute involving three-dimensional sound
Veronex Technologies, Inc. v. John F.
Denman et al. (Cal. Sup. Ct.) - Represented defendants in a
misappropriation of trade secrets, unfair competition and trade libel case
involving solution to the Year 2000 problem
v. Raychem Corp. (C.D. Cal.) -
Represented Bourns in an antitrust action, including allegations of fraud on
the Patent Office relating to a series of patents pertaining to
circuit protection devices. The jury found fraud with respect to all four
patents in suit.
Telecast, Inc. v. Gemstar Development Corp. (N.D. Cal.) - Represented Gemstar in a patent infringement
and antitrust case involving multiple patents related to computer-assisted,
on-screen programming of electronic devices
International, Inc. v. McGaw (N.D.
Ill.) - Represented McGaw in a patent infringement suit involving three patents
relating to needleless injection sites. On appeal before the U.S. Court
of Appeals for the Federal Circuit, the jury's verdict in favor of McGaw,
including findings of infringement and invalidity, was upheld. In
addition, the federal circuit affirmed that two of the patents were
unenforceable due to inequitable conduct.
Device Corporation v. ICU Medical, Inc. (Cal. Sup. Ct.) - Represented Critical Device Corporation
in a misappropriation of trade secrets, breach of contract and unfair
competition dispute involving needleless medical devices
University of California-Los Angeles School of
Law, J.D., 1994
of Southern California, B.S. (magna *** laude), 1991
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Devinsky is a partner in the law firm of McDermott Will & Emery LLP
and is based in the Firm's Washington, D.C., office. He focuses his
practice on patent, trademark and copyright litigation and counseling, as well
as on trade secret litigation and counseling, and on licensing and
transactional matters and post-issuance PTO proceedings such as reissues,
reexaminations and interferences.
Paul has extensive experience in litigating patent, trademark
and unfair competition-based federal district court infringement actions and in
litigating patent-based investigations before the U.S. International Trade
Commission (ITC). He also has experience in litigating invention priority
(interferences) and ownership disputes, in arbitrating trade secret disputes,
in negotiating and drafting U.S. and international licenses for protecting
technology, and negotiating and drafting manufacturing agreements, software
agreements and general intellectual property-based agreements (for employees,
consultants, unsolicited proposals, etc.), university licensing and U.S.
government licensing, and ICANN domain name disputes. Paul has extensive
experience in connection with performing intellectual property due diligence as
an aspect of merger and acquisition activities, joint venture formation
activities and/or venture capital financing and in connection with certain
licensing situations, such as assignments for the benefit of a
debtor-in-possession, and in a litigation settlement environment. Paul
presently serves as co-chair of the IP, Media & Technology Department's
Transaction and Licensing Group.
In terms of patenting and/or litigating, Paul has particular
experience in connection with protection of technology relating to
semiconductor fabrication tools and processes, machine tools and machine tool
controllers, computer-related devices, telecom and internet related
technologies, laser technologies, ion beam technologies, medical and biotech
devices, consumer and industrial electronics, telephony, computer-controlled
electro-mechanical systems, automotive electronics, nuclear fuel assemblies and
reactors, and programmable logic chips designs.
Paul has also handled intellectual property audits, for both
start-up and mature technology clients, in order to plan and implement
cost-effective intellectual property protection programs.
In addition to serving approximately four years as a patent
examiner, Paul served for approximately four years as patent counsel to the U.S.
Department of Energy, rising to the position of chief of patent litigation
prior to entering private practice in 1980.
Paul has handled various inter-partes matters before
the U.S. Patent and Trademark Office, Board of Patent Appeals and
Interferences, including U.S. Department of Energy vs. Frisch et al., Piltch
et al. vs. Szylagi et al., Nutrasweet vs. Ajinamato, Dixit et al. vs.
Reed, et al. and others. He has also handled federal district court
unfair competition cases, such as Toyotomi v. Saunders and Hartmann
Luggage v. Seward Luggage, and patent infringement cases, including IJR
v. Sodick Co. Ltd. et al., Japax v. Sodick Co. Ltd. et al., AGIE
v. Sodick, IGT v. WMS Gaming, Harris v. Nokia et al., Ricoh v.
CMC Magnetics Corp., et al., Naturopathic v. Dermal, Aerotel vs. IDT,
Papst Licensing vs. Ricoh, Tesseron vs. Ricoh, TTi vs. Hitachi Koki and Hitachi
Koki vs. Milwaukee Electric Tool Co. and a patent license arbitration
dispute, Actel vs. BTR. In addition, he has handled ITC 337 cases
such as In re Certain Electrical Discharge Machines and Components Thereof
and In re Certain Single In Line Memory Module Connectors, In re Certain
Rechargeable Lithium Ion Batteries and In re Certain Mobile Telephone
Handsets. Paul has also arbitrated trade secret disputes, including IBA
Paul also maintains an active appellate docket, specializing in
patent cases before the U.S. Court of Appeals for the Federal Circuit and has
been involved in several landmark cases including In re Seagate and
IGT v. WMS.
Paul is an editor and frequent contributor to McDermott's IP
Update and is the author of You and the Patenting Process
(DOE/GC-003). He has been published in the National Law Journal,
IP Law 360, American University Law Review, The Legal Times, Technology
Transfer Tactics and other publications.
Paul earned his bachelor's degree in electrical
engineering. He is admitted to the District of Columbia Bar and is
registered to practice before the United States Patent and Trademark Office,
the District Court for the District of Columbia, the United States Court of
Appeals for the Federal Circuit, the United States Court of Appeals for the
District of Columbia and has been admitted pro hac vice to the U.S.
District Courts for the Eastern District of Pennsylvania, the Northern District
of California, the Southern District of New York, the Northern District of
Illinois, the Eastern District of Virginia, the Eastern District of Wisconsin and
the Northern District of Georgia.
Paul is a member of the AIPLA, the American Bar Association
(patent, trademark and Copyright litigation section), the Federal Circuit Bar
Association and the D.C. Bar Association (patent, trademark and copyright law section).
Catholic University of America, Columbus
School of Law, J.D., 1978
College of New York, B.S.E.E., 1971
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Shelton is an associate in the law firm of McDermott Will & Emery LLP
and is based in the Firm's Washington, D.C. office. He focuses his
practice on patent prosecution. He has prosecuted patent applications in
a wide range of technologies related to the electrical, computer and mechanical
arts. He also is experienced in counseling clients before USPTO
proceedings such as reissues and reexaminations.
During law school, Eric served as a legal clerk in the
Intellectual Property Law Division of the Office of the General Counsel for
NASA. He conducted legal research on federal technology transfer law,
with a focus on licensing procedures for NASA owned patents and intellectual
property rights agreements with international organizations.
After obtaining his B.S. in computer science, Eric worked as an
engineer for numerous corporations. He started at a Fortune 100 company
developing and maintaining C++ code for the development and testing of storage
subsystem microcode. Eventually he went on to be a senior development
engineer for a high-speed free-space laser communication project at the
University of California at Berkeley EECS Department, working to integrate new
research with off-the-shelf technologies. He also worked for a small
company directed at delivering commercial applications of wireless sensor
networking technology, focusing on VHDL development of radio and microprocessor
modules, microcode development, and testing FPGA and first silicon prototypes.
Eric is admitted to practice in Maryland and the District of
Columbia, and is registered to practice before the United States Patent and
George Washington University Law School, J.D.,
University, B.S., 1996
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