JAMES C. YOON
IP Counseling & Patents
Trade Secrets & Employee Mobility
James Yoon is a practice development leader in the patent trial and litigation practice at Wilson Sonsini Goodrich & Rosati. James has 20 years of experience as a trial lawyer, patent and intellectual property litigator, and counselor. He has litigated over 150 patent cases and has tried numerous cases in federal courts, state courts, and at the International Trade Commission.
James has an active IP counseling practice. He has advised over 50 companies on IP issues in a wide variety of transactions, including patent license agreements, patent purchase agreements, private equity investments, initial public offerings, and corporate mergers. As part of these transactions, James is frequently involved in IP risk assessments and valuations.
In both his patent litigation and IP counseling practices, James has been a pioneer in the use of data analytics in legal decision making, strategy development, and risk assessment. James has worked with leading data analytic firms to improve their tools and provide greater value to clients and the practice of law.
James served as a member of the committee that developed the original and the revised versions of the Model Patent Jury Instructions for the Northern District of California. He is an adjunct professor (Lecturer-in-Law) at Santa Clara University School of Law, where he teaches a course in patent and trade secret litigation. Additionally, James is a Lecturer-in-Law at Stanford Law School, where he is a trial advocacy instructor and teaches an economics course on the economic and technological forces transforming the private practice of law. He has published numerous scholarly and professional articles and is a columnist on patent law and litigation for the ABTL Report of the Northern California Chapter of the Association of Business Trial Lawyers (ABTL).
In 2013 and 2014, James was listed in the International Who's Who of Patent Lawyers. In 2009, 2010, 2011, 2012, 2013, 2014, and 2015, he was selected for inclusion in Northern California Super Lawyers in the field of Intellectual Property Litigation. In 2006, Bay Area Lawyer Magazine named James one of the "Top Lawyers in the Bay Area" for Intellectual Property law.
James has served on numerous firm committees. He is a current member of the Compensation Committee and has previously served on the firm's Policy, Partner Nominating, Business Development, and Associate Development committees.
James is a member of the board of directors and a co-chair of the Partner Committee of the Asian Pacific American Bar Association Silicon Valley (APABA-SV). He is also a member of the board of directors of the Asian Pacific American Bar Association Silicon Valley Charity, a member of the board of directors of the Palo Alto Bar Association, and a member of the High Tech Advisory Board for Santa Clara Law School.
Prior to joining the firm, James served as a law clerk to Chief Judge Alan C. Kay in the U.S. District Court for the District of Hawaii. He was previously an electrical engineer for General Motors Corporation, where he worked for many different operations, including the General Motors Technological Center (Warren, Michigan), Opel Motors (Russelsheim, Germany), Vauxhall Motors (Luton, England), and GM's Cadillac Assembly Plant (Detroit, Michigan).NOTABLE CASES:
- Avid Technology v. Harmonic (D. Delaware). James represented defendant Harmonic as lead trial counsel in a multi-patent, competitor case. Plaintiff Avid asserted claims of willful infringement, induced infringement, and contributory infringement against Harmonic and its shared video storage systems. After a two-week trial, the jury returned a verdict of non-infringement on both patents in favor of Harmonic.
- MaxLinear v. Silicon Labs (S.D. California). James represented declaratory plaintiff MaxLinear as lead counsel in a 20-patent, competitor case against Silicon Labs. Silicon Labs asserted that MaxLinear hybrid TV tuners infringed numerous Silicon Labs patents. After successfully defeating Silicon Labs' motion for preliminary injunction and obtaining a positive claim construction ruling, the case settled on favorable terms for MaxLinear.
- Panavision v. Omnivision (C.D. California). James represented defendant Omnivision as lead counsel in a competitor patent case. Panavision asserted numerous claims against Omnivision CMOS image sensors. The case ended when James obtained summary judgment of patent invalidity against Panavision's patent.
- Advanced Display Technologies v. HTC (E.D. Texas). James represented defendant HTC as lead counsel against plaintiff Advanced Display Technologies in a patent case relating to the design of LCD panels. After claim construction, the court granted summary judgment of invalidity on the key asserted patent, which resulted in a favorable early settlement for the client.
- Intel v. Broadcom (D. Delaware). James was one of the lead lawyers representing defendant Broadcom Corporation in a multi-patent, competitor case. Intel asserted that Broadcom MPEG decoder cable set-top boxes infringed one of its video patents. After a five-week trial, a jury found that the accused Broadcom products did not infringe the Intel video patent. The National Law Journal ranked the case as a "Top Defense Win" for patent cases.
- SanDisk Corporation v. Lexar (N.D. California). James successfully argued the motion for summary judgment of infringement in a patent suit between SanDisk and its chief competitor in the flash memory card market, Lexar. The grant of summary judgment of infringement against Lexar resulted in a highly favorable settlement for SanDisk.
- Broadcom Corporation
- Dell, Inc.
- Harmonic, Inc.
- HTC Corporation
- Marvell Semiconductor
- MaxLinear, Inc.
- OmniVision Technologies
- SanDisk Corporation
- J.D., Stanford Law School, 1993
Articles Editor, Stanford Law Review; Chairman, Stanford Asian Law Students Association; Chairman, Stanford International Law Society; Secretary, National Asian Pacific Law Students Association
- B.S., Electrical Engineering, GMI Engineering & Management Institute, 1990
Sobey Scholar; GMI Alumni Association Travelship Winner, 1989
- Recognized in the 2013 and 2014 International Who's Who of Patent Lawyers
- Named in the 2009 to 2015 editions of Northern California Super Lawyers
- Co-author with B. Love, "Expanding Patent Law's Customer Suit Exception," 93(5) Boston University Law Review 1605-41, October 2013
- "The Diminishing Claim Vitiation Limitation to the Doctrine of Equivalents," The Intellectual Property Strategist, Vol. 19, No. 8, May 2013
- "On Patents," ABTL Report, Vol. 22, No. 1, Spring 2013
- "On Patents," ABTL Report, Vol. 21, No. 1, Winter 2011/2012
- "On Patents," ABTL Report, Vol. 20, No. 1, Winter 2010/2011
- "On Patents," ABTL Report, Vol. 19, No. 1, Fall 2009
- "Fictional Characters, Story Telling and Patent Trials," Law360, March 20, 2009
- "On Patents," ABTL Report, Vol. 18, No. 1, Fall 2008
- "On Patents," ABTL Report, Vol. 17, No. 1, Fall 2007
- "On Patents," ABTL Report, Vol. 16, No. 1, Winter 2006
- "On Patents," ABTL Report, Vol. 15, No. 1, Fall 2005
- "On Patents," ABTL Report, Vol. 14, No. 1, Fall 2004
- State Bar of California
- Multiple U.S. District Courts
- U.S. Court of Appeals for the Federal Circuit
- U.S. Court of Appeals for the Ninth Circuit
- U.S. Patent and Trademark Office