ELEANOR M. YOST

Eleanor Hynes Yost is a partner in the firm’s Intellectual Property Major Practice Group, and a founder of Goodwin Procter’s Government Contracts & Disputes Practice.

Ms. Yost’s practice focuses on protecting and enforcing patent, trademark, copyright, and other intellectual property rights in state and federal courts and before the U.S. International Trade Commission.

Ms. Yost also assists clients navigating government contracts and procurement issues, particularly those involving the Federal Acquisition Regulations (FARs), Defense Federal Acquisition Regulations Supplement (DFARS) and the Bayh-Dole Act, among others. She counsels clients with respect to prime awards, grants (e.g., DARPA), subcontract arrangements, contract interpretation, performance, bid protests and potential claims.

Her practice also includes patent and trademark prosecution, strategic counseling, licensing, due diligence and transaction support. Ms. Yost prosecutes patent applications in a wide variety of technological arts, including software, information systems, medical devices, semiconductors, optical devices, software, financial services and business methods. She also has experience in complex patent and trademark matters such as patent reexaminations, trademark oppositions and cancellations, petitions, appeals, Board hearings, examiner interviews, and opinions. Ms. Yost’s practice further involves obtaining and enforcing trade dress, industrial designs, and copyrights.

WORK FOR CLIENTS

Representative matters include:

• In re Certain Light-Emitting Diodes and Products Containing the Same, ITC Investigations 337-TA-784 and 337-TA-802. Represents OSRAM in multiple ITC investigations concerning light emitting diodes.
• NTP, Inc. v. AT&T Mobility, LLC and NTP, Inc. v. Sprint Nextel Corp. (E.D. Va.). Represents patent owner in multiple suits concerning wireless email.
• JPMorgan Chase & Co. v. Affiliated Computer Services, Inc. (D. Del.). Represented JPMorgan Chase in declaratory judgment action involving 10 patents related to financial services and payment processing systems.
• In re Certain Semiconductor Chips With Minimized Chip Packages Size and Products Containing Same, ITC Investigations 337-TA-605 and 337-TA-649. Represented complainant against several semiconductor chip packaging companies and subcontractors.
• Tonytail Company, Inc. v. Conair Corporation, et al., (N.D. Cal.). Represented Conair and Rite Aid in patent litigation.
• In Re Certain Ground Fault Circuit Interrupters and Products Containing Same, ITC Investigation No. 337-TA-615. Represented complainant against suppliers of Ground Fault Circuit Interrupter (GFCI) technology.
• Celentano Food Products, Inc. v. Dominick Celentano et al. (D. N.J.) Represented Celentano Food Products Inc. in successful trademark infringement and trade secret misappropriation action.
• Douglas Kelly d/b/a Liberty Billiards v. Thomas Aaron Billiards, et al. (D. Md.) Represented Thomas Aaron Billiards and The Billiard Connection in successful defense of trademark infringement action.

PROFESSIONAL ACTIVITIES

Ms. Yost is a member of the International Trade Commission Committee of the Intellectual Property Owners Association (IPO), the Leadership 35 Committee of the National Women’s Law Center, the Public Contract Law Section - Intellectual Property Committee of the American Bar Association, the U.S. Court of Federal Claims Bar Association and the American Intellectual Property Law Association (AIPLA).

MEDIA

Ms. Yost frequently prepares articles and speaks about cutting-edge issues in intellectual property and technology. She was a featured presenter at the 2011 Annual Meeting of the Intellectual Property Owners Association on the topic of intellectual property due diligence and the attorney-client privilege.  She recently co-authored columns appearing in April and October 2011 editions of IPLaw360 discussing the first-to-file provisions of the America Invents Act and the risks of crowd-sourcing prior art. She also co-authored analyses of the Rosetta Stone v. Google and Bilski v. Kappos cases that appeared in January 2011 and November 2009 editions of IPLaw360. She further co-authored “Reducing Your Risk as a Licensor or Licensee in Patent and Technology Licensing – The Important Terms,” in the June/July 2008 edition of The Licensing Journal and “Is There a Future in Obtaining and Leveraging Derivatives Patents?” in the April 2008 issue of The Banking Law Journal.

In April 2011, Ms. Yost advised copyright owners and legal advisers on policing and preventing copyright infringement at the “Policing and Protecting Copyrights on the Internet: Evolving Approaches: Navigating Fair Use, Infringement Claims and Secondary Liability Issues” conference, and, in June 2011, she presented at the “Patent Indemnification Provisions - Negotiating Indemnification Clauses to Allocate Patent Infringement Risk” conference. She also participated on the “Tools and Approaches for Patent Mapping” panel hosted by the Upstate Venture Capital Association of New York in February 2007. She also organized a legal symposium entitled “Engineering Eden: Investigating the Legal & Ethical Dilemmas of Modern Biotechnology” that was held at St. John’s University School of Law in 2005.

PROFESSIONAL EXPERIENCE

During law school, Ms. Yost interned for the Hon. Arthur J. Cooperman of the New York State Supreme Court.

Prior to law school, Ms. Yost interned in the Medical Department of Brookhaven National Laboratory, conducting research in neuro-oncology and investigating cellular and molecular mechanisms of radiation sensitivity. She was also a Clinical Research Intern in the Emergency Medicine Department of University Medical Center at Stony Brook, the region’s only level one trauma center.

BAR AND COURT ADMISSIONS

Ms. Yost is admitted to practice in the District of Columbia, New York, New Jersey, and as a registered patent attorney before the U.S. Patent & Trademark Office. She is also admitted to practice before the U.S. Court of Federal Claims, U.S. Court of Appeals for the Federal Circuit, and the U.S. District Courts for the District of Columbia, District of New Jersey, and Western and Northern Districts of New York.

RECOGNITION

While attending law school, Ms. Yost was the Executive Research & Symposium Editor for the St. John’s Journal of Legal Commentary. She also authored “Unnecessary Roughness: Clarett v. NFL Blitzes the College Draft and Exemplifies Why Antitrust Law is Also ‘A Game of Inches,’” St. John’s J. Legal Comment, 19:3 (2005).