Siho "Scott" Yoo

Scott Yoo's practice focuses on patent litigation, preparation, and prosecution; and other intellectual property and technology matters. Scott has represented clients in complex patent cases related to automobile, mobile computing, telecommunications, Internet, electric motors, recommendation systems, transformable toys, and software-based technologies in numerous federal courts and the U.S. International Trade Commission. He also represents clients in post grant review proceedings, such as inter partes review, before the United States Patent and Trademark Office and provides counseling to clients on various IP issues, including patentability search, non-infringement, and patent validity.

Scott has represented multiple Korean companies throughout their entrance into the U.S. market. In particular, Scott has counseled these companies to maximize their IP values and to leverage their IP upon entering into the U.S. through litigation/disputes, licensing, patent prosecution, trademark registration, and IP portfolio management.

Prior to beginning his legal practice, Scott had a substantial career in the automobile industry working for Hyundai-Kia Motor Company, developing and designing multimedia systems, including vehicle entertainment systems, in-car navigation, and telematics systems. Scott is fluent in Korean.

More About Siho "Scott" Yoo

Education

• J.D., magna cum laude, University of Illinois College of Law
• M.S., Artificial Intelligence, Yonsei University
• B.S., Computer Science and Industrial Engineering, Yonsei University

Bar Admissions

• California
• Illinois
• U.S. Patent and Trademark Office

Court Admissions

• U.S. District Court, Northern District of California
• U.S. District Court, Central District of California
• U.S. District Court, Southern District of California
• U.S. District Court, Northern District of Illinois
• U.S. District Court, Eastern District of Texas
• U.S. District Court, Eastern District of Missouri
• U.S. Court of Appeals, Federal Circuit
• Patent Trial and Appeal Board

Community

• Asian American Bar Association of the Greater Bay Area, Member
• Asian Pacific American Bar Association - Silicon Valley, Member
• National Asian Pacific American Bar Association, Member
• Missouri Asian-American Bar Association, Member
• American Bar Association - Intellectual Property of Law Section and Litigation Section, Member
• Korean American Bar Association, Member

Representative Matters

• (Fed. Cir.) (PTAB) - Represented a global Korean toy company in multiple inter partes review (IPR) proceedings on patents involving transformable toys, which patents were the subject of simultaneous patent infringement litigation initiated by a competing toy maker; successfully invalidated all of the challenged claims of the competitor’s patents in the IPR proceedings; all of the IPR decisions were affirmed by the Federal Circuit.
• (Fed. Cir.); (N.D. Cal.) - Represented leading Internet companies in consolidated patent infringement actions related to distributed processing technology; obtained judgment on the pleadings invalidating all three asserted patents for claiming unpatentable subject matter; the judgment was affirmed by the Federal Circuit.
• (C.D. Cal.) - Represented major sports league in a patent infringement action relating to the league’s online video streaming platforms and applications, including noninfringement and invalidity strategy and claim construction.
• (N.D. Cal.) - Represented a leading electronics equipment and software company in a breach of software license case.
• (E.D. Tex.); (ITC) - Represented a global automobile manufacturer in the defense of a patent infringement action relating to telematics systems.
• (E.D. Mo.) - Represented a leading motor manufacturer against its competitors in a patent infringement action relating to HVAC motor systems.
• (D. Mass.) - Represented an e-commerce company in the defense of a patent infringement action involving multiple patents directed to parsing systems, including evaluation of prior art and preparation of invalidity contentions, drafting motions, claim construction, fact and expert discovery, and noninfringement strategy.
• (N.D. Ill.) - Represented a leading Internet company in the defense of a patent infringement action involving Internet recommendation systems, including noninfringement strategy, claim construction, fact discovery, and dispositive motions.
• (D.N.J.) - Represented a global smartphone manufacturer in the defense of a patent infringement action relating to data synchronization, including evaluation of prior art and preparation of invalidity contentions, claim construction, summary judgment motions, fact discovery, and noninfringement strategy.
• (D.N.J.); (Del.) - Represented a leading cable telecommunications company in a breach of contract case, including drafting motions and fact and expert discovery.
• (U.S.P.T.O.) - Represented numerous companies and universities in patenting technologies relating to telematics systems, video systems, mechanical devices, mobile apps, data filtering algorithms, and medical devices.
• Represented and advised various companies based in Korea in patent matters, including strategic enforcement and protection of their IP that involve software-based systems, artificial intelligence, online content, mechanical tools, mobile apps, and jewelry.

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