Jeannine Yoo Sano

Patent & Trade Secrets Litigation and Counseling

San Francisco

Armed with a biology degree from Stanford, Jeannine Yoo Sano started her legal career representing clients in the life sciences. But like many patent attorneys in the Bay Area, her practice became increasingly technology based.

"I've done mostly computer hardware and software cases for the last 25 years," Sano said. Major clients include Applied Materials Inc., a global supplier of semiconductor manufacturing tools, and Thales, now part of Telit, a multinational developer of cellular communication modules for Internet of Things devices.

She said she is very proud of the successes she has had recently at the Patent Trials and Appeals Board and the International Trade Commission. For instance, two years ago she won a final determination from the ITC that some Thales IoT devices did not infringe four standard-essential patents asserted by Koninklijke Philips N.V. and that in fact, some of those patents were invalid. Certain UMTS and LTE Cellular Communication Modules and Products Containing Same, 337-TA-1240 (ITC, notice July 12, 2022).

"We got a complete victory," Sano said.

Early last year, she won final written PTAB decisions for Applied Materials that invalidated more than 100 claims in four patents held by Ocean Semiconductor. Those victories led to the resolution of nine patent lawsuits in Texas and the narrowing of a tenth in Massachusetts. Applied Materials v. Ocean Semiconductor, IPR2021-1339, -1340, -1342, -1344 (PTAB, Feb. 7, 2023).

But since those wins, Sano has been focused on "a lot of pre-litigation strategy counseling," she said. All such work is very confidential, but she has advised an NFT company and semiconductor companies, among others.

Typically, the counseling "involves running through a lot of different just-in-case strategies" for her clients, she said. If a client's patent is challenged or a competitor's patent is asserted against a client's product, "what would be the best way to handle the litigation?"

That might take filing an IPR, developing a design-around or negotiating licensing. "There's a number of different strategies that you go through in pre-litigation counseling," Sano said.

If litigation is filed, "I keep tabs on ongoing cases that our team is handling, and I course correct as needed," she said. "But I don't charge the client for most of my time doing that."

"I make sure that everybody on the team is involved in case strategy and that they get to take part in the sexy parts of cases like arguing at hearings and handling witness examinations," Sano added. Doing all that helps develop a broadly experienced team, and it provides value for the client, she continued.

Generally, clients bring Sano in if it appears that a case will go to trial. Although she hasn't had a jury trial very recently, she said she likes working with them. "At the end of the day, being able to talk to a jury and persuade the jury is what I find the most exciting."

-- Don DeBenedictis