Phil Woo

Practices

Industries

Education and Clerkships

J.D., University of Southern California Gould School of Law, 1994, with honors

B.S., Southern Methodist University, 1990, cum laude, Tau Beta Pi, Eta Kappa Nu, Golden Key

Admissions

California

U.S. Patent and Trademark Office

Court Admissions

U.S. Court of Appeals for the Federal Circuit

U.S. District Court for the Northern District of California

U.S. District Court for the Central District of California

Profile

Phil Woo leads and works with teams on the deep technical issues in intellectual property matters of commercial significance for high-technology companies. With a degree in electrical engineering and substantial real-world experience in the high-tech industry, clients have entrusted him as lead technical counsel for numerous matters, in both litigation and transactions.

His technical areas include all forms of electrical and electronic arts including computer architecture, storage systems and networks, server networks and architecture, microprocessors, memories, software and Internet applications, telecommunications, wireless, interactive television and electronic program guides, satellite, business methods, semiconductor design and processing, semiconductor packaging, circuit design and medical devices. Phil has worked for a wide spectrum of innovation-driven high-tech companies, ranging from start-ups to Fortune 500 corporations. Phil has been recognized in the 2013–2018 editions of The Best Lawyers in America, Woodward/White, Inc., in patent law.

Prior to attending law school, Phil worked at a semiconductor company (now STMicroelectronics), in the areas of device engineering, process engineering, and automation.

Litigation:

Phil has extensive experience in advising companies on the defense against and strategic assertion of patents. He has taken the lead on claim construction and developing arguments with respect to infringement, validity, and enforceability, overseeing and coordinating teams on the same. In a major case defending client STMicroelectronics, Phil spearheaded the efforts which led a court appointed expert to find that the asserted patents were invalid as being anticipated, obvious, and lacking adequate written description/enablement, and not infringed. He has represented clients in proceedings before District Courts (including the Northern District of California, the Central District of California, the District of Delaware, the Eastern District of Texas, the Western District of Texas, the District of Arizona, and the Western District of Wisconsin) and the International Trade Commission.

Proceedings Before the U.S. Patent Office:

Phil regularly advises companies on the strategic use of administrative proceedings before the U.S. Patent and Trademark Office (USPTO), including inter partes and covered business method review, often in conjunction with litigation. He was counsel in the first IPR case resulting in a successful final determination invalidating claims of the patent at issue. Phil has also prepared and prosecuted ex parte reexaminations before the USPTO.

Patent Assessment and Portfolio Strategy:

Phil regularly assists companies with making strategic decisions concerning patents, including the acquisition of individual patents or entire patent estates, in connection with or separate from merger and acquisition efforts. He has developed and implemented strategies for assessing patents and led teams of lawyers and experts in executing such strategies. He has performed and advised companies on due diligence investigations.

Licensing/Transactions:

Phil has experience in technology and IP transactions. He has negotiated, drafted, and counseled companies on agreements related to patents and other intellectual property in connection with public offerings, mergers and acquisitions, and resolution of litigation.

Standards:

Phil has extensive knowledge in numerous industry standards including IEEE 802.11 (WiFi), IEEE 802.15 (BlueTooth), IEEE 802.16 (WiMax), Unlicensed Mobile Access (UMA), CDMA, GSM, MPEG2, MPEG4, OCAP, DVB, and TV-Anytime. He has counseled and represented companies before standards organizations and bodies for the same.

Selected Client Representations

  • Prepared, prosecuted, and obtained patents on complex and emerging technologies.
  • Served as on-site attorney at a Fortune 500 company to counsel engineers in the protection of intellectual property and to manage the prosecution of patents.
  • Coordinated and managed a team of attorneys in the technical analysis for a major licensing campaign asserting multiple patents against numerous companies.
  • Provided guidance and counseling on technical and licensing issues involved with open source and other freeware.
  • Performed due diligence and counseling on intellectual property matters related to funding, initial public offerings, and mergers and acquisitions.
  • Represented clients in negotiations with patent owners seeking to license their intellectual property.
  • Advised and worked with a medical device company on issues related to intellectual property in connection with acquisition by larger healthcare company.
  • Representation of Research in Motion (RIM) in multiple district court and ITC proceedings against EON Corp., Bandspeed, Inc., and others.
  • Representation of Chimei Innolux in an ITC proceeding against a large multinational corporation.
  • Representation of STMicroelectronics in ITC and district court proceedings.

 

*Some of the representative matters listed were handled prior to Phil Woo joining the firm.

Recognition

Best Lawyers

Haynes and Boone Featured in Best Lawyers in America 2018

Best Lawyers in America, an annual referral guide listing outstanding lawyers throughout the U.S., has recognized 107 Haynes and Boone lawyers across 56 practice areas in its 2018 edition.


Published by Woodward/White, Inc. in August 2017

Professional and Community Activities

  • The American Intellectual Property Law Association (AIPLA)
  • The Asian American Bar Association of the Greater Bay Area
  • The National Asian Pacific American Bar Association
  • The Asian Pacific Bar Association of Silicon Valley

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