York M. Faulkner

Partner

York Faulkner chairs the firm’s intellectual property specialties practice. He practices patent litigation before the federal courts and trade secret litigation in federal and state courts. His experience extends across a variety of technologies, including chemical, pharmaceutical, mechanical, software, semiconductors, and consumer electronics. Mr. Faulkner also has experience with economic valuation of intellectual property for licensing, damages, and due diligence assessments of acquisition opportunities.

Before joining the firm, Mr. Faulkner served for four years as a trial attorney in the U.S. Department of Justice, Tax Division. As a first-chair criminal prosecutor in both jury and bench trials, he conducted financial grand jury investigations, and prosecuted cases involving tax evasion, false claims, obstruction of justice, and conspiracies to defraud the IRS. Through this experience, he developed the ability to simplify complex subject matter for lay judges and jurors and using courtroom presentation technologies.

Mr. Faulkner has lived and worked in Japan, speaks Japanese, and has published articles concerning developments in Japanese intellectual property law. He has extensive experience in representing Japanese clients and in litigating against Japanese opponents.

Highlights

• Representative pharmaceutical experience: serotonin reuptake inhibitors/antidepressants; HMG-CoA reductase inhibitors/statins; polymorphs, including x-ray diffraction (XRD), nuclear magnetic resonance (NMR), infrared (IR), & Raman spectroscopy; spray drying/fluid-bed drying & coating processes; T-lymphocyte signal transduction and IL-2 transcription inhibition/immunosuppressant drugs.
• Representative biologics experience: fermentation production processes; recombinant, attenuated live virus, and component vaccines.
• Representative biotech experience: transgenic crops/herbicide and insect resistance; genetically modified yeasts/bacteria.
• Representative electronics experience: automotive electronic control units (ECU)/air bag and active restraints; liquid crystal displays (LCD) backlighting; biometrics/iris recognition; media processors/instruction sets/memory management.
• Other representative technologies: business methods/delivering professional services over the Internet; semiconductor fabrication/plasma etching; long-haul telecommunications time division multiplexing/timing signal recovery (time stamping)/SONNET; automated telephone call processing/Interactive Voice Recognition (IVR), Intelligent Contact Management (ICM), and Automatic Call Distribution (ACD); automotive/auto-locking differentials.
• Management of complex/multi-district litigations, including practice before the Judicial Panel on Multidistrict Litigation.
• Strategy and development of complex lost profits and reasonable royalty damages analyses in computer, bio-tech, pharmaceutical, and mechanical cases.
• Served on the editorial board for the IP Litigator publishing a column on trade secret law (2001-2008).

Professional Recognition

• Recognized as a leading trade secret and copyright litigator by The Legal 500 U.S.
• Listed in Virginia Super Lawyers for intellectual property litigation practice, 2006-2007.

Professional Activities

• American Intellectual Property Law Association (chair & vice-chair, Trade Secrets Committee, 2003-2006)
• District of Columbia Bar Association (chair, Trade Secrets Committee, Intellectual Property Law Section, 2000-2001)
• Licensing Executives Society USA
• Licensing Executives Society Japan (日本ライセンス協会)
• Inter-Pacific Bar Association
• Japan Institute of Invention & Innovation（日本発明協会）
• Other association involvement: Marine Technology Society; Potomac Appalachian Trail Conservancy

Select Publications

• Coauthor. "Cyber-Based Trademark Infringement," Intellectual Property Magazine, July 2012.
• Coauthor. "Are NPEs Ready for China?" Intellectual Property Magazine, July/Aug. 2011.
• "The Japanese "ITC" Expedited Import Suspension Procedures at the Japanese Customs Office," The Federal Circuit Bar Association Bench & Bar Newsletter, Feb. 2011.
• "U.S. Economic Espionage Act Withstands Constitutional Challenge in First Conviction by Trial: United States v. Chung," Managing Intellectual Property Chinese Edition, Dec. 2009.
• "Update on What U.S. Practitioners Should Know About Japanese Trade Secret Law," IP Litigator, 2007.
• "Shooting First and Paying for Baseless Trade Secret Litigation Later," IP Litigator, May 2006.
• "What U.S. Practitioners Should Know About Recent Developments In Japanese Trade Secret Law," IP Litigator, June/July 2004.
• "First Amendment Defense Fails in DVD Copy Control Trade Secret Case," IP Litigator, Jan./Feb. 2004.
• "Court Holds That Trade Secret Owner Must Prove No Independent Development of Misappropriated Trade Secret," IP Litigator, Sept./Oct. 2003.
• "Overlooking the Obvious "Extra Element" of Secrecy in Avoiding Copyright Preemption of Trade Secret Misappropriation Claims," IP Litigator, Feb. 2003.