Philip W. Woo

Partner

  • Philip W. Woo
  • Phone: +1 650 847 4145
    Fax: +1 650 644 0150

    Import to Address Book

  • Duane Morris LLP
    2475 Hanover Street
    Palo Alto, CA 94304-1194
    USA
  • Duane Morris LLP
    Spear Tower
    One Market Plaza, Suite 2200
    San Francisco, CA 94105-1127
    USA

Philip W. Woo focuses his practice on patent law, with deep experience in litigation, prosecution and contested proceedings before the Patent Trial and Appeal Board (PTAB). With a degree in electrical engineering and substantial real-world experience in the high-tech industry, he has served as lead technical counsel for numerous matters, coordinating teams across separate, but relating proceedings. Companies have entrusted Mr. Woo to handle the deep technical issues in intellectual property matters of commercial significance. Among other accomplishments, he was counsel in the first inter partes review (IPR) proceeding resulting in a successful final determination invalidating claims of the patent at issue. Mr. Woo’s 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, artificial intelligence, machine learning, neural networks, security, cryptography, telecommunications, wireless, interactive television and electronic program guides, satellites, business methods, semiconductor design and processing, semiconductor packaging, circuit design, electric and hybrid vehicles, autonomous vehicles and medical devices. 

Mr. Woo is a 1994 graduate, with honors, of the University of Southern California Gould School of Law, where he was a member of the USC Interdisciplinary Law Journal, and a 1990 cum laude graduate of Southern Methodist University.

Professional Recognition

  • Recognized in the 2013–2020 editions of The Best Lawyers in America, Woodward/White, Inc., in patent law.
  • Recognized as a leading patent litigator by Intellectual Asset Management (IAM) Patent 1000, Globe Business Media Group, 2019.

Litigation

Mr. Woo has extensive experience in advising companies on the defense against and strategic assertion of patents. He routinely leads 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, Mr. Woo 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 

Mr. Woo 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 before the PTAB, often in conjunction with litigation. He has also prepared and successfully prosecuted reexaminations before the USPTO.

Patent Prosecution, Assessment, and Portfolio Strategy

Mr. Woo has prepared, prosecuted, obtained and managed portfolios of patents on complex and emerging technologies. He 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. Mr. Woo 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

Mr. Woo has represented clients in negotiations with patent owners seeking to license their intellectual property. He coordinated and managed a team of attorneys in the technical analysis for a major licensing campaign asserting multiple patents against numerous companies. Mr. Woo 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

Mr. Woo has extensive knowledge in numerous industry standards including HEVC (H.265), IEEE 802.11 (WiFi), IEEE 802.15 (BlueTooth), IEEE 802.16 (WiMax), Unlicensed Mobile Access (UMA), CDMA, GSM, MPEG2, MPEG4, OCAP, DVB, TV-Anytime, and IEEE 1609. He has counseled and represented companies before standards organizations and bodies for the same.

Representative Matters

  • Represented STMicroelectronics in ITC and district court cases, and related USPTO proceedings.
  • Represented Microsoft in ITC and district court proceedings, including against Motorola.
  • Represented Research in Motion (RIM) in multiple district court and ITC proceedings against EON Corp., Bandspeed, Inc., and others.
  • Represented Chimei Innolux in an ITC proceeding against a large multinational corporation.
  • Represented Roku, Inc. in multiple IPR proceedings against Universal Electronics, Inc.
  • 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.
  • Advised and worked with a medical device company on issues related to intellectual property in connection with acquisition by larger healthcare company.

Areas of Practice

  • Intellectual Property Law

  • Patents

  • Technology Transactions and Litigation

Admissions

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

Education

  • USC Gould School of Law, J.D., with honors, 1994
    - USC Interdisciplinary Law Journal
  • Southern Methodist University, B.S., Electrical Engineering, 1990

Experience

  • Duane Morris LLP
    - Partner, 2020-present
  • Haynes and Boone LLP
    - Partner, 2017-2020
  • Sidley Austin LLP
    - Partner, 2003-2017
  • Skjerven Morrill LLP
    - Associate/Partner, 1998-2003
  • Baker Botts LLP
    - Associate, 1994-1997

Professional Activities

  • The American Intellectual Property Law Association (AIPLA)

  • PTAB Bar Association

  • National Asian Pacific American Bar Association (NAPABA)

  • Asian American Bar Association of the Greater Bay Area (AABA)

  • Asian Pacific American Bar Association of Silicon Valley (APABA-SV)

Selected Speaking Engagements

  • Moderator, "Is it Better to Litigate in an International Court?" Center for American and International Law's Institute for Law and Technology, 56th Annual Conference of IP Law, Plano, Texas, November 13, 2018
  • Speaker, "IPR Impact on Litigation," Center for American and International Law's Institute for Law and Technology, 56th Annual Conference of IP Law, Plano, Texas, November 13, 2018
  • Speaker, "2018: A Year of Change for Post Issuance Proceedings?" 5th Annual IP Defense Summit, Silicon Valley, California, April 18, 2018
  • Presenter, "Recent Trends in Patent Litigation," Berkeley Center of Law and Technology Luncheon, Berkeley, California, April 5, 2018
  • Speaker, "Patent Prosecution From a Litigator"s Perspective," speaker, 2017 All Hands Meeting, Santa Clara, California, October 17- 18, 2017
  • Speaker, "Effective Use of Joint Defense Arrangements," NAPABA Western Regional Conference, Silicon Valley, California, July 21, 2017