John A. Yirga

Mr. Yirga focuses his practice in all areas of intellectual property law, including, patents, copyrights, trade secrets, trademark protection and litigation surrounding intellectual property matters. Mr. Yirga has experience in preparing and prosecuting both domestic and foreign patent applications with an emphasis in the mechanical and electrical arts, trademark preparation and prosecution, and international patent (PCT) protection practice. Throughout his practice, Mr. Yirga has provided numerous opinions, including freedom-to- operate, non-infringement, and patentability for his clients’ products and inventions and registerability and clearance opinions for his clients’ trademarks and service marks.

 

Mr. Yirga’s practice also involves enforcement actions to protect clients’ intellectual property rights and proprietary information, including both litigation in various U.S. Federal Courts and before the United States Patent Trial and Appeal Board and the United States Trademark Trial and Appeal Board. Mr. Yirga successfully enforced patents held valid through litigation that he drafted and prosecuted to issue.

 

Mr. Yirga’s knowledge and experience in litigation combined with his versatility in patents, trademarks, copyrights, and trade secret law allows him to maximize protection for each of his client’s unique circumstances relating to their intellectual property and/or inventions. Over the years, Mr. Yirga has drafted and negotiated numerous licensing and settlement agreements as a cost-effective alternative to litigation.

Utility Patents

A utility patent protects whoever invents, or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof. Mr. Yirga has drafted and prosecuted more than 600 utility U.S. and foreign patent applications to issued patents. Many of the patents were in the areas of: automotive components; window and door fenestration equipment; digital imaging software and devices; household products; municipal sealing gaskets; medical devices; electronic switches; footwear; rotary cutting knife assemblies; controllers and software for power operated hand tools; awnings for recreational vehicles; pressure regulators and gauges; flow control devices; utility truck bodies; and kitchenware to name a few. To see a sample listing of U.S. utility patents that Mr. Yirga drafted and prosecuted select the following link:

http://patft.uspto.gov/netacgi/nph-Parser?Sect1=PTO2&Sect2=HITOFF&u=%2Fnetahtml%2FPTO%2Fsearch- adv.htm&r=0&p=1&f=S&l=50&Query=lrep%2Fyirga&d=PTXT

Design Patents

A design patent protects any new, original, and ornamental design for an article of manufacture. Mr. Yirga has drafted and prosecuted more than 1,000 U.S. and foreign design patent applications to issued patents and/or industrial designs. A few notable markets in which Mr. Yirga has procured issued design patents include: footwear; automobile exterior and interior designs/styling; printer cartridges; ink printers; printer components; numerous household products; automotive components; window and door fenestration components; power operated hand tools, eye glasses, sealing gaskets; medical devices; electronic switches; rotary cutting knife components; graphical user interfaces GUIs for digital gauge readouts; and mechanical motion design patents to name a few. To see a sample listing of U.S. design patents that Mr. Yirga drafted and prosecuted select the following link:

 

http://patft.uspto.gov/netacgi/nph-Parser?Sect1=PTO2&Sect2=HITOFF&u=%2Fnetahtml%2FPTO%2Fsearch- adv.htm&r=0&p=1&f=S&l=50&Query=lrep%2Fyirga&d=PTXT

Trademarks and Service Marks

Trademark and service marks act as source identifiers to the source, nature, and quality of the owner’s goods and services. In addition to procuring standard word and composite marks for clients, Mr. Yirga has also obtained trademarks relating to color and shapes of products protected under unique legal provisions known as trade dress law. Trade dress law allows for the protection of a product’s distinctive shape, color, or smell in perpetuity provided the product remains in use in U.S. commerce. Mr. Yirga has filed and prosecuted more than 400 U.S. federal trademark and service mark registrations and manages over 1,000 domestic and international trademarks in portfolios for several public and privately owned corporations. Mr. Yirga has provided his clients with a number of clearance, registerability, and non-infringement opinions prior to the clients adopting a trademark or a service mark.

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Litigation Highlights & Published Cases

Patents

Mr. Yirga has represented numerous clients in patent infringement actions and challenges to validity, including inter partes reexaminations, ex parte reexaminations, interference practice, and derivative proceedings before the United States Patent Trial and Appeal Board. Mr. Yirga has also acted as trial counsel, asserting and defending his clients’ patent rights in U.S. District Courts. Below are a few patent litigation highlights.

 

Mr. Yirga is lead trial counsel and successfully defended his client’s patents and patent applications in the first ever patent derivation proceeding instituted by the U.S. Patent Trial and Appeal Board. See Andersen Corporation v. GED Integrated Solutions, Inc. DER2017-00007; DER2018-0008; DER2019-0003; Andersen Corporation v. GED Integrated Solutions, Inc., Fed. Cir. Appeal No. 19-1907; and Fed. Cir. Appeal No. 19-1695. A derivation is a complex trial proceeding that determines ownership rights in a U.S. patent or U.S. patent application.

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In 2009, Mr. Yirga argued and successfully appealed a now precedential decision before the Court of Appeals for the Federal Circuit that involved three U.S. design patents, which he drafted and prosecuted. International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233 (Fed. Cir. 2009) affirmed in part, vacated in part, and remanded International Seaway Trading Corp. v. Walgreens Corp., 599 F.Supp2d 1307 (S.D.F.L. 2008). The Seaway decision changed the law involving the test used for U.S. design patent validity and is the seminal case for design patent anticipation cited frequently by U.S. Patent Office examiners.

 

Trademarks

Mr. Yirga has represented numerous clients in trademark actions, including opposition and cancelation proceedings before the United States Trademark Trial and Appeal Board. Mr. Yirga has also acted as trial counsel in asserting his clients’ federal and common law trademark rights in U.S. District Courts.

 

In 2007, Mr. Yirga acted as trial counsel for registrant International Seaway Corporation for U.S. Federal Trademark Registration No. 1,221,861 for trademark INTRIGUE®. The proceeding included both a cancellation proceeding before the United States Trademark Trial and Appeal Board (TTAB) and a civil action in United States District Court for the Central District of California. In a published decision, the TTAB concurred with Mr. Yirga, dismissing the action based on arguments of tactical delay, lack of discovery, and forum shopping. Jodi Kristopher Inc. v. Int’l Seaway Trading Corp., 88 USPQ2d 1798 (TTAB 2008).

Work History

Mr. Yirga was a partner with Sundheim, Covell & Tummino LLP for over 10 years prior to restarting Watts Law, LLC.   Mr. Yirga was an associate with the intellectual property firm Watts Hoffmann, LPA prior to its merger with Tarolli in 2007. Prior to joining Watts Hoffmann, LPA firm, Mr. Yirga was an associate with commercial litigation group of the general practice firm Hahn, Loeser & Parks, LLP.

 

Before pursuing his interest in a legal career, Mr. Yirga spent several years as an engineer working for divisions of General Motors, Harley-Davidson, and Owens Illinois. Mr. Yirga is a named inventor on United States Patent No.: 8,498,945 entitled Claim Evaluation Methods, Systems, Products, and Data-Structures. The ’945 patent relates to software applications hosted on a computer-based platform for analyzing claims, damages, and outcomes in complex litigation. In 1994, Mr. Yirga successfully completed the FE/EIT examination for becoming a professional engineer with the State of Ohio.

Honors/Awards

Among his accomplishments, Mr. Yirga was a recipient of the Cleveland Marshall College of Law Alumni Association Scholarship, an Executive Editor for Law Journal, member Moot Court Board of Governors, Cardozo College of Law Intellectual Property Moot Court Competition participant, and the recipient of: Watts, Hoffmann Fisher & Heinke Co. Award for Intellectual Property; ABA-BNA Award for Excellence in the Study of Intellectual Property Law, Cali Excellence for the Future Award for Copyright, Patent and Trademark Law, and inducted into the Golden Key National Honor Society for Engineering.

 

Articles & Publications & Speaking Engagements

Law 360 PTAB Institutes First-Ever AIA Derivation Proceeding By Ryan Davis, March 22, 2018; mentioned lead counsel for Respondent, GED Integrated Solutions, Inc.

 

Law 360 3 Things To Know As 1st Patent Derivation Gets Underway by Ryan Davis, March 27, 2018; mentioned lead counsel for Respondent, GED Integrated Solutions, Inc.

 

Patently O Design Patents: Symmetry Requires Elimination of Points-of-Novelty Test for Anticipation. By Dennis Crouch, January 8, 2010; explaining details of International Seaway Trading Corp v. Walgreens Corp. (Fed. Cir. 2009). The website discussed design patents filed, and prosecuted by Mr. Yirga as well as the seminal case he litigated. https://patentlyo.com/patent/2010/01/design-patents-symmetry-requires-elimination-of-points-of-novelty-test-for- anticipation.html

 

Inventor on U.S. Patent No. 8,498,945 issued July 30, 2013 entitled CLAIM EVALUATION METHODS, SYSTEMS, PRODUCTS, AND DATA STRUCTURES.

 

Transitions Magazine; A Trademark Overview, the differences between trademarks and service marks; October 2009

 

Case Western Reserve University Law School – Guest Panelist on topics of intellectual property law and enforcement; Spring 2009.

 

Baldwin Wallace University – frequent lecturer on intellectual property matters in graduate business courses.

 

Private invitation as a sole presenter for the day to discuss the decision in the Seaway case and Mr. Yirga’s latest strategies in design patent protection to in-house intellectual property counsel for Google Inc. and Motorola Mobility LLC, Chicago, IL, February 20, 2014.

 

Mr. Yirga enjoys spending time with his wife Jennifer and their son Jack at their home in Gates Mills, Ohio. For leisure, Mr. Yirga is an active coach in the area for youth sports teams, participates in running races each year, including both full and half marathons, and enjoys surfing off the coast of Southern California.