Morrison & Foerster partner Alex Yap

Alex Yap is returning to the Los Angeles office of Morrison & Foerster after four years as an administrative judge at the U.S. Patent and Trademark Office.

The move adds an insider from the Patent Trial and Appeal Board to Morrison & Foerster's already substantial Patent Trial and Appeal Board practice. Covington & Burling; Wilson Sonsini Goodrich & Rosati; Finnegan, Henderson, Farabow, Garrett & Dunner; and Perkins Coie are among the handful of AmLaw 100 firms that have added PTAB judges to their practices in the last few years.

"We are thrilled to be able to welcome Alex back to the firm," Morrison & Foerster partner Bita Rahebi. "He was a wonderful colleague through the years he worked with us, and he now brings significant PTAB experience to the firm."

Yap said he enjoyed working at the PTAB and is not concerned about the Arthrex decision that has called the appointment of administrative patent judges into question. Rather, he couldn't pass up an offer to return to Morrison & Foerster as a partner. "I made a lot of good friends" at Morrison & Foerster, he said, and the firm already has "a very strong PTAB bench."

Yap is an electrical engineer who worked at Freescale Semiconductor and Analog Devices before getting a Juris Doctor at the University of Minnesota and beginning a 10-year stint at Morrison & Foerster. He joined the PTAB in 2016 and presided over some 200 ex parte appeals from applicants who were denied a patent, and 29 America Invents Act proceedings involving challenges to patent validity.

He'll be practicing traditional intellectual property litigation as well as PTAB work. Under PTO rules he won't be able to appear before the PTAB for one year, though he can advise clients informally on strategy.

Yap joined the PTAB in April 2016. At first he commuted from the Los Angeles area to the PTO's Silicon Valley office almost every day. "I got to know Burbank and San Jose Airports very well," he quipped. He eventually relocated to Silicon Valley for several months. Then once qualified to work from home, he returned to Southern California.

He is the author of four final written decisions in related cases involving Comcast Cable Communications Inc. and three decisions denying institution of inter partes review proceedings.

Conferencing with other PTAB judges gave him insight into the decision making process, Yap said. He also participated for a time on an internal committee that reviews each PTAB decision before it's issued, mostly to check for uniformity across rulings. That gave him "visibility across the PTAB" to see how a wide variety of issues across different technologies were being handled.

When Morrison & Foerster came knocking it was "a no-brainer," Yap said. "I just couldn't pass it up. Morrison & Foerster is probably the only firm I would have considered coming back to private practice."

"Alex's outstanding legal and technical experience will enhance and expand our market-leading IP litigation capabilities," said Richard S.J. Hung, co-chair of the firm's IP litigation group, in a written statement.