Semiconductor Patent Prior Art and Evidence of Use Support Services


Longevity. Seasoned. Adaptable


Consultant Accomplishments

Mr. York has developed an extensive list of accomplishments in a wide variety of areas over the past 38 years. A detailed list, organized by major categories, is provided below.

Integrated Circuit Engineering Corporation
  • Operations management - Start-up management, group P&L, personnel development, hiring, termination, product development, and marketing 
  • Technology analysis – Competitive and quality analysis of semiconductor processes, structures, and materials
  • Competitive intelligence - Product reverse engineering, technical literature research/analysis, and market research
  • Intellectual property - Licensing, litigation, arbitration, infringement, prior art, and investment projects
  • Technical communications - Technical reports, operations manuals, procedure guidelines, marketing brochures, websites
  • Marketing - Search engine optimization, developing keyword advertising campaigns, developing social media presence

Intellectual Property/Patents

  • Traveled to out-of-state and international sites to review, sort, and collect archived material for prior art research.
  • Coordinated and supervised analysis at out-of-state laboratory documenting invention feature.
  • Directed, supervised, and assisted with physical tear down analysis at local laboratory facility.
  • Reviewed, categorized, and researched large number of patents to support patent mining projects.
  • Performed technical and patent prior art search for support infringement and due diligence.
  • Reviewed patents, and conducted technical/market research to support patent infringement action.
  • Provided technical input to support laboratory analysis of specific physical feature.
  • Performed research to locate potential licensing or infringement opportunities (product/users).
  • Evaluated patents and summarized unique technical aspects of patented invention.
  • Formulated opinion on areas of technology and likely use of invention in industry.
  • Proofread and edited portions of translated patent applications.
  • Extracted keywords/phrases from patent claims for prior art search or claim chart formulation.
  • Performed prior art searches of products, patents, and technical literature to invalidate patents.
  • Analyzed patent claims in relation to products and prior art.
  • Performed prior art searches of products, patents, and technical literature to provide evidence of obviousness.
  • Independently analyzed patent claims in relation to products and prior art.
  • Provided technical review of large patent portfolios to identify and classify technical strength of inventive elements. based on past, current, or suspected future technologies and fabrication processes.
  • Performed technical research to identify potential licensing opportunities for inventions.
  • Performed technical review of individual patents to identify inventive features/claim elements.


  • Selected to serve as a technical expert on a three-person arbitration panel for a commercial licensing and patent dispute managed by the American Arbitration Association.
  • Reviewed patents and claims, pre- and post-trial expert reports, depositions, technical evidence, declarations, patent file wrapper, and supporting legal decisions.
  • Heard oral arguments and testimony at hearings, reviewed motions, and provided impartial analysis and decisions on discovery disputes, claim construction, validity, infringement, contract interpretation, and applications for costs and fees.

Laboratory Operations/Management

  • Developed successful independent consulting firm providing services to patent attorneys, agents, and technology professionals for over 13 years.
  • Provided operations and technical management of $3M analytical services laboratory employing 12 analysts.
  • Maintained 40% group profitability for 17 consecutive years by implementing efficient operational procedures. 
  • Tripled annual sales by expanding product line and developing long-term customer relationships.
  • Grew client base from 10 to over 100 in one year by utilizing a focused marketing campaign.
  • Supplemented external project income by developing new revenue-generating internal projects.
  • Responded to changing client priorities and evolving market conditions by re-inventing products and processes.
  • Reduced costs and increased profitability by developing processes that maximized usage of existing equipment.
  • Minimized new employee training time and maximized billable hours by utilizing an employee mentoring system.
  • Controlled staffing costs by hiring primarily interns and new graduates for new non-management positions.
  • Planned, organized and monitored quality/delivery of up to 20 projects simultaneously to ensure goals were met.
  • Supported on-going quality improvements by utilizing a one-on-one report review/editing process.
  • Utilized a shared mentoring system to maximize personnel knowledge transfer and minimize training costs. 
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  • Multi-tasked by performing hands-on physical analysis of actual products, while also serving as Manager and Vice President of analytical groups.
  • Developed new analytical techniques and chemical stains to allow for continued high-quality analysis as semiconductor technologies evolved over 23 years.
  • Served as Manager/Vice President of Laboratory Services Group, supervised staff of 12 engineers/technicians.
  • Developed and served as Vice President of IP Analysis Services Group.
  • Assisted with marketing and sales of laboratory services and reports.
  • Served as primary client contact for all laboratory and patent analysis.
  • Prepared ISO 9000 documentation and equipment operation manuals.
  • Coordinated and prepared development of Laboratory Manual outlining processes and procedures.
  • Served as instructor for Laboratory Analysis portion of Failure Analysis Seminar.
  • Assisted with development of on-site hands-on laboratory analysis class.
  • Performed physical/materials analysis, and documented features identified from review of patents in portfolio.
  • Provided specific technical analysis on client-supplied products to support technology database that was used for identifying current and future products and manufacturers for possible licensing and infringement opportunities.
  • Performed parts search to locate semiconductor products manufactured by defendants within specific data codes.
  • Provided physical and materials analysis and documentation of evidence to indicate presence of a specific physical design layout, manufacturing process, or device structural feature for claimed and patented invention.
  • Reviewed and interpreted semiconductor cross-sectional images for comparison to claimed patent elements.
  • Provided deposition testimony to support analytical laboratory results.
  • Performed physical and materials analysis to document evidence that refuted presence of a specific physical design layout, manufacturing process, or device structural feature for claimed and patented invention.
  • Provided physical and materials analysis and documentation of patented feature on plaintiffs’ parts to strengthen defendants negotiating position.

Competitive/Construction Analysis

  • Performed physical and materials analysis to document general assembly and die fabrication processes, physical layout features, device (transistor) structures and designs, and extracted circuit schematics at the transistor level for quality, competitive, benchmark, and intellectual property projects.
  • Prepared postulated process sequences from results of analysis.

Business Operations/Management

• Developed program-based product organizational structure providing all-inclusive pricing.
• Designed, developed, wrote content for e-commerce website to effectively reach audiences.
• Developed efficient and user-friendly 24/7 online instructor training program.
• Served as interface for off-site software development firm.
• Developed social media presence in Facebook, Twitter, YouTube, Pinterest, Tumblr, Instagram
• Assisted with development of marketing posters.
• Designed downloadable students certificates.
• Utilized Google, Bing, Facebook ads to market products and increase name recognition.
• Developed new and refined existing processes/procedures to maximize operational efficiency.
• More than doubled sales every year for last three years while maintaining high profitability.