Litigation/Enforcement

  • Representing a global chemicals company in connection with patent enforcement campaign against multiple Chinese infringers on patents relating to structure and method of making cathode materials used in lithium-ion batteries for electric vehicles, including advising on multiple lawsuits filed against multiple defendants involving multiple patents and related invalidation actions and appeals.
  • Representing a global developer and manufacturer of innovative industrial/retail electronic products in global patent enforcement campaign against competitor, including preparation and filing of multiple patent infringement lawsuits filed against multiple affiliated defendants involving multiple patent families across multiple jurisdictions (including China).
  • Acting as external IP counsel in China for world’s leading manufacturer of plasma arc cutting torches and related consumables for over ten years, including (1) establishing and implementing anti-counterfeiting strategy; (2) advising on trademark portfolio and filing trademark applications, oppositions and cancellations; (3) registering copyrighted works; (4) taking enforcement action at trade fairs and customs (5) successfully invalidating patent covering client’s prior technology; (6) investigating and advising on suspected trademark and patent infringements; and (7) filing trademark and patent infringement lawsuits and administrative actions, including over ten lawsuits/actions that resulted in favorable judgments or settlements.
  • Representing a Chinese electronics manufacturer in U.S. lawsuit brought by IP-pool-licensing administrator claiming breach of license and trademark infringement and involving related U.S. Customs enforcement action.
  • Representing a leading US-based retailer of home-improvement (DIY) products and the Chinese manufacturers of floor panels sold by the client in US International Trade Commission Section 337 investigation initiated by competitor claiming infringement of several patents relating to composition and interlocking mechanism of certain floor panels.
  • Representing a manufacturer of innovative high-capacity low-sag conductor for electric power grid transmission lines in parallel trade secrets infringement lawsuits in China and U.S. against former executive and multiple co-conspirators who disclosed and used the company’s proprietary product and manufacturing know-how during his employment and after leaving the company.
  • Representing a leading developer and manufacturer of action cameras in trade secrets infringement lawsuit in China against former employee engineer who disclosed and used one of the company’s proprietary algorithms after leaving the company.
  • Representing an IT/Internet networking equipment company in patent litigation brought in China by Chinese non-practicing entity (NPE) involving invention patent covering method of providing Web access through access server and virtual Web server.
  • Representing a leading camera-technology company in CIETAC arbitration against Chinese licensee involving claims of breach of the parties' patent license agreement and infringement of the client’s patents.

Licensing/Transactions

  • Advising a U.S. wireless-charging-technology company with respect to bringing its technology, process and system for wirelessly charging electric vehicles into China, including negotiating and drafting licenses to Chinese partners and advising the company on China’s national standard-setting process for standard-essential patents.
  • Assisting a global medical device company on various IP projects in China, including (1) conducting IP due diligence with respect to target company and its stent product, including confirming ownership of and other rights to patent and other IP assets and conducting patent freedom-to-operate analysis; (2) conducting IP due diligence with respect to third party’s balloon catheter product, including conducting patent freedom-to-operate analysis; and (3) conducting IP due diligence with respect to third party’s medical technology, including confirming ownership of and other rights to patents and other IP assets, and negotiating and drafting license agreement for rights to those IP assets.
  • Assisting a Chinese private equity firm in connection with its tens-of-millions-USD investment in a company with cutting-edge technology relating to a “clean” coal refining process, including (1) advising and conducting due diligence on the patents and technology being licensed to the company; and (2) assisting them in negotiating and drafting a patent and technology license agreement and a raw material supply agreement.
  • Assisting a large Vietnamese construction group and their automobile manufacturing affiliate in negotiating and drafting a technology license and services agreement with a major Chinese automobile manufacturer, where the technology being licensed from the Chinese company related to the electrical and electronic architecture of the automobile.
  • Representing a Chinese pharmaceutical company in negotiating and documenting (1) two license agreements with Belgian biopharmaceutical company for exclusive right to manufacture and commercialize anti-TNFa Nanobody®, ozoralizumab (ATN-103), for rheumatoid arthritis, and anti-RANKL Nanobody®, ALX-0141, for osteoporosis and bone metastasis in China; and (2) one license agreement with French biopharmaceutical company for exclusive right to manufacture and commercialize ImmuFact® IMP321, a LAG-3Ig fusion protein for treatment of metastatic breast cancer, in China.