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Experience
Patent Prosecution/Portfolio Management
- Serve as lead counsel and supervisor of U.S. patent portfolio at Perkins Coie for one of the world’s top mobile phone companies. Secured favorable patent protection scope for several cases in much shorter time frame than usual. Provide several patent analysis projects to be utilized in licensing negotiations.
- Represent leading large technology corporation’s healthcare-related products and services subsidiary company. Serve as the firm’s lead counsel and manage the company’s patent portfolio, as well as several patent due diligence projects.
- Represent cloud computing, distributed database and processing system, and artificial intelligence (AI) company in shaping and prosecuting entire patent portfolio. Starting with a few patents, expanded their portfolio to 90+ global patents, with protection in key innovation areas. Guided company in successfully obtaining multiple patents in every single family in its patent portfolio of 30+ families. Won an ex parte appeal before Patent Trial and Appeal Board (PTAB) in which the examiner’s decision received a summary reversal and, in another appeal, led to the examiner allowing the case without examiner’s answer.
- Represent Taiwanese integrated circuit (IC) design house in tailoring, drafting, and prosecuting its patent and trademark portfolio. Grew the portfolio from zero to 50+ global patents during a period of company expansion from two co-founders to a company of 80+ employees receiving several rounds of funding. The successful patent and trademark portfolio execution strategies helped the company secure its position in important market areas and attracted key strategic partners.
- Strategize and create U.S. and global patent portfolio for industry-leading hydrophobic organic film coating company. Led the company’s counterattacks, challenging several competitors’ patents before the U.S. Patent and Trademark Office (USPTO). Representation includes reviewing and discussing business plans and developments with client in order to tailor a global intellectual property strategy, both defensive and offensive, to achieve the client’s goals.
- Represent well-known, Japan-based stereo company in patent development projects. Representation routinely involves advice regarding patent mining, invention review meetings, and procurement strategies.
- Developed U.S. patent portfolio for rapidly growing Chinese mobile application company that recently completed its nine-figure Series C financing.
Litigation and Appellate
- Co-drafted inter partes review petitions for consumer electronics manufacturer that, in one petition, persuaded the Patent Trial and Appeal Board (PTAB) Precedential Decision Panel—with USPTO director and vice chief administrative patent judge presiding—to review and ultimately invalidate the patent and, in another petition, established grounds that ultimately led to a summary judgment of noninfringement for the client in the related district court litigation.
- Co-drafted inter partes review petitions for hydrophobic chemical coating company that, in one case, resulted in adverse judgment entered against the challenged patent.
- Represented a publicly traded pharmaceutical company in Taiwan in supporting cases against its former chairman in several complex intellectual property sales and license contracts. Coordinated multiple international teams and assisted client’s legal team with its global litigation effort against the parties involved in this high-profile white-collar criminal case. The effort included various litigation and other legal proceedings in Taiwan, Switzerland, and the United States.
- Represented a California-based, family-owned irrigation component company in a patent infringement matter. Performed infringement analysis, drafted claim chart and cease and desist letter, and assisted in settlement negotiation, resulting in a favorable settlement against the agricultural irrigation arm of a large, publicly held manufacturer.
Due Diligence
- Handled large-scale patent due diligence project, encompassing hundreds of patents, for publicly traded biomedical device company in Taiwan. Tailored step-by-step plans to successfully complete the project and assisted company’s in-house team in presenting the results to its clients, including world-renowned healthcare and medical device providers.
- Represented manufacturer of germicidal lamps in patent due diligence in mergers and acquisition transaction.
- Represented medical supply technology company in due diligence on U.S. subsidiaries for initial public offering in Hong Kong.
