Ms. Yali SHAO is
a partner at Liu, Shen & Associates. She is also double qualified as patent
attorney and attorney at law with years of experiences. She joined in the firm
in 1997 and mainly specializes in patent prosecution, re-examination, patent
invalidation, patent licensing, IP litigation, and client counseling with a
focus on electrical engineering, automatic control, telecommunication,
electronics, computer science as well as Internet & e-commerce.
Ms. SHAO handles
a number of cases relating to patent examination, reexamination, invalidation,
administrative lawsuit, infringement lawsuit, licensing and other IP related
matters. In recent years, she has been leading matters including studies of
patent law related regulations and suggestions on revision to the regulations;
all kinds of analysis including pre-litigation analysis, pre-invalidation
analysis, and searching analysis; patent invalidation, patent infringement
litigation relating to Standard Essential Patents (SEPs) and non-SEP; patent
protection studies for specific technical fields such as Artificial
Intelligence (AI), Internet of Things (IoT), 2G/3G/4G/5G telecommunication SEP
technology, Wifi SEP technology, Audio/Video codec technology, etc.
Ms. SHAO had a
master's degree in automation from Beijing Jiaotong University in 1995. Before
joining this firm, Ms. SHAO worked as a teacher at Beijing Institute of
Technology for two years. She received training from Finnegan, Henderson,
Farabow, Garrett & Dunner, LLP, Washington D. C. in 2004.
Representative
cases:
- 2020-2023, in several patent licensing negotiations
and related disputes between a foreign giant company and certain giant domestic
and foreign giant companies for each time, representing the foreign giant company
to process patent selection and analysis, patent litigation strategy analysis,
patent licensing fee and FRAND issues analysis, etc.;
- 2016-2019, in a series
of patent infringement and invalidation cases between Samsung Electronics V. Huawei,
leading the team representing Samsung Electronics to attend SEP and non-SEP
patent infringement group cases. The issues involved include the infringement
logic for SEP related cases, calculation of SEP royalties, determination of
FRAND, and determination of injunctions for SEP and non-SEP cases;
- Wang Jianbo v. Microsoft, in the patent infringement
case of Wang Jianbo v. Microsoft, Ms. Shao and her colleagues represented
Microsoft, and the case was finally settled because the plaintiff Wang Jianbo
withdrew his lawsuit;
- Chint v. Schneider, in the patent invalidation case
of Chint v. Schneider, Ms. Shao and her colleagues represented Schneider and
finally won the case in the second instance at Beijing High Court.
Representative Publications:
- “SEP related Patent Litigation and Invalidation
Strategy Analysis,” first author, IPLEAD, November 2023;
- “Protecting AI-related Innovations in China,”
Co-author, Managing IP, Summer 2020;
- “Building Global High-value Patent Portfolios, -
from China to the World (I, II),” China Patent Agency, Sessions 1 and 2, 2019;
- “Best drafting practices for background section of
patent applications,” Intellectual Asset Management (IAM), August 2017;
- “Import and Export of Inventions,” Managing IP,
China IP Focus 2012;
- “Drafting Best Functional Technical Features in
China”, Asia IP, April 2016;
- “Latest Patent Law Changes Analyzed,” Managing IP,
Asia-Pacific Focus 2007;
- “Software-related inventions,” Managing IP,
Asia-Pacific Focus 2008;
- “Patentability of Inventions Concerning Business
Methods,” China Patent Agency, Session 1, 2006;
- “Patentability of Inventions Concerning Computer
Programs,” China Patent Agency, Session 4, 2005.
Representative
Speech:
- Title, “Obtaining Strong Patents Internationally –
from China to the World”, CPAC-AIPPI Session, August 2018, Beijing
- Title “Patentability of Business Method related
Inventions in China,” All-China Patent Agents Association (ACPAA) and the
Chartered Institute of Patent Attorneys (CIPA) Joint Meeting, November 2017,
Beijing
- Title “What’s the (technical) problem?”, AIPPI 2017
World Congress, October 2017, Sydney
Representative
Research:
- Directing of the research and participating the
drafting of the report Intellectual
Property Protection for Artificial Intelligence, 2019