LIU SHEN & ASSOCIATES

CHEN,Xi

Partner | Patent Attorney

TECHNICAL FIELD:

Mechanical Engineering , Vehicle Engineering , Medical Devices

TEL: 86-10-6268 1616

FAX: 86-10-6268 1818

EMAIL: xichenb@liu-shen.com

PERSONAL SUMMARY:

EDUCATION:

−     Master of Mechanical Engineering                                          Tsinghua University

−     Bachelor of Mechanical Engineering                                       Beihang University


Mr. Chen joined Liu, Shen & Associates in 2014. He specializes in patent prosecution, re-examination, patent invalidation, IP litigation, and client counseling with a focus on medical instruments, MEMS, sensors, electrical connecters, etc.


Mr. Chen became a qualified patent attorney in 2015, and is now a registered patent agent in China. Mr. Chen is a litigation agent recommended by the Supreme Court and also by the All-China Patent Attorneys Association.


Mr. Chen has participated in several patent lawsuits including patent infringement litigations and patent invalidation proceedings. He has focused on patent related cases such as patent infringement analysis, patent validity analysis, FTO analysis and prior art search and analysis.

 

HIGHLIGHTS:

Main Clients Mr. Chen Worked for:


−     TE Connectivity, Qualcomm Incorporated, 3M Innovation, General Motors, Leili Group, Canadian Solar, Shagang Group, etc.


Main Project Experience:


−     Thin film thermocouple sensors for monitoring cutting temperature

−     Research on the cutting mechanism of crank flying shearer (CISDI)

−     Finite element analysis of cutting temperature fields (MHI)

−     Experimental investigation of titanium alloys machinibility

−     Roller type hydraulic pump and push type linear motor


Representative cases that Mr. Chen has led or participated include:




1. Infringement Litigations



−     3M Innovation v. Shinva Co. - serial patent infringement litigations, in relation to two invention patents and one design patent, Mr. Chen represents the plaintiff 3M Innovation - the case won the 1st trial - Shanghai IP Court ruled that the defendant compensated 3M Innovation for a total damage of RMB 10 million and reasonable expenses of RMB 650,000 - the 2nd trial is currently underway;

−     3M Innovation v. Sisa Co. - serial patent infringement litigations, in relation to two invention patents, Mr. Chen represents the plaintiff 3M Innovation - the case won the 1st trial - Zhengzhou IP Court ruled that the defendant compensated 3M Innovation for a total damage of RMB 1 million (the defendant not appealed);

−     Leili Co. v. Zhongjingke Co. - patent infringement litigation, Mr. Chen represents the plaintiff Leili Co. - the case won the 1st and 2nd trials - Suzhou IP Court ruled that the defendant compensated Leili for a total damage of RMB 1 million, and the IP Court of the Supreme Court upheld the judgment;

−     Rena GmbH v. Canadian Solar - patent infringement litigations, Mr. Chen represents the defendant Canadian Solar - the involved patent was wholly invalidated in PRB through the invalidation proceeding, based on this, Suzhou Intermediate Court ruled that Rena's lawsuit was rejected, and the Jiangsu Higher Court upheld the ruling.


2. Administrative Litigations



−     Hanyu Co. v. CNIPA - administrative litigation in relation to invalidation of invention patent right, Mr. Chen represents the third party Leili Co. (winner in the invalidation proceeding) - the case won the 1st trial - Beijing IP Court ruled that the appealed Decision was upheld, and the IP Court of the Supreme Court also upheld the judgment in the 2nd trial;

−     Rena GmbH v. CNIPA - administrative litigation in relation to invalidation of invention patent right, Mr. Chen represents the third party Canadian Solar (winner in the invalidation proceeding) - the case won the 1st trial - Beijing IP Court ruled that the appealed Decision was upheld - the 2nd trial is currently underway;

−     Apple Inc. v. CNIPA - administrative litigation in relation to invalidation of invention patent right, Mr. Chen represents the third party Qualcomm Incorporated (winner in the invalidation proceeding) - the 1st trial is currently underway;


3. Invalidation Proceedings



1)    Representing the Patent Owner

−     Qualcomm Incorporated v. Apple Inc. (ZL201080006270.3), Mr. Chen in this case represents the patentee Qualcomm Incorporated - the patent right was wholly upheld by PRB;

−     AUX Co. v. Midea Co. (ZL201620666033.4), Mr. Chen in this case represents the patentee AUX Co. - the patent right was upheld by PRB on a basis of the amended claims;

−     Leili Co. v. Zhongjingke Co. (ZL201620056814.1), Mr. Chen in the serial cases represents the patentee Leili Co. - the patent right was upheld twice by PRB in both of the invalidation proceedings;

−     Leili Co. v. Hanyu Co. (ZL201520739827.4), Mr. Chen in this case represents the patentee Leili Co. - the patent right was wholly upheld by PRB;

−     Leili Co. v. Hanyu Co. (ZL201220152493.7), Mr. Chen in this case represents the patentee Leili Co. - the patent right was upheld by PRB on a basis of the amended claims;

−     Leili Co. v. Chaowen Weng (ZL201720667374.8), Mr. Chen in this case represents the patentee Leili Co. - the patent right was upheld by PRB on a basis of the amended claims;

−     Leili Co. v. Zhongjingke Co. (ZL201820008400.0), Mr. Chen in this case represents the patentee Leili Co. - the patent right was upheld by PRB on a basis of the amended claims;

2)     Representing the Petitioner

−     Canadian Solar v. Rena GmbH (ZL200480043087.5), Mr. Chen in this case represents the petitioner Canadian Solar - the patent right was wholly invalidated by PRB;

−     Xi Zhang v. Alibaba Co. (ZL201620847681.X), Mr. Chen in this case represents the petitioner Xi Zhang - the patent right was wholly invalidated by PRB;

−     Leili Co. v. Zhongjingke Co. (ZL201620619693.7), Mr. Chen in this case represents the petitioner Leili Co. - the patent right was wholly invalidated by PRB;

−     Otti Co. v. Recticel NV (ZL201080055638.5), Mr. Chen in this case represents the petitioner Otti Co. - the patent right was wholly invalidated by PRB.


4. Legal Opinions



Mr. Chen provides legal opinions for many clients, in relation to:

−     Patent infringements analysis and opinions - 20+ cases;

−     Patent validity analysis and opinions - 30+ cases;

−     Free-to-operate (FTO) and early warnings - 10+ cases; and

−     Prior art search & analysis, IP due diligence, etc. - 10+ cases.


5. Speeches & Articles



The articles written by Mr. Chen in recent years include:



−     “The keys to success in patent litigation” - published on IAM China: Managing the IP Lifecycle 2021; and

−     “How to judge the ‘sufficiency of disclosure in specification’ issue? - The latest criterion from the Supreme Court” - published on Liu Shen Newsletter July 2020.



Presentations that Mr. Chen has presented include:



−     An English speech entitled “Claim Drafting In Light Of Litigation” in 2018 AIPPI China IP Youth Seminar.


WORKING LANGUAGE:

Chinese,English

MEMBERSHIP:

All-China Patent Attorneys Association (ACPAA)

Chinese Mechanical Engineering Society (CMES)