Beijing
Patent
Computer Science,Internet Technology,Artificial Intelligence,Big Data Processing,Mechanical Engineering,Material Science,Semiconductor
Chinese,English
Mr. Peng began his legal career in patent laws in July, 2002 and joined Liu, Shen & Associates in April, 2005.
Mr. Peng obtained the qualification as an attorney at law in 2003 and obtained the qualification as a patent attorney in 2004. Mr. Peng’s current practice mainly focuses on patent enforcement including patent litigation and administration proceedings, patent prosecution and invalidation in the technical fields of mechanical engineering, material science, semiconductor device and process, display device, and so on. Mr. Peng’s services also include providing clearance opinions and patent strategy consultations for corporations, providing legal advice, and giving training on patent laws and related issues. Also, Mr. Peng has assisted Chinese applicants in patent application filing and prosecution with foreign patent offices, such as USPTO, EPO, JPO, KIPO, etc.
Mr. Peng obtained a bachelor degree and a master degree for material science and engineering from Tsinghua University in 2000 and 2002, respectively. Mr. Peng further obtained a master of law degree (LLM) from The John Marshall Law School in the United States of America in 2009.
Civil Litigation
- Siemens v Beijing Lida Huaxin (2008), patent infringement litigation and related patent invalidation, Beijing First Intermediate Court (First Instance), representing the plaintiff (patentee).
The infringement litigation was settled before the Court and the defendant paid damages of RMB 4 Million to the patentee; the related patent was held valid in the patent invalidation proceedings.
- Staubli v. Nibo Xiaohui (2010), patent infringement litigation and patent invalidation, Ningbo Intermediate Court (First Instance), representing the plaintiff (patentee).
The infringement litigation was settled before the Court and the defendant paid damages of RMB 100,000 to the patentee; the related patent was held valid in the patent invalidation proceedings.
- Staubli v. Shanghai Chaocheng (2010), patent infringement litigation and patent invalidation, Shanghai First Intermediate Court (First Instance) and Shanghai High Court (Second Instance), representing the plaintiff (patentee).
The Court decided in favor of the patentee in the patent infringement proceedings, and the defendant was ordered for permanent injunction and damages of RMB 150, 000; the related patent was held valid in the patent invalidation proceedings.
- Staubli v. Changshu Textile (2010), patent infringement litigation and patent invalidation, Suzhou Intermediate Court (First Instance) and Jiangsu High Court (Second Instance), representing the plaintiff (patentee).
The Court decided in favor of the patentee in patent infringement proceedings and the defendant was ordered for injunction and damages of RMB 250,000; the related patent was held valid in the patent invalidation proceedings. This case was designated as the Top 10 Intellectual Property Cases in Jiangsu Province in 2013.
- IEE v. Golden Times (2013), patent infringement litigation and patent invalidation, Beijing Second Intermediate Court (First Instance), representing the plaintiff (patentee).
The infringement litigation was settled before the Court and the defendant agrees to stop the infringing activities.
- Wang He v. IEE (2014), patent infringement litigation and patent invalidation, Shenyang Intermediate Court, representing the defendant.
The patent at issue was invalidated in the patent invalidation proceedings, and the plaintiff withdrawn the infringement case.
Patent Invalidation or Administrative Litigation
- Kubota v. Patent Reexamination Board of the SIPO (2010), patent administrative action, Beijing First Intermediate Court (First Instance), Beijing High Court (Second Instance), and Supreme Court (Certiorari), representing the plaintiff (applicant). The High Court reversed the re-examination decision unfavorable to the applicant and remanded it to the SIPO for further examination.
- Kaneka v. Patent Reexamination Board of the SIPO (2013), patent administrative action, Beijing First Intermediate Court (First Instance) and Beijing High Court (Second Instance), representing the plaintiff (patentee). The Intermediate Court reversed the invalidation decision unfavorable to the patentee and patent was held valid.
- BOE v. Patent Reexamination Board of the SIPO (2014), patent administrative action, Beijing First Intermediate Court (First Instance) and Beijing High Court (Second Instance), representing the plaintiff (applicant). The High Court reversed the re-examination decision unfavorable to the applicant and remanded it to the SIPO for further examination.
- Panasonic v. Yinzhou Jingneng (2011), patent invalidation, patent Reexamination Board of the SIPO, representing the invalidation petitioner. The Board held the design patent invalid because the patent was in conflict with the previous trademark right of the petitioner.
- Bayer A/G v. Novo Nordisk A/S (2011), patent invalidation, patent Reexamination Board of the SIPO, representing the invalidation petitioner. The Board held the design patent partially invalid.
- P&G v. Ruan Shixing (2012), patent invalidation, patent Reexamination Board of the SIPO, representing the invalidation petitioner. The Board held the design patent partially invalid.
All-China Lawyers Association (ACLA)
All-China Patent Agents Association (ACPAA)
Association Internationale pour la Protection de la Propriété Intellectuelle (AIPPI)
Beijing
Patent
Telecommunication,Computer Science,Internet Technology,E-commerce,Artificial Intelligence,Big Data Processing,Electronics Engineering,Semiconductor
Chinese,English
Ms. QIAN joined Liu, Shen & Associates in 2001 and became a qualified patent attorney in 2002. She specializes in patent prosecution, re-examination, patent invalidation, and client counseling with a focus on Automatic control; Telecommunication; Electrical & Electronics; Semiconductor; Computer Science; Internet.
Ms. QIAN had a master's degree from Beijing Institute of Technology in 1994. Before joining this firm, Ms. QIAN worked as an electronic product developer for six years. She received training in France in 2009.
All-China Patent Agents Association (ACPAA)
Association Internationale pour la Protection de la Propriété Intellectuelle (AIPPI)
Beijing
Patent
Organic Chemistry,Bio & Pharmaceutical,Chemical Engineering
Chinese,English
Mr. Jian Qin is a patent attorney in China. He joined Liu, Shen & Associates in 2006 and became a qualified patent attorney in 2008. He specializes in patent prosecution, re-examination, and client counseling with a focus on pharmaceutical and material science etc. He has also provided services of patent retrieval and infringement analysis. Meanwhile, he has filed some patent applications in countries outside of China, such as USA.
Mr. Qin received a Master degree of Applied Chemistry from Beijing Institute of Technology in 2006. He also studied European intellectual property law in the Summer School on IP in Europe in the University of Strasbourg in 2014.
All-China Patent Agents Association (ACPAA)
Beijing
Patent
Electrooptical Technology,Material Science,Semiconductor
Chinese,English
Mr. QIU joined Liu, Shen & Associates in February 2005. Mr. QIU is qualified as a patent attorney in 2008 and qualified as an attorney at law in 2012. Mr. Qiu’s practice includes IP litigation, patent prosecution, invalidation and dispute resolutions before SIPO and the courts, and counseling on IP strategies, patent licensing, IP related contracts and patent due diligence works. Mr. QIU specialized in semiconductor processing and device including memory technology, optical engineering including microlithography, virtual reality technology and display technology, materials engineering and mechanical engineering.
Mr. QIU also provided patent training and patent mining for R&D personnel of clients, and presented various topics on patent prosecution and litigation in domestic and international conferences.
Mr. QIU was graduated from Tsinghua University with a bachelor and master degree of engineer in a major of Materials Since and Engineering. Mr. QIU also studied and worked at University of Michigan and was graduated from John Marshall Law School with a master of Law degree.
Mr. Qiu has led or participated patent litigations including
Goertek vs. Knowles, representing Goertek as patentee in 5 patent infringement cases; winning 2 cases with damage awards over RMB 70 million in 1st instance;
Staubli vs. Ningbo Hanghai, representing Staubli as patentee, winning at 1st instance; and
Carl Zeiss SMT vs. Nikon, representing Carl Zeiss SMT as petitioner in multiple patent invalidation cases, all patents held invalid or partially invalid; and
HRID vs. INETE, representing HIRD as petitioner, the patent held invalid.
Mr. Qiu has authored professional articles including:
- “Technical inspiration in determining inventive step of a patent” Examination Work Reports, 2011
- “Functional Feature in Chinese Patent Infringement Litigation” Managing IP, 2015
All-China Lawyers Association (ACLA)
All-China Patent Agents Association (ACPAA)
Chengdu
Patent
Telecommunication,Computer Science,Internet Technology,E-commerce,Artificial Intelligence,Big Data Processing
Chinese,English
Ms. Qu joined Liu, Shen & Associates in 2012. Ms. Qu became a qualified patent attorney in 2016. Ms. Qu specializes in patent prosecution and re-examination with a focus on communications, electronics, computer science, internet, semiconductor, graphical processing etc.
Ms. Qu obtained a master's degree in Signal and Information processing from Beijing University of Posts and Telecommunications in 2013, and received her bachelor’s degree from the same university in 2010.
Legal Matters include:
- Participating the analysis on validity and relevance of patents in a series of patent infringement lawsuits and related invalidation lawsuits between a famous domestic company and a famous foreign company
Published Articles include:
- “How to apply provisional patent rights protection in China for foreign enterprises", Japanese Edition of IAM-media, Nov.2015, second author
- “Brief Introduction to Application of Doctrine of Estoppel in China,” Asia IP, Feb.2016, second author
Involved training programs include:
- Fifth Annual U.S. Patent Law and Practice Symposium held by HSML, September 26th to October 4th of 2017
Presentations include:
- Introduction to Patent Pool
- Overcoming Defects not pointed out by the Examiner in OA stage
Beijing
Patent
Mechanical Engineering,Vehicle Engineering,Material Science,Inorganic Material
Chinese,English
Ms. Qu joined Liu, Shen & Associates in 2000 and became a qualified patent attorney in 2002. She specializes in patent prosecution, re-examination, patent invalidation, and client counseling with a focus on Textile machinery; Textile technology; Mechanical engineering; Vehicle; Security Element; Optical; Welding; Metallurgy; Material science; Storage and Display devices.
Ms. Qu obtained a master degree majoring in textile engineering in 2000 from Xi'an Polytechnic University. She received training from Birch, Stewart, Kolasch & Birch, LLP, U.S.A .in 2006.
All-China Patent Agents Association (ACPAA)
CHINESE NATIONAL GROUP OF AIPPI
Beijing
Patent
Material Science,Semiconductor
Chinese,English
Ms. Qu joined Liu, Shen & Associates in 2005 and became a qualified patent attorney in 2007. She specializes in patent prosecution, re-examination, patent invalidation and IP litigation with a focus on semiconductor material, semiconductor device, display, etc.
Ms. Qu got her qualification as an attorney at law in 2013. She has participated in several patent lawsuits including patent regarding patent invalidation.
Ms.Qu had a bachelor’s degree from Beijing Normal University (BNU) in 2002 and had a master's degree from Institute of Semiconductors, Chinese Academy of Sciences (CAS), in 2005. She participated in July summer course in Centre d'Études Internationales de la Propriété Intellectuelle (CEIPI) in 2013.
Ms. Qu has been awarded Best Patent Attorney in 2015 by one of the most important client.
All-China Lawyers Association (ACLA)
All-China Patent Agents Association (ACPAA)
Beijing
Patent
Mechanical Engineering,Material Science
Chinese,English,German
Ms. Ren started her career in fields of Intellectual Properties since 2013 and became a qualified patent attorney in 2014. Since 2015, she joined Liu, Shen & Associates as a patent attorney and now serves for the patent application affairs of major clients from Germany.
Ms. Ren has got her doctor’s degree from University of Hanover, Germany, in 2004. Before joining this firm, she once worked as a research scientist in the research group of Hardwares and Materials in Siemens Corporate Technology, located in Beijing, for more than 6 years, and actively participated in many projects for developing SMART technology and products.
All-China Patent Agents Association (ACPAA)
Beijing
Patent,Trademark
Telecommunication,Computer Science,Internet Technology,E-commerce,Electrical Engineering,Electronics Engineering
Chinese,English
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 telecommunications, 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:
- 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:
- “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
Member of All-China Lawyers Association (ACLA)
Member of All-China Patent Agents Association (ACPAA)
Member of both Programme Committee and Patent Committee at Association Internationale pour la Protection de la Propriété Intellectuelle (AIPPI);
President of Patent Committee at AIPPI China Group
Beijing
Patent
Material Science,Semiconductor,Organic Chemistry,Chemical Engineering
Chinese,English
Ms. Song joined Liu, Shen & Associates in 1996 and became a qualified patent attorney in 1998. She specializes in patent prosecution, invalidation, counseling, and patent litigation with an emphasis on polymer, catalyzer, petrochemicals, health care, environmental sciences, battery, semi-conductive material, chemical engineering and pharmaceuticals.
Ms. Song got her qualification as an attorney at law in 2000. Starting from Joining Liu Shen, Ms. Song helps clients of all sizes to establish and grow patent portfolios, align intellectual property strategies, establish their freedom to operate, and resolve infringement disputes. Ms. Song has extensive experience in patent invalidity proceedings and patent infringement lawsuit especially in chemical fields and has represented numerous corporations in intellectual property disputes including patent invalidation and infringement litigation inChina.
Ms. Song received a Bachelor’s degree and a Master’s degree in Polymer Science fromSichuanUniversityin 1986 and 1989. She then studied in China University of Politics and theJohnMarshallLawSchoolfrom 2002 to 2004, and obtained a Master’s Degree of Law in 2004. Before joining Liu Shen, Ms. Song worked as an engineer in the Beijing Leather Industry Research Institution.
Representative cases that Ms. Song has led or participated include
- EMS-CHEMIE AG (Switzerland) v. ATOFINA (France), representing Atofina, invalidation;
- Total Petrochemicals (Belgium) v. Exxonmobile (US), representing Total Petrochemicals, invalidation & administrative litigation, one of ten leading cases of 2011;
- Ineos (UK) v. Total Petrochemicals, representing Total Petrochemicals, invalidation;
- Total Refining & Marketing (France) v. Exxonmobile (US), representing Total Refining, invalidation and patent license;
- Milliken (US) v. Shanxi Chemical Institute (Chinese), representing Milliken, infringement litigation;
- Idemitsu KoSan (Japan) v. Qijing El. Co. (Taiwang), representing Qijing, infringement litigationn;
- Arkema (France) V. Mexichem Amanco (Mexico), representing Arkema, invalidation & administrative litigation;
- Celanese (Nanjing) V. Daicel Chemicals Industries. LTD (JP), representing Daicel, invalidation & infringement litigation
Publications that Ms. Song has authored include
- Patent prosecution inChina, China Invention and Patent Magazine, 2003.
All-China Patent Agents Association (ACPAA)
Licensing Executives Society International (LES)
Chinese Law Associates
Beijing
Patent
Organic Chemistry,Bio & Pharmaceutical,Chemical Engineering
Chinese,English
Mr. SUN joined Liu, Shen & Associates in 2008 and became a qualified patent attorney in 2012. He focuses on fine chemistry, polymer chemistry, pharmaceutical sciences, and organic chemistry.
Mr. SUN had a bachelor's degree from Jilin University in 2001, worked in organic synthesis from 2001 to 2005, and had a master's degree from Capital Normal University in 2008.
Beijing
Patent
Mechanical Engineering
Chinese,English
Education:
Department of Mechanics and Engineering Science, Peking University, Master’s Degree of science, with major in Theoretical and Applied Mechanics
Department of Mechanics and Engineering Science, Peking University, Bachelor’s Degree of science, with major in Fluid Mechanics
Training:
Scully, Scott, Murphy & Presser, P.C., Summer training on US Patent Law and related, June 13~July 13, 2019
Qualification: Patent Attorney (2012);Attorney at Law (2017)
Ms. TAN began her legal career in patent laws and joined Liu Shen & Associates in June, 2011. She specializes in patent enforcement including patent prosecution, re-examination, patent validation and litigation in the technical field of Mechanical Engineering, Automotive Engineering, Medical Devices and so on. Ms. TAN’s services also include providing opinions and strategy consultations for corporations, and providing legal advice.
Before joining Liu Shen, Ms. TAN worked as a researcher on Natural Language Processing and Information Retrieval at Canon Information Technology (Beijing) Co. Ltd, specializing in algorithm study on multi-language Segmentation, Automatic Summarization, Keyword Extraction, Named Entity Recognition, Language models, Character Encoding Techniques and Recommendation System.
I. Civil Litigation
1. Linsinger Maschinenbau GmbH Vs. CRCC High-Tech Equipment Corporation Limited
2. WAGO Vs Jinghong Electrical
3. WAGO Vs Feide Electric
4. WAGO Vs Changhe
5. WAGO Vs Yueqing Hord Import & Export Co., Ltd, Yueqing Hord Electric Co., Ltd, Yueqing Leteng
6. WAGO Vs Wenzhou Zhanke
7. WAGO Vs Beijing Kaishiweiye, Yueqing Vsele
8. KOBOTA (Japan) Vs. Suzhou Jiufu Agricultural machinery Co. Ltd
II. Administrative Litigation
1. VALEO SYSTEM D’ESSUYAGE Vs. PRB, as attorney of the plaintiff VALEO SYSTEM D’ESSUYAGE
2. KOBOTA (Japan) Vs. Xu Zhanqing
III. Invalidation
1. KOBOTA (Japan) Vs. Xu Zhanqing, as attorney of the patentee KOBOTA.
All claims are maintained.
2. Changzhou LEILI Motor Tech Co. ltd. Vs. Jiangmen IDEARANYU, case 1, as attorney of the patentee LEILI.
The amended claims are maintained;
3. Changzhou LEILI Motor Tech Co. ltd. Vs. Jiangmen IDEARANYU, case 2, as ttorney of the patentee LEILI.
The amended claims are maintained;
4. KOBOTA (Japan) Vs. Suzhou Jiufu Agricultural machinery co. LTD, two cases, as attorney of the patentee KOBOTA.
All claims are maintained.
5. KOBOTA (Japan) Vs. Suzhou Jiufu Agricultural machinery co. LTD, another two cases, as attorney of the patentee KOBOTA.
6. Xiamen Conjoin Electronics Technology Co., Ltd Vs. Wang Jialu, in mainland.
The amended claims are maintained;
7. Xiamen Conjoin Electronics Technology Co., Ltd Vs. Peng Jinling, in Taiwan.
The amended claims are maintained;
8. Fujian Jinhua Integrated Circuit Co., Ltd Vs. Wang Hui, as attorney of the patentee JHICC
9. Fujian Jinhua Integrated Circuit Co., Ltd Vs. Micron (Shanghai), as attorney of the patentee JHICC
IV. Consultations
- Infringement Studies
- Validation studies
- Freedom to operate analysis
- Legal opinions on legal actions
- Certification of Hi-tech enterprise
v. Publications
- "The Boundary Element Method (BEM) solving the water wave effect on the aerodynamics of a vehicle flying close to the water surface", Journal of Hydrodynamics, 2003.4, second author.
- “What are the advantages and pitfalls of administrative enforcement?” on Managing Intellectual Property –China IP Focus 2019
All-China Patent Agents Association (ACPAA)