Beijing

Patent,Trademark

Telecommunication,Computer Science,Internet Technology,E-commerce,Electrical Engineering,Electronics Engineering

Chinese,English

Ms. Shao joined Liu, Shen & Associates in 1997 and became a qualified patent attorney in 1998. She specializes in patent prosecution, re-examination, patent invalidation, 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 got her qualification as an attorney at law in 2006. She has participated in several patent lawsuits including patent infringement and patent invalidation. She has been leading patent licensing counseling, patent invalidation, pre-litigation analysis and patent infringement litigation relating to SEP and non-SEP.

Representative cases:

-     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;

-     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;

-     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. (2016-2017)

Representative Publications:

-     “Patentability of Inventions Concerning Computer Programs,” China Patent Agency, Session 4, 2005;

-     “Patentability of Inventions Concerning Business Methods,” China Patent Agency, Session 1, 2006;

-     “Latest Patent Law Changes Analyzed,” Managing IP, Asia-Pacific Focus 2007;

-     “Import and Export of Inventions,” Managing IP, China IP Focus 2012;

-     “Drafting Best Functional Technical Features in China”, Asia IP, April 2016;

-     “Best drafting practices for background section of patent applications,” Intellectual Asset Management (IAM), August 2017

Representative Speech:

-     Title “What’s the (technical) problem?”, AIPPI 2017 World Congress, October 2017, Sydney

-     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, “Obtaining Strong Patents Internationally – from China to the World”, CPAC-AIPPI Session, August 2018, Beijing

All-China Lawyers Association (ACLA)

All-China Patent Agents Association (ACPAA)

Association Internationale pour la Protection de la Propriété Intellectuelle (AIPPI) 

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

Material Science,Chemical Engineering

Chinese,English

Dr. Sun joined Liu, Shen & Associates in 2004 and specializes in patent prosecution mainly in fields of Chemical Engineering, Polymer Chemistry, oilfield chemistry, Fine Chemistry and Photochemistry.

Dr. Sun has drafted patent applications for clients, and has answered many office actions for some major corporations, and provided services of patent retrieval and infringement analysis.  In addition, she has also represented clients in many patent reexamination cases, some patent invalidation cases and patent litigation cases.

Dr. Sun had obtained a doctor degree in 2004 majoring in Physical Chemistry from Tsinghua University.  She received training from John Marshall Law School, UAS in 2013.

All-China Patent Agents Association (ACPAA)

Beijing

Patent

Mechanical Engineering

Chinese,English

Ms. Sun joined Liu, Shen & Associates in 2012 and became a qualified patent attorney in 2014. She specializes in patent prosecution and client counseling with a focus on mechanical engineering, manufacturing, precision instruments, rehabilitation robotics and MEMS.

Ms. Sun received a Master of Science degree in Mechanical Engineering from Columbia University in 2009 and a Bachelor of Engineering degree in Precision Instrument and Mechanics from Tsinghua University in 2011. 

Beijing

Patent

Telecommunication,Computer Science,Internet Technology,E-commerce,Artificial Intelligence,Big Data Processing,Image Processing,Medical Devices

Chinese,English

Ms. Sun joined Liu, Shen & Associates in 2017. She mainly engages in intellectual property agency business related patent, including patent applications and application examination procedures. Her practice area includes medical instrument, E-commerce, artificial intelligence, big data processing, image processing, etc. 
  
Ms. Sun got her qualification as a patent attorney in 2016 and as an attorney at law in 2017. 
  
Ms. Sun worked in Metis IP as a patent analyst from 2015 to 2016. She was responsible for application drafting for US application and PCT application, infringement analysis and due diligence for patent transaction. 
  
Ms. Sun received her master degree in Biomedical Engineering in 2015 and her bachelor degree in Theoretical and Applied Mechanics in 2012 from Peking University. 

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 Degree

Department of Mechanics and Engineering Science, Peking University, Bachelor Degree

Qualification: Patent Attorney (2012)；Attorney at Law (2017)

Ms. TAN began her legal career in patent laws and joined Liu, Shen & Associates in July, 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 mbh Vs Jinghong Electrical

3.    WAGO mbh Vs Feide Electric

4.    WAGO mbh Vs Changhe

5.    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

All-China Patent Agents Association (ACPAA)

Beijing

Patent

Mechanical Engineering,Material Science,Semiconductor

Chinese,English

Allen Tao is an attorney at law and patent attorney in China, and a partner at the law firm of Liu, Shen & Associates.

Mr. TAO specializes in patent invalidation, litigation and dispute resolutions before administrative agencies and the courts, and counseling on IP strategies and patent clearance search. He also specialized in patent prosecution works on material, semiconductor, display, and mechanical engineering. Since 1998, he has handled dozens of patent related proceedings before the Courts and some cases relating to trademarks, trade secrets, and copyright issues. Mr. TAO has represented a number of multi-national corporations for litigation cases to defense and enforce their IPs in China. Mr. TAO also specialized in contractual issues, licensing, and other IP related issues for the foreign companies’ business in China.

Mr. TAO received his bachelor degree and a master degree in material science and technology from University of Electronics Science and Technology of China (UESTC) in 1988 and 1991. He received professional training at the law firm in Germany in 1997 and further obtained a master of law degree (LLM) from The John Marshall Law School in the United States in 2001 and a master of law degree from Huazhong University of Science and Technology (HUST) in 2004. Mr. TAO had worked in a research institute for four years and then joined the law firm, Liu, Shen & Associates in 1995.

1．Esco v Fumei, patent and trademark infringement litigation, Beijing No. 2 Intermediate Court and Beijing High Court, representing the plaintiff. The court decided that the defendant stop infringement and pay damages to the plaintiff. (2008)
2． Staubli v Changshu Textile, patent infringement litigation, Beijing No. 2 Intermediate Court and Beijing High Court, representing the plaintiff. The court decided that the defendant stop infringement and pay damages 0.66m. (2007) 
3．Feng Yong v Microsoft, trade secret litigation, Wuhan Intermediate Court and Hubei High Court, representing the defendant. Wuhan Intermediate Court found no trade secret of the plaintiff and Hubei High Court mediated the case. (2003)
4．Dai Peijun v GE, utility model patent infringement litigation, Beijing No. 1 Intermediate Court, representing the defendant. The case was dismissed after the answer from the plaintiff. (2003) 
5．Li Dan v Microsoft, patent infringement litigation, Beijing No. 1 Intermediate Court, representing the defendant. The case was dismissed after the answer from the plaintiff. (2003) 
6．Kone v Suzhou Fujia Enke, patent infringement litigation, Suzhou IntermediateCourt, representing the plaintiff. The Court decided that the defendant stop infringement and pay damages. (2008) 
7．Kone v Zhejiang United, patent infringement, Hangzhou Intermediate Court, representing the plaintiff. The Court decided that the defendant stop infringement and pay damages. (2008)
8．Siemens v Beijing Lida Huaxin, patent infringement litigation, Beijing No. 1 Intermediate Court, representing the plaintiff. The case was mediated before the court and the defendant pay damages RMB 4m. (2008)
9．Esco v Ningbo Fumei, patent infringement litigation, Beijing No. 2 Intermediate Court and Beijing High Court, representing the plaintiff. The court decided that the defendant stops the infringement and pay damages. (2008)
10．Esco v Ningbo Huicheng, patent infringement litigation, Beijing No. 2 Intermediate Court and Beijing High Court, representing the plaintiff. The court decided that the defendant stops the infringement and pay damages. (2008)
11．Esco v Tianjin Woda, patent infringement litigation, Tianjin Intermediate Court, representing the plaintiff. The court mediated the case and the defendant stops the infringement and pay damages. (2009)
12．Xu Shichang v. Samsung, patent infringement litigation, Shenzhen Court and Guangdong High Court, representing the defendant, successfully defending for no infringement. This case was designated as the Top 10 Intellectual Property Cases in Guangdong in 2012. (2012)
13．Staubli v. Changshu Textile, patent infringement litigation, Suzhou Court and Jiangsu High Court, representing the plaintiff. The court decided for patent infringement and the defendant was ordered for injunction and damages. This case was designated as the Top 10 Intellectual Property Cases in Jiangsu in 2013.
14．Goertek v. Knowles, patent infringement litigation, Weifang Court, representing the plaintiff. Damages RMB 37.2 million. (2014/4/22)
15．Author of book "Patent Reexamination & Invalidation Practice" (2013)
16．Author of paper "Amendment Rules after Grant of Patent" (2004)
17．Author of chapter "Indirect Infringement in China" of book "Patent Infringement Worldwide - Claim Interpretation - Infringement - Damages" Edited by Jan Bushche et al Carl Heymanns Verlag (2010)
18．Honored as 'Leading Patent Attorneys in China' by SIPO in 2014

Beijing

Patent

Mechanical Engineering

Chinese,English

Ms. Tian joined Liu, Shen & Associates in 2001 and became a qualified patent attorney in 2004. Ms. Tian’s current practice includes patent registration procedure, all kinds of subsequent prosecutions of granted patents and in charge of renewal group.

Ms. Tian had obtained a bachelor degree in 1995 from Northwestern Polytechnical University majoring in Plastic Forming Technology and Equipment. 

Beijing

Trademark

Chinese,English

Ms. Tian joined Liu, Shen & Associates in 2004 as trademark attorney and became a qualified attorney at law in 2006.  Before joining Liu, Shen & Associates, Ms. Tian worked in Tax and Legal Service section of PriceWaterhouseCoopers Beijing Office and has been qualified as China CPA since 2001. 

Her expertise includes providing full-range service on trademark prosecution, including availability search and analysis, filing, licensing, assignment, opposition, and invalidation; representing clients before courts in administration litigation on authorization and determination of trademark rights; counseling services in respect of trademark strategy and comprehensive trademark issues. 

Education

LLM, University of Sydney, Australia

B.A. of English Linguistics and Literature, Peking University

B.A. of Economics, Peking University

Typical Trademark opposition/invalidation & Litigation Cases

-      Magellan Textile Holdings Limited v. LUO Jiangwei and his associated parties, representing Magellan Textile Holdings in the above mentioned series opposition/invalidation and litigation cases based on prior copyright over the “PP PRETTY POLLY” logo and the close relationship between the goods falling in dissimilar classes.

-      BlueScope Steel Limited v. Guangzhou Lian He Gang Jie Gou You Xian Gong Si, representing BlueScope Steel in series opposition cases based on the close relationship between the goods and services and the business relationship between the two parties

-     R… And Everything Else, Inc. v. YE Jianfeng, representing R… and Everything Else in litigation against the opposed mark based on close relationship between the goods falling in dissimilar sub-classes.

-      BLANCPAIN SA v. Golden Circle Limited, representing Golden Circle defending in the opposition and litigation cases against BLANCPAIN’s challenge based on claim of “well-known” trademarks of BLANCPAIN and its Chinese version. 

-     Joseph Schulte-Ufer KG v. Miji Electronics and Appliances(Shanghai)Ltd., representing Joseph Schulte-Ufer KG in invalidation and the successive litigation cases against Miji based on their business relationship between the parties.

Typical Counseling Cases

-      Comprehensive IP counseling including trademark, copyright and domain name protection for a multi-national corporation and its WOFE in China for over ten years

-      Trademark counseling services for five European based companies for ten years. 

All-China Lawyers Association (ACLA)

China CPA

Beijing

Patent

Bio & Pharmaceutical,Life Science

Chinese,English

Dr. Tu joined Liu, Shen & Associates in early 2015 and got the certificate of patent attorney in 2015. He specializes in patent application drafting, prosecution, reexamination and Infringement analysis, with a profession in the fields of immunology, cell biology and molecular biology, especially in immunotherapy, cancer treatment and antibody drugs.

Before joining Liu, Shen & Associates, Dr. Tu got his Ph.D. of Cell Biology from Infection and Immunity Center, Institute of Biophysics of Chinese Academy. During his Ph.D research, he participated in several projects involving antibody drug development and cancer treatment. 

Dr. Tu has drafted high quality patent applications in different technical fields including immunotherapy, antibody drugs and applications in cell biology. Dr. Tu has also handled a large number of prosecutions and reexaminations of applications in various fields, and has gained abundant experience in the patent practice in China, US, EP and other countries.

Beijing

Patent,Copyright

Telecommunication,Computer Science,Internet Technology,E-commerce,Artificial Intelligence,Big Data Processing,Electronics Engineering,Semiconductor

Chinese,English

Ms. Wan started practice in intellectual property affairs in Liu, Shen since 2007. Ms. Wan provides intellectual property related services such as patent drafting, patent prosecution, litigation, patent analysis, patent search, patent navigation, patent monetization, legal counseling, intellectual property strategy and so on for several clients, and gets widely praised as Excellent Patent Attorney Awards and so on. Ms. Wan also has been invited as an honored guest to attend clients’ production release conferences. Ms. Wan is dedicated to providing a wide range of high-quality intellectual property services for clients. Ms. Wan handles intellectual property affairs in the field of Electronics & Computer Science, Internet Technology, Signal and Information processing, Image Processing, Semiconductor Technology, Telecommunication, and Automation etc..

Ms. Wan was admitted as a patent attorney in 2007 and admitted as a Chinese lawyer in 2009.

Ms. Wan received her Master of Laws (LLM) degree from The John Marshall Law School (JMLS) in Chicago, IL, USA, with a major on Intellectual Property Law, fall, 2012. During the study, she got a CALI Award by winning the highest grade on Substantive Patent Law class, and received the Graduate with Honors Award. Ms. Wan received her Master and bachelor's degrees both from Beijing University of Post and Telecommunication (BUPT) with a major on Signal and Information Processing Technology during 2000-2007. Before joining Liu, Shen, Ms. Wan worked in France Telecom R&D Beijing as an intern researcher in 2006.  

REPRESENTATIVE CASES

I. Civil Litigation

-     A Chinese electric information technology company v. a multinational mobile device manufacturer, patent infringement litigation, Shanghai intellectual Court, representing the defendant. This case is pending. 

-     A Chinese mobile device manufacturer v. a multinational mobile device manufacturer, a series of SEP and Non-SEP patent infringement litigations, Shenzhen, Xi’an and Beijing, representing the multinational mobile device manufacturer; the cases are pending. 

-     A US communication company v. a US mobile device manufacturer, several patent infringement litigations, representing the US communication company; the cases are pending.

II. Free-to-Operate (FTO) consultation
-     SOFTWARE MOTOR CORPORATION FTO consultation (2017).
-     Chehejia (China) Corporation patent map, Patent Portfolio, and patent mining.

Published Articles include

-     Technology mining: the key to extracting maximum patent value, pages 13-17, China: Managing the IP Lifecycle 2018/2019, in English.

-     Study on cited references which were not disclosed enough to judge novelty and inventiveness, Intellectual Property Frontier, 2016, Volume 1 (January –February), in Chinese

Domestic conferences that Ms. Wan has participated in include

-     An English speech titled with “Business-Method-Related Patent Prosecution in China” in 2014 AIPPI China IP Seminar.

Awards that Ms. Wan has been honored with include

-      “A” Class Patent Attorney Awards, awarded by Tencent Ltd.;

-     Excellence for the Future Awards, awarded by Center for Computer-Assisted Legal Instruction (CALI) for winning the highest grade on Substantive Patent Law class during study in The John Marshall Law School (JMLS) in Chicago, IL, USA;

-     Graduate with Honors Awards for GPA >3.75, awarded by The John Marshall Law School (JMLS) in Chicago, IL, USA.

Product release conferences that Ms. Wan has been invited to include

-     TAH Intellectual Health Watch Product Release Conference. 

All-China Lawyers Association (ACLA)

All-China Patent Agents Association (ACPAA)

Association Internationale pour la Protection de la Propriété Intellectuelle (AIPPI)