LIU SHEN & ASSOCIATES

YAO,Guanyang

Partner | Patent Attorney | Attorney at Law

TECHNICAL FIELD:

Mechanical Engineering , Vehicle Engineering , Medical Devices

TEL: 86-10-6268 1616

FAX: 86-10-6268 1818

EMAIL: gyyao@liu-shen.com

PERSONAL SUMMARY:

PROFILE

Educational Background: Master degree for Information System; US LLM; China Master of Law degree

University:Beijing Aeronautics and Astronautics University (2005);

US John Marshal Law School (2014);

China University of Political science and Law (2017)

Qualification: Patent Attorney (2006);Attorney at Law (2008)


SUMMARY

Mr. Yao specializes in providing legal service related to patent law. Based on the extensive experiences from patent prosecution and litigation in almost fifteen years, Mr. Yao has deep understanding on the spirit of China patent legal system. As the leading attorney, Mr. Yao has handled patent disputes for various international and domestic enterprises. Mr. Yao has the expertise to design overall litigation strategy based on specific cases and also the strong ability to summarize and analyze case details for the best of the clients. Mr. Yao is proficient in patent searching, with excellent skills in making searching strategy based on combined searching resources, establishing solid basis for the success of patent invalidation.

 

In technical field, Mr. Yao successfully represents France Staubli in a patent infringement case on textile machinery, which is selected as one of 2013 Top 10 IP cases in Jiangsu High Court. The corresponding patent administrative case is selected as one of 2017 guiding cases in Supreme Court. In telecommunication field, Mr. Yao participates a high-profile SEP infringement lawsuits, involving complicated determination of patent infringement, overloaded evidence summarizing and new FRAND issues. Further, Mr. Yao also provides patent related services for various enterprises, such as Qualcomm, Samsung , Schneider, Siemens, Knipex, Aux, Opple, GoerTek, OFO, Delphilaser, and is highly praised by the clients.

 

Mr. YAO keeps a close eye on development in IP law system in China and is active in reviewing IP hot issues and providing opinions in law amendments. Mr. Yao has solely or jointly published research articles on many topics on patent law. Mr. Yao has made presentations in many international IP conferences, with heated responses. 

HIGHLIGHTS:

Representative Cases

- An international telecommunication company v. a domestic telecommunication company, representing the international telecommunication company to attend SEP and non-SEP patent infringement group cases and patent invalidation group cases(over 40 cases) as the leading attorney, involving correspondence between telecommunication standards and SEPs, FRAND issues.

 

- Represented Aux to participate patent litigation and invalidation campaign among domestic air-conditioner enterprises.

 

- Represented defendant Samsung China to attend patent infringement litigation group cases before Shanghai IP Court and successfully challenged the validity of the series patents in a quick schedule to force the plaintiff to withdraw the cases.

 

- Represented plaintiff Staubli to launch series patent infringement litigation in Shanghai and Suzhou and obtained the overall success with the injunction and damages and IP Complaint Service for Staubli in Exhibition in Shanghai in 2012 and 2014 in “ITMA ASIA + CITME”. Selected as one of the TOP 10 cases in 2013 before Jiangsu High Court and also as one of the guiding cases before Supreme Court in 2017.

 

- Represented US Foxfurry to launch patent infringement case before Guangzhou IP Court and win the injunction and damages.

 

- Represented defendant Beijing Jieshi in preliminary injunction proceedings in Beijing IP Court. Successfully invalidated the patent and forced the plaintiff to withdraw the case.

 

- Represented Delphi Laser in patent invalidation series cases and all the way through appeals to the Retrial before the Supreme Court, all of which successfully maintaining the original invalidation decision.

 

- Represented US Global Imagination to initiate patent infringement litigation in Beijing and win the injunction and damages. Successfully defended the patent not to be invalidated against validity challenges for 3 times. Launched IP Complaint Service in Exhibition in Chengdu in 2018.

 

- Represented Zeng Shengke in an important case for public oral hearing with over 120 audiences, with press coverage such as China IP.

 

- Represented Yalian to successfully challenge the validity of 2 patents at the same time against Siempelkamp.

 

Publications and Presentations

Publications that Mr. YAO has authored include

-     “IP ENFORCEMENT AT TRADE FAIRS INCHINA”,AsiaIP, 2013

-     “MAKING THE MOST OF THE CUSTOMS”, MIP2016 inFocus, 2016

-     “CHINA’SEVOLVING SPECIALIST COURTS”, MIP AIPLA Daily Report, October 29, 2016

-     “COURT PROVIDES SEP GUIDANCE IN CHINA”, MIP 2017 Mid-year, June/July issue, 2017

-     “Breaking the damages dilemma in China patent litigation”, MIP 2017 End of Year, December issue, 2017

-     “ANALYZING THE SUPREME COURT’S STANCE ON SUFFICIENT DISCLOSURE”, MIP 2018, China IP Focus

-     “What is a Scope of a Functional Limintation in China”, Asia IP 2018, May issue

-     Coauthor in the book <FRAND Case Selection> 2018

 

Presentation that Mr. YAO has made include

-     “METHOD FEATURES IN CLAIMS OF UTILITY MODEL PATENT”, AIPLA China forum, 2014

-     “TRADE SECRET PROTECTION INCHINA”, AIPPI China-US Forum, 2016

-     “Analysis on SEP rules in China”, International IP Business 2018 Forum, 2018

-     Several Presentations on “Intelligent Tank” inside LS law firm

WORKING LANGUAGE:

Chinese,English

MEMBERSHIP:

All-China Lawyers Association (ACLA)

All-China Patent Agents Association (ACPAA)

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