LIU SHEN & ASSOCIATES

YUE,Xuelan

Partner | Attorney at Law| Patent Attorney

TECHNICAL FIELD:

Internet Technology , Material Science , Semiconductor

TEL: 86-10-6268 1616

FAX: 86-10-6268 1818

EMAIL: xlyue@liu-shen.com

PERSONAL SUMMARY:

Dr. YUE joined Liu Shen & Associates in 2006. She specializes in patent prosecution, re-examination, patent invalidation and patent infringement litigation,  in the field of mechanical engineering, semiconductor, automobiles, lithium batteries, etc. She also has extensive experience in providing FTO opinion, patent validity analysis, infringement analysis and patent litigation strategies counseling, technology transfer counseling services.  As a leader of the Japanese Group of Liu Shen & Associates, Dr. YUE has handled many cases for Japanese companies.  

 

Dr. YUE qualified as a patent attorney in 2004 and as an attorney at law in 2009. Before joining Liu Shen & Associates, Dr. YUE was working in a Japanese patent and law firm in Japan for nearly three years, handling patent prosecution and client counseling cases.


Dr. YUE received her Ph.D in Mechanics of Materials from Saga University, Japan. Dr. Yue also studied inJohnMarshallLawSchoolin 2013 and received a master of Law degree (LL. M).


HIGHLIGHTS:

Litigation & Invalidation Cases

-     Represented a Japanese financial equipment manufacturer in an patent infringement case, the non-infringement defense was accepted by the court, and won this case. Meanwhile, successfully invalidated all the plaintiff's patent rights through patent invalidation procedure.

-     Represented a Japanese famous electronics maker in a patent invalidation case, the client’s patent right was successfully held valid.

-     Represented a Japanese famous electronics maker in a design patent invalidation case, the client’s design patent right was successfully held valid.

-     Represented a Japanese parts manufacturer in a patent invalidation case, in the unfavorable situation that the related patents were challenged in EPO, successfully handle the Chinese invalidation case and the patent’s right was held valid.

-     Represented Siemens in an appealing case against Patent Reexamination and Invalidation Board, won at 2nd instance.

-     Represented Koito Manufacturing in a patent invalidation case, the client’s patent was held valid;

-     Represented Honda Motor in a patent invalidation case, the client’s patent was held valid.

-     Represented Kaneka Corporation in a patent invalidation case and administrative litigation, won the cases at both 1st and 2nd instances.


Counseling Cases

Helping  a Swedish baby products manufacturers to conduct patent right enforcement. Through investigation, evidence collection and infringement analysis, a warning letter was sent to the infringer, which finally made the infringer remove the infringing products from web store and made written commitment not to infringe in the future.

In a patent licensing negotiation related to OLED, provided patent validity analysis and infringement analysis to assist the client to take an advantageous position in patent licensing negotiation, and finally reach the license agreement successfully.  

In a patent licensing negotiation related to chemical film technology, provided patent validity analysis and infringement analysis, and handled patent related issues in the negotiation. A license agreement was successfully reached.

In a large joint-venture project in steel industry, provided legal counseling service in technology import and licensing, reviewed the main contract and IP related articles, provided advise on IP protection strategy.

In a glass product development, provided patent validity analysis and infringement analysis and advised on product design to help the client to avoid infringement risk.

In a patent licensing project in shipbuilding industry, provided legal counseling service in technology import and licensing, reviewed the license contract an provided advice on IP protection strategy.

In a patent enforcement project of a turbine maker, provided advice on IP protection strategy, reviewed the warning letter, provided legal counseling service in anti-unfair competition affair.

In a patent enforcement case of a steel enterprise, provided advice on IP protection strategy and negotiation strategy, reviewed the warning letter, provided legal counseling service in anti-unfair competition affair.


Articles, Presentations and International conferences

-     “The significance of introducing the principle of good faith into Patent Law and its possible application in practice”,  Beijing Lawyers Association WeChat account, September 28, 2021.

-     “Evidence collection in patent infringement litigation”, the Second Meeting of JETRO Chinese IPG, Shanghai, July 8, 2021.

-     “How to prove compensation? Find answer from 10 cases”, IPhouse WeChat account, June 25, 2021.

-     “Conflicting application system in China and related practice”, Patent, Vol. 74, No.1, 2021.

-     “What impact do TIER amendments have on technology transfer contracts”, MIP Japanese Buyers’ Guide 2019, October 2019.

-    “Keeping it confidential”(panel moderator), 2017 IPBC Asia, Tokyo, October, 2017.

-     “How to respond Office Actions”, JETRO Chinese IPG member training course, June 2017.

-     “Introduction to Interpretation on Several Issues Concerning the Application of Law in the Adjudication of Patent Infringement Dispute Cases (II)”, ACPAA-JPAA workshop, Beijing, May 2016.

-     “Strategies for successful patent prosecution” (panel moderator), MIP China International IP Forum, Beijing, June 12, 2014.


Activities

-    Council member of China Intellectual Property Society

-    Member of Q221 professional committee of AIPPI China  


WORKING LANGUAGE:

Chinese,English,Japanese

MEMBERSHIP:

All-China Lawyers Association (ACLA)

All-China Patent Agents Association (ACPAA)

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