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.
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