Beijing

Patent

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

Chinese,English

Mr. Chen is an Attorney-at-Law and Patent Attorney with Liu, Shen & Associates. He qualified as an attorney-at-law in 2009 and as a patent attorney in 2011. Mr. Chen joined Liu, Shen & Associates in 2010. He specializes in patent prosecution, invalidation and infringement dispute resolutions before SIPO and the courts, and counseling on patent issues in the fields of Telecommunication; Optics; Electrics & Electronics; Computer Science; Internet Technology; Artificial Intelligence; Semiconductor technology among others. Mr. Chen is particularly experienced in evaluation of patent validity and relevance.

Mr. Chen achieved his bachelor degree in Optoelectronics Engineering from Huazhong University of Science and Technology in 2004;

Mr. Chen achieved his Ph.D in Optical Engineering from Huazhong University of Science and Technology in June 2009, and he also studied as a jointly trained Ph.D student in Electrical Engineering Department of University of California, Los Angeles (UCLA), USA in 2006 to 2007;

Mr. Chen also achieved his LL.M from China University of Political Science and Law in 2014.

1. Mr. Chen achieved the highest score in the patent bar qualification examination in 2011, and he regularly provides lectures on Chinese patent law and practice to clients, associates and other organizations.

2. Mr. Chen has dealt with lots of litigations including:

-      Samsung vs Huawei serial invalidation and administrative litigation cases in the field of telecommunications and mobile devices；

-      Samsung vs Huawei serial infringement cases in the field of telecommunications and mobile devices;

-      Samsung vs Immersion serial invalidation cases in the field of telecommunications and mobile devices;

-      Samsung vs Shanghai Kedou serial invalidation cases;

-      FLSmidth vs Doway infringement case and invalidation case;

-      Panasonic vs Guangdong Weiling invalidation case and administrative litigation;

-      BOE vs PRB administrative litigation;

-      Carl Zeiss vs PRB administrative litigation.

3. Publications

-      “Consistency between specification support and protection scope for claims with functional features” (Rewarded as Excellent Paper), Patent Examination and Patent High End Forum, 2012

-      “Claim construction in patent infringement litigation”, in “China: Managing the IP Lifecycle 2016/2017”, Globe Business Media Group, 2016

-      “Research on the liability of stopping patent infringement”, Dissertation for LL. M of China University of Political Science and Law, 2014

-     “How IP in China is changing”, AIPLA Daily Report, Managing Intellectual Property, 2017

-      “Damage Compensation Determination for Patent Infringement in a Recent Case”, News Letter of Liu, Shen & Associates, 2019

-      “Introduction to the Latest Amendments to the Guidelines for Patent Examination in China”, News Letter of Liu, Shen & Associates, 2019

All-China Patent Agents Association (ACPAA)

Beijing

Patent

Mechanical Engineering,Vehicle Engineering,Precision Instruments

Chinese,English

Mr. Sean CHEN joined our firm in 2007, mainly engaged in patent related IP fields, comprising patent application and prosecution, patent invalidation and disputes.

Mr. Sean CHEN is qualified as a patent attorney in 2008 and an attorney at law in 2009. Besides patent filing and prosecution, he has addressed many patent invalidations / infringement litigations for a number of international well-known enterprises.

Mr. CHEN received his bachelor’s degree in mechanical engineering and automation from Tsinghua University in 2002, and his Doctor's degree in material science and engineering from Tsinghua University in 2007. Mr. CHEN also obtained a L.L.M. degree in IP law from John Marshall Law School of United States in 2017.

Representative cases of Mr. Sean CHEN led and participated comprise:

Litigation

-     Dyson vs. Zhejiang Aike, representing Dyson, a design patent infringement case, a pretrial evidence preservation granted, win;

-     Tsann Kuen vs. UCC, representing UCC, a utility model infringement case, fully invalidated the utility model of Tsann Kuen, win;

-     Siempelkamp(an international known press enterprise) vs. a national press enterprise Y, representing the enterprise Y, two patent infringement cases, fully invalidated two patents of the plaintiff, win

-     Hanyu vs. Leili, a patent infringement case, representing Leili, win

Invalidation

-     Representing Dyson in dozens of invalidation cases and obtaining good results;

-     Representing a well-known international mobile company S to invalidate a design patent of a domestic company, win

-     Representing Leili (a well-known domestic motor company) in near 20 invalidation cases, win most cases

Consultation

-     IP due diligence before acquisition, as requested by a well-known international medical device enterprise M;

-     IP due diligence before investing medical device companies, as requested by venture capitals L and C;

-     Freedom To Operate analysis before launch of a medical device, as requested by a well-known international medical device company L, the work is divided into 10 sub-FTO cases, and a team with 12 members involved;

-     IP due diligence before merger and acquisition, as requested by an international known optic enterprise Z;

Academic activities

-     “Four cases and their lessons for utility models”, Managing Intellectual Property, China IP Focus 2013;

-     involved in the research project “Study of Several Issues regarding Patent Reexamination and Invalidation Procedure” in 2011 and involved in the research project “Study of Service Standard for Intellectual Property Analysis” in 2012, with both of the projects led by the State intellectual Property Office of the P.R.C.

All-China Lawyers Association (ACLA)

All-China Patent Agents Association (ACPAA)

Beijing

Patent

Bio & Pharmaceutical,Life Science,Chemical Engineering

Chinese,English,Japanese

Dr. Cao Lili is a partner of Liu, Shen & Associates. She has long focused her practice on providing whole-process patent portfolio management and patent enforcement, and has extensive experience in strategically managing patent portfolios for multinational clients to help clients increase the value of their IP assets. Dr. Cao mainly focus on patent prosecution, re-examination, patent invalidation, IP litigation for clients such as GSK, Pfizer, Sanofi, Merck, Ono Pharmaceutical, Takeda Pharmaceutical.

Dr. CAO also served domestic innovative companies, deeply involved in the patent mining, global patent portfolio, global patent prosecution and so on. Further, Dr. Cao also participated in non-litigation services such as legal counseling, FTO, and due diligence.

Before joining Liu, Shen & Associates, Dr. Cao worked in the medical institute and marketing department of Pharmaceutical Group for 4 years. During this period, she worked on R&D, Investigation Research before Project Approval, Regulatory Affairs, Trademark Affairs, Advertising Planning, Market Investigation and Forecast.

EDUCATION

Dr. Cao studied in the Institute of Materia Medica (IMM), Chinese Academy of Medical Sciences & Peking Union Medical College and Shenyang Pharmaceutical University, and received her Ph.D. in 2005. She received further training on American patent law and practice at the John Marshall Law School in the United States in 2010. 

Representative cases that Ms. Cao has participated include

-     Takeda Pharmaceutical Company Limited vs. Zhejiang Yongning Pharmaceutical Factory at the stage of invalidation and court (the Intermediate court, higher court and supreme court) procedures, representing Takeda;

-     Jiangsu Xiansheng vs. LI Ping, at the stage of invalidation, representing Jiangsu Xianshen;

-     BPSI Holdings LLC vs. Tianjin ILE Pharmaceutical Materials Co. Ltd at the stage of invalidation and court (the Intermediate court and higher court) procedures, representing BPSI;

-     Pfizer vs. Beijing Pulude Pharmaceutical Science and Technology at the stage of invalidation, representing Pfizer;

-     Boehringer Ingelheim GmbH (BI, German) vs. PRB (China), Third Party: ZHANG Ying, representing BI at the stage of court (the Intermediate court and higher court) procedures.

Publications that Ms. Cao has authored include

-     “How to determine novelty conferring features”, Managing Intellectual Property, March/April 2015;

-     “Overview of regulatory reform in China”, IAM Life Sciences, 2018.

QUALIFICATIONS

PRC Bar Qualification

Member of the PRC Patent Bar

All-China Lawyers Association (ACLA)

All-China Patent Agents Association (ACPAA)

Beijing

Patent

Mechanical Engineering,Vehicle Engineering,Medical Devices

Chinese,English

EDUCATION:

−     Master of Mechanical Engineering                                          Tsinghua University

−     Bachelor of Mechanical Engineering                                       Beihang University

Mr. Chen joined Liu, Shen & Associates in 2014. He specializes in patent prosecution, re-examination, patent invalidation, IP litigation, and client counseling with a focus on medical instruments, MEMS, sensors, electrical connecters, etc.

Mr. Chen became a qualified patent attorney in 2015, and is now a registered patent agent in China. Mr. Chen is a litigation agent recommended by the Supreme Court and also by the All-China Patent Attorneys Association.

Mr. Chen has participated in several patent lawsuits including patent infringement litigations and patent invalidation proceedings. He has focused on patent related cases such as patent infringement analysis, patent validity analysis, FTO analysis and prior art search and analysis.

Main Clients Mr. Chen Worked for:

−     TE Connectivity, Qualcomm Incorporated, 3M Innovation, General Motors, Leili Group, Canadian Solar, Shagang Group, etc.

Main Project Experience:

−     Thin film thermocouple sensors for monitoring cutting temperature

−     Research on the cutting mechanism of crank flying shearer (CISDI)

−     Finite element analysis of cutting temperature fields (MHI)

−     Experimental investigation of titanium alloys machinibility

−     Roller type hydraulic pump and push type linear motor

Representative cases that Mr. Chen has led or participated include:

1. Infringement Litigations

−     3M Innovation v. Shinva Co. - serial patent infringement litigations, in relation to two invention patents and one design patent, Mr. Chen represents the plaintiff 3M Innovation - the case won the 1^st trial - Shanghai IP Court ruled that the defendant compensated 3M Innovation for a total damage of RMB 10 million and reasonable expenses of RMB 650,000 - the 2^nd trial is currently underway;

−     3M Innovation v. Sisa Co. - serial patent infringement litigations, in relation to two invention patents, Mr. Chen represents the plaintiff 3M Innovation - the case won the 1^st trial - Zhengzhou IP Court ruled that the defendant compensated 3M Innovation for a total damage of RMB 1 million (the defendant not appealed);

−     Leili Co. v. Zhongjingke Co. - patent infringement litigation, Mr. Chen represents the plaintiff Leili Co. - the case won the 1^st and 2^nd trials - Suzhou IP Court ruled that the defendant compensated Leili for a total damage of RMB 1 million, and the IP Court of the Supreme Court upheld the judgment;

−     Rena GmbH v. Canadian Solar - patent infringement litigations, Mr. Chen represents the defendant Canadian Solar - the involved patent was wholly invalidated in PRB through the invalidation proceeding, based on this, Suzhou Intermediate Court ruled that Rena's lawsuit was rejected, and the Jiangsu Higher Court upheld the ruling.

2. Administrative Litigations

−     Hanyu Co. v. CNIPA - administrative litigation in relation to invalidation of invention patent right, Mr. Chen represents the third party Leili Co. (winner in the invalidation proceeding) - the case won the 1^st trial - Beijing IP Court ruled that the appealed Decision was upheld, and the IP Court of the Supreme Court also upheld the judgment in the 2^nd trial;

−     Rena GmbH v. CNIPA - administrative litigation in relation to invalidation of invention patent right, Mr. Chen represents the third party Canadian Solar (winner in the invalidation proceeding) - the case won the 1^st trial - Beijing IP Court ruled that the appealed Decision was upheld - the 2^nd trial is currently underway;

−     Apple Inc. v. CNIPA - administrative litigation in relation to invalidation of invention patent right, Mr. Chen represents the third party Qualcomm Incorporated (winner in the invalidation proceeding) - the 1^st trial is currently underway;

3. Invalidation Proceedings

1)    Representing the Patent Owner

−     Qualcomm Incorporated v. Apple Inc. (ZL201080006270.3), Mr. Chen in this case represents the patentee Qualcomm Incorporated - the patent right was wholly upheld by PRB;

−     AUX Co. v. Midea Co. (ZL201620666033.4), Mr. Chen in this case represents the patentee AUX Co. - the patent right was upheld by PRB on a basis of the amended claims;

−     Leili Co. v. Zhongjingke Co. (ZL201620056814.1), Mr. Chen in the serial cases represents the patentee Leili Co. - the patent right was upheld twice by PRB in both of the invalidation proceedings;

−     Leili Co. v. Hanyu Co. (ZL201520739827.4), Mr. Chen in this case represents the patentee Leili Co. - the patent right was wholly upheld by PRB;

−     Leili Co. v. Hanyu Co. (ZL201220152493.7), Mr. Chen in this case represents the patentee Leili Co. - the patent right was upheld by PRB on a basis of the amended claims;

−     Leili Co. v. Chaowen Weng (ZL201720667374.8), Mr. Chen in this case represents the patentee Leili Co. - the patent right was upheld by PRB on a basis of the amended claims;

−     Leili Co. v. Zhongjingke Co. (ZL201820008400.0), Mr. Chen in this case represents the patentee Leili Co. - the patent right was upheld by PRB on a basis of the amended claims;

2)     Representing the Petitioner

−     Canadian Solar v. Rena GmbH (ZL200480043087.5), Mr. Chen in this case represents the petitioner Canadian Solar - the patent right was wholly invalidated by PRB;

−     Xi Zhang v. Alibaba Co. (ZL201620847681.X), Mr. Chen in this case represents the petitioner Xi Zhang - the patent right was wholly invalidated by PRB;

−     Leili Co. v. Zhongjingke Co. (ZL201620619693.7), Mr. Chen in this case represents the petitioner Leili Co. - the patent right was wholly invalidated by PRB;

−     Otti Co. v. Recticel NV (ZL201080055638.5), Mr. Chen in this case represents the petitioner Otti Co. - the patent right was wholly invalidated by PRB.

4. Legal Opinions

Mr. Chen provides legal opinions for many clients, in relation to:

−     Patent infringements analysis and opinions - 20+ cases;

−     Patent validity analysis and opinions - 30+ cases;

−     Free-to-operate (FTO) and early warnings - 10+ cases; and

−     Prior art search & analysis, IP due diligence, etc. - 10+ cases.

5. Speeches & Articles

The articles written by Mr. Chen in recent years include:

−     “The keys to success in patent litigation” - published on IAM China: Managing the IP Lifecycle 2021; and

−     “How to judge the ‘sufficiency of disclosure in specification’ issue? - The latest criterion from the Supreme Court” - published on Liu Shen Newsletter July 2020.

Presentations that Mr. Chen has presented include:

−     An English speech entitled “Claim Drafting In Light Of Litigation” in 2018 AIPPI China IP Youth Seminar.

All-China Patent Attorneys Association (ACPAA)

Chinese Mechanical Engineering Society (CMES)

Beijing

Patent

Mechanical Engineering

Chinese,English

Mr. Chen joined Liu, Shen & Associates in 2008 and is a patent attorney and qualified as an attorney at law. He specializes in patent prosecution, re-examination, patent invalidation, IP litigation, and client counseling with a focus on mechanical engineering.

Mr. Chen has obtained a bachelor degree in mechanical engineering and doctor degree in material processing engineering from Tsinghua University. 

Representative cases of Mr. Yaojian CHEN comprise:

Invalidation

- Representing an Australian company in three invalidation cases, win all;

- Representing GI in defending a key patent four times, win all;

- Representing a German Company in two invalidation cases, win both.

Litigation

- Representing a domestic suitcase Company in defending an infringement case, successfully invalidated the Patent, the other party dropped the infringement case. Winning the subsequent first instance and second instance of the administrative litigation.

Beijing

Patent

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

Chinese,English

Ms. Chen was qualified as a patent attorney in 2010 and joined in Liu, Shen & Associates in 2011. She specializes in patent prosecution, re-examination, and client counseling with a focus on electrical engineering, automatic control, electronics, computer science, and telecommunication.

Ms. Chen had a master's degree from Beijing Jiaotong University in 2004. Before joining this firm, Ms. Chen worked as a patent engineer and a patent attorney at Lehman Law Firm for five years. 

Ms. Chen handles a number of cases relating to patent examination, reexamination, invalidation, infringement lawsuit and other IP related matters for Samsung Electronics, Google and several domestic companies, especially, patent cases related to Standard Essential Patents (SEPs).

Representative cases:

-     2020-2023, in several patent licensing negotiations and related disputes between a foreign company and certain big companies respectively, representing the foreign company to process patent analysis and selection, invalidation request drafting and filing, etc.

-     2016-2019, in a series of patent infringement and invalidation cases between Samsung Electronics V. Huawei, representing Samsung Electronics to participate in screening SEP and NSEP patents, patent relevance & stability analysis, patent strength analysis, SEP patent essentiality analysis etc.

Representative Publications:

-    “Introduction to standardization organizations related to SEP”, published by WeChat public account “Liu Shen & Associates”, December 2023.

-    “What is a scope of a functional limitation in China”, published by Asia IP, May 2018.

All-China Patent Agents Association (ACPAA)

Beijing

Patent

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

Chinese,English

Ms. Chen joined Liu, Shen & Associates in 2010 and became a qualified patent attorney in 2012. She specializes in patent prosecution, re-examination, patent invalidation, and client counseling with a focus on electrical engineering, automatic control, telecommunication, electronics, computer science as well as Internet & e-commerce.

Ms. Chen had a master's degree from the University of Melbourne in 2003. Before joining this firm, Ms. Chen worked as an R&D Engineer at Potevio Institute of Technology Co., Ltd. and Beijing Northern Fiberhome Technologies Co., Ltd. for over six years. 

All-China Patent Agents Association (ACPAA)

Beijing

Patent

Electrical Engineering,Mechanical Engineering,Vehicle Engineering

Chinese,English

EDUCATION:

Department of Thermal Engineering, Tsinghua University     Master Degree

Department of Thermal Engineering, Tsinghua University     Bachelor Degree

Ms. Chen joined Liu, Shen & Associates in 2012. She was admitted as a patent attorney in 2012 and admitted as a Chinese lawyer in 2015.

Ms. Chen specializes in patent drafting, prosecution, re-examination, patent invalidation, IP litigation, and counseling with a focus on mechanical engineering, automotive engineering, thermal engineering, turbomachinery, electrical and machinery equipment, electrical connector, etc. 

Main Clients Ms. Chen Worked for:

-      General Motors, TE Connectivity, VALEO, Black & Decker, Lego, SKF

Ms. Chen handled a large amount of patent works since she joined Liu, Shen & Associates in 2012, including 30+ patent drafting, 200+ patent applications, responding 500+ office actions for applications in China and PCT applications entering China.

Representative cases that Ms. Chen has led or participated are as follows.

I.     Patent Invalidation

1.    HanYu Corp. V. Leili Motor Co. Ltd. Patent Invalidation procedure (ZL201520719202.1), Ms. Chen is attorney for the patentee, the patent right is maintained to be valid by PRB.

2.    HanYu Corp. V. Leili Motor Co. Ltd. Patent Invalidation procedure (ZL201420501051.8), Ms. Chen is attorney for the patentee, the patent right is maintained to be valid by PRB

3.    BMC Medical Co., Ltd V. ResMed R&D Germany GmbH Patent Invalidation procedure (ZL.01210316593.3), Ms. Chen is attorney for the patentee, the patent right is maintained to be valid by PRB

4.    HanYu Corp. V. Leili Motor Co. Ltd. Patent Invalidation procedure (ZL201520588905.5), Ms. Chen is attorney for the patentee, the patent right is maintained to be valid under amendments by PRB.

5.    Micron Semiconductor Shanghai Co. LTD V. UMC. Patent Invalidation procedure (ZL02127094.5), Ms. Chen is attorney for the patentee, this case is currently under examination by PRB.

6.    Jiaoyang XIN V. Jinhua integrated circuit Co. LTD Patent Invalidation procedure (ZL200310102865.0), Ms. Chen is attorney for the patentee, this case is currently under examination by PRB.

7.    AUX Group V. Midea Co. LTD Patent Invalidation procedure (ZL200710026747.4), Ms. Chen is attorney for the petitioner, this case is currently under examination by PRB.

II.    Civil Litigation

1. IMADA Co., Ltd V. Xufu Electronic Technology Co., Ltd, Suzhou intermediate people's court, representing the plaintiff (patentee);

The infringement litigation was settled before the Court and the defendant paid for the plaintiff’s loss and agreed to stop the infringing activities.

2. Midea Co. LTD V. AUX Group, 2 cases in Nanjing Intermediate People’s Court, representing the defendant;

The cases are still pending.

3. Midea Co. LTD V. AUX Group, 9 cases in Guangzhou Intellectual Property Court, representing the defendant;

The cases are still pending.

III.   Other cases

-      30+ patent drafting;

-      10+ patent infringement analysis or validity analysis for domestic and foreign companies;

-      IP Service for a vehicle company, including:

Evaluating patentability for technical solutions;

Mining patentable technical points;

Conducting FTO Search and Analysis

Suggesting patent layout;

All-China Lawyers Association (ACLA)

All-China Patent Attorneys Association (ACPAA)

Beijing

Patent

Electrooptical Technology,Mechanical Engineering,Semiconductor

Chinese,English

EDUCATION:

Optical Science & Engineering, Fudan University, Bachelor Degree

Applied Physics, Tongji University, Master Degree

Ms. Cheng joined Liu, Shen & Associates in October, 2016 and became a qualified patent attorney in 2017. She specializes in patent drafting, prosecution, re-examination, patent analysis on relevance and validity, and client counseling with a focus on semiconductor, electrooptical technology, display device, quantum dot, mechanical engineering, etc.

Ms. Cheng received training from Y.P.LEE & MOCK, South Korea from May to August in 2023.

Ms. Cheng worked at China Aerospace Science and Technology Corporation as a system engineer from July, 2013 to September, 2016, involving in the research and development of relevant components of the spaceship and the space station.

Representative Patent Analysis Projects:

-      Conducting patent analysis on relevance and validity for a well-known multinational enterprise

-      Conducting patent analysis on allowability of patent applications for a well-known Internet enterprise

Representative Research:

In 2021, Ms. Cheng participated in the project of revision and demonstration of the guidelines for patent examination, entrusted by China National Intellectual Property Administration, and was specifically responsible for the revision and demonstration of contents related to partial design, with a draft of proposed revisions and a written demonstration report as the work products.

Representative Publications:

-      “The effect of China’s patent law on partial design applications”, Managing IP, Autumn 2022, Issue 295

-      “New Development of Deferral of Examination for Invention Application in China”, Liu-Shen newsletter, November 2023

All-China Patent Agents Association (ACPAA)