Beijing
Patent
Medical Devices,Bio & Pharmaceutical,Life Science,Chemical Engineering
Chinese,English
Dr. Zou assists clients in matters involving all types of intellectual property: patents, trade secrets, and unfair competition. He focuses mainly on intellectual property strategic consulting, patent portfolio management, patent infringement, validity, and freedom-to-operate opinions, due diligence, and dispute resolution; representing many multinational pharmaceutical companies, small and medium-sized innovative companies in handling intellectual property, drug regulatory matters and market admission related legal affairs.
The wide variety of technical areas in which Dr. Zou has obtained and enforced patent protection for clients include pharmacy, chemistry, and biotechnologies, as well as mechanical systems and medical devices.
Dr. Zou started his IP career with Liu Shen in 2003. Prior to his legal profession, Dr. Zou was engaged in research and development in pharmaceutical research and diagnostic method development, he is very familiar with the technical areas of pharmaceuticals, nucleic acid, pesticide, macromolecule modification, and molecular diagnostics.
EDUCATION &TRAINING
Dr. Zou obtained his Ph.D. in pharmaceutical chemistry at the Chinese Academy of Military Medical Science (China, 2000), and his Master of Laws in Intellectual Property Law from John Marshall Law School (the U.S., 2010).
Representative cases that Dr. Zou has led or participated include
- Defending titropium bromide patent portfolio for Boehringer Ingelheim (German) in the invalidation proceedings and in court procedures (5 patents involved, 2006-2012);
- Defending Candesartan Cilexetil patent portfolio for Takeda (Japan) in the invalidation proceedings and in court procedures ( 2 patents involved, 2007-2012);
- Representing Albis in Albis (Germany) vs. FTP China, invalidation & infringement cases (settled, 2012-2014);
- Representing Grundfos in Grundfos (Denmark) vs. Zhejiang Qianyuan (China), infringement case, the Beijing High Court (infringement found and damage awarded, 2013-2014);
- Representing Shanghai Cathay Biotech in Shanghai Cathay Biotech vs. Hilead Biotech (2013-2014) and won three administrative cases;
- Representing Xiamen Hongfa in Xiamen Hongfa (China) vs. Dou Xiuzhi (2013-2014) and winning two invalidation cases;
- Representing SEB in SEB (France) vs. Wenzhou Household electrical (2013-2014) and winning the invalidation case;
- Representing Shenzhen MINDRAY in Shenzhen MINDRAY vs. Edan (2013-2014) and winning in invalidation & administrative litigation;
- Representing Hongkong PolyU in Hongkong PolyU vs. Ritter machinery (2014) and winning the invalidation case;
- Representing Pfizer and successfully defending a polymorph case (2019).
Publications include
- Claim definitions Undergoing Change, China IP Focus 2014, Managing Intellectual Property, 2014 [Co-authored]
- How to determine novelty-conferring features for a medical use claim, China IP Focus 2015, Managing Intellectual Property, 2015 [Co-authored]
- Disclosure requirements undergoing change, IAM Life Science (2015) [Co-authored]
- How to make sure your patent is properly supported in China, March 2016 [Co-author]
- Implications of recent life sciences cases in China, IAM Life Science March 2017 [Co-authored]
- Overview of regulatory reform in China, IAM Life Sciences, 2018. [Co-authored]
- Patent practice: recent developments in life sciences in China, IAM Life Sciences 2019, pp. 51-55 [Co-authored]
- Doctrine of equivalents for life science patents in China, IAM Life Sciences 2020, pp. 53-57 [Co-authored]
Presentation that Dr. ZOU has publicly made include
- Overview of IP Enforcement in China, 2012 Summit on Global IP Strategy for Corporate Counsel, New York, USA, December 2012
- Astrazeneca case, Prometheus case and Myriad case in a Chinese patent attorney’s perspective, MIP, London, UK, April 2013
- Chinese Patent practice in Pharmaceutical field, MIP, Beijing, China, June 2013
- Update on case development in life science field, IP in Asia Forum, Silicon Valley & Seattle, USA, May 2014
- Second medical use protection in China, the 5th China IP Symposium (Chengdu) 2015, Chengdu, China, November 2015;
- Eligible subject matter & Invalidation Proceedings in China, the 253rd ACS National Meeting, San Francisco, CA, April 2017
- Must-know Chinese Patent Practice, 2018 CABA Investment & Entrepreneurship Symposium, Massachusetts, September 2018
All-China Patent Agents Association (ACPAA)
All China Lawyers Association (ACLA)
Association Internationale pour la Protection de la Propriété Intellectuelle (AIPPI)
Beijing
Patent
Telecommunication
Chinese,English
As a patent attorney and attorney-at-law representing clients in mechatronics, mechanical automation control, automotive new energy, telecommunication technology, MEMS chips technology, Michael Xiang ZHANG helps companies identify, develop and implement strategies for protecting rights to their technology to enable them to achieve their business goals.
Michael focuses his practice on patent, trade secret and other intellectual property related litigations, including: patent invalidation, patent invalidation administrative litigation, patent infringement litigation, patent ownership dispute litigation, trade secret misappropriation litigation, and pre-litigation evaluation and risk prevention. He represents clients from multinational corporations to domestic start-ups, participating in hundreds of litigations, most of which are influential and cutting edge cases in areas of standard essential patent (SEP), patent disputes overlapped with IPO, software infringement and so on. Quite a few of the cases represented by Michael have been selected as the annual national typical intellectual property cases by the Supreme People's Court (SPC), the national outstanding foreign-related cases by the All China Lawyers Association, the annual typical intellectual property cases by the Higher People's Court, and the annual typical cases of patent invalidation by the China Intellectual Property Administration (CNIPA).
Michael joined Liu, Shen & Associates in 2007. Before that he held a position as a product manager in a multinational company. Michael is active and frequently gives speeches at meetings and seminars organized by various IP platforms for domestic enterprises and foreign clients. He was appointed as the counsel of the government in 2020. Michael also has co-published a book “Typical FRAND Litigation Cases”.
Michael graduated from Tianjin University with a major in mechanical electronics, and double majored in technical economics and a master's degree in mechanical manufacturing and automation. He accomplished his master courses of civil and commercial law in the China University of Political Science and Law and obtained a LL.M degree in intellectual property law from John Marshall Law School in US.
Representative cases
- Typical SEP infringement cases between two giant mobile phone companies Huawei and Samsung (in 2016-2019): Representing Samsung, Michael lead a team working on 40+ telecommunication standard essential patent (SEP) infringement cases and 40+ corresponding patent invalidation cases in parallel, which contribute to a settlement between the two parties, reaching a global cross license agreement. These cases are greatly influential on the telecommunication field, guiding future’s negotiations between telecommunication SEP licensors and licensees in a legitimate and effective manner. Some of the cases were listed as one of top 50 typical national intellectual property judicial cases in China in 2019 by the Supreme People's Court, one of top 10 typical intellectual property judicial cases in Beijing in 2019 by the Beijing Higher People's Court, one of top 10 typical intellectual property judicial cases in Guangdong Province in 2019 by the Guangdong Higher People's Court, one of top 10 typical intellectual property judicial cases in Shenzhen in 2019 by the Shenzhen Intermediate People's Court, one of top 10 typical innovative intellectual property judicial cases in Guangzhou by the Guangzhou IP Court, one of top 10 typical intellectual property judicial cases in Fujian Province in 2018 by the Fujian Higher People's Court, and one of top 10 typical national patent invalidation cases in 2018 by CNIPA.
- Typical case of trade secret misappropriation (in 2020-2022): Michael represents a large environmental field company against a listed company and a senior executive for trade secret misappropriation, wherein a compensation of nearly 100 million RMB was judged by the court in the first instance. This case of first instance was selected as the typical IP judicial case of Nanjing court in the years of 2017-2021, which has great guidance on how to judge the trade secret misappropriation for the common illegal situation that employees in the previous company were intentionally offered a new job to form another R&D team in the new company.
- Typical IP litigations against an IPO company of Science and Technology Innovation Board (in 2020-2022): Representing a high-tech company Goer Co., Ltd. against Suzhou Minxin Microelectronics Technology Co., Ltd. during its period of launching IPO, Michael lead his team to work on filing a series of actions before the courts, including disputes on patent ownership, patent invalidation, patent infringement and unfair competition. The related cases were selected by the media as one of the top 10 hot cases in IPO area in 2020, which had great significance in the IP risk management area which may be determinative on the success/failure for a high-tech company to be launched in Science and Technology Innovation Board.
- Typical patent infringement case in the field of automobile new energy (in 2020-2021): Representing a high-tech company TAFEL to defend in a patent infringement case against the company CATL (largest company in the field of automobile new energy in domestic China), wherein CATL claimed over 100 million RMB compensation, Michael helped the client to minimize the loss in the judicial procedure. It is for the first time in this case that the court established the rule of calculating the damages in the field of automobile new energy. This case was selected as one of top 10 typical intellectual property judicial cases in Fujian Province in 2021 and one of top 10 typical patent invalidation cases before CNIPA in 2021.
- Typical patent infringement case in the field of code-scanning payment (in 2020-2021): Representing a domestic company against the Alibaba company, Apple company, etc., Michael participated in the patent dispute cases relating to a two-dimensional code scanning payment technology, which is utilized as an essential transact manner for Chinese daily life, and the trial of which have been publicly observed by around 1 million audience both on-line and offline.
- Typical case of standard essential patent license fee dispute (in 2018-2019): Michael participated in a standard essential patent license fee dispute case, which involves billions of claimed license fee. The case was selected as an outstanding transaction in 2019 by the institute of Commercial Law.
- Typical foreign-related case of patent infringement of mobile phone operating software: (in 2013-2020): Michael represented an international company to defend in a patent infringement litigation, involving more than 100 million RMB compensation to be sued. The case has great significance on the rule of software infringement establishment and the rule of inventiveness judgement on a mobile phone operating software patent. The case was selected as one of top 90 outstanding cases of foreign-related litigation in China and published in the book Outstanding Cases of Foreign-related Legal Services published in 2021.
Government-related honors
- In 2022, he was appointed as one of the first batch of professionals in the third-party supervision and evaluation mechanism by the Beijing Third-party Supervision and Evaluation Mechanism of Compliance of Enterprises Involved in the Case.
- In 2022, he was selected by Beijing Intellectual Property Office as an expert in Beijing intellectual property expert database.
- In 2021, he was selected as a leading attorney of Haidian district by the Judicial Bureau of Haidian District of Beijing.
- In 2021, he was invited by Southwest University of Political Science and Law as a lecturer in intellectual property law.
- In 2020, he was selected as an excellent lawyer by the Judicial Bureau of Haidian District of Beijing.
- In 2020, he was selected as an honorary lecturer by China Intellectual Property Publishing House.
- In 2019, he was selected as a foreign-related intellectual property expert by the Judicial Bureau of Haidian District of Beijing.
- In 2019, he was selected as a foreign-related intellectual property expert by Intellectual Property Protection Center of Jiangsu Province.
- In 2019, he was invited as a lecturer for the patent litigation attorneys by the All-China Patent Agents Association.
Publications
- “Coping with Patent Ownership Disputes Caused by New Employees”, Beijing Intellectual Property Public Service Platform, 2022.
- “Loss and Recovery of Intellectual Property Rights under the Influence of Epidemic”, official website of All-China Lawyers Association, 2020.
- “The International Comparative Legal Guide to: Patents 2019: Chapter 10 China”, Published by Global Legal Group.
- “FRAND Classical Cases”, book counsel, science press, 2018.
- “Standard Essential Patents Royalty Calculation in Telecommunication Industry”, Asia IP annual, 2018.
- “China’s evolving patent system”, AIPLA annual 2015.
- “Suggestions on Patent Draft from Aspect of Patent Infringement”, China IP Summit Forum 2014.
- “Case Study on Supporting Issue of A26.4 of Chinese Patent Law”, China IP Summit Forum 2012 (first prize), 2012.
- “Making Most of the Patent Law”, Managing IP, China IP Focus 2011.
- “Case study on Amendment Issue of A33 of Chinese Patent Law”, China IP Summit Forum 2010.
Presentations
- "Coping with Key Sections in Patent Litigation", Conference sponsored by Guangxi Market Supervision Bureau, 2022.
- "Patent Litigation Process, Strategies and Skills", on-line training for Litigation agent sponsored by All-China Patent Agents Association, 2021.
- "Interpretation of Punitive Compensation System for Patent Infringement", "IP Expert Talk" hold by China Intellectual Property Press, 2020.
- "Enterprise Intellectual Property Management and Risk Prevention", sponsored by Guangdong Intellectual Property Office, 2020.
- "Litigation process improvement for patent infringement case relating punitive damages", the 7th China Innovation and Intellectual Property Protection Forum, China Intellectual Property Law Research Association, and the Supreme People's Court Intellectual Property Judicial Protection Theory Research Center (Renmin University of China), etc., 2019.
- “Standard Essential Patent FRAND Royalty Rate Setting”, The 12th China Mainland and Taiwan Patent Forum, 2019.
- “Standard Essential Patent Litigation”, All-China Patent Agents Association, 2019
- "Deal with Malicious Patent Litigation ", the 6th China Innovation and Intellectual Property Protection Forum, China Intellectual Property Law Research Association, and the Supreme People's Court Intellectual Property Judicial Protection Theory Research Center (Renmin University of China), etc., 2018.
- "Evidence Exchange Rules - Attorney Perspective", the second "Sanzhi IP Forum", jointly organized by Zhi Zhi Hui, Zhi Chan li, and Zhi Chan Bao, co-organized by Jia Xing Intermediate People's Court, 2017.
- “Discussion on Non-obviousness in Inventiveness Evaluation”, Seminar of Idea Exchange among Beijing courts, Patent Office of China and Patent Agency, 2015.
- “Use of Utility Model in China”, Seminar of Patent Practice in China held by Liu, Shen & Associates in Chicago of US, 2015.
- “Study on Supporting Issue under Patent Law”, China IP Summit Forum, 2012.
Government projects
- "Zhongguancun Intellectual Property Service Keeper Project", Zhongguancun Intellectual Property Promotion Center, 2021.
- "Capital Intellectual Property International Exchange and Cooperation Base Construction Project", Beijing Intellectual Property Office, 2020.
- “Collection of Intellectual Property Cases of Leading Enterprises of Zhongguancun", Zhongguancun Intellectual Property Promotion Center, 2019.
- “Feasibility of China Joining Patent Law Treaty”, China Intellectual Property Administration (CNIPA), 2015.
- “Reform of Official Patent Fees”, China Intellectual Property Administration (CNIPA), 2015.
All-China Lawyers Association (ACLA)
All-China Patent Agents Association (ACPAA)
Beijing Lawyers Association
China Service Trade Association
Beijing
Patent
Material Science,Chemical Engineering
Chinese,English
Mr. Zhan joined Liu, Shen & Associates in 2011. He specializes in patent prosecution, re-examination, patent invalidation, IP litigation, and client counseling with a focus on Petrochemical Engineering, Material Science, Polymer Chemistry and Chemical Engineering. Before joining Liu, Shen & Associates, he worded as a patent examiner of SIPO for more than four years and examined more than 500 patents. He also was a teacher of the new examiner and a quality inspector in his department when working in SIPO.
Mr. Zhan got his qualification as a patent attorney in 2010. He has participated in several patent lawsuits including patent infringement and patent invalidation. He has been leading patent licensing counseling, patent invalidation and pre-litigation analysis in the firm.
Mr. Zhan studied in Tsinghua university and majored in Marterial Science and Engineering. He got his Bachelor degree in Tsinghua university on July, 2005 and his Master degree on July, 2007.
Representative cases that Mr. Zhan has participated include
Arkema (France) V. Mexichem Amanco (Mexico), in the patent invalidation case of Arkema (France) V. Mexichem Amanco (Mexico), Mr. Zhan and his colleagues represented Arkema and finally invalidated the patent right of Mexichem Amanco and won the case in the first instance at Beijing No.1 Intermediate Court.
Beijing
Patent
Material Science,Semiconductor
Chinese,English
Mr. Zhang joined Liu, Shen & Associates in 2001. He specializes in patent prosecution, re-examination, patent invalidation, IP litigation, and so on with a focus on semiconductor device, display device, office equipment, home appliance, secondary battery, HDD, etc.
Mr. Zhang became a qualified patent attorney in 2006. He has handled many cases of patent prosecutions, patent reexaminations, patent invalidations, and patent administrative lawsuits, and participated in many cases of patent stability analyses, patent infringement analyses, and so on.
Mr. Zhang had his PhD degree fromTsinghuaUniversityin 2001. He joined the law degree training program jointly provided by China University of Political Science and Law and theJohnMarshallLawSchool,Chicago,USAfrom 2005 to 2007, and got his LLM degree.
Representative cases:
- Delphi Laser Co., Ltd vs. HAMAMATSU PHOTONICS KK in patent invalidation and the following administrative litigation, representing Delphi Laser
- A domestic printing-supplies company F vs. an internationally known electronic company S in patent invalidation, representing company S
- An internationally known electronic technology company A vs. an internationally known communication company Q in patent invalidation, representing company Q
- A patent invalidation case of Kaneka Corporation, representing Kaneka Corporation
- Patent validity analysis for an internally known television company S
- Invalidity analysis on a semiconductor device patent of a competitor, for an internationally known electronic company S
- Infringement analysis on a computer product in litigation and invalidity analyses on an associated patent, for an internationally known electronic company S
- Infringement analysis and validity analysis on a patent of multilayer ceramic electronic components, for an internationally known electronic company S
- Invalidation request against a patent of LED package and manufacturing method therefor of a competitor, for an internationally known electronic company S
- Infringement analysis and validity analysis on a patent of a hinge of a foldable electronic device, for an internationally known electronic company
- Infringement analysis and validity analysis on a patent of IC chip, for an internationally known chip company
- Doing search on and indexing patents of graphene films, for a Japanese auto company
Academic papers:
- "Sufficient disclosure issue in China", Asia IP, 2016, 8(10): 36
- "Brief analysis of similarities and differences in determining inventiveness of patent between China and the United States)”, Official account of WeChat of Liu, Shen and Associates, 2023.
All-China Patent Agents Association (ACPAA)
Association Internationale pour la Protection de la Propriété Intellectuelle (AIPPI)
Beijing
Patent
Telecommunication,Computer Science,Internet Technology,E-commerce,Artificial Intelligence,Big Data Processing,Electronics Engineering,Medical Devices
Chinese,English
Mr. Zhang joined Liu, Shen & Associates in 2007 and became a qualified patent attorney in 2009.
Mr. Zhang specializes in patent prosecution, re-examination, patent invalidation, IP litigation, and client counseling with a focus on medical device, electrical engineering, semiconductor, automatic control, telecommunication, electronics, computer science as well as Internet. Also, Mr. Zhang has assisted Chinese applicants in patent application filing and prosecution with foreign patent offices, such as USPTO, EPO
Mr. Zhang has participated in patent licensing counseling, patent invalidation and pre-litigation analysis in the firm.
Mr. Zhang obtained a bachelor degree and a master degree from Zhejiang University in 2002 and 2005, respectively. Before joining this firm, Mr. Zhang worked as an engineer at GE Healthcare Group for two years.
Mr. Zhang further went to summer school on IP IN EUROPE in university of STRASBOURG of France in 2016.
REPRESENTATIVE CASES
1. VOICEAGE CORPORATION v. ZTE CORP., patent invalidation, representing the patentee. The Board held the patent valid.
2. HANGXIAOGANGGOU LTD. v. ZHEJIANG OULAGANGJIEGOU LTD, patent invalidation, representing the patentee. The Board held the patent valid.
3. Electronics and Telecommunications Research Institute v. GUO DONGMEI, patent invalidation, representing the patentee. The Board held the patent valid.
4. CREAFORM INC. v. GUO SHUAI, patent invalidation, representing the patentee. The Board does not make the decision yet.
5. Siemens v. Patent Reexamination Board of the SIPO (2017), patent administrative action, Beijing First Intermediate Court. This case is in progress.
All-China Patent Agents Association (ACPAA)
Beijing
Patent
Mechanical Engineering,Vehicle Engineering,Medical Devices
Chinese,English,German
Mr. Zhang graduated from Technical University of Clausthal in Germany with a master's degree (Diplom-Ingenieur) in 2010 and then worked for Sany Electric Company for a year and participated in the research and development of wind turbines there.
Mr. Zhang joined Liu, Shen & Associates in 2011. Mr. Zhang obtained the qualification as a patent attorney in 2012 and obtained the qualification as an attorney at law in 2015. Mr. Zhang’s current practice mainly focuses on patent enforcement including patent applications (more than 1300 cases), patent infringement litigation (more than 20 cases), patent prosecution (more than 800 patents granted) and invalidation procedures (more than 30 cases) in the technical fields of fields of automobiles, machinery and electromechanical equipment, household appliances, medical equipment, Photoelectric equipment etc. Clients include Siemens AG, Volkswagen AG, Voith group, SKF, AUX group, Vorwerk group and SIG etc.
REPRESENTATIVE CASES
Infringement Litigations：
■ REC v. Hanwha
Mr. Zhang and his colleagues represent the plaintiff REC to sue Hanwha for patent infringement and on behalf of the patentee REC responded to the defendant's patent invalidation request. Through a full understanding of the patented technology and accurate modification of the claims, the patent is finally maintained by CNIPA. At present, the case is still in progress. （2020.12）
■ Wu Shanwang v. Dongguan Mustang Machinery Co., Ltd
Mr. Zhang and his colleagues represented the defendant Mustang Company in Jinan intellectual property court and Shanghai Intellectual Property Court to deal with five patent infringement lawsuits brought by Mr. Wu Shanwang. Finally, four cases in Jinan intellectual property court were closed by the plaintiff's withdrawal and one case in Shanghai Intellectual Property Court was settled, which made the customer win the serial cases. （2021）
■ AHT v. Qingdao Kaichuang Co., Ltd
Mr. Zhang and his colleagues filed a patent infringement lawsuit against Qingdao Kaichuang Co., Ltd on behalf of the patentee AHT in Beijing Intellectual Property Court. In this case, Mr. Zhang helped the client successfully obtained the behavior preservation ruling (preliminary injunction) prohibiting the defendant from continuing infringement. （2020.12）
■ Gree v. AUX
Mr. Zhang and his colleagues represent defendant AUX to attend serial patent infringement litigations. Among them, Mr. Zhang and his colleagues successfully invalidated a patent involved in one case and finally win this litigation case. Several other lawsuits are still ongoing. (2017.06 – 2022.04)
■ Guangzhou Biaoqi v. Nanjing Baoguang
Mr. Zhang and his colleagues represent defendant Nanjing Baoguang to attend patent infringement litigation cases before Guangzhou IP Court and challenging the validity of two patents involved at the same time before the Patent Reexamination Board. As a result, in one infringement case the prosecution was withdrawn due to the invalidation of the patent, in the other infringement case successful non-infringement defense was made based on detailed and reasonable arguments during court hearing. (2017.12-2018.11)
■ Samsung v. Huawei
In the serial patent infringement litigations Mr. Zhang was mainly involved in SEP and FRAND related affairs, and has translated and compiled several German cases related to FRAND, some of which have been published in the "FRAND Case Selection", and Mr. Zhang is also one of the editors of the book. (2016-2018)
Invalidation Proceedings:
■ Langan (Tianjin) Technology Development Co., Ltd. v. WEH Connection Technology Co., Ltd
Mr. Zhang and his colleagues responded to the invalidation request of the applicant in two invalid cases (involving the field of high-pressure fluid connectors) on behalf of the patentee WEH Connection Technology Co., Ltd. Finally, the patent rights of the two patents remained valid, which provided a right basis for relevant litigations and was affirmed by customers.（2021）
■ Miao Yu v. Boehringer Ingelheim International Co., Ltd
Mr. Zhang and his colleagues represent the patentee Boehringer Ingelheim International Co., Ltd to respond to the invalidation request. With a deep understanding of the background technology and relevant technical features of the patent involved, the validity of the patent right was successfully maintained.
■ Qualcomm v. Apple
Mr. Zhang and his colleagues on behalf of the plaintiff Qualcomm responded to the requester's invalidation request in several invalidation cases. The team has won those invalidation cases. (2018-2019)
■ Ding Zhijun v. Siemens AG
In the two patent invalidation cases Mr. Zhang and his colleague have represented the patentee Siemens. Mr. Zhang and his colleague have won both the invalidation cases. (2018-2019)
Legal Opinions
Mr. Zhang provides more than 20 legal opinions in terms of FTO, potential infringement analysis, litigantion vetting and patent validity analysis for many clients including Goertek, THSAS, Mengniu, Ruixing, Voith, Qualcomm etc..
Presentations
- “Opportunities and Challenges-Protecting IoT and AI Innovations in China”, MB meets China Forum, Munich, Germany, March 2019;
- "Industry 4.0 from the perspective of patents", Liu&Shen Law Firm's "Think Tank" forum, August 2019.
- "On foreign related patent infringement litigation", forum of alumni lawyer cooperation committee of Law School of China University of political science and law, December 2020.
Publications
- Compilation of FRAND Related Cases”,China Science Press, as one of the editors.
- “How to calculate damages in case patent infringer refuses to provide account books”， IPLink Asia, July 2020。
Training
- "Obtaining, Enforcing and Evaluating Intellectual Property Rights in Europe", hosted by Boehmert & Boehmert Law Firm, Munich, Germany, July 2019;
All-China Lawyers Association (ACLA)
All-China Patent Agents Association (ACPAA)
Foreign Lawyers Talent Pool of Beijing Lawyers Association
Beijing
Patent
Telecommunication,Computer Science,Internet Technology,E-commerce,Artificial Intelligence,Electronics Engineering
Chinese,English
Ms. Zhang received a PhD degree from Shanghai Jiao Tong University on 2007, with research experience in machine vision, image/video processing and surgical robot. After graduation, Ms. Zhang worked as a software engineer at Telecommunication Research Institution of Samsung Electronics Co., Ltd in Korean for 2 years.
Ms. Zhang joined Liu, Shen & Associates in 2010. She focuses on computer science, digital image processing, digital video processing and telecommunication. She received training from D Young & CO, LLP, UK. in 2018.
Ms. Zhang has been dealing with a large number of cases related to the patent application and examination cases, especially relating to semiconductor inventions, since joining Liu, Shen & Associates, and led and participated in litigation cases such as Patent invalidation /Administrative Litigation/ Patent infringement litigation, etc.
Ms. Zhang works in the firm's Electrical and Electronics Department. Ms. Zhang is a member of the All-China Patent Agents Association. Ms. Zhang’s working languages are Chinese and English.
Representative cases:
- 2020-2023, in several patent licensing negotiations and related disputes between a foreign giant company and certain giant domestic and foreign giant companies for each time, representing the foreign giant company to process patent selection and analysis, patent litigation strategy analysis, patent licensing fee and FRAND issues analysis, etc.;
- 2016-2019, 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;
- Central China Display Laboratories, LTD. (CCDL) v. Samsung Company, patent invalidation
- Delta Company v Ma Jianjun, patent invalidation
Representative Publications:
- “SEP related Patent Litigation and Invalidation Strategy Analysis,” Co-author, IPLEAD, November 2023 ;
- “Standard Essential Patents Royalty Calculation in the Telecommunications Industry”, Asia IP, March, 2018；
- “How IP in China is changing”, AIPLA, October, 2017；
- “Selected FRAND Cases”, member of the translation group, Science Press, 2018.
All-China Lawyers Association (ACLA)
All-China Patent Agents Association (ACPAA)
Beijing
Patent
Bio & Pharmaceutical,Life Science,Chemical Engineering
Chinese,English
Mr. Zhang started his legal profession in 2002 with Liu, Shen & Associates and he has been representing domestic and international clients for many years. He focuses on all aspects of intellectual property matters, ranging from patent application preparation and prosecution, patent reexamination, patent invalidation and litigation, freedom-to-operate, legal opinion, to due diligence, patent portfolio management, technology transfers, licenses, and strategic alliances, copyrights, and trade secrets. In addition, Mr. Zhang also has a rich experience in the protection of Plant New Varieties.
Mr. Zhang specializes in the life science-related fields including biotechnology, immunology, vaccine, biochemistry, molecular biology, pesticides, pharmaceutical, agriculture science, biomass, biomaterial, botanical science & breeding, medical device, food & nutrition science, feed science, environmental biology, cosmetic and detergent.
Prior to joining Liu Shen, he was engaged in research and development in life science. In 2001, he worked at the Beijing Genomic Institute, the Chinese Academy of Sciences and took part in the Rice Genome Project, which was an international cooperation project launched by many countries. In the late of 2007, he was dispatched to a famous European company in life science field and sequentially worked as consultant/patent attorney/patent manager in Patent & License department from 2007 to 2009.
EDUCATION &TRAINING
Mr. Zhang got his second Master degree in Intellectual Property Law from the Law School of Peking University in 2013. Before that, he received a Bachelor of Science in Biology from Hebei University in 1998, and a Master degree in Agricultural science from the graduate school of Chinese Academy of Agricultural Science in 2001.
During the summer of 2007, he visited Birch, Stewart, Kolasch & Birch, LLP at Washington DC, USA, where he gained training in U.S. patent practice. In 2015, he was dispatched to a famous French law firm in Paris and took part in the training in European patent practice.
Representative cases that Mr. Zhang has led or participated include
- Bayer Pharma AG (German) v. Novo Nordisk (Danmark) in the invalidation proceedings, representing Bayer and winning this case;
- DSM IP Assets B.V. (Netherlands) v. Ni ShaoWei (China) in the invalidation proceedings, representing DSM and winning this case;
- Owen Mumford Limited (UK) v. Novo Nordisk (Danmark) in the invalidation proceedings, representing Owen Mumford limited and winning this case;
- Bayer China limited v. Novo Nordisk (Danmark) in the invalidation proceedings, representing Bayer and winning this case;
- Syngenta Participations(Switzerland) AG v. Shaanxi Meibang Pesticides Co., Ltd. in the invalidation proceedings, representing Syngenta;
- Syngenta Participations(Switzerland) AG v. Jiangsu Huifeng Agrochemical Co., Ltd.
- in the invalidation proceedings, representing Syngenta;
- Academia Sinica v. Tianjin Super Biologic Technology Development Co. Ltd. in the invalidation proceedings, representing Academia Sinica and winning this case;
- BIOHEAP LIMITED (Australia) v. Patent Reexamination Board of State Intellectual Property Office (China) in the litigation case, representing BIOHEAP LIMITED;
- ORGANOGENESIS INC(US) v. Patent Reexamination Board of State Intellectual Property Office (China) in the litigation case, representing ORGANOGENESIS INC;
- DSM IP Assets B.V. (Netherlands) v. Ni ShaoWei (China) in the litigation case, representing DSM.
Publications that Mr. Zhang has authored include
- Seven tips for technology transfer in China, Managing Intellectual Property, July/August 2012;
- An Overview of Technology Transfer Including Patent Licenses and Know-how Licenses in China, European Intellectual Property Review, 2013, Issue 3, Page 137-141;
- The Examination and Protection of Claims Having Functional Definition: A Case of Bio-medical Invention, Master’s Dissertation of Peking University, 2013.
- How to make sure your patent is properly supported in China, Managing Intellectual Property, April 2016;
- Patent issues for life science companies in China, Intellectual Asset Management, life Sciences 2016;
- Inventorship Determination in China, 2016;
- Recent Advances in Protection of New Varieties of Plants,2016;
- Guidance on determining who is an inventor, Managing Intellectual Property, February 2017;
- Examination Practice of Antibody-related Patent Applications in China, Lexology, November 2017;
- Brief introduction on cited documents, Patent Agency, 2018;
All-China Lawyers Association (ACLA)
All-China Patent Agents Association (ACPAA)
Association Internationale pour la Protection de la Propriété Intellectuelle (AIPPI)
Beijing
Patent
Mechanical Engineering
Chinese,English
Ms. Zhang joined Liu, Shen & Associates in 1994 and became a qualified patent attorney in 1998. She now is co-head of patent application department of the firm.
Ms. Zhang had a bachelor's degree from Hefei Industrial University in 1990 majoring in Mechanical Engineering. She received training from Birch, Stewart, Kolasch & Birch, LLP in 2006.
Beijing
Patent
Telecommunication,Computer Science,Internet Technology,E-commerce,Artificial Intelligence,Big Data Processing,Semiconductor
Chinese,English
Education: (1) Master degree; (2) L.L.M. degree
University: (1) TheUniversityofBristol
(2) TheJohnMarshallLawSchoolin theUnited States(2013)
Qualification: Patent Attorney (2008) / Attorney at law (2009)
SUMMARY
Ms. Zhao joined Liu, Shen & Associates in 2007. She specializes in patent prosecution and re-examination, patent invalidation, patent evaluation and patent litigation. Her experiences span into broad technology areas including telecommunication, image processing, electronics and circuits, computer and network, e-commerce and semiconductor etc.
Ms. Zhao got her qualification as a patent attorney in 2008 and as an attorney at law in 2009. She has participated in several patent lawsuits including patent infringement and patent invalidation. Her practice experiences also include the patent infringement analysis, patent invalidation analysis, patent evaluation and FTO analysis.
Ms. Zhao received her master degree in communication system and signal processing from theUniversityofBristol. Ms. ZHAO also studied the Intellectual Property Law of theUSat theJohnMarshallLawSchoolinChicago,USand obtained L.L.M. degree. Prior to joining the firm, Ms. Zhao worked in Telecommunications Research Laboratory of Toshiba Research Europe Limited as a researcher.
Representative cases that Ms Zhao has led or participated include
- Dyson Limited (plaintiff) v. Zhejiang Aike Electrical Appliance Co. Ltd., as the attorney of the plaintiff Dyson won in the first instance and finally settled in the second instance;
- In the serial cases of Samsung v. Huawei, as the attorney of Samsung, participated in the patent invalidation, and the infringement lawsuit.
Presentation that Ms. Zhao has given include
- “Prior Art Defense with Case Analysis”, 2014;
- “How to draft computer program related application”, 2015;
- “Analysis on Standard Essential Patent (SEP) lawsuit cases in China”, 2016.
All-China Lawyers Association (ACLA)
All-China Patent Agents Association (ACPAA)
Beijing
Patent
Mechanical Engineering,Medical Devices,Semiconductor
Chinese,English
Ms. Zhao joined Liu, Shen & Associates in April, 2008.
Ms. Zhao obtained the qualification as an attorney at law in 2009 and obtained the qualification as a patent attorney in 2009. Ms. Zhao’s current practice mainly focuses on patent enforcement including patent litigation and administration proceedings, patent prosecution and invalidation in the technical fields of Material Science & Engineering, Semiconductor device and process, Display technology, Medical device, Virtual reality technology, Three-Dimensional display technology, Sharing item technology and so on. Ms. Zhao’s services also include providing patent strategy consultation and patent searching report and FTO. Also, Ms. Zhao has assisted Chinese applicants in patent application filing and prosecution with foreign patent offices, such as USPTO, EPO, JPO, KIPO, etc.
Ms. Zhao had a bachelor's degree from Xi’an Jiaotong University in 2002 and had a doctor's degree from Institute of Electrical Engineering, Chinese Academy of Sciences in 2007.
I. Civil Litigation
1. Aux v. Gree (2017), patent infringement litigation and related patent invalidation, Ningbo People's Intermediate Court, representing the plaintiff (patentee).
2. Beijing Perfect Light V. Ceaulight (2016), patent infringement litigation, Beijing intellectual property court (First Instance), representing the defendant.
II. Patent Invalidation or Administrative Litigation
1. HRID - NON DESTRUCTIVE TESTING d.o.o. za razvoj i primjenu tehnologija v. INETEC Institute for Nuclear Technology D.O.O (2014), patent invalidation, patent Reexamination Board of the SIPO, representing the invalidation petitioner. The Board held the patent entirely invalid.
2. Skyworks Solutions Inc. v. Patent Reexamination Board of the SIPO (2016), Beijing intellectual property court, representing the plaintiff.
3. Kunshan shangli packaging products co. LTD. V. Shanghai cui ling glass products co. LTD.(2016), patent invalidation, patent Reexamination Board of the SIPO, representing the invalidation petitioner. The Board held the patent partially invalid.
4. Altek Corporation V. Shenzhen O-film Technology Co., Ltd. (2017), patent invalidation, patent Reexamination Board of the SIPO, representing the patentee. The Board held the patent valid.
5. Altek Corporation V. Kunshan titanium microelectronics technology co. LTD. (2017), patent invalidation, patent Reexamination Board of the SIPO, representing the patentee. The Board held the patent valid.
6. Wuxi Little Swan Company Limited V. Haier (2016), patent invalidation, patent Reexamination Board of the SIPO, representing the invalidation petitioner. The Board held the patent entirely invalid.
7. A domestic famous communication corp. V. a global famous communication corp. (2016), patent Reexamination Board of the SIPO, representing the invalidation petitioner. The Board held the patent entirely invalid.
Publications
“The coping strategy of the enterprise relating to ownership dispute of the service invention”, 7th Intellectual Property Forum held by All-China Patent Attorneys Association in 2017 (published as the outstanding thesis).
Beijing
Trademark
Chinese,English
Education: Master degree of Law
University:ChineseAcademyof Social Sciences (2012)
Qualification: Attorney at law (2016)
Since 2013, Mr. Zheng has been working in Liu, Shen & Associates, responsible mainly for trademark non-litigation and administrative litigation cases, trademark infringement administrative raid actions, and other IP infringement litigations. Mr. Zheng has been served as authorized attorney for many trademark litigations against the government authority, as well as trademark infringement civil litigations. In 2020, Mr. Zheng became the junior partner of Liu, Shen & Associates.
Before joining Liu, Shen & Associates, Mr. Zheng worked as an in-house lawyer successively in BYD Company, andChinaInternationalCopyrightExchangeCenterfor years, dealing with contract review, legal disputes resolution and IP management.
Mr. Zheng achieved a bachelor degree in law fromTsinghuaUniversityin 2008; in 2012, he achieved a master degree in law from theChineseAcademyof Social Sciences. Mr. Zheng got his qualification as an attorney at law in 2016.
Representative cases that Mr. Zheng has led or participated include:
- Beijing Daoxiangcun v. Suzhou Daoxiangcun, Mr. Zheng and his colleagues represented Beijing Daoxiangcun and finally won the case in the re-trail instance at the Supreme Court, and this case was edited as one of top 10 IP cases in 2014;
- Representing Beijing Daoxiangcun in a series of trademark administrative litigations and civil actions concerning the dispute between Beijing Daoxiangcun and Suzhou Daoxiangcun, and won the cases;
- Team Beatles trademark opposition review litigation, Mr. Zheng represented the owner of merchandising right of the Beatles and finally won the case in the final instance at Beijing High Court;
- Dow trademark refusal review litigation, in this case, the court admitted the examination of trademarks should abide by the principle of consistency;
- LEGO trademark opposition review case, in this case, Mr. Zheng represented for Lego Company and finally made the opposed mark “LEGO” rejected on goods of glasses, and made LEGO trademark recognized as well-known trademark in China;
- Series of Cock device trademark cases, in these cases, Mr. Zheng represented for the trademark owner DESCENTE LTD, prevented the other party from imitating the famous trademark;
- Representing for HACHETTE FILIPACCHI PRESSE in the Customs IP protection case, in which Beijing Customs tracked down more than 13,000 items of trademark infringing clothes. This case is the biggest case that Beijing Customs handled in 2016, and was reported by CCTV, BTV, Beijing Daily and other medium;
- Representing for Schneider, Lego, Toyo Tires, ABB and many other famous foreign companies to file the trademark oppositions and petitions for invalidation;
- Representing for ASIA SYMBOL, HACHETTE FILIPACCHI PRESSE, DESCENTE LTD and other clients in trademark infringement administrative raid actions;
- Representing US Foxfury to launch patent infringement case before Guangzhou IP Court and win the injunction and damages;
- Representing a Chinese biotech company in a trade secret arbitration case against a US company before the CIETAC, and successfully made the US company withdraw the case;
- Attending the multiple cases on the patent disputes between Samsung and Huawei.
Publications:
- “How to fight online infringement in China,” INTA DAILY NEWS;
- “The fight for IP protection goes on” published in China Law & Practice (2015 / 9)
HONORS:
- Excellent Lawyer in Haidian District in 2020;
- Excellent Employee in Liu, Shen & Associates in 2020.
All-China Lawyers Association (ACLA)
