Work Highlights
IP Litigation
1.Represented a leading US semiconductor manufacturer in a lawsuit in China involving trade secret violation on complex integrated circuit lay-out design and unfair competition dispute arising from the competing business set up by its former employees in multiple locations in China and US, coordinating with parallel litigation procedures in the US to assist investigation and lawsuit in China, and achieved a favorable settlement for the client.
2.Represented a well-known chemicals company, conducted in-depth investigations on the patent infringement of multiple domestic dyestuff manufacturers and filed patent enforcement lawsuits, and successfully handling patent invalidation proceedings initiated by multiple alleged infringers and maintained validity of the patents in dispute. In view of the fact that the enforcement actions involve long-term, continuous infringement and huge amount of damages, the enforcement actions have attracted the attention from the intellectual property counselor of the United States in China, Sino-US trade chamber of commerce and many other industrial organizations.
3.Represented a to-be-listed manufacturing enterprise in handling the malicious lawsuit and public relations crisis initiated by patent pirates during the listing process, and successfully forced the plaintiff's voluntary offer for settlement and paved way for the successful listing through litigation strategies and auxiliary schemes such as transfer of jurisdiction, discovery of major evidential defects and filing of patent invalidation.
4.Represented a leading German auto part manufacturer, investigated multiple companies that manufactured infringing ultrasonic metal welding products, filed lawsuits against multiple infringers for manufacturing, selling, and offering to sell infringing products in multiple courts at different locations, successfully handled the patent invalidation proceedings initiated by the infringers, and obtained favorable judgments in all cases filed.
5.Represented a well-known US wireless telecommunication chip manufacturer to file lawsuit against a domestic mobile phone manufacturer with respect to disputes over license terms on standard essential patents, including designing litigation and public relations strategies, illustrating connotation of FRAND obligation, reverse hijack, patent stacking, etc., in combination of industry practice, and finally obtained a favorable settlement.
6.Represented a leading Swiss pharmaceutical company, provided legal service on the enforcement strategies for its best-selling drug after the expiration of compound patent, including performing validity and enforceability analysis for the secondary patent of the drug, performing infringement analysis of the generic drug, designing litigation strategies in combination with drug pricing strategies.
7.Represented a leading US pharmaceutical company in its patent infringement lawsuit against a Changzhou-based pharmaceutical company with respect to a neuroleptic drug throughout the first instance proceedings before Jiangsu High People’s Court and the second instance proceedings before Supreme People’s Court.
8.Represented a famous mobile phones application developer, provided long-term legal service for series of design patent and copyright protection matters in China, including obtaining favorable decisions in 28 design patent invalidations and subsequent administrative lawsuits.
9.Represented a European company in multiple trademark infringement actions throughout China, designed and executed a successful enforcement plan against multiple counterfeiters in different locations, which resulted in clearance of market and criminal proceedings against one infringer that engaged in volume manufacturing of counterfeit products.
IP Transactions
1.Represented a state owned enterprise in a high profile Theme Park Project, providing full spectrum legal services for multi-type and multi-level intellectual property licensing matters as the client’s chief IP counsel. This project is one of the pillar projects of Beijing Municipality which is specially approved by State Counsel. The cross-border intellectual property licensing and related transactions therein requires comprehensive consideration of corporate structure, project operation, land development, park construction, financing, financial evaluation and other multiple factors, which combined together attributed to a rare project in the industry in terms of deal size, complexity and complication.
2.Represented a famous British consumer products company in its acquisition of a listed Chinese company (including its several subsidiaries located in different places) by providing comprehensive legal services for IP related issues, such as conducting IP due diligence, and evaluating the legal risk of, advising on and providing business solutions for all kinds of IP issues in the acquisition.
3.Represented a leading US software company in an IP asset transfer and in-licensing transaction, involving formulating IP transaction framework, designing ownership of rights and types of IP transaction according to business needs, such as transfer, licensing, cross-licensing and reverse licensing, drafting legal documents and participating in negotiations.
4.Represented a leading optical transceiver module designer and manufacturer, provided legal services on designing intellectual property protection system, formulating a full set of intellectual property system, reviewing development agreements, license agreement, procurement agreements, sales agreements and other types of intellectual property related agreements, assisting R&D personnel in performing patent analysis and freedom to operate analysis on core technology.
5.Represented a leading US energy company in an IP asset transfer and in-licensing transaction relating to photovoltaic power generation systems at Inner Mongolia, advising IP contribution as in-kind capital investment, IP assets evaluation, technology control, IP due diligence and licensing issues.
6.Represented a famous investment corporation in its acquisition of a geothermal energy project in California, including conducting IP due diligence, designing the IP transaction framework and drafting and reviewing legal documents.
7.Represented a well-known Chinese biopharmaceutical company in its initial public offering and listing in the United States, including conducting legal due diligence, providing legal advice on matters such as in-license of drug R&D projects, drug registration categories and risk disclosure, clinical trials, and issuing PRC legal opinion.
8.Represented a state-owned venture capital in its acquisition of a world leading pharmaceutical company’s R&D center and the consequent incorporation of a joint venture in mainland China, including providing legal advices from designing the transaction plan, conducting legal due diligence, assisting with deal negotiation, drafting, reviewing and revising transaction documents till deal closing.
9.Represented a famous Chinese pharmaceutical company in its “licensing-in" of the fifth-generation cephalosporin antibiotics of “ceftobiprole", providing legal advice on multi-center clinical trials, protection of clinical data, procurement of raw materials, and other regulatory matters throughout the project.
