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APABASV Intellectual Property Year in Review: What Portfolio Builders, Dealmakers and Litigators Need to Know

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APABA Silicon Valley's IP Committee will be presenting their 8th annual case law update at Morrison Foerster's Palo Alto office. 

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APABA Silicon Valley's IP Committee will be presenting their 8th annual case law update at Morrison Foerster's Palo Alto office. This program is for anyone practicing in the IP area – whether you develop IP portfolios, license IP/technology or litigate.Janet Xiao and Rich Hung will participate on a panel covering the latest updates regarding patent practice, IP transactions, and IP litigation, highlighting “must-know” developments as well as everyday practice tips that you can use in everyday situations. Topics will include important changes in the law, key takeaways, and how to avoid major pitfalls, based on the most significant IP cases from the Supreme Court, Federal Circuit, and other influential courts.<hr>

APABASV Intellectual Property Year in Review: What Portfolio Builders, Dealmakers and Litigators Need to Know

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Rich is a nationally recognized intellectual property litigation attorney, with nearly 30 years of experience helping clients protect, enforce, and defend their most valuable IP assets in high-stakes disputes. He has served as global co-chair of the firm’s Litigation Department and spent a decade leading the firm’s Intellectual Property Group, advising clients at the intersection of cutting-edge technology and complex litigation.A registered patent lawyer, former Federal Circuit clerk, electrical engineer, and seasoned trial lawyer, Rich brings a rare combination of technical training and litigation experience to every matter. He represents clients across the full spectrum of intellectual property law, including patent, copyrights, trademark, and trade secret litigation and has handled over 150 IP matters over the course of his career. Rich has tried over a dozen cases to verdict or final award and regularly represents clients in state and federal trial and appellate courts, before the Patent Trial and Appeal Board (PTAB), and in arbitration proceedings.Rich’s practice spans a wide range of advanced technologies, including software, cryptography, semiconductors, consumer electronics, and medical devices. In addition to litigation, he frequently advises clients on strategic offensive and defensive patent licensing and acquisition issues.Rich earned dual bachelor’s degrees in electrical engineering and economics from Stanford University and received his law degree from Columbia Law School, where he was a James Kent Scholar, a recipient of the Carroll G. Harper Prize, and a moot court editor. During law school, he clerked for the Honorable Sonia Sotomayor, then of the U.S. District Court for the Southern District of New York. After graduating, Rich clerked for the Honorable Paul R. Michel of the U.S. Court of Appeals for the Federal Circuit.He maintains an active pro bono practice and is deeply engaged in public service. Since 2014, Rich has served as a Neutral Commissioner on the San Francisco Rent Stabilization and Arbitration Board. He also served two terms as president of the Asian Law Alliance and continues to serve on its board of directors. The organization provides pro bono legal assistance to the Asian and Pacific Islander community in Silicon Valley. Rich is a fellow of the American Bar Foundation.Earlier in his career, Rich tried multiple criminal cases—all to favorable verdicts—while serving with the San Francisco District Attorney’s Office.Outside of his legal practice, Rich is an avid endurance athlete and has completed five Ironman triathlons. His training reflects the same discipline, preparation, and resilience that characterize his approach to complex litigation.<h4>Representative Matters</h4><ul><li>Smartphone Litigation. Member of team that successfully tried a high-profile smartphone case, leading to a jury verdict of over $1 billion.</li><li>Whirlpool Corp. v. TST Water LLC (Eastern District of Texas). Led Whirlpool team that obtained $7.6 million jury verdict and willfulness finding against TST Water in a patent case involving refrigerator water filters.</li><li>Good Technology Corp. v. AirWatch, LLC (Northern District of California). Defended AirWatch against assertions of four patents by a competitor. The case settled after expert discovery.</li><li>Data Speed Technology LLC v. VMware, Inc. (District of Delaware). After every other defendant settled or was dismissed, convinced plaintiff to walk away and dismiss case against client VMware with prejudice.</li><li>Unified Messaging Solutions v. VMware, Inc. (Northern District of Illinois). Represented VMware in a patent infringement suit brought by a non-practicing entity alleging infringement by VMware’s Zimbra webmail product.</li><li>Augme Technologies LLC v. Yahoo!, Inc. (Northern District of California). Represented Yahoo! in a patent infringement suit involving Internet display advertising and media playback. Won summary judgment of non-infringement on Augme’s two asserted patents, and Augme stipulated to infringement of one of Yahoo!’s patents. The case was affirmed on appeal.</li><li>Discovery Communications, Inc. v. Amazon.com, Inc. (District of Delaware). Represented Discovery Communications in a patent infringement suit against Amazon.com alleging infringement by Amazon’s Kindle of Discovery’s patents for e-book reader technology. The case settled after a favorable claim construction ruling.</li><li>Medtronic Spine LLC v. Cozmed, LLC (Northern District of California). Obtained consent judgments of patent infringement and trade secret misappropriation against infringers in a matter involving balloon kyphoplasty.</li><li>Waugh v. Doyle, et al. (Northern District of California). Represented plaintiff in civil rights lawsuit. Court entered substantial monetary judgment in plaintiff’s favor prior to trial.</li></ul>

Richard Hung

Partner

Dr. Janet (Jian) Xiao is a leading patent attorney specializing in global patent procurement, patent portfolio management, and IP strategic planning for life sciences and biopharmaceutical companies. Recognized by Chambers USA and Chambers Global as a top-ranked intellectual property lawyer, Dr. Xiao is highly sought after by biotech and pharmaceutical innovators worldwide for patent prosecution, patent strategy, and life sciences IP counsel.Dr Xiao’s clients range from large renowned multinational companies to emerging startups worldwide. She advises her clients on patent matters relating to various technologies including antibody therapeutics, cell therapeutics, nanomedicine, gene therapy, drug delivery systems, diagnostics, and nutraceuticals. Recognized for her deep understanding of the industry and knowledge of IP, Janet is known for developing and strengthening her clients’ complex patent portfolios to maximize their commercial value and success. She has been instrumental on the strategy development for multibillion-dollar patent portfolios for pharmaceutical clients, and adds tremendous value by combining her creative legal skills, keen business acumen, and solid foundation in science. As impressed clients noted to Chambers, “Janet consistently delivers a very high level of client service and exhibits strong commercial awareness and vision.”Janet works extensively in performing IP due diligence reviews in the contexts of VC investments, technology transactions, mergers and acquisitions, as well as marketing and manufacturing clearance for biopharmaceutical products. She works closely with her clients to assess potential risks and devise preemptive risk-management strategies for their product development and investments. She has led hundreds of IP due diligence projects, and is most notable for her deep knowledge about patent landscapes in the fields of cancer immunotherapy, gene editing, next-generation sequencing, liquid biopsy, antibody manufacturing, and medical devices. Janet works synergistically with patent litigators in the event of legal challenges by third-party competitors or vice versa, and is frequently called upon to represent clients in litigation and post-grant proceedings.Janet is among the very few IP attorneys in the world who are both equipped with solid skills in global strategic IP management and knowledgeable about IP issues unique to China and Chinese clients, and she has been the go-to counsel for IP issues in U.S./China cross-border transactions and operations in China. As Chambers Global 2024 notes, “She is great, very strong and thoughtful. She has a very large contingent of Chinese companies.”Janet is the Head of China Life Sciences at Morrison Foerster and served as co-chair of the firm’s global Life Sciences Group from 2016 to 2019. Chambers Global states that Janet “is recognized for her knowledge of IP law relating to the life sciences arena,” and that she is “held in high regard by sources for her deep understanding of the pharmaceutical and biotech industries.” In a recent edition of Chambers Global, a client remarks, “Janet is a wonderful lawyer. She is very experienced in advising life sciences clients doing business in China and the US. She is highly responsive and always gives practical advice. Her IP expertise adds tremendous value to our business.”

肖荐（Janet Xiao）博士的业务侧重于为生命科学公司处理在全球范围内的专利采购、专利组合管理和战略策划事宜。肖博士服务的客户范围广泛，包括大型跨国生物制药公司，例如赛尔基因公司（Celgene）和基因泰克公司（Genentech），也包括全球范围的新兴创业公司。她经常就与各种技术有关的专利事宜向客户提供法律意见，其中涉及的技术包括抗体疗法、细胞疗法、纳米医学、基因疗法、给药系统、诊断和和营养学等。来自全球的创新者纷纷向肖博士寻求专利申请和专利战略的法律咨询，这一点也得到了《钱伯斯指南》的认可。她帮助客户开发和加强其复杂的专利组合，从而为客户实现最大的商业价值。在为制药行业的客户制定数十亿美元专利组合的战略方面，肖博士发挥着重要的作用。《钱伯斯指南》曾引用客户评价称，“肖博士是我曾合作过的律师当中知识最渊博、效率最高的一位律师。她能很好地将专利组合的历史信息用于全球专利申请问题上。”肖博士针对风险投资、技术交易、并购和生物医药产品的市场推广与生产许可事宜开展广泛的知识产权尽职调查审查工作。她协助世界上一些最成功的生物制药公司和投资者，为其产品开发和投资评估潜在风险，并制定先发制人的风险管理策略。她曾牵头处理过数百个知识产权尽职调查项目，并凭借自己对癌症免疫治疗、基因编辑、新一代测序、液体活检、抗体制造和医疗设备领域的专利方面的深厚知识而闻名。肖博士时常与专利诉讼律师合作，处理由第三方竞争者提出的法律质疑，或对第三方竞争者提出的法律质疑，她还经常受聘代表客户处理专利诉讼和授予后程序。肖博士是美富中国生命科学业务组主管，她曾在2016至2019期间担任美富全球生命科学业务组的联席主管。肖博士是全球为数不多的既拥有很强的全球战略性知识产权管理技能，同时又对中国和中国客户独特的知识产权问题具有深刻理解的知识产权律师之一，她一直是处理中美跨境交易和在中国境内经营中所涉知识产权问题的首选律师。《钱伯斯全球指南》称赞她是一位优秀的知识产权律师，“她因处理与复杂跨境交易有关的知识产权问题工作而知名，经常代表中国客户处理这方面的事宜” 。在近期一版《钱伯斯全球指南》中，某客户评价称，“肖博士在为于中国和美国开展业务的生命科学客户提供法律意见方面，有非常丰富的经验。她非常负责而且总是提供切实可行的法律意见。她在知识产权方面的专业意见为我们的业务增添了巨大价值。”自2005年以来，肖博士一直积极参与北美华人生物医药协会（CABS）的领导工作。该协会是一家非营利组织，致力于成为连接中美两国生命科学领域的纽带。肖博士在2011至2012年间担任该协会主席。她还是百华协会（BayHelix）的成员。百华协会是一家非营利组织，由全球生命科技和医疗保健产业领域的华人精英组成。

Janet Xiao

Patent Litigation

Patent Strategy + Prosecution

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APABASV Intellectual Property Year in Review: What Portfolio Builders, Dealmakers and Litigators Need to Know

08 Feb 2024 5:30 PM - 7:30 PM PST