Practice Groups and Client Sectors:Intellectual Property, Litigation, Technology, International, FinTech, Cryptocurrencies, and Blockchain
Areas of Focus:Intellectual Property Litigation, Intellectual Property Transactions and Due Diligence, Patent Counseling and Prosecution, China, Litigation, Commercial Litigation, Technology Licensing, Telecommunications
Based in Washington, DC and frequently traveling between the US and China, Jason advises, assists, and resolves clients' most important intellectual property (IP) issues. Clients, especially Chinese enterprises, turn to Jason because of his technical background, superb legal skills, in-depth understanding of their business needs and risks, as well as long-term connection with the Asian (Chinese) community. Jason has been selected as a "Rising Star" in the Washington, DC Super Lawyers 2015-2018.
Jason has extensive experience in IP litigation in Section 337 investigations before the International Trade Commission (ITC) and before the United States federal district courts, including the Eastern District of Texas, District of Delaware, and Northern District of California. Jason also helps clients resolve patent validity issues in post-grant review proceedings (e.g., IPRs, CBMs, PGR) before the United States Patent and Trademark Office (USPTO). Jason further counsels domestic and international clients on their IP issues, including patent and trademark portfolio management, IP licensing, and technology transfer. Besides pure IP issues, Jason has also been involved in issues intertwining between IP and Antitrust, including Standard Essential Patents (SEPs).
Jason's work experience encompasses various industry sectors, focusing on HighTech (computer software and hardware, Internet-related technologies, semiconductors, and electronic circuit design), FinTech (banking and financial industry), as well as digital pharmaceuticals and medical devices.
Prior to practicing law, Jason worked as a software architect, technical manager, and senior software engineer in the wireless and software industries as well as government IT field. He had hands-on experience and is familiar with the technologies for mobile devices using iOS, Android OS, Blackberry (RIM) OS, Windows Mobile OS, and Palm OS. He is also familiar with program languages including C#, Java, C++, C as well as various web and application frameworks.
- Certain Shaker Screens for Drilling Fluids, Components Thereof, and Related Marketing Materials (337-ITC-1184) – Represented Chinese Xi’an Brightway Energy Equipment Co., Ltd. and Brightway Solids Control Co., Ltd. as respondents in Section 337 Investigation involving shaker screens. Leading case strategy for the asserted patent(s) and successfully resolved the investigation during early stage.
- Certain Electronic Nicotine Delivery Systems and Components Thereof (337-ITC-1139) – Represented Chinese Infinite-N Technology Limited as a respondent in Section 337 Investigation involving electronic nicotine delivery systems (“ENDS”). Leading case strategy for five asserted patents and successfully resolved the investigation during early stage.
- Certain Robotic Vacuum Cleaning Devices and Components Thereof Such as Spare Parts (337-ITC-1057) – Represented Chinese Suzhou Real Power Electric Appliance Co., Ltd. as a respondent in Section 337 Investigation involving robotic vacuums. Successfully resolved the case favorably for the client in early stage of the investigation.
- Certain Two-way Radio Equipment and Systems, Related Software and Components Thereof (337-ITC-1053) – Represented Chinese Hytera as a respondent in Section 337 Investigation involving two-way radios. Provided strategy and briefing for public interest during Commission review.
- Certain Electronic Devices, Including Mobile Phones and Table Computers, and Components Thereof (337-ITC-925) – Represented Google as an intervenor in Section 337 Investigation involving mobile devices. Case settled three weeks before the hearing after the ALJ dismissed one of the three patents in the investigation.
- Certain Electronic Devices, Including Mobile Phones and Table Computers, and Components Thereof (337-ITC-885) – Represented Google as the intervenor in the second round 337 investigation initiated by Nokia against HTC involving smartphones and tablets regarding Android Operating System. Case settled favorably for HTC and Google.
- Certain Electronic Devices, Including Mobile Phones and Tablet Computers, and Components Thereof (337-ITC-847) – Represented Google as the intervenor in the 337 investigation initiated by Nokia against HTC involving smartphones and tablets regarding Android Operating System. Four of the five patents were disposed before hearing, and the ALJ found non-infringement of the last remaining patent after the hearing.
- Certain Electronic Devices Having A Retractable USB Connector (337-ITC-843) – Represented Taiwan ViewSonic Corporation in 337 investigation involving retractable USB products; Obtained favorable early case dismissal for ViewSonic.
- Certain Digital Televisions and Components Thereof (337-ITC-789) – Represented Taiwan MStar Semiconductor in 337 investigation involving digital signal coding/encoding for transmitting TV data; Obtained favorable early case dismissal for MStar.
- Certain Integrated Circuits, Chipsets, and Products Containing Same including Televisions, Media Players, and Cameras (337-ITC-709) – Counsel represented Panasonic in 337 investigation involving circuit and planarization design technologies. Obtained summary determination of non-infringement of one of the three patents. Case settled subsequently before the hearing.
- Personal Audio v. Google LLC (E.D. Tex / DED) – Representing Google in patent infringement litigation involving music player. Successfully dismissed and transferred the case from the Eastern District of Texas to the Delaware post-Supreme Court’s TC Heartland decision.
- Eolas v. Amazon, Inc. et al. (E.D. Tex) – Representing Walmart in patent infringement litigation involving internet website technology. Successfully transferred the case from the Eastern District of Texas to the Northern District of California.
- Coffelt v. Autodesk, Inc. et al. (C.D. Cal) – Represented Autodesk in patent infringement litigation involving 3D image. Won the motion to dismiss on the pleading for unpatentable subject matter under § 101 at the district court, the Federal Circuit, and defeated Coffelt’s certiorari to the Supreme Court. IP360 stated that “[t]he judge’s decision marked an unusually rapid resolution for a patent lawsuit.”
- Walker Digital v. Myspace et al. (D. Del) – Represented Google in patent litigation involving social networking product. Prevailed on summary judgment and in CBMs. Obtained award of all requested costs.
- American Imaging Services, Inc. v. Autodesk, Inc. (N.D. Tex) – Represented Autodesk in patent litigation involving CAD software. Trial counsel, obtained complete defense jury verdict of non-infringement and invalidity for Autodesk.
- Grecia v. JPMorgan Chase (S.D.N.Y) – Represented JPMorgan Chase in patent infringement litigation involving banking tokenization technologies. Filed early motion to dismiss, prepared IPRs on all asserted patent(s), and forced plaintiff to settle shortly after the case management conference.
- Vega v. American Express et al. (W.D. Tex) – Represented American Express in patent infringement litigation involving smartphone applications for mobile secure financial transactions. Won the motion to dismiss on the pleading of non-infringement.
- Grecia v. American Express (S.D.N.Y) – Represented American Express in patent infringement litigation involving banking tokenization technologies. Convinced the Court to stay the case pending the results of the IPRs filed by Unified Patents at the case management hearing. Filed additional IPRs on all three asserted patents when the stay was lifted, and the case is settled favorably shortly afterward.
- Maxim Integrated Products, Inc. v. American Express et al. (W.D. Tex) – Lead technical counsel represented American Express in patent infringement involving smartphone applications for mobile secure financial transactions. Resolved the case favorably for American Express as a result of aggressive positions to invalidate the asserted patents.
- In Re Maxim Integrated Products, Inc., MDL No. 2354 (Master Docket Misc. No. 12-244) (MDL No. 2354) (W.D. Pa.) – Lead technical counsel represented JPMorgan Chase in which Maxim asserts four patents that allegedly relate to smartphone applications for mobile banking and secure financial transactions. Obtained favorable settlement and forced Maxim to withdraw certain infringement allegations.
Medical Devices / Digital Pharmaceuticals:
- Hologic Inc. v. SenoRx, Inc. (N.D. Cal.) – Represented Hologic in patent infringement litigation involving interstitial brachytherapy technology. After a trial defeat, Hologic obtained a successful ruling from the Court of Appeals for the Federal Circuit on appeal reversing the district court's claim construction. Hologic, Inc.v. SenoRx, Inc., 639 F.3d 1329 (Fed. Cir. 2011).
- Cross Medical Products, Inc. v. Medtronic Sofamor Danek, Inc. et al. (C.D. Cal.) – Represented Medtronic; obtained summary judgment rulings invalidating three of Cross's asserted patents relating to spinal implant technology; and obtained summary judgment rulings in favor of Medtronic on two counterclaim patents.
- Motorola Solutions v. Hytera Communications (D.N.J): Representing Hytera, a leading Chinese radio manufacturer, in antitrust monopolization claims (including SEPs) against Motorola Solutions.
- Edens v. Olight USA et al. (N.D. IL) – Representing Olight USA in a product liability litigation about its flashlight.
Patent Office Proceedings:
Filed CBMs on behalf of Google against Walker Digital patents. Instituted.
Filed Ex parte re-exams and IPRs on behalf of Autodesk against AISI patent. Instituted.
Filed IPRs on behalf of JPMorgan Chase and American Express against Grecia patents. Forced Grecia to settle shortly afterwards.
Filed IPRs on behalf of Unified Patents against multiple NPEs. Instituted.
ITC Proposed Amendments to Section 337 Rules, White & Case Client Alert, November 2015, (co-author with Shamita Etienne-Cummings and Sonia Murphy)
USPTO unveils final rules for the American Invents Act, White & Case Client Alert, August 2012, (co-author with David Tennant)
Eastern District of Texas Unveils Model Discovery Order to Streamline Patent Litigation, White & Case Client Alert, March 2012, (co-author with Shamita Etienne-Cummings)
Component-Based Architecture for Mobile Information Access." IEEE Computer Society Press, workshop in International Conference on Parallel Processing (ICPP 2000) (August 2000). Co-authored with Chaitanya Pullela, Anupam Joshi
Service Discovery in the Future Electronic Market." Seventeenth National Conference on Artificial Intelligence, 11th Innovative Applications of AI Conference (July 2000). Co-authored with Henry Chen, Chaitanya Pullela, Anupam Joshi
Using Jini and XML to Build a Component-Based Distributed System." Technical Report, University of Maryland Baltimore County (2000)
- Moderator, "Patent Operation and Monetarization,” in China Intellectual Property & Innovation Summit 2019, April 18-19 2019: Shanghai, China
- Speaker, “US ITC 337 Rule Changes and How to Respond in Patent and Trade Secret Cases,” Cross-Border Litigation and Compliance Strategies for Taiwan 2019, Annual White & Case Legal Symposium, November 6, 8, 2018; Taiwan, China.
- Speaker, “US 337 Investigation Recent Rule Changes and Litigation Strategy,” in China Intellectual Property & Innovation Summit 2018, November 1-2, 2018; Shenzhen, China.
- Moderator, "How Chinese Enterprises to Deal with the Situation ICT Industry is at War Over Patent Dispute," in China Intellectual Property & Innovation Summit 2018, April 11-13 2018: Shanghai, China