Jason Xu
Partner
Intellectual Property, China, CFIUS/National Security
Shenzhen*, Washington, D.C.
US(202)-470-2141 China_ +86 75561811802 ext. 337
中文
EnglishBased 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.
REPRESENTATIVE MATTERS
ITC
- 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.
- Certain Marine Air Conditioning Systems, Components Thereof, and Products Containing the Same (337-TA-1346) – Represented Shanghai Hopewell and Shanghai Hehe as respondents in Section 337 Investigation involving marine air conditioning systems.
High Tech
- Kamino v. Anker (W.D.Tex.) – Defended a patent infringement lawsuit on behalf of Anker, a Chinese consumer product company, against Kamino LLC regarding LED display technology in the Western District of Texas.
- LedComm v. Anker et al. (C.D.Cal.) – Defending a patent infringement lawsuit on behalf of Anker, a Chinese consumer product company, against LedComm LLC regarding LED display technology in the Central District of California.
- American GNC v. OnePlus et al. (W.D. Tex.) – Defending a patent infringement lawsuit on behalf of OnePlus, a Chinese smartphone company, against American GNC regarding Gyrscope and sensor technology in the Western District of Texas.
- Global Locating Service v. Coolpad (E.D.Tex.) – Defended a patent infringement lawsuit on behalf of Coolpad, a Chinese consumer product and smart device company, against Global Locating Service regarding smart tracking technology in the Eastern District of Texas.
- H-E-B, LP v. Wadley Holdings, LLC (W.D.Tex) –
Defended a patent infringement lawsuit on behalf of Chinese consumer product Ningbo Kuer against competitor H-E-B grocery regarding cooler vacuum technology in the Western District of Texas. Successfully resolved the case favorably for the client. - Tobi v. 7Invensun (D.Nev.) – Defended a patent infringement lawsuit on behalf of Beijing 7Invensun, a Chinese eye-tracking company, against Tobii regarding eye-tracking technology in the District of Nevada. Filed motion to dismiss under Section 101, and the case was subsequently voluntarily dismissed.
- LedComm v. Sengled et al. (N.D.Ga.) – Defended a patent infringement lawsuit on behalf of Sengled, a Chinese consumer product (LED lighting) company, against LedComm LLC regarding LED display technology in the Northern District of Georgia. Obtained favorable settlement and early dismissal.
- Cutting Edge Vision v. OnePlus et al. (N.D. Ill.) – Defended a patent infringement lawsuit on behalf of OnePlus, a Chinese smartphone company, against Cutting Edge Vision in the Northern District of Illinois. Obtained favorable settlement and early dismissal.
- Rosco v. Shenzhen Germid (Safety Vision) (S.D.N.Y / S.D.Tex.) – Defended a patent infringement lawsuit on behalf of Chinese auto consumer company Shenzhen Germid against competitor Rosco, Inc. regarding auto back view mirror technology in the Southern District of New York, transferred to the Southern District of Texas.
- Personal Audio v. Google LLC (E.D. Tex / D.Del.) – Represented 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.) – Represented 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.
Defended a patent infringement lawsuit on behalf of Chinese consumer product Ningbo Kuer against competitor H-E-B grocery regarding cooler vacuum technology in the Western District of Texas. Successfully resolved the case favorably for the client.FinTech
- 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 asserted 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
- Viavi Solutions v. Dimensions Technology (N.D. Cal.) – Defending a patent infringement lawsuit on behalf of Dimension Technology, a Chinese medical device company, against competitor Viavi in the Northern District of California.
- 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.
IP/Antitrust
- Motorola Solutions v. Hytera Communications (D.N.J) – Represented Hytera, a leading Chinese radio manufacturer, in antitrust monopolization claims (including SEPs) against Motorola Solutions.
Commercial Litigation
- Edens v. Olight USA et al. (N.D. Ill / C.D.Ill) – Representing Olight USA in a product liability litigation about its flashlight in the Illinois district court.
- Epson America, Inc. v. Godee et al., (D. Mass) – Representing online e-commerce company Bomaker in a false advertisement litigation about LED projectors in the District of Massachusetts.
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 afterward.
- Filed IPRs on behalf of Unified Patents against multiple NPEs. Instituted.
PUBLICATIONS
- 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)
SPEAKING ENGAGEMENTS
- Speaker, “How Would In-house Counsel Manage US IP litigation and Latest US IP Development’s Impact on Medical Device Companies,” in China Medical Device IP Summit 2020, July 2020: Shanghai, China.
- 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
News, Events, & Insights
- Law 360: Patent Case Over Air Conditioners For Boat Use Sinks At ITC
News March 19, 2024
- Rimon Law welcomes Jason Xu as International Intellectual Property Partner in its Washington, DC office
News May 4, 2020
