On global trade matters, Dr. Li has assisted dozens of clients across a diversity of industries to classify their products and technologies under the Export Administration Regulations (EAR) and the International Traffic in Arms Regulations (ITAR). Dr. Li’s code-level understanding of encryption software and background in semiconductor, hardware and electronics-related technologies make him especially valuable to technology companies seeking to understand how these important national security laws impact their cross-border transactions. Dr. Li advises on national security-related foreign investment reviews conducted by the Committee on Foreign Investment in the United States (CFIUS), including the CFIUS Pilot Program addressed to “critical technologies.” In these areas, Dr. Li merges a broad base of scientific knowledge derived from multiple advanced degrees with practical regulatory and litigation experience, delivering exceptional value to Goodwin’s clients.
In his IP practice, Dr. Li represents a wide variety of industrial, commercial and individual clients, in both IP litigation, patent prosecution, and transactional matters. IP litigation forums in which he has been involved include U.S. district courts, the International Trade Commission (ITC), and Patent Trial and Appeal Board (PTAB) of U.S. Patent and Trademark Office (USPTO). He has also prosecuted patent applications before the USPTO since 2003. Client sectors served by Dr. Li span a wide spectrum and include semiconductor equipment, microelectronic devices and packaging, integrated circuit (IC) designs, high-speed memory systems, storage networks and apparatuses, medical devices (including bio sensors) and diagnostic equipment, telecommunications equipment and network infrastructure, mobile marketing, security and authentication, consumer banking and credit cards, investment banking (securities, derivatives and structured financing), railroad equipment, online and retail gaming, and social networking. Apart from advising clients of American and European origins, Dr. Li has successfully served, and takes pride in serving, clients from Asia.
Representative matters and recent experiences include:
- In re Certain Electrochemical Glucose Monitoring Systems and Components Thereof, ITC Investigation No. 337-TA-1075. Representing a glucose sensor manufacturer against a competitor’s retaliatory action and secured summary determination of non-infringement.
- Represented a large semiconductor equipment supplier to challenge multiple asserted patents in 12 IPRs filed in quick succession, forcing the patent owner into favorable settlement.
- Represented a Japanese material supplier to successfully resist multiple NPE licensing offers.
- Represented a Chinese private equity fund in IP due diligence during a high-stake investment deal with a U.S. technology company.
- In re Certain Electronic Imaging Devices, ITC Investigation No. 337-TA-850. Represented a major Chinese mobile phone manufacturer (ZTE) against patent infringement claims brought by FlashPoint Technology, Inc. and secured a ruling of non-infringement with respect to all the patents asserted against ZTE.
- In re Certain Display Devices, including Digital Televisions and Monitors, ITC Investigation No. 337-TA-713. Represented respondents TPV Technology Ltd., Top Victory Electronics (Taiwan) Co., Ltd., and TPV Technology (Beijing) Co., Ltd. et al. against patent infringement claims brought by a major consumer electronics manufacturer.
- In re Certain Semiconductor Chips With Minimized Chip Packages Size and Products Containing Same, ITC Investigations 337-TA-605 and 337-TA-649. Represented complainant against several major semiconductor chip packaging companies including Motorola, STMicroelectronics and some Southeast-Asian subcontractors..
- Lumenis Ltd. et al v. Alma Lasers, Ltd. et al (N.D. IL). Represented Alma Lasers, a medical device maker, against patent infringement and misappropriation of trade secrets claims, including concurrent reexamination proceedings that resulted in cancellation or amendments of almost all asserted claims.
- Represented a patent owner against major manufacturers of cable and satellite set-top boxes and a prominent satellite TV program provider in a patent infringement matter which reached a favorable settlement for the client.
- Augme Technologies, Inc. v. Pandora Media, Inc. (D. DE). Represented patent owner against a popular internet radio provider.
- Research Affiliates, LLC v. WisdomTree Investments, Inc. et al. (C.D. CA). Represented all six defendants against patent infringement claims concerning exchange traded funds (ETFs) that track stock indexes and secured a favorable result where plaintiff paid defendants to settle the case.
