David Huang

Partner

Attorney at Law

Patent Attorney

Email: david.huang@lexfieldlaw.com

Tel: +86 10 8572 8345

Emphasis

• Patent litigation and invalidation
• Patent prosecution
• IP transactions

Professional Highlights

David Huang excels in devising the best strategy for his clients to build, exploit and enforce their patent portfolio, through R&D, prosecution, purchase, licensing and litigation. He always presents his services in a business-sensible and cost-efficient manner.

David serves clients across many industries such as computer architecture, Internet, software, telecommunication, semiconductor, life sciences, chemical engineering, clean energy and medical devices. His clients include multinationals, SMEs and startups inside and outside China.

David has a technical background in computer science and an LL.M degree (with distinction) from the University of Pennsylvania Carey Law School.

Representative Cases on enforcement, litigation and contentious matters

• epresented 3 leading telecommunication SEP holders in their SEP licensing litigation in China against Chinese or foreign implementers, and managed patent invalidation actions between the parties;
• represented a US patent owner in the 3D movie projection industry in its patent enforcement actions against multiple infringers and successfully defended its patents in invalidaction actions filed by the infringers;
• successfully obtained substantial damages for a European truck company in a series of design patent enforcement actions;
• advised a Hong Kong company in the clean energy industry in its complex disputes with a former business partner in China involving joint R&D agreements, patent invalidation and patent infringement suits;
• won a series of design patent invalidation actions for a US fashion brand;
• advised a US company in the environmental protection industry in a complex trade secret and patent ownership litigation against former employees;

Representative Cases strategization, prosecution, and transaction matters

• advised an Israeli company in the new-energy transportation industry to license its patents and trade secrets to a Chinese state-owned company;
• advised a Hong Kong company in the new energy industry on R&D cooperation with various Chinese universities;
• advised an Israeli company in the AI/electronics industry in building and then selling their China patent portfolio;
• advised a Hong Kong investment company on negotiation of an equipment purchase agreement with a Chinese state-owned company and on freedom-to-operate analysis in Vietnam for a major project;
• advised various foreign companies in joint R&D and licensing arrangements with Chinese state-owned research institutes;
• advised various foreign companies in its IP licensing arrangements with their JVs in China;
• advised Disney in the IP and licensing issues in the establishment of the Shanghai theme park;
• advised major originator pharmaceutical companies in various patent-related regulatory matters;
• won several appeals before the IP Division of the Supreme People’s Court in administrative lawsuits to reverse CNIPA’s rejections;
• won a favorable Decision of Reexamination via good evidence and arguments that persuaded the appeal examiners, leading to the grant of a pharmaceutical patent for the client at a critical juncture of its licensing negotiation;
• managing the China prosecution portfolio for various foreign clients across muiltiple industries;
• supervising the drafting and prosecution of the China and global patent portfolio for various domestic clients in ICT, online gaiming, chemistry/new energy industries;
• advising multinationals’ R&D centers in Beijing and Shanghai on R&D and IP policies, invention mining and global patent prosecution.

Honors and Awards

David has been consecutively ranked by the prestigious IP publication IAM Patent 1000-The World’s Leading Patent Professionals in since 2017.

Education

Tsinghua University, B.E (1999) and M.E (2002), both on computer science

University of Pennsylvania Law School, LL.M (with distinction) (2010)

Languages

Chinese, English