PRACTICE AREAS

Patent, Trade Mark, Trade Secret, Anti-Trust, Cyber Security

SUMMARY

Steve Song, a specialized legal practitioner with 20 years of experience in IP fields, has argued dozens of cases before the Supreme Court and has prosecuted 1800+ patents for multinational companies before the Patent Office. Also, he has argued numerous cases in various IP courts throughout the country. He has represented clients in a wide variety of offensive and defensive technology litigation, from initial opinions through trial and appeal, relating to electronics and mechanical arts, including patent prosecution, invalidation, litigation and counseling.

Steve has insightful research on many issues in the theory and practice of the patent law. He is regarded by the Supreme Court as having outstanding expertise and prominent achievements with respect to patent infringement research especially in the fields of networking and telecommunication. He is a co-author of a new book entitled Patent Infringement Determination Guidelines published in the name of Beijing High Court. He has been invited as a special expert to get involved in research projects of Beijing High Court, CNIPA, and Beijing IPO. He has been invited to lecture to senior examiners at the Patent Office and international students at PKU Law School. Mr. Song authored 100+ articles published on various magazines.

EDUCATION

Juris Master, Peking University Law School

MS in telecommunication engineering, Military University of Information Engineering

BS in telecommunication engineering, Military University of Information Engineering

WORKING EXPERIENCE

2020.10 to present  Partner at Beijing QianCheng Law Firm

2018.05-2020.10   Partner at Beijing DHH Law Firm

2017.04-2018.05   Partner at Beijing Anjie Law Firm

2010.07-2017.03   Manager and Shareholder at Lee and Li Attorneys at Law Beijing

2005.02-2010.06   Patent Agent at NTD IP Attorneys

1998.07-2005.01   Engineer at a military research center

Representative Cases

In 2019, represented Dunjun to win a landmark case against Tenda before Chinese Supreme Court, in which the Court awarded damages of RMB 5M. More importantly, the court proposed a new rule of “irreplaceable and material role” for multi-party process patent and found direct infringement instead of any indirect infringement. It’s recognized as the Chinese Akamai case. This case leads to No.5 and No.13 adjudication rules in the summary of Chinese Supreme Court IP annual report (2019). In 2021, this case was announced by the Supreme Court as Guiding Case No.159.

In 2020, represented Wang Jing (former GM of Baidu Self-Driving) to win a high-profile trade secret case against Baidu (one of the largest Internet giants in China, claiming damages of RMB 50M) at Beijing IP Court.

In 2020, represented Dunjun to win a high-damages case against Wayos before Chinese Supreme Court, in which the Court awarded damages of RMB 10M. The case was elected as one of Top 10 technology cases of the Chinese Supreme Court. This case leads to No.20 adjudication rule in the summary of Chinese Supreme Court IP annual report (2020).

In 2022, represented Zhumang to defend and win two patent infringement cases (with claimed damages of RMB 100M) launched by Laidian. The two patents of Laidian are both invalidated.

In 2019, represented CCTV (the largest and most influential TV in China) to defend and win two patent infringement cases at Beijing IP Court.

In 2019, represented Meituan (one of the largest Internet giants in China) to defend and win a patent infringement case at Beijing IP Court.

Prosecuted more than 1400 patents for Qualcomm, more than 300 patents for Micron, and hundreds of patents for Intel, Phillips and TomTom in China.

Represented a Germany company against a Shenzhen based company in a design patent case regarding GPS, with a favorable decision, and against a Jiangsu company in a design patent case regarding car, with settlement.

Represented Microchip against Hair in a major patent invalidation case, with PRB maintaining all patent claims.

Represented Omron to invalidate a patent owned by a Korean company, with PRB invalidating all patent claims.

Provided invalidation analysis for iRobot in two patent matters.

Provided legal service for Zwilling, Henkel, Atotech, Roca and other Germany companies in patent litigation matters.

Provided FTO analysis and patent infringement opinion for Smith & Nephew.

SELECTED PUBLICATIONS

Mr. Song is famous for his insightful research capability. He was deeply involved in the formulation and amendments of Beijing High Court’s patent infringement determination guidelines in 2013 and 2017. He is one of the most prolific authors in China’s patent community, with 100+ articles published, some of which are quite influential.

Beijing IP Court decides first GUI infringement case, Managing Intellectual Property, January 2018.

Patent Linkage System is Becoming Real in China, Managing Intellectual Property, December 2017.

Supreme Court Frustrates Forum-Shopping Tactics, Managing Intellectual Property, September 2017.

Supreme Court Rules on Use of Specification in Claim Construction, Managing Intellectual Property, July 2017.

SEP ruling addresses exhaustion, contributory infringement and injunctions, Managing Intellectual Property, May 2017.

How long can the exclusive right of patent use go, China Patents and Trademarks, January 2017.

Indirect infringement in the cloud computing era: dilemma and solution”, China Patents and Trademarks, January 2015.

Comprehensive adjudication of infringement under DoE in view of Gree v. Midea, China Patents and Trademarks, July 2014.

On the act of using patent in sense of the patent law, China Inventions and Patents, November 2014.

The awareness of enforcement in patent drafting, China Inventions and Patents, June 2014.

The relationship between patent drafting, examination and protection in view of Apple’s Siri case, China Inventions and Patents, April 2014.

On the power of examination in view of the unity issue, Taiwan Patent Attorneys, January 2011.

Legal thinking on patent amendments going beyond the original disclosure, Best paper award of Patent Practice Academic Symposium of 2010.

Where is the scope of amendments, Patent Law Research, 2010.