Shelley Zhang, a partner in Orrick’s Beijing office, is a member of the Intellectual Property Group. Her practice focuses on IP prosecution and enforcement. Shelley has extensive experience in patents, trademarks, domain names, copyrights and trade secrets.

Shelley's related IP experience includes the following:

  • Patent invalidation proceedings, anti-counterfeiting, anti-piracy efforts and patent and trademark enforcement litigation in China.
  • Prosecution of patent and trademark, including application preparation, office actions/oppositions procedures and reexamination procedures.
  • Enforcement and technology transfer/licensing arrangements for substantial patent and trademark portfolios for companies doing business in China.
  • Advising on IP protection strategies, R&D related IP issues and matters in relation to export and import control of technology.
  • Assisting Chinese companies in Section 337 U.S. International Trade Commission investigation, patent infringement litigations and product liability litigations in the U.S. 
  • IP due diligence and portfolio counseling.
  • Prior to joining Orrick in 2007, Shelley worked for two international law firms, where she was involved in numerous IP prosecution and enforcement cases.

    Prior to those international law firms, she worked with local law firms as a Chinese lawyer practicing in civil and criminal litigation for two years and in trademark and patent prosecution for four years. Shelley also worked as an engineer in a state-owned enterprise for three years after her graduation from Beijing Institute of Technology in 1996.

    • Various Chinese companies (including state-owned companies) as defendants in a number of commercial litigation and product liability litigation cases in the U.S.
    • A leading solar thermal technology company based in Israel in negotiating a technology licensing contract with a large state-owned enterprise, and successfully established a joint venture in China.
    • An individual as defendant in a U.S. case related to criminal misappropriation of trade secrets. 
    • A multinational U.S. software company in two patent infringement lawsuits before a Beijing court and the related patent invalidation case at the Chinese Patent Reexamination Board (PRB), which led to a favorable PRB decision for the client and withdrawal of the litigation cases by the plaintiff (2012). 
    • A leading U.S. positioning technology company in its import and export control issues.
    • A leading Taiwan touch screen company in defending three times of patent invalidation proceedings at the PRB, which lead to a favorable PRB decision (2010) for the first case, withdrawal of the case by the petitioner (2011) for the second case, and a favorable PRB decision for the third case (2012).
    • A leading Taiwan office supplies company in a patent infringement lawsuit in Beijing and in the patent invalidation procedures at the PRB, which led to a favorable settlement. (2011) 
    • A French broadcasting related technology company in a standard patent related program in China.
    • A U.S. medical device company in technology agreement for China related transactions.
    • A U.S. multinational semiconductor company in preparing a patent litigation and collecting evidence in China.
    • Leading automobile component supply companies in IP due diligence, especially patent infringement analysis.
    • A leading U.S. entertainment company in structuring operation in China for producing and telecasting TV program.
    • A leading U.S. LED chip company in structuring IP license and assignment agreements in establishing a Chinese joint venture company. 
    • A leading U.S. reverse engineering company in understanding Chinese legal environment for reverse engineering business. 
    • A leading U.S. flash memory cards company in understanding Chinese regulations on products containing encryption technologies. 
    • A leading Israeli RFID card manufacture company in filing patent invalidation proceedings, defending patent infringement proceedings and defending customs enforcement proceedings, which led to a final landmark global settlement agreement with the company’s major competitor. 
    • A U.S. software engineering company in understanding technology import and export control issues in research and development activities in China. 
    • A leading U.S. e-commerce company in understanding issues including preliminary injunction and internet related infringement jurisdiction, cross-border technology license and assignment, employee inventor compensation and IP ownership. 
    • A multinational Swiss company providing power and automation technologies in trademark and domain names disputes in China, as well as in patent protection strategies. 
    • A leading Swiss company in the field of electrical transportation engineering in preparation for patent invalidation proceedings, evidence collection and evaluation, and strategy issues. 
    • A U.S. pharmaceutical company in understanding administrative protection of pharmaceutical products and patent infringement in China. 
    • A leading Taiwan company in the field of semiconductor manufacture in a Chinese litigation and a relevant U.S. litigation, involving issues of breach of contract, patent infringement, trade secret misappropriation and unfair competition. 
    • A group of Chinese companies in the laminated flooring industry in a U.S. ITC Section 337 investigation case. 
    • A leading Australia company in the mining and minerals processing industries in IP enforcement involving issues of breach of contract, unfair competition, patent, trademark and copyright infringement in China. 
    • A leading U.S. consumer product manufacturer on enforcement of IP rights in China, involving administrative proceedings before the Chinese IP office, patent infringement litigation proceedings before court, administrative proceedings before Customs and invalidation proceedings before the PRB.

Insights

News