Orrick Library Seminar - Latest Developments in SEP Litigation in China

The Orrick Library Seminar Series

Seminar | November.21.2019 | 9:00am - 10:30am (Tokyo Standard Time)

Orrick Tokyo

Orrick's Global Japan Practice is hosting a series of "Orrick Library" seminars to explore legal issues in various fields in Japan as well as the United States, Asia and Europe. The next seminar will be held on Thursday, November 21 from 9:00 am to 10:30 am.

This session will introduce the development of patent infringement litigations involving standard essential patents (SEPs) in China, using some important and recent cases as examples. It will cover the legal background, the FRAND Doctrine, injunctive relief, and the calculation of license fees of SEPs. Yufeng (Ethan) Ma, partner in Orrick’s Shanghai Office, will be presenting live from Tokyo.

This 90-minute session will cover the following topics:

The legal frame work of SEPs in China
The Application of FRAND Doctrine
Whether and when injunctive relief may be available
How Chinese courts calculate license fees under the FRAND Doctrine

Yoshihiro Takatori, Head of Global Japan Practice (Dai-Ichi Tokyo Bar Association), and Tokyo litigation partner Shinsuke Yakura (Dai-Ichi Tokyo Bar Association) will also discuss how Japanese companies doing business in China should prepare for FRAND disputes and the possibility of using of arbitration and mediation facilities in Japan.

There will be time set aside for questions and answers.

Date: Thursday, November 21, 9:00 am – 10:30 am (Registration from 8:45 am)
Place: Orrick Tokyo Law Office (Map)
Speakers: Ethan Ma, Partner, Shanghai Office
Language: English
Fee: No charge
Registration Deadline: November 19 (Tuesday)

* Tokyo Litigation Partners Yoshihiro Takatori and Shinsuke Yakura will offer additional comments and perspectives in Japanese.

* * Orrick, Herrington & Sutcliffe LLP is an accredited MCLE provider in the States of New York and California. This continuing legal education course has been approved in accordance with the requirements of the Continuing Legal Education Board for a maximum of 1.5 credit hours, of which 1.5 credit hours can be applied toward the areas of professional practice requirement.

CLE Credits Available: Y

Shinsuke Yakura Partner, Komplexe Streitfälle & Streitbeilegung, Patents

Tokio

See my bio

D:+81 3 3224 2922
E: [email protected]

Practice:

Technology & Innovation Sector
Life Sciences Sector
Komplexe Streitfälle & Streitbeilegung
Patents
Trademark, Copyright & Media
Geistiges Eigentum
Cyber, Privacy & Data Innovation
Antitrust & Competition
International Arbitration & Dispute Resolution
Mass Torts & Product Liability
Employment Law & Litigation
Japan

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Shinsuke Yakura Partner

Tokio

His practice focuses on intellectual property, antitrust, product liability, medical and pharmaceutical, and other commercial disputes for both domestic and foreign companies. He actively engages in cross-border litigation and arbitration, and draws on his extensive knowledge and experience from various countries.

In regards to intellectual property, Shinsuke has represented numerous companies in patent infringement litigation involving a wide range of technologies related to electric devices and industrial machinery. He has also handled other IP-related issues such as trademark, copyright and right to publicity. He is a qualified patent attorney (Benrishi) in Japan.

Recently, he has been involved in business and legal issues related to artificial intelligence (AI), Internet of Things (IoT), and big data; he also acts as the Asia representative of Orrick’s Global AI Working Group.

Consistently providing strategic advice from a global perspective, he is also actively involved in bribery regulations including FCPA and UKBA, antitrust and competition law, cartel, fraud and compliance investigations.

He also advises in mergers and acquisitions, licensing and other transactional matters.

Izumi Garden Tower 28th Floor Tokyo

+81 3 3224 2900

Izumi Garden Tower, 28th Floor
6-1 Roppongi 1-Chome
Minato-ku, Tokyo, 106-6028
Japan

T: +81 3 3224 2900
F: +81 3 3224 2901

Speaker

Yufeng (Ethan) Ma Partner, Geistiges Eigentum, Trade Secrets Litigation

Shanghai; Chicago; Peking

See my bio

D:+86 21 6109 7108
E: [email protected]

Practice:

Technology & Innovation Sector
Geistiges Eigentum
Trade Secrets Litigation
Patents
IP Beratung & Due Diligence
U.S. International Trade Commission
International Arbitration & Dispute Resolution
China

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Yufeng (Ethan) Ma Partner

Shanghai; Chicago; Peking

In addition to specializing in complex IP litigation relating to patent infringement, ITC 337 investigations, trade secrets misappropriation and unfair competition, Ethan has extensive experience advising clients on IP administrative disputes and reexamination, IP strategies, IP due diligence, and IP aspects of strategic transactions, including licensing or transfer, mergers and acquisitions, joint ventures and collaborations. His clients cover a wide range of industries, including medical devices, hardwares, softwares, internet, semiconductors, electronics, telecommunications, AI, automobile, chemical, materials, energy, etc. His recent clients include Baidu, Tencent, SMIC, JD.com, Micro-Tech, Vivo, Coolpad, Anker, OnePlus, Govee, LANHE, Lovense, Zhejiang Rongpeng, Sansi Electronic Engineering, Yaham Optoelectronics, CreateLED Electronics, Howshow Technology, Huayi Mechanical and Electrical, INFiLED Electronics, Applied Materials, Synopsys, Coilcaft, Hecate, etc.

Over the years, Ethan has represented dozens of Chinese companies in resolving their IP disputes in the U.S. Ethan and his litigation teams won a number of high-profile ITC investigations involving Chinese companies and earned clients’ long-term trust. In one investigation (337-TA-623), his clients are four subsidiaries of a large state-owned company in China, who were sued for patent infringement. The Commission reversed the late Chief Administrative Law Judge’s unfavorable decision and found that Ethan’s clients were not infringing and did not violate Section 337. In another investigation (337-TA-655), he represented the complainant and its subsidiaries in China suing a group of Chinese respondents for trade secret misappropriation. The ITC issued a 10-year exclusion order against these respondents. This landmark decision represents a new development of trade secret law and ITC jurisdiction in the U.S., and was upheld by the US Court of Appeals for the Federal Circuit. Since then, Ethan has won case after case on behalf of his clients. He is also committed to resolving disputes in the most cost-effective and timely way. “Ethan always tries to resolve matters for clients at the lowest cost possible,” said a client who won a case as he recommended Ethan to his peers.

For instance, in 2017, Ethan successfully defended Shenzhen Howshow Technology against Kent Displays, Inc. in an ITC 337 investigation (337-TA-1035) involving alleged infringement of patents relating to liquid crystal e-writers and components. Orrick secured a complete victory for the client by forcing the complainant to unconditionally withdraw after four months of active litigation. The case was named “Deal of the Year 2017 – Disputes and Investigations” by China Business Law Journal.

In another case, Ethan successfully defended Sansi Electronic Engineering, CreateLED Electronics, Yaham Optoelectronics. and other Chinese respondents against Ultravision Technologies in an ITC Section 337 investigation (337-TA-1114) filed on 27 March 2018 involving alleged infringement of patents relating to certain modular LED display panels and components. The complainant was forced to withdraw the complaint unconditionally during the expert discovery period in November 2018, which led to a final termination by the ITC on 21 February 2019.

Prior to joining Orrick, Ethan served as Director of IP, Asia of a world leader in specialty glass and ceramics, where he was in charge of the company’s daily IP matters in China and throughout Asia. Before that, he was a partner and member of the Board at McAndrews, Held & Malloy in Chicago, Illinois. Ethan was the first non-US born lawyer of that firm.

In the past 20 years, Ethan has been committed to building bridges and facilitating understanding between China and the US on IP protection and exchange. In addition to being a frequent speaker at various seminars and conferences in China and the US, Ethan regularly publishes articles and has been interviewed by numerous media. He served as a committee member of the Asian Legal Committee of Intellectual Property Owners Association (IPO) for many years.

Ethan is also actively involved in the “One Belt One Road” and “Going Out” initiatives led by the PRC government and non-profit organizations. He participated in Shanghai Municipal Commission of Commerce’s “Going Overseas Service Portal” project, and acts as an expert of Shenzhen Overseas IP Protection and Assistance Expert Pool, a special advisor to Wisdom IP - Overseas Intellectual Property Alliance (WIPA), Nanjing, Jiangsu, an expert in Nanjing Overseas IP Think Tank, Zehjiang Dongyang IP Think Tank, Shanghai International Economic and Trade IP Protection Overseas Expert Pool, and one of the first batch experts in Shanghai Overseas IP Disputes Resolution Expert Pool.

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China
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