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Yufeng (Ethan) Ma

Partner

Shanghai

Yufeng (Ethan) Ma, a partner and the chief representative in Orrick’s Shanghai office, has over 18 years of experience assisting clients in intellectual property (IP) related matters including IP litigation before the US International Trade Commission (ITC) and the US federal courts.

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, Bianlifeng, Shanghai Sansi Electronic Engineering, Yaham Optoelectronics, CreateLED Electronics, Coolpad, vivo, Shenzhen Howshow Technology, Huayi Mechanical and Electrical, Shenzhen INFiLED Electronics, Applied Materials, Synopsys, Carbon, Inc., 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, keeping his undefeated record to this day. 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 Shanghai Sansi Electronic Engineering Co., CreateLED Electronics Co., Yaham Optoelectronics Co. 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 18 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 in 2019, and acts as a special advisor to Wisdom IP - Overseas Intellectual Property Alliance (WIPA), Nanjing, Jiangsu.

    • Successfully defended Vivo Mobile Communication Co., Ltd. and BBK Communication Technology Co., Ltd. against Innovative Foundry Technologies in an ITC Section 337 investigation (337-TA-1149) concerning certain semiconductor devices, integrated circuits, and consumer products containing the same; we helped the client settle along with the entire respondent group, without compromising anything on its own.
    • Defending a Nanjing-based medical device company in the patent infringement cases filed in November 2018 by Boston Scientific Corporation at the U.S. District Court for the District of Delaware and at the District Court of Düsseldorf, Germany.
    • Successfully defended Zhejiang Rongpeng Air Tools in a trademark infringement case against SATA GmbH at the U.S. District Court District of Nevada filed in October 2018.
    • Successfully defended Shanghai Sansi Electronic Engineering Co., CreateLED Electronics Co., Yaham Optoelectronics Co. and other Chinese respondents against Ultravision Technologies, LLC 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. Orrick achieved a victory on 21 February 2019 for our clients and the complainant withdrew the case unconditionally.
    • Successfully defended China Synergy Manufacturing Group, Shanghai Cerong Network and Shanghai Sourcing against Luxottica Group S.p.A. and Oakley, Inc. in a trademark and patent infringement case filed in U.S. District Court for the Northern District of Illinois (Eastern Division) in June 2018. The case was settled quickly with satisfactory results for our clients.
    • Successfully defended Huayi Mechanical and Electrical Co., Ltd against Walbro, LLC in an ITC Section 337 investigation (337-TA-1123) filed in June 2018 involving alleged infringement of patents relating to certain carburetors and products, and laid foundation for the client to reach a satisfactory settlement with Walbro.
    • Successfully defended Shenzhen INFiLED Electronics in a patent infringement suit relating to flexible LED display filed by NanoLumens Acquisition, Inc. in the U.S. District Court for the Northern District of Georgia in June 2017. The plaintiff was forced to unconditionally withdraw its complaint in December 2017.
    • Successfully defended Suzhou Autoway System, Jiangsu Seraphim Solar System and Seraphim Solar USA Manufacturing in a trade secret misappropriation litigation relating to solar cell production equipment in the U.S. District Court for the Northern District of California, against Solaria Corporation filed in April 2017. The plaintiff was forced to unconditionally withdraw its complaint in December 2017.
    • Successfully defended Shenzhen Howshow Technology against Kent Displays, Inc. in an ITC Section 337 investigation involving alleged infringement of patents relating to liquid crystal eWriters and components. It was the first ITC investigation instituted in 2017 (337-TA-1035); the complainant was forced to withdraw the case unconditionally in less than six months.
    • Successfully defended Semiconductor Manufacturing International Corporation (SMIC) in the patent infringement lawsuits against Lone Star Silicon Innovations LLC for alleged infringement of three patents relating to integrated circuit devices. The case was filed in November 2016 in the United States District Court for the Eastern District of Texas, successfully transferred to the United States District Court for the Northern District of California (NDCA), and then dismissed by NDCA. It was settled at terms very favorable to our client in June 2018 when Lone Star’s appeal was pending before the United States Court of Appeals for the Federal Circuit.
    • Represented Hangzhou Chic Intelligent Technology in two patent infringement lawsuits filed in May 2016 against Razor in the United States Federal Court in the Central District of California.
    • Represented Jinhua Kingwe Electrical and its US distributor in an ITC 337 investigation relating to certain hand dryers and housings for hand dryers; successfully achieved a very satisfying settlement for our client in October 2016.
    • Represented Hamilton Breach Brands in a patent infringement suit against two Chinese copycats of certain breakfast sandwich makers and achieved complete victory in September 2016. The defendants were ordered to pay a significant amount of damages to our client, along with a permanent injunction, and the destruction of manufacturing moulds.
    • Represented Chongqing QMI Medical Supply in an ITC 337 investigation relating to certain surgical stapler devices and components; successfully achieved a very satisfying settlement for our client in April 2016.
    • Advised JD.com on the IP aspects of its acquisition of Yihaodian marketplace platform assets (including IP assets) from Walmart.
    • Advised Baidu on the IP aspects of the US$150 million investment in Velodyne LiDAR, with NYSE-listed Ford Motor Company.
    • Advised OptAsia Healthcare, a Hong Kong-based healthcare technology firm, on its joint venture with California-based Soleno Therapeutics (NASDAQ:SLNO) and its subsidiary Capnia for the development and commercialization of Capnia’s innovative Sensalyze technology platform, which includes the CoSense End-Tidal Carbon Monoxide monitor that assists in the detection of excessive hemolysis in newborn infants.

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