Overview

Will Chen is a partner in the Intellectual Property Group in the firm's Silicon Valley office.

Areas of Practice

Will advises clients in all areas of intellectual property law, including patent litigation, strategic patent portfolio development, patent office post-grant validity trials, patent and technology licensing, and patent infringement and validity opinions.

Will has extensive experience in helping high-tech companies in Silicon Valley and China on building comprehensive patent portfolios and developing sophisticated international patent strategies, assessing, avoiding and responding to third-party IP threats, inter partes reviews (IPRs) and reexaminations at the patent office, district court patent litigation, in-bound and out-bound technology licensing, and negotiating IP asset transactions such as mergers, acquisitions, joint ventures and the like. He has successfully litigated patent cases in federal district courts, and post-grant proceedings before the Patent Trial and Appeal Board (PTAB). He has successfully represented telecommunications and Internet companies in multiple patent acquisition deals. Will has also published a book titled U.S. Patent Litigation in China.

In working with high-tech companies, he has developed in-depth knowledge in a range of industries including software, artificial intelligence, virtual and augmented reality, telecommunications, networking, electronic circuitry, semiconductor, MEMS, and medical devices.

Will frequently speaks, teaches, and publishes on a variety of IP-related topics, including litigation, licensing, trade secrets, strategic portfolio management, and patent enforcement.

Experience

Experience

  • Defended a software company in Beijing, China and successfully forced plaintiff to dismiss the case at an early stage of the case
  • Defended a semiconductor company in Shenzhen, China in a patent infringement litigation involving MEMS devices and successfully settled for the defendant without any payment to plaintiff
  • Defended a network device company in Silicon Valley and successfully settled the case, and defendant was able to make public offers in the stock exchange market
  • Defended multiple networking companies in Silicon Valley in a patent infringement litigation involving network switches and routers and successfully settled for the defendants
  • Represented BCD Semi of Shanghai, China, in a complex patent infringement litigation involving power supply products and successfully settled the case.
  • Manages patent portfolios and provides counseling on IP issues for many high-tech companies in China.
  • Counsels several high-tech companies in Silicon Valley on IP issues.

Insights

Articles

Book U.S. Patent Litigation, Intellectual Property Publishing House Co. Ltd, 2014.

"U.S. Patent Litigation Strategy," China IP News, Jan. 13, 2016.

"Recent Key Developments on Enforcement of Standard-Essential Patents in U.S. Courts," China IP Magazine, April 5, 2015.

"Post Grant Proceedings," Faren Magazine, Dec. 2013.

"Summary of After Final Consideration Pilot," China IP News, Aug. 2, 2013.

"Enforcing Revolutionary Product Design in the U.S. Market," China IP News, June 12, 2013.

"The Golden Design Patent," China IP News, May 8, 2013.

"How to Expedite Examination in the U.S.," China IP Magazine, Feb. 2013.

"U.S. Patent-Law Reform Update," China IP News, Dec. 2009.

"Inventor Employee Agreement Under U.S. Law," Electronic IP Rights, June 2009.

Education

M.S., Northeastern University, 2004

LL.M, Franklin Pierce Law Center, 2001

LL.B., Tsinghua University, China, 1999

B.S., Tsinghua University, China, 1998

Admissions

  • California
  • New York
  • U.S. Court of Appeals, Federal Circuit
  • U.S. Patent and Trademark Office
  • Passed China Bar Examination

Languages

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