Ming-Tao Yang

Partner

Ming-Tao Yang focuses on litigating and defending against patent infringement actions in various forums, including the U.S. International Trade Commission; the federal district courts for the Northern, Central, and Southern Districts of California, the Eastern District of Texas, and the Western District of Washington; and the Court of Appeals for the Federal Circuit. 

Benefited from his litigation experience, Mr. Yang counsels clients frequently on issues relating to patent enforcement, pre-litigation investigations, patent prosecution, and license negotiations.  He has handled patent litigation, prosecution, and licensing matters relating to various technical areas, including telecommunications, light emitting diodes, memory devices, application-specific integrated circuits (ASICs), controller integrated circuits (ICs), computer networking and switches, optical sensors and storage devices, touch-input and display devices, and liquid crystal displays. 

Mr. Yang regularly travels to Asia and counsels Asian clients on patent enforcement, prosecution, and licensing matters.  He frequently speaks, teaches, and publishes in the U.S. and Asia on topics related to U.S. patent litigation and prosecution strategies.

Highlights

• Defended an analog IC company against patent infringement assertions and obtained a favorable resolution by leveraging effective counterclaims of false marking and invalidity against a patentee.
• Obtained the dismissal of a declaratory judgment action against a patentee based on the lack of declaratory-judgment-action jurisdiction and successfully defended the dismissal on appeal.
• Defended a supplier of computer networking devices against a competitor's patent infringement assertions, leading to the voluntary dismissal of all claims by the competitor-patentee.
• Defended an IC-design company against patent infringement assertions by one of the market leaders asserting multiple patents, leading to non-infringement and invalidity rulings against the asserted patent claims.
• Briefed a district court on claim construction issues relating to touch-input devices, leading to a settlement highly favorable to a patentee.
• Serves as an adjunct professor at the KoGuan Law School of Shanghai Jiao Tong University, teaching courses in "IP law and Practice in the United States," 2010.
• Served as an adjunct professor at the Renmin University School of Law, IP Institute, teaching "IP Law and Practice in the United States"; and at the Renmin University Business School, teaching "Managing Intellectual Property for Business Growth," 2009.
• Served as an assistant professor at the Institute of Technology Law, National Chiao Tung University, teaching courses in "Management of U.S. Patent Litigation – Offensive and Defensive Strategies" and "Discovery Practice in U.S. Patent Litigation," 2008; in "U.S. Patent Litigation Strategies," 2007; in "U.S. Patent Litigation," 2005 & 2006.

Select Publications

• Coauthor. "Borrowing Patents: An Idea Whose Time Has Not Yet Come," Commercial Times, Jan. 8, 2013.
• Coauthor. "Is it Safe to Store Your Trade Secrets in the Cloud?" Forbes, Feb. 22, 2012.
• Coauthor. "Assessing Patent Infringement Risks," Commercial Times, Sept. 13, 2011.
• Coauthor. "Claiming Misdemeanors and Felonies: Crimes to Avoid in Drafting Patent Claims," Bloomberg Law Reports, Nov. 29, 2010.
• Coauthor. "What Taiwan Companies Need to Know about Intellectual Property When Doing Business in the United States," Monte Jade (West Coast) Newsletter, Sept. 2010.
• Coauthor. "Expanding Standards of Inequitable Conduct: Increased Burden of Disclosure on Patent Applicants," AIPPI Journal, July 2010.
• Coauthor. "Counter-Measures to ITC's Expansive Power of Banning Product Importation," Managing Intellectual Property Chinese Edition, June 2009.
• "Building IP Assets and Implementing Strategies for the Future," Digitimes, Jan. 2009.
• "Preparing to Enter the U.S. Market," Digitimes, Oct. 2008.