Associate
Shawn Chang has extensive experience in several practice areas, including litigating in U.S. district courts, challenging and defending patents in post-grant proceedings at the U.S. Patent and Trademark Office (USPTO), and representing clients in appeals before the U.S. Court of Appeals for the Federal Circuit. He also advises clients on their U.S. and international patent portfolios, provides opinions of counsel, and performs patent portfolio analysis and evaluation to assist in clients' IP business strategies.
Shawn's litigation experience includes conducting infringement and validity analyses, drafting motions and trial briefs, taking and defending both fact and expert depositions, working with technical and damages experts for preparing reports, and arguing on appeal.
Shawn's patent office practice includes drafting and prosecuting U.S. and foreign patent applications, and representing clients in post-grant review proceedings, such as reexaminations and inter partes reviews (IPRs), and in the former transitional program for covered business method (CBM) patents, before the Patent Trial and Appeal Board (PTAB) of the USPTO. Shawn has drafted both successful petitions to invalidate patents and successful patent owner responses to maintain patent validity.
Shawn's diverse technological experience encompasses all aspects of electrical and computer technologies, including communications systems, wireless technologies, data and signal processing, optical systems, network authentication protocols, semiconductor devices, unmanned aerial systems, and mobile devices. Prior to law school, Shawn worked as a program manager, developing various educational outreach programs at the university level for non-profit organizations. He oversaw international tours, quarterly conferences, annual student trainings, and staff development retreats. He also worked at an engineering company specializing in laboratory airflow control systems. Shawn's previous research and academic training include hardware and software research and development of autonomous networks, real-time visual tracking systems, and semiconductor device fabrication.
Shawn's pro bono experience includes representing veterans with claims before the U.S. Court of Appeals for Veterans Claims. He also participated in the inaugural NEXT Advocates/Mock Hearing Program supported by the International Trade Commission Trial Lawyers Association (ITCTLA).
Represented Google as petitioner in an inter partes (IPR) review at the Patent Trial and Appeal Board (PTAB), successfully cancelling all challenged claims related to natural language processing and information retrieval. On subsequent appeal, successfully represented Google before the Federal Circuit, securing affirmance of the PTAB’s decision.
IPR2020-00755, PTAB, Judges Droesch, McShane, Medley
22-1245, Fed. Cir., Judges Bryson, Reyna, Taranto
CardioNet LLC et al. v. InfoBionic, Inc.
1:17-cv-10445, D. Mass., Judge Talwani
NICE Ltd. et al v. CallMiner Inc.
Represented Plaintiffs NICE Ltd. and Mattersight Corp. against CallMiner Inc. in patent suit involving speech analytics, call monitoring, call center management, and data security.
1:18-cv-02024, D. Del., Judge Andrews
Fidelity Information Services, LLC v. Mirror Imaging LLC
Represented petitioner Fidelity Information Services in four covered business method reviews, successfully cancelling all claims of patent owner Mirror Imaging’s patents related to electronic financial document storage.
CBM2017-00064, -00065, -00066, -00067, PTAB, Judges Arbes, Easthom, Elluru
Google LLC v. SEVEN Networks, LLC
Member of team representing Google as petitioner at the PTAB, where the Board instituted inter partes review of patents asserted in litigation.
IPR2018-01049, 01051, -01052, -01101, PTAB, Judges Dang, Chang, Harlow, Eastholm
Britax Child Safety, Inc. v. Nuna International BV et al.
Defended Nuna International and Nuna Baby Essentials in patent action brought by Britax Child Safety asserting patents directed to child safety seats.
5:17-cv-02724, E.D. Pa., Judge Leeson
Articles
Southeast Litigation Update: January 2024 Southeast Litigation Update: January 2024
March 7, 2024
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Southeast Litigation Update: December 2023 Southeast Litigation Update: December 2023
February 12, 2024
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Southeast Litigation Update: November 2023 Southeast Litigation Update: November 2023
January 5, 2024
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Southeast Litigation Update: September and October 2023 Southeast Litigation Update: September and October 2023
December 18, 2023
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Southeast Litigation Update: August 2023 Southeast Litigation Update: August 2023
October 13, 2023
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Southeast Litigation Update: June and July 2023 Southeast Litigation Update: June and July 2023
September 12, 2023
Announcement
Shawn Chang Selected for NAPABA’s 2023 Prospective Partners Program Shawn Chang Selected for NAPABA’s 2023 Prospective Partners Program
October 5, 2023
Press Release
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September 26, 2022
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