With a focus on the technology sector, Shaobin Zhu advises on intellectual property (patent, trade secret, trademark, and copyright) litigation in US district courts and Section 337 investigations at the US International Trade Commission (ITC), as well as client counseling, intellectual property licensing, opinion work, patent prosecution, and open source software strategy. Shaobin handles matters relating to a variety of technologies, including computer software, telecommunications, smartphones, artificial intelligence (AI), Internet of Things (IoT), semiconductors, video processing, Internet television, LEDs, wearable devices, robotics, 3D printing, consumer electronics, and related electronics. He is admitted to practice in California and New York only.
Shaobin has helped dozens of Chinese clients successfully resolve their intellectual property (IP) disputes in the United States. His experience encompasses all aspects of intellectual property litigation, including working with clients to formulate litigation strategies, coordinating US and China teams to execute the strategies, and conducting patent validity and infringement analysis, technical discovery and production, depositions, expert reports and depositions, Markman hearings, briefing, motion hearings, trials, and settlement negotiations.
He guides clients through all stages of patent prosecution and invalidation in the US Patent and Trademark Office (USPTO), including patent application preparation, responses to office actions of the USPTO, and administrative post-grant proceedings challenging the validity of disputed patents.
Shaobin is a frequent speaker at industry events and teaches in China on topics related to US intellectual property litigation and prosecution strategy. He has taught a graduate course on US IP law at Renmin University of China Law School and Business School, and serves as a program professor at the University of Science and Technology of China School of Public Affairs.
Before joining Morgan Lewis, Shaobin was a partner in the intellectual property litigation practice of another global law firm. Early in his law career, he was as a judicial extern to Judge John C. Coughenour of the US District Court for the Western District of Washington, where he recommended disposition, drafted legal memos, and proposed orders on a complex computer software patent case.
Shaobin also previously worked as a software engineer at Electronic Data System and Sabre Holdings, where he developed client/server, multitier, Internet, and database related software applications. From 1994 to 1996, he served as a legal official at Hong Kong & Macao Affairs Office of China State Council, and helped harmonize the laws of Hong Kong and Macao with Chinese Basic Laws.
Represented a global mobile data service provider to successfully win against a competitor’s trade secret misappropriation allegations: defeated the competitor’s attempt to add the trade secret misappropriation claim in a patent case in the US District Court for Southern District of New York in 2018, and convinced the judge in the US District Court for the Northern District of California to grant two rounds of motions to dismiss the competitor’s trade secret misappropriation counterclaims in 2019 after concluding that the competitor had not alleged a plausible conspiracy theory to misappropriate trade secrets in China from a Chinese company in purported violation of any extraterritorial reach of the federal Defend Trade Secrets Act and California Uniform Trade Secrets Act.
Represented Chinese companies to successfully protect their innovations and brands by enforcing their patents, trademarks, and copyrighted 3D designs against infringers in many US district courts, including in the Northern District of New York and the Central district of California.
Represented Chinese companies to litigate and negotiate intellectual property and technology licensing, involving standard-essential patents, electronic design automation (EDA) software, and open source software, and helped achieve favorable results for Chinese companies.
Helped successfully defend a Chinese state-owned company against alleged patent infringement, copyright infringement, trademark infringement, and unfair competition related to auto coolant supplying systems in the US District Court for the Eastern District of Texas, file inter partes reviews (IPRs) at the Patent Trial Appeal Board (PTAB) of the US Patent and Trademark Office, and secure a stay of the litigation only three months before trial, ultimately achieving a successful resolution to the case in 2017.
Represented dozens of Chinese companies to defend them against alleged intellectual property infringement (including patent infringement, copyright infringement, trademark infringement, and/or trade secret misappropriation) at the ITC and many US district courts, including in the District of Delaware, Eastern District of Texas, and the Northern and Central districts of California, and successfully helped Chinese companies to minimize their exposure and reach favorable settlements by implementing counter actions in the PTAB, US courts, and China and performing strategic settlement negotiations.
University of Washington School of Law, 2008, J.D.
Iowa State University, 1999, M.S., Computer Science
Renmin University of China Law School, 1994, LL.M., Administrative Law
Renmin University of China Law School, 1991, LL.B., Science of Law
US Court of Appeals for the Ninth Circuit
US Court of Appeals for Veterans Claims
US District Court for the Central District of California
US District Court for the Northern District of California
US District Court for the Eastern District of Texas
US Patent and Trademark Office
Awards and Affiliations
Member, Practice Group of the Year, Intellectual Property, Law360 (2019)
The A-List, China Business Law Journal (2019)
Recognized, IAM Patent 1000: The World’s Leading Patent Professionals (2019, 2020)
Board Member, China Association of Invention (2016–present)
Member, American Intellectual Property Law Association
Member, Asian American Bar Association of the Greater Bay Area