5th Floor, The Center//989 Changle Road//Shanghai 200031, China
With a focus on the technology industry, Shaobin Zhu advises on intellectual property (patent, trade secret, trademark, copyright, and domain name) litigation in US district courts and Section 337 investigations at the US International Trade Commission (ITC), as well as client counseling, IP licensing and transfer, opinion work, patent prosecution, data privacy, open source software strategy, and international arbitration. He is admitted to practice in California and New York only.
Shaobin has helped dozens of Chinese clients successfully resolve their IP disputes in the United States. His experience encompasses all aspects of IP 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. In addition, Shaobin represents clients arbitrating legal disputes at international arbitration forums including China.
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. In addition, Shaobin counsels clients in enforcing their IP rights to address counterfeiting activities and defending them against alleged counterfeits, including working with US Customs, using administrative and judicial proceedings, taking down counterfeiting products from websites, and reinstating products on ecommerce platforms. Moreover, Shaobin advises clients on IP licensing and transfer, including negotiating terms and conditions, conducting IP due diligence, and drafting and reviewing IP licensing/transfer agreements. Shaobin further counsels clients on data privacy issues, including compliance with the European General Data Protection Regulation (GDPR) and the California Consumer Privacy Act (CCPA).
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.
Shaobin is a frequent speaker at industry events and teaches in China on topics related to US IP 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 IP 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.
Changzhou Kaidi Electrical in securing complete victory in a patent infringement case filed by Limoss US in the US District Court for the Northern District of Mississippi (NDMS), in which the action was dismissed with prejudice. We also obtained a complete victory for Kaidi in an inter partes review (IPR) petition before the Patent Trial and Appeal Board (PTAB) of the USPTO, finding that all the claims challenged by Kaidi were unpatentable over two different combinations of references.
Global mobile data service provider uCloudlink in defeating the trade secret misappropriation allegations in a patent case brought by competitors SIMO Holdings Inc. and its subsidiary Skyroam, Inc. In addition, we built strong noninfringement positions and preserved claim construction issues for uCloudlink to reverse the district court’s summary judgment and win the appeal of infringement and claim construction issues at the Federal Circuit.
Owner of the 81.com domain name in a successful defense in Debizet v. 81.com in the US District Court for the Eastern District of Virginia, challenging the ownership of the 81.com domain name under the Anticybersquatting Consumer Protection Act and Virginia common law, and tortious interference with contractual relationship, as well as in personam claims under the Computer Fraud and Abuse Act, Electronic Communications Privacy Act, and Virginia common law against John Doe. We convinced the plaintiff to voluntarily dismiss the complaint in its entirety on various grounds, including the statute of limitations, failure of the plaintiff to own trademark rights sufficient to establish a Lanham Act claim, and the owner’s status as a bona fide purchaser.
Chinese companies in successfully protecting 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.
Chinese companies in litigating and negotiating IP and technology licensing, involving standard-essential patents, electronic design automation (EDA) software, and open source software, and helped achieve favorable results for Chinese companies.
A Chinese state-owned company in a successful defense 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 IPRs at the PTAB of the USPTO, and secure a stay of the litigation only three months before trial, ultimately achieving a successful resolution to the case.
Dozens of Chinese companies in defending against alleged IP 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, Western and Eastern districts 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.
A European client in enforcing its trademark and design patent rights, taking down counterfeiting products from websites, and tracing down and destroying infringing product manufacturing chains in China. It involved civil, criminal, Chinese Customs, and administrative proceedings.
Chinese clients in defending against counterfeit allegations at the US Customs and Border Protection (CBP), obtained IP licenses and releases from IP owners, successfully argued for trademarks fair use defenses at the CBP’s Intellectual Property Rights Branch (IPRB), filed petitions for relief, and convinced the CBP to release detained or seized goods.
Jiangsu Nata Opto-electronic Material Co., Ltd. in negotiating and acquiring $10 million worth of global patent families from a subsidiary of DuPont, conducted IP due diligence, and reviewed and revised the asset purchase agreement and associated papers. The patent families cover chemical compositions, synthesis methods, and thin film applications of a batch of new active silane precursors that can improve the chemical vapor deposition or atomic layer deposition of silicon-based semiconductors and dielectric thin films.
Awards and Affiliations
Recommended, Trade secrets (litigation and non-contentious matters), The Legal 500 US (2020)
Member, Practice Group of the Year, Intellectual Property, Law360 (2019)
The A-List 2020 China’s Elite 100 Lawyers (Foreign Firms), China Business Law Journal (2019, 2020)
Recognized, IAM Patent 1000: The World’s Leading Patent Professionals (2019, 2020)
Board Member, China Association of Invention (2016–present)
Board Member, Shenzhen AI Industry Association (2019–present)
Member, Legal Expert Database, Guangdong Intellectual Property Protection Association (2020–present)
Advisor, China Patent Office’s National Advisory Center for Overseas Intellectual Property Dispute Resolution (2019–present)