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Jay C. Chiu

Partner
+852.2230.3566
Fax +852.2511.9515
+86.10.5817.6117
Fax +86.10.8518.9299
+1.949.253.0900
Fax +1.949.253.0902

Jay Chiu concentrates his practice on complex litigation and intellectual property matters, with a focus on U.S. patent litigation, trade secret litigation, contested Patent Office proceedings, and IP licensing and counseling matters.

After more than 12 years of litigating patent infringement cases while based in the U.S., in 2013 Mr. Chiu relocated to Asia to provide counseling and direct support on the ground to his Asia-based clients. Currently, Mr. Chiu splits his time between the Greater China region and the U.S. based on case needs. In his nearly 20 years of handling all aspects of patent litigation, Mr. Chiu has represented a number of international corporations and diverse technology clients--including computer, semiconductor, liquid crystal display, optical storage, software, self-balancing vehicles, robotic devices, biotech, supplement, container, battery, and mobile phone/telecommunication companies--in patent infringement, trade dress infringement, and trade secret actions in federal courts across the country and/or before the International Trade Commission (ITC). His patent litigation successes include several complete defense victories for his clients after trial and on summary judgment.

He also helps clients develop offensive and defensive patent strategies by guiding them in pre-litigation analyses and license negotiations, providing opinions of counsel, handling contested Patent Office proceedings, and managing patent portfolio development.

He has also represented clients in commercial disputes and has experience with internal investigations, FCPA, and international arbitration matters.

Professional Background

Prior to joining K&L Gates, Mr. Chiu was intellectual property and litigation counsel in the Hong Kong and Los Angeles offices of another international law firm.

Professional/Civic Activities

  • American Bar Association
  • American Intellectual Property Law Association

Speaking Engagements

  • Mr. Chiu has appeared as a lecturer or panelist at numerous intellectual property conferences and seminars in the Greater China region. Topics include patent litigation and damages, ITC proceedings and 337 Investigations, inter partes review, IP licensing and transfer, trade secret litigation, and FCPA. Here are some examples:
    • “Preparing for and Defending U.S. Federal Court Cases and ITC 337 Investigations,” June 12, 2019, Chengdu, China
    • “Preparing for and Defending 337 Investigation for Small and Medium Enterprises, June 2018,” June 14, 2018, Guangzhou, China
    • “New Developments in Trade Secret Protection and 337 Investigation Latest Case Study,” June 11, 2018, Beijing, China
    • “Preparing to Defend a Section 337 Investigation,” June 9, 2017, Nanjing, China
    • “An Overview of Biotech IP Portfolio Management,” November 17, 2016, Taipei, Taiwan
    • “Effective Defensive Strategies When Facing U.S. Patent Litigation,” August 31, 2016, Seoul, Korea
  • “U.S. Post Grant Procedures,” June 13, 2016, Beijing, China
  • “Effective Strategies for Chinese Companies Facing U.S. Patent Litigation,” April 1, 2015, Qingdao, China
  • “Internationalization and Intellectual Property Risk Control,” May 23, 2014, Shanghai, China
  • “U.S. Trade Secret Law: Issues and Best Practices for Non-U.S. Companies,” May 9, 2014, Shenzhen, China
  • “Practical Strategies for Taiwanese Companies in U.S. Patent Litigation,” March 14, 2014, Taipei City, Taiwan
  • “Practical Strategies for Chinese Companies in U.S. Patent Litigation,” March 7, 2014, Shenzhen, China
  • “Navigating the Complexities of E-Discovery in Patent Litigation,” December 5, 2013, Shenzhen, China
  • “Asia eDiscovery Exchange 2013,” June 20, 2013, Shanghai, China
  • “Asia eDiscovery Exchange 2013,” June 18, 2013, Hong Kong, SAR
  • “Practical Strategies for Chinese Companies in U.S. Patent Litigation,” May 14, 2013, Shenzhen, China
  • “E-Discovery in Patent Litigation,” February 1, 2013, Taipei, Taiwan
  • “Protecting Intellectual Property for Chinese Companies,” January 18, 2013, Beijing, China
  • “Strategies for Taiwanese Companies in U.S. Patent Litigation,” October 24, 2012, Hsinchu, Taiwan
  • Represented client Darfon Electronics as plaintiff against Lite-on in two district court cases in the Northern District of California, asserting a total of eight patents covering keyboard technology. Also defended client Darfon Electronics in two lawsuits by Lite-on as well as asserting inter partes reviews against the two patents asserted by Lite-on in those lawsuits. Case settled following early mediation.
  • Defended client Changzhou Airwheel in Certain Personal Transporters, ITC Inv. No. 337-TA-1007/1021, against Complainant Segway’s patents covering self-balancing vehicles. Secured complete defense victory of non-infringement for Airwheel after ITC trial, which was affirmed in the Final Determination by the Commission. Complainant Segway was also found to have failed to prove that it met the domestic industry requirements.
  • Defended client Qingdao Yunlu in In Certain Amorphous Metal and Products Containing Same, ITC 337-TA- 1078, against claims for misappropriation of Complainant Hitachi Metal’s trade secrets. After six months of intense litigation, we successfully persuaded the Complainant and the ITC Staff Attorney that the theft allegations were baseless and unreasonable, which led to the Complainant voluntarily withdrawing their Complaint. As a result, our client achieved a complete victory.
  • Defended clients Matsutek Enterprise and BISSELL Homecare in Certain Robotic Vacuum Cleaning Devices, ITC Inv. No. 337-TA-1057, against patent infringement claims by iRobot covering robotic vacuum cleaner technology. While developing excellent non-infringement and invalidity arguments against iRobot during litigation, we also countersued iRobot in China and the U.S. with our own patents. After six months of intense litigation, we obtained a very favorable settlement for our clients, as the settlement terms of the two previously settled Respondents were far more limiting than our clients and even banned from entering the U.S. market.
  • Defended client IPEVO, a leading manufacturer in Certain Document Cameras and Software, ITC Inv. No. 337-TA-1045. During litigation, we successfully invalidated half of the asserted claims after the Judge’s claim construction order, and then we filed for summary determination on the remaining claims. A few weeks before the trial, the Judge held a private telephone conference with the parties, and immediately following that, the Complainant voluntarily agreed to withdraw its Complaint, leading to a complete victory for our client.
  • Defended client Advantech Corporation, a leading global manufacturer of embedded platform solutions, in Certain Industrial Control System Software, ITC Inv. No. 337-TA-1020, against patent infringement claims covering specific software control mechanisms from Advantech’s supplier 3S-Smart Software Solutions. We successfully forced the supplier to defend and indemnify Advantech on the merits while tightly controlling the budget for Advantech and successfully limiting the scope of the plaintiff's discovery against Advantech. Case settled after a few months.
  • Defended client HTC against a well-known patent licensing company in a patent infringement suit relating to digital rights management technologies in the Eastern District of Texas. Successfully removed HTC’s own movie playing software from the case through license defenses. Worked closely with co-defendant Google with respect to Google software installed on HTC devices, which the jury found to not infringe any of the asserted patents at trial.
  • Defended client AU Optronics in a patent infringement action brought by LG Philips (currently LG Display) in U.S. District Court for the District of Delaware. Achieved complete defense victory for the client after trial, with a finding of non-infringement on all four patents asserted by LG Display at trial. Case settled following trial victory.
  • Defended client Quanta in multiple jurisdictions (N.D. California, Federal Circuit, and U.S. Supreme Court). Won summary judgment of non-infringement and patent exhaustion in favor of the client at the District Court level. The U.S. Supreme Court affirmed the District Court’s patent exhaustion decision in favor of the client. Case settled following Supreme Court victory.
  • Defended client Xiamen Topstar Lighting in Certain Dimmable Compact Fluorescent Lamps, ITC Inv. No. 337-TA-830, covering lighting technology. Obtained favorable results and case settled.
  • Defended client AU Optronics against a non-practicing entity in a patent infringement action covering liquid crystal display and optical film technology in U.S. District Court for the Eastern District of Texas. Obtained summary judgment of invalidity on one patent based on indefiniteness, and obtained very favorable claim constructions on the other patent that defeated Plaintiff’s infringement theory. Case settled after mediation.
  • Defended client Quanta against non-practicing entity LaserDynamic’s patent infringement claim in U.S. District Court for the Eastern District of Texas. Successfully appealed to the Federal Circuit adverse decisions against the client on various issues, including the issue of implied license and damage calculation. The Federal Circuit decision eliminated from the case all but a few products sold by the client. Case settled following Federal Circuit victory.
  • Defended client Hon Hai against a non-practicing entity in a multi-patent infringement action covering monitor display technology in U.S. District Court for the Eastern District of Texas. Obtained summary judgment and trial victory on license issues in favor of the client. Case settled during trial.
  • Defended client ZTE, a major Chinese mobile phone manufacturer, in Certain Electronic Imaging Devices, ITC Inv. No. 337-TA-850, against patent infringement claims covering mobile phone camera technology. Assisted in securing initial and final determinations of non-infringement with respect to all patents asserted against ZTE.
  • Defended client ZTE against a non-practicing entity in a multi-patent infringement action covering mobile phone display technology. Obtained favorable results and case settled.
  • Defended client Foxconn Electronics in a patent infringement action covering heatsink technology in U.S. District Court for the Northern District of California. Obtained summary judgment invalidating several of the asserted claims as well as on the issue of direct infringement. Case settled after summary judgment victory.
  • Defended clients Quanta against LG Electronics in a multi-patent infringement action covering optical disc and DVD video technology in U.S. District Court for the Western District of Wisconsin. Obtained summary judgment of non-infringement and/or invalidity in favor of Quanta on all patents, including invalidating two patents that LG Electronics had deemed essential to the DVD standard. Case settled after summary judgment victory.
  • Defended client Portable Peripheral in a patent infringement action covering portable scanners in U.S. District Court for the Northern District of California. Obtained very favorable claim constructions for the client that convinced Plaintiff Syscan to voluntarily dismiss the case with prejudice.