James Soong

Sheppard, Mullin, Richter & Hampton LLP

$ $$$

Lytton Avenue 379
Palo Alto 94301 CA US

James W. Soong is partner in the Intellectual Property Practice Group in the firm’s Palo Alto office. Jim focuses his practice on intellectual property and patent strategy in a broad array of technical disciplines. He has wide-ranging experience representing clients before the Patent Office and the federal courts, including successful appeals to the Federal Circuit on cutting edge legal issues.

Utilizing his technical background, Jim also represents industry-leading clients in portfolio development, pre- and post-grant including inter partes proceedings at the Patent Office, litigation in the federal courts, strategic initiatives, corporate transactions and licensing, corporate policies and best practices, and risk avoidance where intellectual property issues are core.

Jim regularly counsels clients – from start-ups to the Fortune 5 – regarding worldwide intellectual property strategy. He has prepared countless patent applications, as well as noninfringement and invalidity opinions. In addition, his experience includes advising on intellectual property issues that arise in mergers and acquisitions, technology licensing, open source, standard setting organizations, inter-company agreements, employment, and other corporate matters.

Jim has an extensive record of success in intellectual property disputes, including coordinated resolution of patent litigation and inter partes proceedings at the Patent Office. Drawing on his extensive in-house corporate experience, Jim is often called upon to provide strategic direction regarding the design and optimization of corporate intellectual property policies and best practices. As in-house counsel, he led the global intellectual property strategy at Siebel Systems for six years.

For his intellectual property strategy expertise, Jim has received extensive industrywide accolades and honors. Most recently, Jim was recognized in The World’s Leading Patent Professionals, IAM Patent 1000, 2017, 2018.

Pro bono advice and counseling is an important component of Jim’s practice. He received a Certificate of Recognition from the Legal Aid Society of San Mateo County for protecting the rights of a senior citizen under the California elder financial abuse statute in a pro bono litigation.

While attending law school, Jim served as an Editor of the U.C. Davis Law Review. He also served as an extern clerk for the Honorable Edward J. Garcia, United States District Court for the Eastern District of California. Jim is conversationally fluent in Mandarin Chinese.

Education:

  • J.D., University of California, Davis, Editor, U.C. Davis Law Review
  • B.S., Electrical Engineering, University of California, Los Angeles, Eta Kappa Nu nom
  • I.C.L.P., National Taiwan University

Admissions:

  • California
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the Central, Eastern, Northern and Southern Districts of California
  • U.S. District Court for the Western District of Washington
  • U.S. Patent and Trademark Office
  • Washington

Experience:

  • Represented world’s largest mobile phone maker in patent litigation involving touchscreen interface technology.
  • Represented world’s leading PC manufacturer in patent litigation involving wireless communication standards.
  • Represented leading global supplier of business and personal electronics in patent litigation involving computer peripheral technology.
  • Represented second-largest worldwide retailer of computers and notebooks in patent litigation involving wireless communication standards.
  • Represented leading multinational in patent litigation involving online card fraud and payment processing algorithms. Cybersource Corp. v. Retail Decisions, Inc., 654 F. 3d 1366 (Fed. Cir. 2011).
  • Represented mobile phone industry leader, strategizing claim construction and patent noninfringement positions in an ITC action involving semiconductor packaging.
  • Represented leading computer manufacturer in patent infringement action involving electronic graphical display circuits. Lans v. Digital Equipment Corp., 252 F.3d 1320 (Fed. Cir. 2001).
  • Helped design and execute patent licensing strategies for semiconductor industry leader involving patent selection, infringement diligence, assertion strategy, bite-back analyses, and licensee engagement.

Memberships:

  • Editorial Board Member, The Intellectual Property Strategist
  • Board Member, Asian Law Alliance
  • Former Member, Rainbow Chinese School of Cupertino, Curriculum Committee
  • Former Chair, City of San Mateo, Community Improvement Commission
  • Former Member, Chung Tai Zen Center, Translation Committee
  • Member, Silicon Valley Intellectual Property Law Association

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Lytton Avenue 379
Palo Alto 94301 CA US
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