Jason Xu | White & Case LLP International Law Firm, Global Law Practice
Jason Xu
Jason Xu

Jason Xu

Counsel, Washington, DC, Shanghai

T +1 202 626 3615

T +1 202 549 9654 (US mobile)

T +86 21 6132 5935 (China)

T +86 15 3178 16570 (China mobile)

E [email protected]

Overview

Based in Washington DC and frequently traveling between US and China, Jason advises, assists, and resolves clients' most important intellectual property (IP) issues. Clients, especially Chinese enterprises, turn to Jason because of his technical background, superb legal skills, in-depth understanding of their business needs and risks, as well as long-term connection with Asian (Chinese) community. Jason has been selected as a "Rising Star" in the Washington DC Super Lawyers 2015-2017.

Jason has extensive experience in IP litigation in Section 337 investigations before International Trade Commission (ITC) and before United States federal district courts, including Eastern District of Texas, District of Delaware, and Northern District of California. Jason also helps client resolve patent validity issues in post-grant review proceedings (e.g., IPRs, CBMs, PGR) before the United States Patent and Trademark Office (USPTO). Jason further counsels domestic and international clients on their IP issues, including patent and trademark portfolio management, IP licensing, and technology transfer. Besides pure IP issues, Jason has also been involved in issues intertwining between IP and Antitrust, including Standard Essential Patents (SEPs).

Jason's work experience encompasses various industry sectors, focusing on HighTech (computer software and hardware, Internet-related technologies, semiconductors, and electronic circuit design), FinTech (banking and financial industry), as well as digital pharmaceuticals and medical devices.

Prior to practicing law, Jason worked as a software architect, technical manager, and senior software engineer in the wireless and software industries as well as government IT field. He had hands-on experience and is familiar with the technologies for mobile devices using iOS, Android OS, Blackberry (RIM) OS, Windows Mobile OS, and Palm OS. He is also familiar with program languages including C#, Java, C++, C as well as various web and application frameworks.

Bars and Courts

  • District of Columbia Bar
  • Virginia State Bar
  • US District Court for the Eastern District of Texas
  • US Court of Appeals for the Federal Circuit

Education

  • JD, George Washington University Law School
  • MS, Computer Science, University of Maryland
  • BS, Computer Science, Fudan University

Languages

  • English
  • Mandarin
  • Shanghainese

Experience

ITC:

 

Certain Robotic Vacuum Cleaning Devices and Components Thereof Such as Spare Parts (337-ITC-1057) – Represented Chinese Suzhou Real Power Electric Appliance Co., Ltd. as a respondent in Section 337 Investigation involving robotic vacuums. Successfully resolved the case favorably for the client in early stage of the investigation.

Certain Electronic Devices, Including Mobile Phones and Table Computers, and Components Thereof (337-ITC-925) – Represented Google as an intervenor in Section 337 Investigation involving mobile devices. Case settled three weeks before the hearing after the ALJ dismissed one of the three patents in the investigation.

Certain Electronic Devices, Including Mobile Phones and Table Computers, and Components Thereof (337-ITC-885 & 337-ITC-847) – Represented Google as an intervenor in Section 337 Investigation involving mobile devices. Four of the five patents were disposed before hearing, and the ALJ found non-infringement of the last remaining patent after the hearing.

Certain Integrated Circuits, Chipsets, and Products Containing Same including Televisions, Media Players, and Cameras (337-ITC-709) – Counsel represented Panasonic in 337 investigation involving circuit and planarization design technologies. Obtained summary determination of non-infringement of one of the three patents. Case settled subsequently before the hearing.

 

HighTech:

 

Personal Audio v. Google LLC (E.D. Tex / DED) – Representing Google in patent infringement litigation involving music player. Successfully dismissed and transferred the case from the Eastern District of Texas to the Delaware post Supreme Court's TC Heartland decision. Case pending and trial is expected to be in 2019.

Eolas v. Amazon, Inc. et al. (E.D. Tex) – Representing Walmart in patent infringement litigation involving internet website technology. Successfully transferred the case from the Eastern District of Texas to the Northern District of California. Case pending and trial is expected to be in 2018.

Coffelt v. Autodesk, Inc. et al. (C.D. Cal) – Represented Autodesk in patent infringement litigation involving 3D image. Won the motion to dismiss on the pleading for unpatentable subject matter under § 101 at the district court, the Federal Circuit, and defeated Coffelt's certiorari to the Supreme Court. IP360 stated that "[t]he judge's decision marked an unusually rapid resolution for a patent lawsuit."

Walker Digital v. Myspace et al. (D. Del) – Represented Google in patent litigation involving social networking product. Prevailed on summary judgment and in CBMs. Obtained award of all requested costs.

American Imaging Services, Inc. v. Autodesk, Inc. (N.D. Tex) – Represented Autodesk in patent litigation involving CAD software. Trial counsel, obtained complete defense jury verdict of non-infringement and invalidity for Autodesk.

 

FinTech:

 

Vega v. American Express et al. (W.D. Tex) – Represented American Express in patent infringement litigation involving smart phone applications for mobile secure financial transactions. Won the motion to dismiss on the pleading of non-infringement

Grecia v. American Express (S.D.N.Y) – Represented American Express in patent infringement litigation involving banking tokenization technologies. Convinced the Court to stay the case pending the results of the IPRs filed by Unified Patents at the case management hearing. Filed additional IPRs on all three asserted patents when the stay was lifted, and the case is settled favorably shortly afterwards.

Maxim Integrated Products, Inc. v. American Express et al. (W.D. Tex) – Lead technical counsel represented American Express in patent infringement involving smart phone applications for mobile secure financial transactions. Resolved the case favorably for American Express as a result of aggressive positions to invalidate the asserted patents.

In Re Maxim Integrated Products, Inc., MDL No. 2354 (Master Docket Misc. No. 12-244) (MDL No. 2354) (W.D. Pa.) – Lead technical counsel represented JPMorgan Chase in which Maxim asserts four patents that allegedly relate to smart phone applications for mobile banking and secure financial transactions. Obtained favorable settlement and forced Maxim to withdraw certain infringement allegations.

 

Medical Devices / Digital Pharmaceuticals:

 

Hologic Inc. v. SenoRx, Inc. (N.D. Cal.) – Represented Hologic in patent infringement litigation involving interstitial brachytherapy technology.  After a trial defeat, Hologic obtained a successful ruling from the Court of Appeals for the Federal Circuit on appeal reversing the district court's claim construction.  Hologic, Inc.v. SenoRx, Inc., 639 F.3d 1329 (Fed. Cir. 2011).

Cross Medical Products, Inc. v. Medtronic Sofamor Danek, Inc. et al. (C.D. Cal.) – Represented Medtronic; obtained summary judgment rulings invalidating three of Cross's asserted patents relating to spinal implant technology; and obtained summary judgment rulings in favor of Medtronic on two counterclaim patents.

 

IP/Antitrust:

 

Motorola Solutions v. Hytera Communications (D.N.J): Representing Hytera, a leading Chinese radio manufacturer, in antitrust monopolization claims (including SEPs) against Motorola Solutions.

 

Speaking Engagements

Moderator, "How Chinese Enterprises to Deal with the Situation ICT Industry is at War Over Patent Dispute," in China Intellectual Property & Innovation Summit 2018, April 11-13 2018: Shanghai, China

Publications

  • ITC Proposed Amendments to Section 337 Rules, White & Case Client Alert, November 2015, (co-author with Shamita Etienne-Cummings and Sonia Murphy)
  • USPTO unveils final rules for the American Invents Act, White & Case Client Alert, August 2012, (co-author with David Tennant)
  • Eastern District of Texas Unveils Model Discovery Order to Streamline Patent Litigation, White & Case Client Alert, March 2012, (co-author with Shamita Etienne-Cummings)
  • "Component Based Architecture for Mobile Information Access." IEEE Computer Society Press, workshop in International Conference on Parallel Processing (ICPP 2000) (August 2000). Co-authored with Chaitanya Pullela, Anupam Joshi
  • "Service Discovery in the Future Electronic Market." Seventeenth National Conference on Artificial Intelligence, 11th Innovative Applications of AI Conference (July 2000). Co-authored with Henry Chen, Chaitanya Pullela, Anupam Joshi
  • "Using Jini and XML to Build a Component Based Distributed System." Technical Report, University of Maryland Baltimore County (2000)

Awards & Recognition

Selected as a "Rising Star" in the Washington DC Super Lawyers 2015-2017