The Firm / Managing Group

Qiong PENG

  • Vice President
  • Patent Attorney

  • Areas of Practice

    Patent

  • Education

    M.S. in Microelectronics and Solid State Electronics, Beijing Jiaotong University
    B.S. in Electronic Science and Technology, Beijing Jiaotong University

Dr. Xiaodong LI

  • President
  • Managing Partner
  • Patent Attorney
  • China Supreme Court Appointed Attorney for Patent Litigation

Dr. Li is the General Manager of the firm responsible for the entire firm’s operation. Dr. Li is a senior patent attorney and China Supreme Court appointed attorney for patent litigation with abundance experiences in electrical and electronics field related matters, including prosecution, invalidation, reexamination, appeal, and litigation before the State Intellectual Property Office (SIPO), the Patent Re-Examination Board (PRB), the People’s Courts, and the China Supreme Court. In addition, Dr. Li is experienced on corporate China IP portfolio management and counseling.

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  • Areas of Practice

    Patent
    Intellectual Property Consultation

  • Highlights

    Shanghai WWP Precision Mould Co., Ltd. v. Jann Cheng Technology Co., Ltd. et. al. Patent Invalidation
    (2010 Top 10 Patent Reexmaination Board Cases)

    Jan Cheng Technology Co., Ltd. et. al. v. SIPO Patent Invalidation Appeal Administrative Lawsuit

    Chi Mei Optoelectronics Corporation v. Sony Corp. Patent Infringement Lawsuit

    Chi Mei Optoelectronics Corporation v. Sony Corp. Patent Invalidation

    Huawei Technologies Co. Ltd. v. Ericsson Patent Disputes

    System General Corporation v. Power Integration Patent Disputes

  • Experience

    General Manager, Beijing East IP Ltd., December 2012-present

    Patent Counsel / Department Manager, Beijing East IP Ltd., 2006

    Patent Attorney, Beijing East IP Ltd., 2003

  • Professional Recognition

    China Supreme Court Appointed Attorney for Patent Litigation

    Council Member of the Sixth Council Committee of the China Intellectual Property Society

    Outside Legal Consultant for the Headquarters of Industrial and Commercial Bank of China

    Standard Evaluation Expert at the China Council for the Promotion of International Trade (CCPIT)

  • Admissions

    Patent Attorney

    China Supreme Court Appointed Attorney for Patent Litigation

  • Education

    Ph.D. in Engineering Physics, Tsinghua University

    B.S. in Engineering Physics, Tsinghua University

Guorong LI

  • Business Development Dep.
  • Vice President

Mr. Li started his career in the IP field in 2001, shifting from his previous pursuit in the education industry as an English teacher in Hangzhou. Mr. Li has profound understanding of the IP problems most multi-nationals face when they expend their business in China. Having served more one hundred Fortune 500 companies from a wide array of industries in nearly 20 years in China, Mr. Li has rich experience in prosecuting, enforcing and litigating intricate intellectual property matters, especially those relate to trademark and copyright infringement. Mr. Li’s tailor-made IP protection strategies for multi-nationals proved effective and earned his good names among clients and many of the cases are treated model cases for the industry.He ever holds position as Managing VP of CUIPPC and Vice President of Sinofaith IP Group responsible for brand protection.

 

Main working language: English, Chinese (native)

  • Areas of Practice

    Trademark
    Copyright

  • Highlights

    "Representing a US printing supply client, sucessfully designed and coordinated an inter-province case targeting the manufacture and distribution of counterfeit packaging network.
    Representing a Korea mobile brand, devised and destroyed a network of smugglers cooperating with Customs Anti-smuggling Bureau.
    Representing a US pesticide brand, pushed and coordinated a cross-border raid and successfuly extradicated the chief offender from Cambodia.
    Representing a US software giant, initiated and won the first embedded software infringement civil case."

  • Professional Recognition

    Member of WAD (World Association of Detectives)

  • Education

    Beijing International Studies University, English, Bachelor degree

Dr. Jian LI

  • Vice President
  • China Supreme Court Appointed Attorney for Patent Litigation
  • Patent Attorney
  • Managing Partner

Dr. Li is the Vice President of the firm responsible for patent administration and docketing. Dr. Li is a senior patent attorney and litigator focuses on chemical field related matters including prosecution, invalidation, reexamination, appeal, and litigation before the State Intellectual Property Office (SIPO), Patent Re-Examination Board (PRB), and the People’s Courts. Dr. Li also advises on corporate IP portfolio management.

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  • Areas of Practice

    Patent
    Intellectual Property Consultation

  • Experience

    Vice President, Beijing East IP Ltd., 2012 - present
    Patent Attorney/ Department Manager, Beijing East IP Ltd., 2007 - 2012
    Patent Attorney, Beijing East IP Ltd., 2005 - 2006
    Patent Engineering, Beijing East IP Ltd., 2003 - 2005

  • Admissions

    Patent Attorney

  • Education

    Ph.D., Shanghai Jiao Tong University
    M.S., Northwestern Polytechnical University
    B.S., Northwestern Polytechnical University

Yan ZHANG

  • Trademark Team - Partner
  • Director of the Law Firm
  • Senior Lawyer
  • The China Trademark Office Subcommittee of the Trademark Office Practices Committee at INTA
  • Trademark Department

Ms. Zhang obtained her Juris Master degree from China University of Political Science and Law, and joined the firm in 2006. Ms. Zhang co-leads the trademark team.

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  • Areas of Practice

    Trademark
    Copyright
    Anti-unfair competition
    Domain Name
    Customs recordation

  • Highlights

    Won court appeals against the TRAB representing Freudenberg before the Beijing IP Court, the Beijing High Court and the China Supreme Court. These cases mainly involve the issue of determination of similarity of goods.

    Successfully defended in a court appeal for Freddie Mac before the Beijing First Intermediate Court, the Beijing High Court and the China Supreme Court. This case involves the issue of determination of similarity between English mark and Chinese equivalent.

    Won court appeals representing Maerz before the Beijing IP Court, the Beijing High Court and the China Supreme Court, obtaining favorable judgments affirming similarity between English and Chinese marks.

    Won a court appeal against the TRAB representing Adobe before the Beijing High Court. The Beijing High Court (second instance court) revoked the decision held by both the first instance court and the TRAB, and recognized the PHOTOSHOP mark on computer programs as well-known in China. This case covers the dilution of well-known mark, and grants the protection of the PHOTOSHOP mark to cosmetics.

    Won court appeals against TRAB for Facebook before the Beijing First Intermediate Court, the Beijing IP Court and the Beijing High Court, resulting in disapproval of various FACEBOOK marks for unrelated goods that were obtained by bad faith filings.

    Won a court appeal against the TRAB for Lonely Planet before the Beijing First Intermediate Court and the Beijing High Court. The Courts affirmed the high reputation of Lonely Planet’s trade name and granted cross-class protection. Further, won the victory in the second instance appeal for a series of trademark invalidations against the marks “GU DU XING QIU in Chinese” and “LONELY PLANET and GU DU XING XING in Chinese.”

    Won appeals against the TRAB for Instagram before the Beijing IP Court and the Beijing High Court, resulting in revocation of certain trademark registrations that were obtained by bad faith filing. This case illustrates the fact that the transfer of the trademark in dispute and whether the assignee is in good faith does not affect the determination of the bad faith of the original registrant.

    Won court appeals representing McDonald's before the Beijing IP Court and the Beijing High Court and obtained well-known trademark protection for McDonald's mark "McFlurry in Chinese" before the Beijing IP Court.

    Won a court appeal against the TRAB representing Cisco before the Beijing IP Court. The Beijing IP Court recognized the CISCO in Chinese mark on network communication equipment as well-known in China, and granted the protection to the goods of electric cooking utensils.

    Won four trademark infringement, copyright infringement and unfair competition lawsuits for American Petroleum Institute (API) before the Shunde Court and the Foshan Intermediate Court, which was selected as the Top 10 IP Cases handled by the Shunde Court in Guangdong Province.

    Won two trademark infringement and unfair competition lawsuits representing a NASDAQ listed U.S. online travel information provider before the Beijing First Intermediate Court and the Beijing High Court. The Courts ordered the defendant to cease the trademark infringement and pay damages. This case involves online trademark infringement and conflict between domain name and trademark.

    Successfully settled a trademark infringement and unfair competition lawsuit representing a famous U.S. hotel company before the Fuzhou Intermediate Court. The defendant ceased infringement and changed the trade name with local AIC. This case involves the hotly debated issue of conflicts between trade name and trademark registration.

    Successfully defended in a dispute of domain name transfer agreement representing a famous U.S. social network company before the Shenzhen Intermediate Court. The Court affirmed the validity of domain name transfer agreement and dismissed all claims of the plaintiff.

    Successfully defended in a trademark infringement lawsuit representing one of the world’s largest hard drive manufacturers before the Guangdong High Court. The Court affirmed no infringement and dismissed all re-trial requests of the plaintiff.

    Successfully settled a trademark infringement lawsuit representing a global lifestyle and accessory products retailer before the Shanghai IP Court, resulting in withdrawal of lawsuit by the plaintiff.

    Won various trademark oppositions, opposition appeals, rejection appeals, and dispute cancellations before the CTMO and the TRAB, representing hundreds of clients in various industries. These cases cover various issues like celebrity name protection, prior copyright, well-known mark recognition, cross-Class protection, bad faith filing, similarity between marks and goods/services, and distinctiveness of marks.

    Won dozens of complaints under UDRP policy and CNDRP policy in the .com and .cn domain name disputes, representing the world leading companies in various industries.

  • Experience

    Beijing East IP since 2006

  • Admissions

    PRC Attorney-At-Law

  • Education

    Juris Master degree, China University of Political Science and Law
    Bachelor degree in English literature, Hebei Normal University