Shaobin Zhu

Partner

Shaobin Zhu is a helmsman. He is knowledgeable, patient, energetic and never vague about principled issues. His wisdom and strategy are inseparable from his experience. Zhu can always design the most perfect plan at the critical moment.

The Legal 500 Asia Pacific - China (2024)

Emailshaobin.zhu@us.dlapiper.com

Call+1 206 839 4894

Seattle

About

Shaobin Zhu represents clients in the technology industry, advising them on intellectual property (IP) (patent, trade secret, trademark, copyright, domain name) litigation in US district courts and Section 337 investigations at the US International Trade Commission (ITC). His experience encompasses all aspects of IP litigation, including formulating 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.

He guides clients through all stages of patent protection and invalidation in the US Patent and Trademark Office (USPTO), including patenting strategies, patent application preparation, responses to office actions, and administrative post-grant proceedings challenging the validity of disputed patents at the Patent Trial and Appeal Board (PTAB).

Shaobin also counsels clients on opinion work, open-source software strategy, and international arbitration. He advises clients on IP licensing and transfer, including negotiating terms and conditions, conducting IP due diligence, and drafting and revising IP licensing/transfer agreements.

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.

Areas of FocusIntellectual Property Technology Patent Litigation Patent Development and Strategy

Bar admissionsCaliforniaNew YorkWashingtonUnited States Patent and Trademark Office

CourtsUnited States Court of Appeals for the Ninth CircuitUnited States Court of Appeals for Veterans ClaimsUnited States District Court for the Central District of CaliforniaUnited States District Court for the Northern District of CaliforniaUnited States District Court for the Eastern District of TexasUnited States District Court for the Northern District of New York

EXPERIENCE

A global renewable energy company in a significant victory in a Section 337 investigation before the International Trade Commission (ITC) asserting infringement of six patents covering complex solar power and conductive cell technology. This total win helped the company avoid a ban on the importation of a large portion of the industry’s solar products designed for clean energy. Shaobin also contributed to the dismissal of a parallel complaint against the company in the US District Court for the Northern District of California
A Chinese electrical products manufacturer in securing a complete victory in a patent infringement case in the US District Court for the Northern District of Mississippi, in which the action was dismissed with prejudice. Shaobin also contributed to obtaining a complete victory for the company in an inter partes review (IPR) petition before the Patent Trial and Appeal Board (PTAB) of the United States Patent Trademark Office (USPTO), finding that all the claims challenged by the company were unpatentable over two different combinations of references
A global mobile data service provider in defeating trade secret misappropriation allegations in a patent case brought by competitors. In addition, Shaobin built strong noninfringement positions and preserved claim construction issues for the company to reverse the district court’s summary judgment and win the appeal of infringement and claim construction issues at the Federal Circuit
An owner of a domain in a successful defense in the US District Court for the Eastern District of Virginia, challenging the ownership of the domain under the Anticybersquatting Consumer Protection Act and Virginia common law, and tortious interference with a 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
Several 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
Several Chinese companies in litigating and negotiating IP and technology licensing, involving standard-essential patents, electronic design automation (EDA) software, and open-source software, achieving favorable results for these 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, including filing IPRs at the PTAB of the USPTO and securing 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. 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
Chinese clients in defending against counterfeit allegations at the US Customs and Border Protection (CBP), including obtaining IP licenses and releases from IP owners, successfully arguing for trademarks fair use defenses at the CBP’s Intellectual Property Rights Branch (IPRB), filing petitions for relief, and convincing the CBP to release detained or seized goods
A Chinese electronic materials company in negotiating and acquiring US$10 million worth of global patent families from a subsidiary of an American multinational chemical company by conducting IP due diligence and reviewing and revising the asset purchase agreement and associated papers

AWARDS AND RECOGNITION

Education

J.D., University of Washington School of Law

M.S., Computer Science, Iowa State University

LL.M., Administrative Law, Renmin University of China Law School

Publications and media

Co-author, "Things About Intellectual Property Litigation in the United States: Is Service of Summons You Received from the U.S. Court Effective?," IP ForeFront, July 16, 2023
Co-author, "Road To The Future: SEP Licensing And Litigation In The Automotive Field," The Patent Lawyer, July/August 2022

Seminars

"Brief Discussion on USPTO – 2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence," Infotrans – IP Link, August 2024
"U.S. Patent Prosecution & Drafting: A Practical Guide," Guangdong Overseas Intellectual Property Protection Promotion Association, July 2024
"Emerging Patent Infringement Risks with AI & Risks Management Strategies," Jiangsu Intellectual Property Research Institute, July 2024
"Trade Secrets vs. Patent Protection: Challenges and Strategies," Renmin University Intellectual Property School, July 2024
"The Quality and Ability Required for Transnational Intellectual Property Talents," Jiangsu Intellectual Property Think Tank Alliance, July 2024
"IP Risk Management & Response Strategies," Hefei Federation of Industry and Commerce, June 2024
"IP Risks & Management Strategies Faced by Chinese Enterprises Going Overseas in the Digital Economy Era," China (Shenzhen) Intellectual Property Protection Center, May 2024
"How to Build and Protect Strong Brand Image in Overseas Market?," Organized by Shenzhen Foreign Businessmen Investment Enterprise Association, April 2024
"How Could Enterprises Handle Challenges & Opportunities to Pursue Sustainable Development Goals," Organized by Shenzhen Foreign Businessmen Investment Enterprise Association, March 2024
"Strategies for Minimizing IP Risks and Procedures for IP Litigation in US District Courts and Section 337 Investigation at the USITC," Organized by Market Supervision Administration of Zhuhai High-tech Zone (Intellectual Property Bureau), June 2023

Media Mentions

"Shaobin Zhu, who guides Chinese clients through all stages of patent prosecution and invalidation in the USPTO, helps resolve their IP disputes overseas and provides prescient licensing counsel," IAM Patent 1000

Prior Experience

Teaching and Speaking Engagements

Memberships and Affiliations

Arbitrator, Shenzhen Court of International Arbitration, (2025 – 2030)
Member, China Association of Invention
Board Member, Shenzhen AI Industry Association
Board Member, Shenzhen Association of Enterprises with Foreign Investment
Member, Legal Expert Database, Guangdong, Shanghai, Hebei, and Ningbo Intellectual Property Protection Associations
Advisor, China Patent Office’s National Advisory Center for Overseas Intellectual Property Dispute Resolution
Member, International Law Expert Database, Hebei Province Council for the Promotion of International Trade
Member, Expert Database, Guangdong-Hong Kong-Macao Greater Bay Area International Intellectual Property Talent Port
International IP Expert, Zhuhai High-Tech Zone Intellectual Property Expert Think Tank
Arbitrator, Nanjing Arbitration Commission
Member, IP Expert Database, Changzhou University
Member, American Intellectual Property Law Association
Board Member, Seattle Chinese Bar Association
Member, California State Bar Association
Member, New York State Bar Association
Member, Washington State Bar Association