Intellectual Property

Fangda has well-recognized expertise in intellectual property. We have successfully litigated many groundbreaking cases and have also advised on many of China’s leading transactions. We are the preferred choice of clients in many industries on patent, trademark, copyright, trade secrets and IP-related antitrust law matters.

We have successfully argued cases before provincial high courts and the PRC Supreme Court, making us one of the very few firms in China that has an established appellate litigation and advocacy practice.

We have also advised on domestic and cross-border transactions involving procurement, acquisition, assignment or license in technology, brands, patents, copyrights and other forms of IP. Such transactions include franchising, licensing, distribution, outsourcing, contract manufacturing, joint ventures, mergers & acquisitions, strategic alliances and technology research and development.

Our team members have strong backgrounds in various technical fields, enabling us to communicate with the clients on technical issues efficiently. We have former judges and patent examiners on our team, providing local expertise within a global context.

Our international reputation is attributed to the high quality of our services, the ingenuity of our strategies and the depth of our local knowledge we apply to tackle the most challenging IP issues.

Recognition

  • Intellectual Property: Litigation (PRC Firms) - Band 1
    Chambers Asia-Pacific, 2014-2021
  • Intellectual Property: Outstanding
    Asialaw Profiles, 2021
  • Media, Entertainment & Sports (PRC Firms)
    China Business Law Awards, 2019
  • China Domestic Trademark/Copyright Law Firm
    Asian Legal Business Employer of Choice, 2018
  • China Domestic Patent Law Firm
    Asian Legal Business Employer of Choice, 2018
  • China Firm of the Year – Patent
    Asia Legal Business, 2017
  • China Firm of the Year - Trademark/Copyright
    Asia Legal Business, 2017
  • China Domestic Patent Law Firm
    Asian Legal Business Employer of Choice, 2017
  • China Domestic Trademark/Copyright Law Firm
    Asian Legal Business Employer of Choice, 2017
  • China Firm of the Year - Intellectual Property
    China Law and Practice, 2016
  • China IP Litigation Firms - Band 1
    Chambers & Partners, 2014, 2015 and 2016

Notable Matters

With our extensive knowledge of legal structure, technologies, and industry practices, we have advised clients in all types of intellectual property contentious matters. We provide our clients with practical and commercial assessment of the legal risks and returns associated with each potential or actual dispute. We have successfully prosecuted and defended infringement actions before courts around China. These include:

Intellectual Property

Patent Litigation/Invalidation
  • A leading mobile device company in multiple patent infringement and invalidation disputes concerning invention, utility model, and design patents in Mainland China, Hong Kong and Taiwan.
  • Valeo in successful patent infringement litigation against a Chinese competitor before Shanghai Intellectual Property Court and Intellectual Property Court of Supreme People’s Court. This case was the first time a court in Shanghai rendered an interim judgment in the field of intellectual property law and the first public hearing held by Intellectual Property Court of Supreme People’s Court. The case was selected by the PRC Supreme Court as one of the Guiding Cases.
  • L’Oréal in a successful series of patent infringement cases against a Chinese competitor before Shanghai Intellectual Property Court, Ningbo Intermediate Court and Shanghai Intermediate Court.
  • Nordson Corporation in a successful series of patent infringement cases against a Chinese competitor before Shanghai Intellectual Property Court.
  • Watson Pharmaceuticals in a successful defense against allegation of patent infringement concerning the method patent for production of olanzapine before the Jiangsu High Court and before the PRC Supreme Court. The case was named as a guiding case by the Supreme Court.
  • Sucampo Pharmaceuticals to defend the validity of its patent in a patent invalidation proceeding.
  • Knowles Corporation in its defense in a series of patent infringement disputes before the Weifang Intermediate Court.
  • Kennametal in a patent infringement dispute concerning coating technologies before the Shanghai No.1 Intermediate Court, as a part of global patent litigation.
  • Power Integrations against a leading semiconductor manufacturer concerning invention patents over power control devices before Suzhou Intermediate Court and Jiangsu High People’s Court.
  • Sony Corporation in defending claims of patent infringement concerning the MP3 player technology. The case was withdrawn by the plaintiff/patentee after the China Patent Reexamination Board invalidated several claims of the asserted patent.
  • Nokia Corporation in a successful design patent infringement case before the Beijing No.2 Intermediate Court.
  • Taiwan-based Elan Microelectronics Corp. in a series of patent disputes concerning laptop PC touch-screen technologies against several competitors before the Suzhou Intermediate Court, Beijing No.1 Intermediate Court and Beijing No.2 Intermediate Court, and successfully won the patent invalidation decisions from the China Patent Reexamination Board.
  • Taiwan-based Wintek Technology Corp. in a series of patent disputes concerning smartphone touch-screen technologies against several competitors before the China Patent Reexamination Board and Beijing No.1 Intermediate Court.
  • InterDigital Technology Corporation in a series of patent administrative lawsuits to obtain favorable judgments from the Beijing No.1 Intermediate Court, Beijing Intellectual Property Court and Beijing High Court.
  • MacGregor (Shanghai) Trading Co. to obtain favorable judgments from the Beijing No.1 Intermediate Court, which overturned decisions by the China Patent Reexamination Board concerning patents of an uploading machine.
  • JABRA in winning a patent lawsuit of declaratory judgment on non-infringement.
Trademarks
  • New Balance in the trademark infringement actions against a Chinese individual, successfully reducing the damages by 95%.
  • Michael Jordan, the basketball player, in a series of cases against Qiaodan Sports Company for its registration of Mr. Jordan’s name as company name and trademarks before the PRC Supreme Court.
  • Tesla Motors, Inc. to successfully recover the right to use “Tesla” trademark in China against the trademark squatter that registered the same trademark.
  • Guess?, Inc. in a trademark infringement and unfair competition lawsuit against another international brand before the Jiangsu High Court.
  • Yi Jian-Lian, a famous NBA and CBA basketball player from China, to successfully cancel the trademark “Yi Jian-Lian” registered by Fujian Jinjiang Yi Jian-Lian Sport Co. This case was ranked as one of the Top 10 IP cases by the Beijing High Court.
  • Louis Vuitton in a landmark vendor’s strict liability trademark infringement case against a major supermarket operator in Shanghai. The case was selected by the PRC Supreme Court as one of the top 10 IP Cases.
  • The North Face Apparel Corp. in winning a landmark landlord liability trademark infringement case against Beijing Silk Market before the Beijing No.2 Intermediate Court and the Beijing High Court.
  • Sony Computer Entertainment Inc. in multiple trademark infringement litigation before the Shenzhen Intermediate Court.
  • NEC in multijurisdictional trademark infringement litigation before the Beijing, Shanghai, Nanjing and Zhongshan Intermediate Courts.
  • Many foreign companies and foreign-invested companies in trademark infringement lawsuits filed by trademark squatters in China.
  • Microchip in a micro-program copyright infringement case against a major Chinese company before the Shanghai No.1 Intermediate Court.
  • Bandai in winning 41 collective “GUNDAM” and “Three Kingdoms” copyright infringement cases before the Beijing No.1 Intermediate Court. This case was ranked as one of the Top 10 IP cases by the Beijing High Court.
  • Symantec Corporation to sue an individual and his alleged criminal syndicates for manufacturing and distributing pirated software following the China-U.S. joint law enforcement action codenamed “Winter Solstice”. The case was heralded as the largest computer software piracy case in the world when it was decided.
  • A world-renowned entertainment company in its copyright infringement and unfair competition lawsuit in China filed against the producer and the publisher of a Chinese copycat animation movie.
  • A globally renowned developer and publisher of entertainment video games in its copyright infringement lawsuit in China on merchandise infringement.
  • An Internet platform service provider in defending multiple copyright infringement cases in China.
  • Bond Manufacturing in an applied art copyright infringement case against a Chinese company before the Xiamen Intermediate Court.
Trade Secrets
  • Novartis China against its former employee in China for trade secret misappropriation involving the first-ever pretrial preliminary injunction in trade secret misappropriation cases under the 2013 Civil Procedure Law.
  • A leading petrochemical company against a local competitor for trade secret misappropriation covering the entire production process for a chemical product.
  • One of the world’s largest manufacturers of diaper production lines against its former engineer and his new employer for trade secrets misappropriation in both civil and criminal actions.
  • General Electric Company to obtain preliminary injunction against one of its former employees for misappropriating trade secret technologies.
  • Vesuvius in a trade secret infringement case against a Chinese competitor and some of its former employees.
  • Singapore Telecommunications in a trade secret infringement case against its former senior management.
  • PepsiCo to successfully defend a trade secret infringement case brought by one of its former Chinese business partners before the Chongqing No.5 Intermediate Court. The case was selected by the PRC Supreme Court as one of the Top 10 IP Cases in China.
  • MECS in a technical related trade secret infringement case against one of its former executives.

 

FRAND Litigation and IP-related Antitrust Matters
  • A leading technology company in an antitrust and FRAND-related litigation against another major technology company before the Beijing IP Court concerning the licensing of patent portfolio essential for telecommunication standards.
  • A leading technology company in its defense in antitrust-related litigation filed by a Chinese digital accessories company before the Beijing IP Court concerning MFi certification.
  • InterDigital in antitrust and FRAND-related lawsuits filed by several implementers of the wireless telecommunication standards before the Shenzhen Intermediate Court, Guangdong High Court, Jiangsu High Court and the PRC Supreme Court, including the first-ever case in this area filed by Huawei.
  • The9 in an antitrust investigation conducted by the China State Administration of Industry and Commerce concerning licensing of online gaming computer software.
  • Towana in an antitrust investigation conducted by the China Ministry of Commerce concerning concentration of undertakings.
  • A multinational technology company in an antitrust investigation by the China State Administration of Industry and Commerce.
  • INEOS in an antitrust dispute against a U.S. chemical company concerning the right to license technologies to Chinese companies.
  • A leading Chinese PC manufacturer in an antitrust dispute concerning the legality of a proposed licensing scheme and the amount of royalties chargeable for the right to use certain patented technologies.
  • A Japanese technology company in the negotiation with a Chinese smartphone manufacturer for licensing of patent portfolio essential for certain telecommunication standards.
  • Texas Instruments in antitrust compliance issues concerning a purchase agreement with its customers.
  • Infineon Technologies in China Anti-Monopoly Law compliance issues concerning its collaboration with local partners about technology sales and development.
Unfair Competition
  • Huya Live in an unfair competition case against a major live streaming competitor. This case is first-ever preliminary injunction ruling in China concerning complaint against Apple’s App Store.
  • Ralph Lauren Corporation in unfair competition cases involving false advertisement and misappropriation of trade name and trade dress against Chinese copycats in Shanghai.
  • Tesla Motors in unfair competition cases involving false advertisement and misappropriation of trade name against a trademark squatter.
  • A leading mobile device company in winning the defamation claim brought by a Chinese individual in Shanghai.
  • Qihoo 360 in winning the first ever preliminary injunction on defamation infringement and favorable judgment in Shanghai against a Chinese newspaper and a news website in a defamation case.
  • Semiconductor Manufacturing International Corporation in an unfair competition and commercial defamation case against Taiwan Semiconductor Manufacturing Company before the Beijing High Court.
  • Advanced Micro-Fabrication Equipment in an unfair competition case before the Shanghai No.1 Intermediate Court.
  • Shangri-La International in winning an unfair competition case concerning trade name, trade dress and misrepresentation and trademark infringement against a local hotel before the Nanjing Intermediate Court.
  • Louis Vuitton in an unfair competition case against Shanghai Xingui Real Property Development Co. before the Shanghai No.2 Intermediate Court where the opponent was held liable for free riding on the goodwill and business reputation of our client.
  • A leading U.S.-based interactive entertainment and video game company in its copyright and unfair competition lawsuit in China filed against publisher of an infringing imported movie. The case was selected by the PRC Supreme Court as one of the Top 50 representative IP Cases in China.
  • A leading Scandinavia-based hearing-aid producer in winning a series of anti-unfair competition cases against domestic competitors in China.
Supreme Court Practice
  • Watson Pharmaceuticals in a successful defense against allegation of patent infringement concerning the method patent for production of olanzapine before the Jiangsu High Court and before the PRC Supreme Court. The case was named as a guiding case by the Supreme Court.
  • Michael Jordan, the basketball player, in a series of cases against Qiaodan Sports Company for its registration of Mr. Jordan’s name as company name and trademarks before the PRC Supreme Court.
  • Aonuo Pharmaceutical in a retrial heard by the PRC Supreme Court in an invention patent infringement case brought by a local pharmaceutical company.
  • Shanghai Dangdang Electronic Technology Inc. in a successful retrial petition to the PRC Supreme Court.
  • Guangdong Feishi Media Co. in defending a copyright infringement dispute and obtained a favorable mediation decision from the PRC Supreme Court.
  • Guangdong Huarun Paints Co., a subsidiary of Vasper, in a successful PRC Supreme Court retrial.
  • Shantou Wan Li Da in a retrial heard by the PRC Supreme Court in a trademark infringement case.
  • A cosmetic company in a retrial heard by the PRC Supreme Court in an unfair competition case brought by its competitor.