Ya-Chiao Chang
Overview
Ya-Chiao Chang represents U.S. and international companies – particularly those based in Taiwan and mainland China – in complex, high-stakes intellectual property matters with a specific focus on litigating patents for traditional and emerging electronics, wireless communications, semiconductors, and other technologies. He specializes in analyzing the unique intersecting and diverging components of U.S. and Chinese patent and trademark laws, then applying his insights to develop robust plans that meet clients’ specific goals and objectives.
A primary component of Ya-Chiao’s practice involves advising on IP-related antitrust disputes and resolving global patent disputes, in which he employs a sharp legal acumen derived from living and working within the diverse business hubs of Shanghai and Beijing. His comprehensive counsel includes injunctive relief, trial, claim construction, customs enforcement, post-trial proceedings, industry standards and patent essentiality, patent misuse and exhaustion, reasonable and nondiscriminatory royalty, unfair competition, trade secret, and U.S. Patent and Trademark Office (USPTO) proceedings. With a highly nuanced understanding of changing litigation landscapes, his scope of work frequently touches multinational corporations throughout Asia, the U.S., and Europe.
Highly attuned to the rapidly evolving nature of U.S.-China trade relations, Ya-Chiao is well-versed in all aspects of regulatory compliance and export control and is notably fluent in Chinese. He has represented clients before the USPTO, where he previously served as a patent examiner; the Ministry of Justice of the People’s Republic of China; and across diverse state, federal, and international jurisdictions.
Credentials
Education
- University of California Hastings College of the Law, 1994 (J.D.)
- East China University of Politics and Law, 1994 (Chinese Law Certificate)
- The Cooper Union for the Advancement of Science and Art, 1991 (B.S.)
Court Admissions
- U.S. District Court for the Eastern District of Texas
- Represented a China-based international beauty and personal care brand management company in IP litigation.
- Defended global immunotherapy company specializing in cancer therapies in Shanghai IP Court.
- Represented a leading global provider of integrated solutions in analyzing semiconductor supply chain and compliance with U.S. Department of Defense (DoD) regulations.
- Represented a Chinese garment manufacturer in a lawsuit against a U.S. wholesale distributor to enforce a $1.3 million default judgment.
- Defended global supplier of NAND flash controllers in patent infringement case filed by U.S. technology company specializing in data management and storage.
- Represented a global telecom solution provider in foreign discovery assistance.
- Defended a holding company that acquires direct-to-consumer (DTC) e-commerce businesses in a website accessibility class action lawsuit.
- Defended a Chinese state-owned investment firm specializing in high-tech industries in a breach of contract case filed by shareholders of a California aircraft manufacturer which received significant investments from the firm.
- Represented a global health care company that specializes in lifesaving medicines and technologies for infusion, transfusion, and clinical nutrition and its generics supplier in Abbreviated New Drug Application (ANDA) litigation.
- Represented a global micro-fabrication equipment company in preparing complaints (unfiled) under Chinese Blocking Statute, i.e. MOFCOM Order No. 1 (2020), in conjunction with administrative proceedings before the Office of Foreign Assets Control (OFAC) and 28 U.S. Code §2201 declaratory judgment action.
- Advised a Chinese provider of industrial automation and intelligent manufacturing solutions in analyzing technology supply chain and export control compliance with the U.S. Department of Commerce’s Bureau of Industry and Security.
- Represented a Chinese multinational major appliance and electronics manufacturer in a patent dispute and inter partes review. The parties later settled.
- Advised a Chinese company specializing in digital infrastructure, cloud computing, and AI solutions in analyzing technology supply chain and export control compliance with the U.S. Department of Commerce’s Bureau of Industry and Security.
- Represented online merchants of an American multinational e-commerce and technology company in preparing patent infringement complaints in Shanghai IP Court (unfiled) in conjunction with Utility Patent Neutral Evaluation (UPNE) in patent arbitration, 35 U.S. Code §299 joinder and 28 U.S. Code §2201 declaratory judgment action.
- Represented a Chinese multinational electronics company in standard essential patent (SEP) litigation in Shanghai IP Court.
- Represented a Chinese multinational electronics company in inter partes review (unfiled) and ex parte review.
- Represented a Taiwan-based company principally engaged in the research, development, manufacturing, and distribution of liquid crystal display (LCD), touch panels, and modules in inter partes review.
- Represented a Taiwanese fabless semiconductor company and its subsidiary in a U.S. International Trade Commission (ITC) investigation initiated by two U.S. companies, a semiconductor design company and an integrated circuit components company.
- Represented a Taiwanese semiconductor company in a U.S. International Trade Commission (ITC) investigation initiated by a U.S. manufacturing, semiconductors, and electronics company and university.
- Represented a leading Taiwanese semiconductor foundry in third-party discovery.
- Represented a U.S.-based global leader in visual and EdTech solutions in three patent infringement cases filed by multiple U.S. technology development and licensing companies.
- Legal 500 China, IP, 2021
- China Law Society, First Prize, 2018
- Chambers Global, Band 1, IP (foreign legal advice); Leading Lawyer in IP
- Chambers Asia, Band 1, IP
- Chambers China, Leading Lawyer in IP (international firms)
- Chambers USA, Leading Lawyer in IP
- IFLR1000 Asia, 2013
- International Law Office Client Choice Awards, IP