Current Employment Position(s)

Of Counsel

Languages

• Chinese
• English

Lawyer Overview

Ya-Chiao Chang concentrates his practice on patent litigation in the United States. He often works in the Firm's New York Office when he is in the U.S. He has worked in the intellectual property field since 1994.

Ya-Chiao's experience includes litigation in the U.S. district courts in California, Delaware, New York, and Texas and the International Trade Commission (ITC). He focuses his practice in the electrical sciences including integrated circuits, semiconductor processes, computer architecture, and peripherals such as optical mouse IC designs, hardware, software, memory controllers and network devices, image processing, optical storage and data processing such as compact disk (CD) and digital video disk (DVD) technologies, light emitting diode (LED) and Internet-related technologies, plasma display panels (PDPs), liquid crystal displays (LCDs), wireless communications, firmware, and signal processing.

Ya-Chiao's counseling practice includes P.R. China-related IP matters and negotiation and resolution of multijurisdictional patent and IP disputes between multiple parties in Asia, Europe, and the United States as well as prelitigation and litigation counseling for the United States and multiple jurisdictions worldwide for related cases involving common litigants and standard-setting organizations. He has advised clients on procedural rules, temporary and permanent injunctive relief, discovery, trial preparation, trial, post-trial proceedings, industry standards, patent misuse, antitrust, reasonable and nondiscriminatory (RAND) royalty bases, copyright, unfair competition, trade secret, and substantive IP laws in federal and state courts and special tribunals such as the ITC and administrative proceedings in the U.S. Patent and Trademark Office. In the corporate context, his practice includes counseling clients on IP issues in complex transactions such as mergers and acquisitions, joint ventures, and corporate reorganizations. He is experienced in conducting licensing reviews, intellectual property audits, and due diligence reviews.

Prior to relocating to Asia and joining Jones Day, Ya-Chiao practiced U.S. patent litigation with Finnegan, Henderson, Farabow, Garrett & Dunner LLP and played major roles in advising clients in IP issues. He frequently lectures on intellectual property at programs and seminars sponsored by academic, institutional, corporate, and government entities in Taiwan and mainland China. While serving as a patent examiner with the U.S. Patent and Trademark Office, he was responsible for examining the patentability of inventions in wireless communications. Prior to entering the legal profession, he worked as an electrical and computer engineer with a California company. He is a member of the American Bar Association (Intellectual Property Section), the American Intellectual Property Law Association, the International Trade Commission Trial Lawyers Association, and the Taipei Bar Association.

Areas of Practice

• Intellectual Property
• ITC Section 337

Representative Cases

• LG Philips LCD Co. Ltd. v. Chi Mei Optoelectronics Corp., Civil Action No. 2:07-cv-176 (D. Del. 2007)
• Plasma Physics et al. v. Chi Mei Optoelectronics et al., Civil Action No. 2:08-cv-1628 (E.D. New York) , (2008)
• Semiconductor Energy Laboratory Co., Ltd v. HannStar Display, Inc., HannSpree Inc., Hannspree California Inc., 2:06-CV-190 (E.D. Tex. 2006) (TJW)
• United States International Trade Commission Investigation No. 337-TA-640 , (2008)
• United States International Trade Commission Investigation No. 337-TA-654 , (2008)
• Compression Labs v. Acer et al (U.S. District Court, E.D. Texas)
• Guardian v. Dell et al (U.S. District Court, D. Delaware)
• Honeywell v. Apple et al (U.S. District Court, D. Delaware)
• Positive Technologies v. BenQ America et al., Civil Action No. 2:07-cv-00067-TJW (U.S. District Court, E.D. Texas)
• Power Integrations v. System General (U.S. International Trade Commission Investigation No. 337 TA-541)
• Semiconductor Energy Laboratory v. Chi Mei Optoelectronics et al (U.S. District Court, N.D. Cal.)
• Semiconductor Energy Laboratory v. HannStar Display and Proview Technology et al (U.S. District Court, E.D. Texas)
• Sigmatel v. Actions Semiconductor (U.S. District Court, W.D. Texas; U.S. International Trade Commission Investigation No. 337-TA-538)

West Practice Categories

Copyrights, Intellectual Property Law, International Intellectual Property, Patents, Technology Licensing, Trade Dress, Trade Secrets, Trademarks

Bar Admissions

• New Jersey
• New York
• Taiwan, Republic of China

Education

• U of California - Hastings

Address

6th Floor
2 Tun Hwa South Road, Section 2
Taipei 106, Taiwan

Phones

886.2.7712.3233 / 86.10.5866.1210 (Beijing) (Business Phone)

Faxes

886.2.2704.6791 / 86.10.5866.1122 (Business Fax)

Emails

Contact Us (Business Email)

Websites

http://www.jonesday.com