Shong is an associate in the intellectual property group at Ropes & Gray and actively participates in the data, privacy & cybersecurity group. His practice includes patent, trade secret, and data privacy matters. In patent matters, his experience spans prosecution, litigation, and licensing. He has prosecuted patents in patent offices in North America, South America, Europe, East Asia and Oceania. He has experience with post grant proceedings before the United States Patent Office, European Patent Office, Japanese Patent Office and Korean Patent Office.
Shong has represented clients in arbitration and before the Federal Courts, Patent Trial and Appeal Board, and International Trade Commission. He has counseled clients on licensing standards essential patents involving FRAND issues and has evaluated patent portfolios for acquisition.
Shong is a certified privacy professional, CIPP/US, and is knowledgeable about various privacy frameworks in the U.S. Shong has advised clients on compliance with the California Consumer Privacy Act (CCPA) and Telephone Consumer Protection Act (TCPA); drafted privacy policies; and conducted due diligence and drafted transactional documents to address data privacy and cybersecurity issues.
His technical expertise spans fields including cloud-based computing, artificial intelligence, machine learning, clean energy, materials science, semiconductor manufacturing, circuits, logic design, embedded systems, wireless communications, and software engineering. He also has detailed experience with standards essential patents related to industry standards such as Bluetooth, ZigBee, 802.15.4, 802.11, 3G, 4G LTE, H.264/AVC, and H.265/HEVC.
Shong received a JD, a Ph. D in Electrical Engineering with minors in Materials Science and Chemistry, and a B.S. in Electrical Engineering and Computer Science, from the University of California at Berkeley. Before attending law school, Shong conducted materials characterization at the Stanford Synchrotron Radiation Laboratory; conducted research on synthesis of nanoparticle based ionic materials at the National Institute of Materials Science in Tsukuba, Japan; worked as a product engineer developing flash memory at Spansion, LLC (now part of Cypress Semiconductor); and developed voice recognition software from open source components at the International Computer Science Institute at Berkeley.
Experience
Federal Court
- Representing a Leading Medical Device Company in the Northern District of California in a trade secret and contract case involving technologies for flow cytometers.
- Defended the World’s Leading Consumer Electronics Company in a two-patent suit relating to Bluetooth technology.
- Harris Corp. v. A Major Multinational Telecommunications Equipment Company (E.D. Tex.): Defended a major multinational telecommunications equipment company in a seven-patent suit involving ad hoc wireless networks, network security, and encryption technologies.
- Godo Kaisha IP Bridge 1 v. TCL Communications Technology Holdings Ltd.(D. Del.): Representing IP Bridge in a two-patent suit involving 4G LTE wireless standards and FRAND licensing.
- Godo Kaisha IP Bridge 1 v. Broadcom Ltd et al.(E.D. Tex.): Represented IP Bridge in a patent infringement action involving semiconductors resulting in favorable settlement.
- A Major Cloud-Based Services Company (W.D. Wa.): Defeated motion for preliminary injunction and successfully resolved matter in a case involving cloud-based email migration.
- Intellectual Ventures I LLC et al. v. A Major Japanese Consumer Electronics Company (D. Del.): Obtained a favorable settlement for a major Japanese electronics manufacturer in a multi-patent infringement litigation involving various features of digital cameras related to 802.11.
- A Major American Consumer Electronics Manufacturer (W.D. Wash.): Represented a major American consumer electronics manufacturer in a patent and FRAND rate lawsuit concerning features and functionality of computers and mobile communication devices related to 802.11 wireless technology and H.264 video coding technology.
International Trade Commission
- In the Matter of Certain Non-Volatile Memory Devices and Products Containing Same (No. 337-TA-893): Represented Spansion LLC in an International Trade Commission Investigation against Macronixinvolving patents related to semiconductor memory devices.
- Certain Wireless Devices with 3G and 4G Capabilities(No. 337-TA-868): Represented Samsung Electronics in an ITC investigation, brought by InterDigital, relating to seven patents directed to 3G and 4G standards.
- In the Matter of Certain Gaming and Entertainment Consoles, Related Software, and Components Thereof: Represented A Major American Consumer Electronics Manufacturer in an International Trade Commission Investigation involving patents related to security protocols in wireless communications.
United States Patent Office Post Grant Proceedings
- Representing Godo Kaisha IP Bridge 1 in Ex Parte Reexaminations related to wireless communications technology.
- Represented Godo Kaisha IP Bridge 1 in IPRs related to semiconductor technology and subsequent appeal to the Federal Circuit.
- Represented Samsung in multiple IPRs challenging technology related to communicating video content.
- Represented a Major U.S. Media and Entertainment Company in multiple ex parte re-examinations and IPRs on behalf of patent owner.
Arbitration
- Represented a Semiconductor Wafer Manufacturer in an international arbitration concerning whether the client’s patents incorporate the plaintiff company’s trade secrets.
Other Matters
- Counseled a Major Semiconductor Electronics Company on issues related to standards essential patents in ultra-wideband communications during the acquisition of a wireless semiconductor device manufacturer.
- Counseled a Major Energy Company on freedom to practice in solar technology.
- Representing a Major Consumer Electronics Company in licensing negotiations involving standards essential patents related to video coding technology.
- Represented a Venture Capital Fund in patent and trade secret diligence for funding new company founders of communications technology.
- Drafted agreements for clients relating to licensing activities.
- Counseled semiconductor and network communications companies on trademark and trade secret issues.
- Counseled low income entrepreneurs on formation of business entities, contractual rights under commercial leases, and drafting of contracts.