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Mandy Song, Ph. D.

Founding and Managing Partner, Patent Attorney

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Publications:

After-Final Practice: Navigating PTO Options to Compact Patent Prosecution

Strafford Webinar, January 9, 2018

Venue and Exhaustion: Practical Effects of TC Heartland and Lexmark

Finnegan Webinar, July 26, 2017

Extraterritorial Infringement under the U.S. Patent Law

MySIPO Institute Webinar, May 20, 2017

Prosecuting, Licensing and Litigating Standard Essential Patents

MySIPO Institute Webinar, November 16, 2016

Driving IoT Security with Innovation and Intellectual Property Development

IoT Today, November 16, 2016

Basics of U.S. Intellectual Property Laws

State Intellectual Property Office (SIPO) World IP Roadshow, October 25, 2016

U.S. Invalidity Proceedings in view of Supreme Court Decision in Cuozzo

MySIPO Institute Webinar, July 26, 2016

U.S. Patent Law and Case Studies

Finnegan Roundtable, July 6, 2016 (Shenzhen)

A New Era of Patent Practice and Litigation in Europe—The EU Unitary Patent and Unified Patent Court Brexit

UPC Asia Roadshow, June 28, 2016 (Beijing), June 29, 2016 (Shanghai)

IP Strategies in the Wake of the Internet of Things

China IP News, June 15, 2016

Building a Strong Robotics IP Portfolio

Managing Intellectual Property, December 2014

Opportunity to Get Your Application Allowed After Final Rejection—Introducing the After Final Consideration Pilot

Chartered Institute of Patent Attorneys (CIPA), December 2014

Portfolio Development and Management: What’s in Your Toolbox?

Finnegan Webinar, July 24, 2014

Trial of a U.S. Patent Case

China Intellectual Property Training Center, December 7, 2013 (Beijing)

Workshop on Strategic Use of Administrative Invalidity Proceedings in Patent Litigation

Finnegan Workshop, December 5, 2013 (Shenzhen)

Chinese Summary of After Final Consideration Pilot (AFCP)

China IP News, August 2, 2013

Q&A Regarding U.S. IP Law

Managing Intellectual Property, November 24, 2011

Dealing with U.S. Patent Pools as a Third Party

China IP News, February 2010

Education

J.D., Georgetown University Law Center

Ph.D., Duke University, Electrical and Computer Engineering

M.S., Duke University, Biomedical Engineering

B.S., Tsinghua University, Electrical Engineering

Admissions

District of Columbia (D.C.) Bar

Virginia State Bar

Court of Appeals of Veteran Affairs

U.S. Patent and Trademark Office

Practice

Mandy Song, Ph.D. brings more than a decade’s experience in patent practice, including patent prosecution, client counseling, patent portfolio management & transactions, patent litigation in U.S. federal district courts, and Section 337 investigations at the U.S. International Trade Commission (ITC), and post-grant proceedings before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO). She has significant experience in a wide range of electrical, computer, and biomedical technologies.

Mandy is a seasoned attorney in patent office practice. She manages the development of large patent portfolios for more than a dozen clients. She has personally drafted, filed, and prosecuted thousands of patent applications before the USPTO. She routinely interviews inventors to develop invention disclosures, drafts new patent applications in a broad range of complex technologies, conducts interviews with patent examiners, and appeals final rejections to the PTAB.

Mandy’s extensive litigation experience includes pre-litigation due diligence, managing all aspects of fact and expert discovery, motion practices, orchestrating complex claim construction analysis and briefing, taking and defending depositions, summary judgment briefing, hearings, and trials in both litigation and PTAB matters. She is also experienced in discovery dispute resolution and settlement negotiations.

Mandy serves clients of all sizes, from startups to conglomerates with global presence. She has worked with clients all over the globe and travels extensively to work on-site with clients to address their intellectual property needs.

Mandy often presents at CLE programs on topics such as U.S. patent prosecution practice, patent litigation and PTAB proceedings, industrial standards and related patent issues, and due diligence for patent matters. She has been an adjunct professor of legal writing at George Washington University Law School and an invited speaker on patent law to Duke University Pratt School of Engineering. She also serves as a mentor to Duke University’s startup incubator, DUHatch.

Practice Areas

Patent Office Practice

Patent Drafting

Patent Prosecution

Appeals to the PTAB

Reexaminations

AIA PTAB Proceedings

Patent Litigation

District Court Litigation

Section 337 ITC Litigation

Settlement Negotiation

Pre-litigation Diligence

Enforcement of Standard Essential Patents

Other IP Disputes

Tradeshow IP challenges

Online Merchant Takedown Resolutions

Arbitrations and Mediations

Other Practices

Due Diligence and Clearance

Patent Licensing and Transactions

Legal Opinions and Counseling

Global Portfolio Planning and Management

Export Control

Industrial Focuses

Mandy’s diverse patent practice is anchored on her solid technical background obtained through her doctorate research, academic training, and work experience. She frequently counsels clients and handles large patent portfolios in the following technology areas:

Artificial intelligence

Signal, image and video processing, including compression and encryptions

Power generation, electric motors, and power electronics

Medical devices, including imaging devices

Telecommunication and networks

LED lighting and displays

Analog and digital circuits

Semiconductor and Integrated Circuits

Software and business methods

Additionally, she has extensive experience in intellectual property issues related to the Internet of Things (IoT), robotics, automotive including autonomous driving, and digital healthcare.

Representative Experience

Beijing Choice Electronic Technology Co., Ltd. v. Contec Medical System USA Inc.; Contec Medical Systems Co., Ltd.

N. D. Ill. 1:18-cv-00825

Judges Ellis, Valdez

Relevant technology: pulse oximeters

BMW of North America, LLC v. Stragent, LLC

PTAB IPR2017-00676,

PTAB IPR2017-00677

PTAB IPR2017-01519

PTAB IPR2017-01520

PTAB IPR2017-01521

PTAB IPR2017-01522

Judges Boucher, Pettigrew, Silverman

Relevant technology: vehicle electronic control unit (ECU) and heterogeneous communications

Koninklijke Philips N.V. et al. v. JST Performance, Inc.

D. Ariz. 2:14-cv-02591

Judge Wake

Relevant technology: LED lighting

Koninklijke Philips N.V. et al. v. JST Performance, Inc. d/b/a Rigid Industries

M.D. Fla. 6:14-cv-01198

Judges Kelly, Presnell

Relevant technology: LED lighting

Rokiot USA, LLC v. BOSCH Software Innovation Corp., et al.

N.D. Ill. 1:17-cv-05101

Judges Alonso, Durkin

Relevant technology: Internet of Things (IoT) platform for smart home

Sony Corp. et al. v. ARRIS Enterprises LLC et al.

PTAB IPR2017-02064

Judges Bisk, Kaiser, Lee, Wormmeester

Relevant technology: TV set-top box and media communications

Koninklijke Philips N.V. et al. v. Amerlux, LLC, et al.

D. Mass. 1:15-cv-13086

Judge Sorokin

Relevant technology: LED lighting

Koninklijke Philips N.V. et al. v. Roy-CSL Lighting, Inc.

D. Mass. 1:15-cv-11053

Judge Young

Relevant technology: LED lighting

Koninklijke Philips N.V. et al. v. Schreder Lighting LLC, et al.

D. Mass. 1:14-cv-12282

Judge Talwani

Relevant technology: LED lighting

Koninklijke Philips N.V. et al. v. Wangs Alliance Corporation d/b/a WAC Lighting Co.

D. Mass. 1:14-cv-12298

Judges Casper, O’Toole

Relevant technology: LED lighting

Koninklijke Philips N.V. v. iGuzzini Lighting USA, Ltd., et al.

D. Mass. 1:15-cv-03979

Judge Pauley

Relevant technology: LED lighting

JST Performance, Inc. d/b/a Rigid Industries v. Koninklijke Philips N.V.

PTAB IPR2014-00874

Judges Busch, Murphy, Ward

Relevant technology: LED lighting

One-Blue, LLC, Koninklijke Philips N.V., Panasonic Corp., Pioneer Corp., Sony Corp. v. Imation Corp.

D. Del. 1:13-cv-00917

Judge Stark

Relevant technology: Blu-ray standards essential storage medium

Technical Consumer Products, Inc. v. Koninklijke Philips Electronics N.V.

N.D. Ohio 1:12-cv-02546

Judge Boyko

Relevant technology: LED lighting

Wangs Alliance Corporation d/b/a WAC Lighting Co. v. Koninklijke Philips N.V.; Philips Lighting Holding B.V.

PTAB IPR2015-01290

PTAB IPR2015-01291

PTAB IPR2015-01292

PTAB IPR2015-01293

PTAB IPR2015-01294

Judges Jefferson, Perry, Quinn

Relevant technology: LED lighting

Publications:

After-Final Practice: Navigating PTO Options to Compact Patent Prosecution

Strafford Webinar, January 9, 2018

Venue and Exhaustion: Practical Effects of TC Heartland and Lexmark

Finnegan Webinar, July 26, 2017

Extraterritorial Infringement under the U.S. Patent Law

MySIPO Institute Webinar, May 20, 2017

Prosecuting, Licensing and Litigating Standard Essential Patents

MySIPO Institute Webinar, November 16, 2016

Driving IoT Security with Innovation and Intellectual Property Development

IoT Today, November 16, 2016

Basics of U.S. Intellectual Property Laws

State Intellectual Property Office (SIPO) World IP Roadshow, October 25, 2016

U.S. Invalidity Proceedings in view of Supreme Court Decision in Cuozzo

MySIPO Institute Webinar, July 26, 2016

U.S. Patent Law and Case Studies

Finnegan Roundtable, July 6, 2016 (Shenzhen)

A New Era of Patent Practice and Litigation in Europe—The EU Unitary Patent and Unified Patent Court Brexit

UPC Asia Roadshow, June 28, 2016 (Beijing), June 29, 2016 (Shanghai)

IP Strategies in the Wake of the Internet of Things

China IP News, June 15, 2016

Building a Strong Robotics IP Portfolio

Managing Intellectual Property, December 2014

Opportunity to Get Your Application Allowed After Final Rejection—Introducing the After Final Consideration Pilot

Chartered Institute of Patent Attorneys (CIPA), December 2014

Portfolio Development and Management: What’s in Your Toolbox?

Finnegan Webinar, July 24, 2014

Trial of a U.S. Patent Case

China Intellectual Property Training Center, December 7, 2013 (Beijing)

Workshop on Strategic Use of Administrative Invalidity Proceedings in Patent Litigation

Finnegan Workshop, December 5, 2013 (Shenzhen)

Chinese Summary of After Final Consideration Pilot (AFCP)

China IP News, August 2, 2013

Q&A Regarding U.S. IP Law

Managing Intellectual Property, November 24, 2011

Dealing with U.S. Patent Pools as a Third Party

China IP News, February 2010