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
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