Holly Y. Li

Holly Y. Li’s practice focuses on litigation and strategic advice, IP assertion, offensive and defensive IPR proceedings, cross border intellectual property prosecution, licensing structure and negotiation and IP portfolio management in a variety of advanced technologies including, but not limited to, semiconductors, wireless communications, software designs, optical networking, nanotechnologies, and clean and alternative energies. She also counsels clients on strategic alliance, technology acquisitions and market entry strategies.

As native of China, Ms. Li started her career in the IP field since the 1990’s when she worked for a China based Sino-foreign consulting firm in the context of projects management and joint venture formation with technology licensing and transfer as a major component. Shortly after, Ms. Li pursued her graduate studies in the US. While she was in law school, she was recruited by Lucent Technologies Inc. (now part of Nokia) and became the youngest patent licensing manager at the Intellectual Property Business Unit, during which she worked closely with Bell Labs scientists and engineers on patent and technology licensing issues in the areas of microelectronics, optical networking and wireless technologies.

Ms. Li embarked her law firm career initially as an international summer associate at the international law firm Baker & McKenzie’s office in HK. Subsequently, she honed her patent drafting, prosecution, opinion, assertion, infringement defense and patent litigation skills respectively with one of the oldest IP boutique firm Cooper & Dunham and one of the largest trial firm Quinn Emanuel Urquhart & Sullivan (then Quinn Emanuel Urquhart Oliver & Hedges).

In 2007 and 2008, Ms. Li served as a Senior IP Counsel to head up an IP group at an entertainment technology development company based in California, where she was able to combine her patent prosecution, litigation and licensing skills and managed the corporation’s international IP portfolios and ensured appropriate protections worldwide. Aided by local attorneys, she successfully represented the company in winning several contentious and non-contentious proceedings including patent invalidations and appeals, litigation, and arbitration in various Chinese judicial and administrative forums.

Ms. Li is a member of the Association of the Bar of the City of New York, Asian Affairs Committee; American Intellectual Property Law Association; Licensing Executive Society; and the ABA IPL Committee 102 Subcommittee on International Patent Practice.

PUBLICATIONS:

Start Making Sense: Will Post-Grant Review Be More Reasonable to Litigants under the Phillips Standard?, Co-author with Leslie Overman, CKR Law Blog and CKR IP Newsletter, December 2018

IP and General Legal Issues in the MedTech Industry in China, CKR Law Blog and CKR IP Newsletter, October 2018.

Cross-Border IP Investment, Commercialization and Monetization, Presented at the China Academy of Telecommunication Research ICT Forum on Innovation and IP Protection in Beijing, October 21, 2015.

Maximizing IP Asset Value for Start-ups, presented at WYND Co-Working Space Central, September 2, 2015, Hong Kong.

Intellectual Property for Business, co-presented at HK Trade Commission Entrepreneur Day on behalf of International IP Commercialization Council on May 29, 2015.

Cross Border IP Commercialization and Monetization, presented at Licensing Executive Society China HK Chapter meeting on April 16, 2015.

Maximizing IP Values in Asia, Presented to various fortune 100 companies in the US and Europe (July and August 2014).

How to Evaluate IP Assets, Presented at various companies in-house seminars in China, March and April 2013.

Why a government supported patent trading system is right on time -Draft submission to the Fifth Session of the 11th National People's Congress (NPC) (March 2012).

Nortel’s Patents Sold For $4.5 Billion, China IP Magazine (July 5, 2011).

LED Industry and Patent Analysis, SCIENCE AND TECHNOLOGY DAILY (September 7, 2010).

Patent and Technology Valuation, SCIENCE AND TECHNOLOGY DAILY (July 6, 2010).

Patent Litigation and Market Competition, SCIENCE AND TECHNOLOGY DAILY (June 22, 2010).

Joint Comments on Draft Amendments to the Patent Law of the People’s Republic of China, Member of drafting task force, American Bar Association (March 2006 – September 2008).

The Patentability of Business Methods and Its Impact on E-commerce Companies, New Copyright Laws for the Dissemination of Music Over the Internet, DICTUM, A Newsletter of the New Jersey State Bar Association, Young Lawyers Division, Vol. 23, No.1, 16 (Nov. 2000).

Transnational Trademark Protection in Cyberspace -- A Close Look at the Differences Between the US and Chinese Trademark Laws and Practices, Presented at YALE JOURNAL OF INTERNATIONAL LAW Young Scholars Conference, Yale Law School, New Haven, CT (March 24, 2001).

SELECTED REPRESENTATIONS:

Represented Lucent Technologies in licensing negotiations relating to a microelectronics patent (Licensing revenue valued above US$200M in five years)

Evaluated targets for acquisition on behalf of Lucent Technologies (acquisition value above US$ 100M)

Negotiated equity investment models in start-ups on behalf of Lucent Technologies

Evaluated a target in digital coding technology filed for acquisition on behalf of a consumer electronic company (Value above US$10M)

Represented Lucent in an e-Commerce licensing deal with values in excess of $100M

Drafted and prosecuted patent applications relating to digital imaging technologies on behalf of Ricoh (2001-2002)

Drafted and prosecuted patent applications relating to digital imaging the recording technologies on behalf of Sony America (2001-2002)

Prosecuted applications relating to computer hardware and software on behalf of Computer Associates (2001-2002)

Drafted and prosecuted patent application on behalf of Samsung (2003)

Drafted and prosecuted patent applications relating to wireless communication technologies on behalf of Lucent Technologies, Avaya, Nokia and other companies (2001-2005)

Participated in ANDA litigations representing generic drug companies against branded drug companies

Participated in a litigation representing MediaTek to defend patent infringement claims from Matsushita Electric

Drafted and prosecuted patent applications relating to audio coding technologies on behalf of DTS

Represented DTS in various trademark infringement proceedings in the U.S. and China

Represented a major consumer electronic company in a patent and technology licensing agreement dispute before CIETAC in Beijing and Shenzhen (2007-2008, Licensing revenue above US$ 15M)

Represented a major consumer electronic company in a patent invalidation appeal in Beijing First Intermediate Court

Represented a hydrogen fuel cell company in the sale of IP assets

Engaged in the evaluation and sale of a patent portfolio relating to cosmeceutical devices

Represented a Riverview Inc. in a clean coal project; including engaging in technology licensing negotiations and fund raising activities

Represented a French Patent investment fund in structuring a licensing entity in encoding/decoding technologies with Chinese parties

Represented a patent Investment fund in a market research of China and Asian market relating to NFC technology

Successfully represented Iron Dome in the Inter Partes Review process

Successfully represented Cathy Trading Inc. in its defensive and counterclaim actions against Interlink Products International Inc. relating to an alleged false advertising claim

Successfully represented Cathy Trading Inc. in its defensive action against Interlink Products International Inc. relating to an alleged patent infringement claim

Lead Counsel in representing a Chinese and New York based company in its defensive action against Wayne House in the District Court of Nevada and E.D.N.Y Eastern District Court of New York