Speaker 03.27.24
03.27
Legal | Hot U.S. IP Topics: Trade Secrets, Patents, Trademarks and AI
3:30PM - 5:00PM CST
AmCham Shanghai Conference Center
27F, Infinitus Tower
No.168 Hubin Road, Huangpu District
Shanghai, China
When I have an intellectual property need, David is my go-to lawyer. Not only does he know the law, he is genuinely concerned about his clients and incredibly responsive.
David Tsai is Pillsbury's Taiwan Practice co-leader and also resident in the San Francisco office. David focuses his practice on intellectual property, patent, trade secret, trademark, copyright, complex breach of contract and product defect litigation in courts and international arbitration tribunals.
David represents world-class corporations innovating biotechnology, pharmaceuticals, medical devices, software (internet and mobile apps), and hardware (semiconductors, set-top boxes, smartphones, solar wafers and light-emitting diodes/LED/OLED). In addition to litigation, his experience includes preparing and prosecuting U.S. electrical engineering patent applications, drafting patentability, freedom-to-operate and non-infringement opinions, as well as inter partes review (IPR) petitions. He advises his clients in patent negotiations, licensing, M&A transactions and overall intellectual property strategy. David has been quoted in various business and technology publications including The New York Times and has written and lectured internationally on Hatch-Waxman/Abbreviated New Drug Application (ANDA) litigation, standard essential patents, FRAND/RAND royalties, internet software applications, and U.S. patent law.
In 2017 − 2019, he served as one of the 18 Lawyer Representatives to the United States District Court, Northern District of California. He currently serves on the Executive Committee of the Board of Trustees for the University of California, Riverside (UCR), Foundation and the Advisory Board of Santa Clara University School of Law. He is the immediate past president of the Harvard Club of San Francisco and a past president of the Silicon Valley IP Law Association (SVIPLA) and the Asian American Bar Association of the Greater Bay Area (AABA). In 2016, David was recognized by the California State Legislature for his work in civil rights.
Prior to his legal career, David worked in product management at a biotech company and Internet/software startups backed by Kleiner Perkins Caufield & Byers and the Mayfield Fund. During his graduate studies at Stanford University focusing on stem cell gene therapy, David co-led the development of Stanford’s first online problem sets.
David is an Adjunct Professor at the University of San Francisco School of Law.
Representative Experience
- Represented defendants—a global wholesale import and export company, an auto parts retailer and a Chinese electronics manufacturer—in a patent infringement, trade secret and inventorship lawsuit in which the complainant asserted a patent related to a portable modular power station (C.D. Cal.).
- Defended a Taiwanese network communications company in a patent infringement dispute against a software company. Secured a favorable settlement less than six months after the complaint’s filing (W.D. Tex.).
- Represented a leading semiconductor fabricator in multiple patent lawsuit regarding fabrication technologies; successfully moved to transfer from E.D. Tex. to N.D. Cal., where we prevailed on a motion to dismiss for lack of standing (E.D. Tex.) (N.D. Cal.).
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- Patent Litigation
- Represented the developer of an instant video mobile application in a patent infringement lawsuit against a major American social media company relating to video overlay technology (C.D. Cal.; PTAB).
- Defended a Taiwanese multinational networking equipment corporation in a patent infringement lawsuit in which the complainant asserted four patents pertaining to time-based wireless access provisioning. Secured a favorable settlement less than six months after the complaint’s filing (W.D. Tex.).
- Defended a datacenter products manufacturer in a patent infringement lawsuit in which the complainant asserted five patents. (E.D. Tex.).
- Defended Taiwanese consumer electronics manufacturer in multiple patent infringement disputes and related inter partes review proceedings. Secured a favorable settlement (W.D. Tex.; PTAB).
- Defended a Taiwanese flash drive manufacturer against patent infringement claims related to USB flash drive technology (W.D. Tex.).
- Defended a leading computer hardware manufacturing company in a patent infringement lawsuit related to wireless communications technology (N.D. Cal.).
- Defended Taiwan-based computer manufacturer in a patent infringement lawsuit in which the complainant asserted 11 patents related to computer technologies (W.D. Tex.).
- Defended a network-attached storage (NAS) appliance manufacturer in a patent infringement lawsuit. Secured a favorable settlement less than six months after the complaint’s filing (C.D. Cal.).
- Defended a telecommunications equipment company in a patent infringement lawsuit related spread-spectrum high data technology. Secured a favorable settlement less than two months after the complaint’s filing (D. Colo.).
- Defended a leading semiconductor company in a multiple patent lawsuit directed to their systems on chip (SoCs) sold to tablet manufacturers (W.D. Tex.).
- Defending a Taiwanese multinational networking equipment corporation in a multiple patent lawsuit related to networking and communications devices (W.D. Tex.).
- Defended leading sugar reduction solutions company in a patent infringement lawsuit involving highly soluble stevia sweeteners (C.D. Cal.).
- Co-led countersuit brought by a major Taiwanese handset telephone manufacturer against major U.S. computer manufacturer in patent litigation relating to operating systems and mobile handsets (D. Del.).
- Defended a major Taiwanese LED producer in a patent infringement action involving LED manufacturing technology (E.D. Tex.).
- Defended the world’s largest sporting goods company in a patent infringement action involving patents related to altimeter technology (N.D. Cal.).
- Represented a leading flash drive manufacturer in defending against a patent concerning USB flash drive technology (N.D. Ga.).
- Represented one of the world’s largest connectors manufacturers in litigation involving various claims including breach of contract involving USB 3.0 (N.Y. Sup.).
- Represented a major television supplier in patent litigations involving MPEG-2 and ATSC technology (C.D. Cal.).
- Represented the world’s largest computer and optical disk drive (ODD) manufacturers in patent litigation involving ODD technology (E.D. Tex.).
- Represented the world’s largest disk drive manufacturer in a patent infringement action involving Blu-ray technology (C.D. Cal.).
- Represented the largest U.S. software manufacturer in a case alleging infringement of seven patents related to set-top box technology (N.D. Cal.).
- Represented the largest Korean semiconductor company in a patent infringement and unfair competition case related to computer memory Dynamic Random Access Memory (DRAM) technology (N.D. Cal.).
- Represented internet software companies in a patent infringement action relating to cloud computing data storage technology (E.D. Tex.).
- Represented a major U.S. online retailer in declaratory judgment and patent infringement actions involving technology related to electronic catalogue systems (E.D. Tex.) (S.D. Ind.).
- Represented a major Japanese printing equipment manufacturer in a patent infringement action involving a patent related to printer/copier technology (E.D. Tex.).
- Life Sciences
- Represented one of the largest U.S. generic pharmaceutical companies in Hatch-Waxman ANDA litigation regarding competing branded oral contraceptive, YAZ® (S.D.N.Y) (D. Nev.).
- Represented one of the largest U.S. generic pharmaceutical companies in Hatch-Waxman ANDA litigation regarding competing branded oral contraceptive, Yasmin®; defendants' motion for judgment on the pleadings granted, and plaintiffs' patent infringement claims dismissed with prejudice (S.D.N.Y.).
- Represented one of the largest U.S. generic pharmaceutical companies in Hatch-Waxman ANDA litigation regarding competing branded oral contraceptive, SEASONIQUE® (D. Nev.).
- Represented a brand name pharmaceutical company in a Hatch-Waxman ANDA patent infringement action arising out of a submission of an ANDA referencing branded product CARDENE® I.V., an intravenous calcium channel blocker for treatment of hypertension (D. N.J.) (E.D. Mich.).
- Represented a large U.S. biotechnology company in litigation involving patents directed to human cytomegalovirus (CMV) regulatory sequences (N.D. Cal.).
- Copyright Litigation
- Represented a major U.S. lighting retailer in a copyright infringement action (N.D. Cal.).
- Trade Secrets Litigation
- Represented one of the world’s largest manufacturers of cable modem routers and its employees in litigation involving various claims including misappropriation of trade secrets related to cable modem technology, breach of contract, and unfair competition (C.D. Cal.).
- Defended an employee in California accused of trade secret misappropriation involving semiconductor silicon materials in a two-week arbitration (AAA Arbitration).
- International Arbitration
- Defended a Taiwanese motherboard manufacturer in a five-day international arbitration brought by a German computer manufacturer involving product defect claims (AAA/ICDR Arbitration).
- Breach of Contract
- Defended a Taiwanese motherboard company and its U.S. subsidiary against a major electronics retailer in litigation involving various claims including fraud and breach of contract (Cal. Super. – Santa Clara Cnty.).
Professional Highlights
Honors and Awards
- Recognized by Best Lawyers (published by BL Rankings LLC), Litigation – Intellectual Property (2021 – 2024); Litigation – Patent (2022 – 2024)
- Acritas Stars Independently Rated Lawyers, Acritas Star, 2021 – 2022
- Selected to the Northern California Super Lawyers list, Super Lawyers, 2013 − 2023
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- Honors and Awards (continued)
- Lawyers of Color’s “Nation’s Best” List, 2019 (Inaugural List), 2022
- Minority Bar Coalition “Unity Award,” 2019
- AIDS Legal Referral Panel (ALRP) James C. Hormel Philanthropist Award, 2017
- California API Legislative Caucus Heritage Award (Excellence in Civil Rights), 2016
- Minority Corporate Counsel Association, Rising Star, 2015
- The Recorder, "Lawyer on the Fast Track," 2013
- National Asian Pacific American Bar Association Best Lawyer Under 40 Award, 2013
- Daily Journal, one of the top “Five Associates To Watch” in California, 2013
- Inaugural Santa Clara University School of Law Young Alumni "Rising Star Award," 2013
- Bar Association of San Francisco Barristers Club "Diversity Award," 2012
- Selected to the Northern California Rising Stars list, Super Lawyers, 2009 − 2012
- The National LGBT Bar Association 40 Best LGBTQ+ Lawyers Under 40, 2011
- Santa Clara County Bar Association "Barrister of the Year," 2010
- Minority Bar Coalition "Rising Star Award," 2009
- American Bar Association Section of Litigation "Outstanding Subcommittee Chair Award," 2008
- Recent Presentations
- “Men of Color: Building Understanding, Success Strategies and Authentic Connection,” presented at The California Minority Counsel Program (CMCP) Annual Business Conference, September 2023. Panelist.
- “How to Best Protect Your IP Interests: Unveiling the Latest in U.S. Patent and Trade Secret Laws,” presented at The Judge Randall R. Rader 2023 U.S.-China IP Seminars in Beijing and Shenzhen, China, July 2023. Speaker.
- “The Protection of Trade Secrets: A Key Element to Increase the Value of IP Rights,” presented at The Global Intellectual Property (IP) ConfEx in San Francisco, February 2023. Panelist.
- “Who Let the Dogs Out: The Parody Defense in Jack Daniel’s Trademark Case,” presented at the Pillsbury CLE Marathon, January 2023. Speaker.
- “Enforcement of Intellectual Property,” presented at the Santa Clara Journal of International Law 2022 China and the Reshaping of the International Legal Order Symposium, April 2022. Panelist.
- “IP and the Public Interest in the COVID-19 Era,” presented at the 2021 Lavender Law IP Law Institute, August 2021
- “Navigating a Job Search in a Post-Pandemic World: A Virtual Conversation,” presented at the Harvard Club of San Francisco, March 2021. Panelist.
- “Foundational and Practical Applications for International Arbitration,” presented at the Santa Clara Journal of International Law 2021 Symposium, March 2021. Panelist.
- “The Intersection of Health Care and IP Law,” presented at the 2020 Lavender Law Virtual IP Law Institute, August 2020. Co-moderator.
- “Out of the Bamboo Closet,” presented at 19th Annual University of Pennsylvania School of Law APALSA Conference, February 2020. Keynote speaker.
- “Navigating the Legal Landscape of Agreements Involving Technology,” presented on webinar hosted by IEEE Technology & Engineering Management Society (TEMS) and the Phoenix section of the TEMS chapter, January 2020. Speaker.
- Marlan and Rosemary Bourns College of Engineering at the University of California Riverside, June 2019. Commencement speaker
- "Issues to Consider When Dealing with U.S. Patent and Trade Secrets Law," presented at the 2019 MOFCOM 337 Technical Seminar, Beijing, June 2019. Speaker.
- "Issues to Consider When Dealing with U.S. Patent and Trade Secrets Law," presented at the 2019 MOFCOM 337 Technical Seminar, Shenzhen, June 2019. Speaker.
- "Intersection of U.S. Trade Secret and Patent Laws and Emerging Technologies," at legal seminar titled "U.S. Legal Trends in IP, Trade, and Commerce," hosted by Pillsbury and the Taiwan Intellectual Property Training Academy, Taipei City, Taiwan, March 2019. Speaker.
- "Intersection of U.S. Trade Secret and Patent Laws and Emerging Technologies," at legal seminar titled "U.S. Legal Trends in IP, Trade, and Commerce," hosted by Pillsbury in Shenzhen, China, March 2019. Speaker.
- “Name Brands, Generics, Biologics and Biosimilars: Latest Trends in U.S. Pharmaceutical Patent Law,” Legal seminar titled “The Changing Tides in Global IP Protection” hosted by Pillsbury, the Taiwan Intellectual Property Training Academy and the National Taiwan University College of Law, Center for Law, Technology and Ethics, Taipei City, Taiwan, June 2018. Speaker.
- Associations
- Asian American Bar Association of the Greater Bay Area (AABA), President, 2018 − 2019; Vice President/President-Elect, 2017 − 2018; Secretary, 2015 − 2016; Board of Directors, 2012 − 2015
- Asian Americans Advancing Justice | Asian Law Caucus (ALC), Board of Directors, 2016 − 2019
- American Bar Association (ABA), Section of Litigation, LGBT Law & Litigator Committee C0-Chair, 2010 − 2012
- American Bar Foundation (ABF), Fellow, 2015 − Present
- AIDS Legal Referral Panel (ALRP), Board of Directors, 2007 − 2014
- Asian Law Alliance (ALA), Advisory Board, 2016 − present
- Bar Association of San Francisco (BASF), Board of Directors, 2010 − 2011, 2016 − 2019
- BASF Barristers Club, Board of Directors, 2009 − 2011; Diversity Director, 2009 − 2010
- BASF Justice & Diversity Center (JDC), Board of Directors, 2013 − 2015
- Bay Area Lawyers for Individual Freedom (BALIF), Board of Directors, Co-Chair, 2010 − 2012; Treasurer, 2008 − 2010
- BALIF Foundation, Board of Directors, Founding Chair, 2015 − 2016
- California Rural Legal Assistance (CRLA) Board of Directors, 2022 – present (State Bar of California Appointee)
- Equality California (EQCA), Board of Directors, 2014 − present
- Fiat Lux Alliance (University of California Office of the President), Appointed Member, 2021 − present
- Harvard Club of San Francisco (HCSF), Board of Directors, 2022 – present, President; 2019 − 2022, Vice President of Activities
- Lambda Legal, National Board of Directors, 2015 − 2021
- Lawyer Representative to the Ninth Circuit Judicial Council, 2016 − 2019
- Minority Bar Coalition (MBC), Co-chair, 2009 − 2010
- Phillips Exeter Academy, Alumnus Admission Representative, 1997 − present
- Santa Clara County Bar Association (SCCBA), Board of Trustees, 2007 − 2009
- Santa Clara University School of Law, Law Alumni Board of Directors, 2009 − 2015
- Santa Clara University School of Law, Law Advisory Board of Directors, 2017 − present
- Silicon Valley Intellectual Property Law Association (SVIPLA), Board of Directors, 2008 − 2016, Past president
- State Bar of California's Legal Services Trust Fund Commission, Commissioner, 2014 − 2017
- Taiwanese American Lawyers Association (TALA), Board of Directors, 2017 − present
- William A. Ingram Chapter (American Inns of Court), Executive Committee, 2012 − present, Treasurer, 2015 − 2016
- University of California, Riverside (UCR), Foundation Board of Trustees, 2015 – 2023, Executive Committee, 2021 – 2023
Education
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J.D., Santa Clara University School of Law
M.S., Stanford University
A.B., Harvard University
Admissions
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California
Courts
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U.S. District Court of Appeals for the Federal Circuit
U.S. Court of Appeals for the Ninth Circuit
U.S. District Court for the Central, Eastern, Northern and Southern Districts of California
U.S. District Court for the Eastern District of Texas
U.S. District Court for the District of Colorado
U.S. District Court for the Eastern District of Michigan
Registered Foreign Attorney in Taiwan (Member of Taipei Bar Association)
Languages
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Chinese (Mandarin)
Taiwanese