Ngai Zhang is a counsel in the law firm’s Intellectual Property practice and advises clients of all sizes—from start-ups to Fortune 500 companies—on many aspects of intellectual property, internet, and technology law, including matters involving patents, copyright, trademark, trade secrets, open source, technology transactions, terms of service and privacy policies agreements, and sweepstakes and contests.
Given his engineering and science background and his years of work with clients developing their intellectual property around their different products, Ngai has a keen understanding of diverse technological areas, including artificial intelligence and machine learning, bitcoin and blockchain, cybersecurity, cloud computing, connectivity, consumer products, navigation and geolocation, medical devices and health-related applications, speech recognition and natural language processing, social media, virtual, augmented, and mixed realities, and video games.
Technology Transactions – Ngai has worked with:
- Tech start-up client to prepare/prosecute patents and assisted the client in its nearly $30 million sale of a portion of its patent portfolio
- Global financial services and Fortune 500 manufacturing companies to prepare their development, licensing, and partnership agreements
- Venture funds and start-ups on IP assignment and technology licensing issues for mergers/acquisitions and convertible debt and equity financings
Patent Portfolio Management and Prosecution – Ngai has managed patent portfolios and prepared/prosecuted patent applications for:
- Game publishers, including one of the largest third-party video game publishers in the world and a mobile gaming start-up valued at over $1 billion, for innovations related to virtual worlds, game casting, toys-to-life video games and action figures, interactive trading cards, and game interface features.
- Cybersecurity unicorn—a start-up valued at over $1 billion—for its security and monitoring solutions for enterprise networks
- Big data visualization and analytics pioneer, and a #1 ranking company in Dresner Advisory’s Annual Big Data Analytics Market study, to obtain the company’s first patent and grow its patent portfolio to protect its big data exploration, visualization, and analytics platform technologies
- Industry leader in voice technology for its products, which have been delivered worldwide in the millions in 20+ languages for the auto, home, and mobile markets—its patent portfolio received top rankings in the IEEE’s Patent Power Annual Scorecard, an independent industry evaluation of the best patent portfolios
- Innovative gaming company for its mobile gaming platform that infuses real-time legal gambling opportunities into mobile games
Patent Post-Grant Review and Litigation – Ngai has represented:
- World’s largest standalone medical technology development company in an inter partes review, which resulted in all of the opposing party’s asserted patent claims being unpatentable by both the Patent Trial and Appeal Board and the Federal Circuit
- Video game developer and digital distribution company in inter partes reviews, which resulted in a related patent infringement lawsuit against a client to be voluntarily dismissed with prejudice, and in patent litigation regarding its digital distribution platform
- Fortune 500 industrial and consumer tool manufacturer in patent ligation regarding its security and asset management technologies, many of which have resulted in voluntary dismissal for low 4-5 figure settlements or without any settlement payment
- Global financial services company in pre-litigation matters, including preparing cease-and-desist letters, responding to patent infringement allegations, and drafting invalidity and non infringement opinions.