Ngai Zhang advises startups to Fortune 500 companies on intellectual property, internet and technology law, including patents, trademarks, open source, technology transactions, user agreements, and contests and sweepstakes.

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.

Representative Experience

Provided comprehensive industry intelligence, technology analysis, and IP risk assessment for client considering deploying blockchain or distributed ledger technology.


Prepared/prosecuted patents for a tech startup client and assisted the client in its nearly $30 million sale of a portion of its patent portfolio.


Prepared/prosecuted patents for game publishers, including one of the largest third-party video game publishers in the world and a mobile gaming startup 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.

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  • Technology Transactions – Ngai has worked with:
    • 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

    • Global financial services and Fortune 500 manufacturing companies to prepare their development, licensing, and partnership agreements
    • Venture funds and startups 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:
    • Cybersecurity unicorn—a startup 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:
    • 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.

Professional Highlights

Recognized by Chambers USA in Intellectual Property (2017-2018).


Speaker at Annual CLE Marathon hosted by Pillsbury, “Bitcoin, Blockchain & Patents: What Blockchain-based Inventions are Patent Eligible?” (September 20, 2018)

Education

  • J.D., University of Maryland School of Law
    cum laude

    B.S., Computer Engineering, University of Maryland, College Park

Admissions

  • Maryland

    Virginia

    District of Columbia

    Registered to practice before the U.S. Patent and Trademark Office