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Admitted to Practice

  • California, 1978
  • U.S. Patent and Trademark Office, 1979

Languages

  • Chinese (Cantonese)
  • Chinese (Mandarin)

James S. Hsue

HsueJames
Partner
T415.276.6541
F415.276.6599
James Hsue provides strategic patent counseling and represents clients before the U.S. Patent and Trademark Office and foreign patent offices (through international associates) in prosecution, opposition and reexamination proceedings. He renders opinions on patent validity and infringement in relation to patent litigation, licensing, corporate financing and other key matters. James procures patents in a range of technical areas, from semiconductors and software to optical systems, communications and nanotechnology.

Practice Highlights
  • Acted as chief intellectual property counsel for medium-size and small companies
  • Provided strategic patent counseling for a wide variety of companies, procured U.S. and foreign patents crucial for company success and rendered opinions for product launches, patent litigation, mergers and acquisitions, and initial public offerings
  • Successfully overcame challenges to client patents in re-examination proceedings at the U.S. Patent Office:
    • U.S. Patent No. 5,131,755 assigned to KLA Instruments Corporation
    • U.S. Patent No. 5,608,526 assigned to Tencor Instruments
    • U.S. Patent No. 5,910,842 assigned to Tencor Instruments
    • U.S. Patent No. 6,611,330 assigned to KLA-Tencor Corporation
    • U.S. Patent No. 6,483,580 assigned to KLA-Tencor Corporation
    • U.S. Patent No. 6,590,656 assigned to KLA Tencor Corporation
    • U.S. Patent No. 5,942,986 assigned to Cedars-Sinai Medical Center
    • U.S. Patent No. 7,272,728 assigned to Iovation Inc.
    • U.S. Patent No. 7,899,330 assigned to Dicon Fiberoptics Inc.
  • Requested re-examination at the U.S. Patent Office of a number of U.S. patents asserted in patent litigation that impacted the litigation:
    • U.S. Patent No. 6,378,114 assigned to Synopsys
    • U.S. Patent No. 4,918,645 assigned to LG Electronics
    • U.S. Patent No. 5,028,122 assigned to Sharp Corporation
  • Advised the Hong Kong University of Science and Technology in the licensing of technology to Chinese companies for IP trading, and drafted semiconductor intellectual property agreement for outbound and inbound licensing to China and Hong Kong for IP Trading Platform in Hong Kong

Representative Experience

Patent portfolio management for DiCon Fiberoptics, Inc.

Manage and procure patent portfolio for a leading provider of fiber optic and MEMS devices for telecommunications and lighting industries. Counsel DiCon regarding patent litigation, and regarding patent and trade secret issues in formation of joint venture with Lucent Technologies. (Ongoing)

Patent services for Cable Television Laboratories, Inc.

Detection of unauthorized access to digital media content, and data broadcasting in cable systems (Ongoing)

Patent services for KLA-Tencor Corporation

Prepare and prosecute patents regarding optical inspection of semiconductor devices. Some of the patents have been litigated and successfully enforced against competitors. Represented KLA in the re-examination of a number of these patents which were found to be valid, with no or minor changes in the claims. (Ongoing)

Patent services for SanDisk Corporation

Our patent practitioners in the San Francisco office have represented SanDisk since 1988, around the time it was founded, and have helped SanDisk build a patent portfolio that has been widely licensed. SanDisk has received significant annual patent royalties in the last few years from this patent portfolio that our group obtained. A number of patents in this portfolio withstood many challenges by competitors in major ITC and District Court litigation. We continue to help SanDisk in the procurement of their patents. (Ongoing)

Patent services for Stanford University

Preparation and prosecution of patents for Stanford since 1985. Have procured patents regarding photonic crystal technologies, carbon nanotube, and capillary electrophoresis separation and detection technology that has been licensed to a large biomedical instrumentation company. (Ongoing)

Patent services for China South Locomotive & Rolling Stock Corporation Limited

Successfully performed patent due diligence study on high speed rail technology, which enabled a U.S. joint venture to be formed between the client and Generic Electric. (2010)

Successful patent re-examination proceedings in the U.S. Patent Office

Successfully overcame challenges to six patents in re-examination proceedings at the U.S. Patent Office, five of which were being asserted in litigation. (U.S. Patent No. 5,131,755; U.S. Patent No. 5,608,526; U.S. Patent No. 5,910,842; U.S. Patent No. 6,611,330; U.S. Patent No. 6,483,580 and U.S. Patent No.6,590,656) Read more

Additional Qualifications

  • Co-founder, Parsons Hsue & de Runtz, San Francisco
  • Partner, Skjerven Morrill LLP, San Francisco
  • Shareholder, Majestic, Parsons, Siebert and Hsue PC, San Francisco
  • Staff Attorney, Exxon Production Research Company, Houston