Shong is an associate in the intellectual property group at Ropes & Gray. His practice focuses primarily on patents, in addition to trade secret and trademark matters. Shong has prosecuted patents in patent offices around the world, in North America, South America, Europe, East Asia and Oceania and is familiar with nuances across jurisdictions. He has experience with post grant proceedings before the United States Patent Office, European Patent Office, Japanese Patent Office and Korean Patent Office.
Shong has experience with litigation proceedings before the Patent Trial and Appeal Board, International Trade Commission, and Federal Courts.
He brings deep technical expertise across a diverse array of fields spanning materials science, semiconductor manufacturing, circuits, logic design, embedded systems, wireless communications, software engineering, and cloud based computing. He also has detailed experience with standards essential patents related to industry standards such as Bluetooth, 802.11, 3G, 4G LTE, and H.264.
Shong received his JD, Ph. D, and B.S. from the University of California at Berkeley. His Ph. D was in Electrical Engineering with minors in Materials Science and Chemistry, and his B.S. was in Electrical Engineering and Computer Science. Shong previously worked at the Stanford Synchrotron Radiation Laboratory conducting materials characterization. He also worked at the National Institute of Materials Science in Tsukuba, Japan conducting research on synthesis of nanoparticle based ionic materials. He has prior industry experience working as a product engineer developing flash memory at Spansion, LLC (now part of Cypress Semiconductor). He previously worked at the International Computer Science Institute at Berkeley, developing voice recognition software from open source components.
- In the Matter of Certain Non-Volatile Memory Devices and Products Containing Same (No. 337-TA-893): Represented Spansion LLC in International Trade Commission Investigation against Macronix involving patents related to semiconductor memory devices.
- Certain Wireless Devices with 3G and 4G Capabilities (No. 337-TA-868): Represented Samsung Electronics in an ITC investigation, brought by InterDigital relating to seven patents directed to 3G and 4G standards.
- In the Matter of Certain Gaming and Entertainment Consoles, Related Software, and Components Thereof: Represented a major American consumer electronics manufacturer in an International Trade Commission Investigation involving patents related to security protocols in wireless communications.
- Godo Kaisha IP Bridge 1 v. Broadcom Ltd et al. (E.D. Tex.): Represented IP Bridge in a patent infringement action involving semiconductors resulting in favorable settlement.
- A major cloud-based services company (W.D. Wa.): Defeated motion for preliminary injunction and successfully resolved matter after order denying the injunction required plaintiff to show cause why claims not invalid under §101. The case involved cloud-based email migration.
- Intellectual Ventures I LLC et al. v. a major Japanese consumer electronics Company (D. Del.) – Represented a major Japanese electronics manufacturer in a multi-patent infringement litigation involving various features of digital cameras related to 802.11. Obtained favorable settlement.
- A major American consumer electronics manufacturer (W.D. Wash.): Represented a major American consumer electronics manufacturer in a patent and FRAND rate lawsuit concerning features and functionality of computers and mobile communication devices related to 802.11 wireless technology and H.264 video coding technology.
United States Patent Office Post Grant Proceedings
- Represented Godo Kaisha IP Bridge 1in IPRs related to semiconductor technology.
- Represented Samsung in multiple IPRs challenging technology related to communicating video content.
- Represented a major U.S. media and entertainment company in multiple ex parte re-examinations on behalf of patent owner.
- Represented a major Japanese electronics company in licensing negotiations with a major information technology company.
- Represented Venture Capital Fund in patent and trade secret diligence for funding new company founders of communications technology.
- Counseled semiconductor and network communications companies on trademark and trade secret issues.