Sheppard MullinPartner

James William Soong

About James William Soong

James William Soong is a lawyer practicing intellectual property, copyrights, false advertising, lanham act and unfair competition and 8 other areas of law. James received a B.S. degree from University of California, Los Angeles, and has been licensed for 31 years. James practices at Sheppard Mullin in Menlo Park, CA.

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Services

Areas of Law

  • Intellectual Property 2
    • Copyrights
    • Trade Secrets
  • Other 8
    • False Advertising, Lanham Act and Unfair Competition
    • IP Licensing, Technology and Commercial Transactions
    • Patent Litigation
    • Patent Prosecution and Counseling
    • Trademarks and Trade Dress
    • Post-Grant Proceedings
    • Technology Transactions
    • Artificial Intelligence

Practice Details

  • Languages
    Chinese
    Conversational
  • Firm Information
    Position
    Partner
    Firm Name
    Sheppard Mullin
  • Representative Cases & Transactions
    Cases
    Experience: Representative Matters: Advised on creation of numerous corporate patent programs including patent award programs.
    Drafted
    negotiated patent transfer agreement involving patent sale valued at more than $1 million per patent.
    Represented buy
    sell sides for myriad patent portfolio transactions.
    Helped design
    execute patent licensing strategies for industry leader involving patent selection, infringement diligence, assertion strategy, bite-back analyses,
    licensee engagement.
    For leading enterprise software company, devised global intellectual property strategy. Launched patent procurement
    enforcement strategy. Enforced trademark rights in multiple domain name recovery actions. Enforced trademark, copyright,
    trade secrets in global anti-counterfeiting campaign. Drafted, negotiated,
    advised on IP licenses
    licenses involving software, SSOs, alliances, open source, OEMs,
    vendors.
    Led intellectual property teams in various M&A
    related due diligence, including acquisitions of e-various high tech companies.
    *Certain of the above representations were h
    led by Mr. Soong prior to his joining Sheppard Mullin

Experience

  • Bar Admission & Memberships
    Admissions
    1995, Washington
    1998, California
    U.S. Court of Appeals for the Federal Circuit
    U.S. District Court for the Central, Eastern, Northern and Southern Districts of California
    U.S. District Court for the Western District of Washington
    U.S. Patent and Trademark Office
    Memberships

    Memberships

    Editorial Board Member, The Intellectual Property Strategist

    Board Member, Asian Law Alliance

    Volunteer, Cupertino Union School District Wellness Committee

    Volunteer, St. Simon Parish

    Former Chair, City of San Mateo, Community Improvement Commission

    Former Member, Chung Tai Zen Center, Translation Committee

    Member, Silicon Valley Intellectual Property Law Association

  • Education & Certifications
    Law School
    University of California, Davis, Editor, U.C. Davis Law Review
    J.D.
    Other Education
    University of California, Los Angeles
    B.S.
    Electrical Engineering

    National Taiwan University
    I.C.L.P.
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