Jie Xiang, PhD

Overview

Jie Xiang’s practice focuses on patent litigation and IP strategy. Jie is experienced in multiple phases of litigation, including pre-suit investigation, fact and expert discovery, and trial. Jie represents high profile technology clients at district courts, the International Trade Commission (ITC), as well as post-grant proceedings before the Patent Trial and Appeal Board (PTAB). Jie is also experienced in advising clients with analyses and opinions, including IP due diligence, freedom-to-operate, and treating demand letter threatening patent infringement.

Jie’s IP counseling and litigation clients encompass technology areas such as semiconductors, nanotechnology, MEMS/NEMS, integrated photonics, image processing, wireless communication (5G, Wi-Fi 6), biomedical, and consumer wearable devices. Jie brings impressive technical knowledge in electrical engineering and materials science from his time as researcher at Harvard, Caltech, and as faculty and Principal Investigator at UC San Diego to help prosecution clients cost-effectively develop highly technical validity and infringement contentions or defenses.

Jie has published extensively in technical literature and has a total citation of 9,000 times with H-index of 25. He edited the first book dedicated to semiconductor nanowires, and his work on Ge/Si heterostructure transistors is recognized by Google Scholar as the most highly-cited “Classic Paper,” in the area of Microelectronics & Electronic Packaging.

Experience

Litigation

• Assisted clients with 10+ PTAB IPR proceedings, multiple district court litigations with appearance in EDTX and CDCA, and multiple US ITC 337 investigations, including as member of a trial team at the ITC.
• ITC Investigation No. 337-TA-1012 and No. 337-TA-1076: assisted respondent Sony with expert discovery, including testing, preparation of expert reports, witness statements, and for the 1012 investigation, preparation of hearing testimony and trial. 
•  ITC Investigation No. 337-TA-1193: assisted respondent Sony with its defense of multi-patent ITC action involving touch control technologies, led development of non-infringement and invalidity arguments, and coordinated with a joint defense group.
•  ITC Investigation No. 337-TA-1308: represented respondent Google in its defense of an ITC action involving envelop tracking modules in mobile devices.
• MZ Audio Sciences, LLC v. Sony (Case No.: 2:22-cv-00866 AB, C.D. Cal.): represented Sony defendants in a patent infringement case involving audio watermarking technology.
• VisionX Technologies, LLC v. Sony (Case No.: 2:22-cv-00178-JRG, E.D. Tex.): represented Sony defendants in a patent infringement case involving image sensor technology.
  
• Metarail, Inc. v. Google LLC (Case No.: 1-23-cv-01116, D. Del.): represented defendant Google in a patent infringement case involving deep-linking technology.

Patent Prosecution and Counseling

• Drafted and prosecuted hundreds of patent applications in US, EPO, Japan, China, and Korea, related to the technology areas of semiconductor, RF and MEMS circuit design, integrated photonics, image processing, wireless communication (5G, Wi-Fi 6), bioassay, diagnostic and therapeutic devices, next generation sequencing, consumer wearable devices as well as software and UI. 
• For a major international semiconductor company: drafted and prosecuted patent applications in the space of 5G, Wi-Fi 6 telecommunication, image processing circuits with AI/ML applications; lead disclosure meetings with patent engineers and inventors from Asia. For a major semiconductor equipment maker: drafted and prosecuted patent applications on circuit and tester design for high performance processor and memory chips. For a major international consumer electronics company: drafted and prosecuted 5G SEP applications for this top 5G patents holder.  
•  For a major semiconductor chip company: drafted and prosecuted patent applications on circuit design, and medical/environmental sensors; provided freedom-to-operate and non-infringement opinions; performed prelitigation analysis for patent owner over competitor products. 
•  For a start-up consumer wearable device company: worked closely with founders to create a US patent portfolio from scratch that contributed to company growth through funding rounds to eventual acquisition by a major wearable device company.  

Activities

Jie has been a regular reviewer for various scientific publications including: Science, Nano Letters, ACS Nano, Nanoscale, IEEE Electron Device Letters, IEEE Trans. Electron Devices, IEEE Trans. Nanotechnology, Applied Physics Letters, MRS Proceedings, J. Colloid and Interface Science, J. Chemical Physics.

He served on the ad-hoc grant review panel for National Science Foundation’s Electrical, Communications and Cyber Systems (ECCS) and Division of Materials Research (DMR) for 2 years; as external grant reviewer for Research Grants Council, Hong Kong for 5 years; and as grant reviewer for the Netherlands Foundation for Fundamental Research on Matter (FOM).

Recognition

• Named to the list of Massachusetts Rising Stars by Super Lawyers (2023-2024)
• Law Dean’s List (annually)
• Honorable Mention Brief Award, Suffolk University Law School  
• Hellman Fellowship – Hellman Fellows Fund
• NSF CAREER Award – National Science Foundation
• Kavli Nanoscience Institute Prize Postdoctoral Fellowship
• MRS Graduate Student Gold Award – Materials Research Society
• Robert Karplus Prize Fellowship in Chemical Physics – Harvard Dept. of Chemistry and Chemical Biology

Interests

Jie is an inventor on a patent for nanowire heterostructures and a patent for nano-electromechanical FETs.

He enjoys teaching technology and has taught introduction to analog design to over a thousand undergraduate students at the ECE department at UC San Diego.

When not working he is a maker for internet-of-things (IoT). His recent projects include a radar for parking cars in a tight garage, IoT sensors on a custom RF mesh network, as well as building an electric vehicle for transporting toddlers (a battery-powered stroller).