Yisun Song

Yisun practices all aspects of intellectual property law, including patent prosecution, portfolio analysis, and patent and trade secret litigation. IAM Patent has said she “brings unique insight into the prosecution and protection of semiconductor lasers and optical fibre devices and is a ‘valued partner’ to her loyal clients” (2024) and called her a “well rounded practitioner” who leverages her prior experience working as an examiner at the US Patent and Trademark Office (USPTO) “to draft robust patent applications” for her clients (2023). Yisun has broad experience in patent portfolio analysis, management, and counseling. Her subject matter knowledge is wide-ranging, and includes electronics, software, blockchain and digital assets, artificial intelligence (AI) / machine learning (ML), semiconductors, optical fiber devices, and communications.

• Represented patent owner in a patent infringement case involving encryption technology.
• Represented accused infringer before the Patent Trial and Appeal Board (PTAB) and Federal Circuit involving claims-processing rules engine technology.
• Represented university patent owner in district court and before the Federal Circuit in a patent infringement case involving video scaling technology and high-definition displays.
• Energy Transportation Group, Inc. v. Sonic Innovations, Inc. et al., (D. Del.) and (Fed. Cir.): Represented patent holder Energy Transportation Group (ETG) in an infringement action involving hearing aid patents. The jury returned a verdict for ETG, finding willful patent infringement, and awarded $31 million in damages against two defendants. The Federal Circuit affirmed the jury’s verdict and the trial court’s post-trial rulings.
• In re NTP, (Fed. Cir.): Appellate and reexamination counsel for NTP on eight separate appeals from the PTAB and interferences related to eight patents, resulting in reversal of a PTO decision denying seven NTP patents.
• ePlus vs. SAP AG and SAP America, Inc., (E.D. Va.): Represented patent owner ePlus in an infringement action involving electronic procurement systems. Following a four week trial, the case favorably settled.
• Represented major banking and financial services institution in an infringement action involving payment systems and verification techniques. Following the completion of fact discovery, the case favorably settled.
• Prepared and prosecuted patent applications in the electrical arts, including inventions relating to wireless communications, digital signal processing systems, computer network systems, optical telecommunication devices, computer software algorithms, integrated circuit devices, and search engines.
• Prepared and prosecuted patent applications in the financial industry, including inventions relating to card products, check processing, financial algorithms, investment products, healthcare applications, database management, NFTs, blockchain, and crypto analytics.
• Rendered opinions concerning patent infringement, validity, and enforceability.
• Prepared and negotiated intellectual property license agreements.
• Conducted numerous due diligence reviews for acquisition of patent portfolios.
• Participated in complex patent prosecution, including petitions, appeals, re-examinations, and reissues.

• Recommended for Patent Prosecution in Washington, DC in the IAM Patent 1000 (2023-2024), Intellectual Asset Management