Biography

Thomas C. Chuang

Thomas Chuang focuses on the areas of patent prosecution and preparation of patent opinions. He is an electrical engineer and a registered patent attorney.

Mr. Chuang’s work has focused on technical fields including telecommunications, semiconductor memory circuits and processing, software, medical devices, and electrical circuits. He has hands-on experience fabricating semiconductor devices in a wafer processing laboratory.

Previously, Mr. Chuang was employed with a large international law firm based in the San Francisco bay area.

His experience includes:

Patent Procurement and Prosecution

• Provide complete patent prosecution services, including advising clients on patent laws, preparing and filing patent applications, drafting amendments and responses to office actions.
• Prepare invalidity and non-infringement opinions;
• Advise clients on advisability of initiating reexamination proceedings;
• Technical fields include telecommunications, wireless networking, signal processing, fiber optic circuits, electrical circuits, semiconductor wafer processing, semiconductor memory circuits, software, microelectromechanical devices, and e-commerce.

Patent Litigation

• Successful representation of a large electronics company in defense of a patent infringement suit.
• Represent defendants in settlement negotiations with patent holders
• Analyze asserted patents, patent file histories, and accused technology to determine patent infringement. Develop non-infringement arguments and advise clients on design around options;
• Review prior art and develop invalidity arguments;

Other Litigation

• Counsel clients on Internet privacy law issues;
• Successful representation of a political asylum applicant before U.S. Immigration court;
• Prepare pleadings related to criminal prosecution of white collar criminals;
• Participate in settlement negotiations in cases involving race and sex based employment discrimination, housing discrimination, and reasonable accommodations for persons with disabilities.

Technology Transactions

• Prepare and negotiate technology transaction agreements, including patent license agreements, technology development agreements, distribution agreements, joint venture agreements, and software license agreements;
• Negotiate and prepare agreements for technology transfer transactions with academic institutions.
• Perform intellectual property due diligence, review license agreements for mergers and acquisitions.

Education

J.D., University of Minnesota Law School
Cum Laude
Minnesota Justice Foundation Local Board Member

B.S., Electrical Engineering, University of Illinois
Eta Kappa Nu Electrical Engineering Honor Society

Licenses and Certifications

California Bar
U.S. Patent Bar