On Lu is a partner in our Intellectual Property Counseling and Transactions practice group and is based in our San Francisco office. oN leverages ten years of litigation experience in federal courts to assist clients in protecting and monetizing their intellectual property. He has a long and extensive track record of representing multinationals from Asia, as well as startups around the world.
Prior to becoming a lawyer, oN worked on the business side of IP. He spent over ten years launching U.S. high-tech companies internationally—including two that became public entities. His rich business background and hands-on experience enable him to bridge the legal needs of his clients from a pragmatic, real-world perspective.
oN completed his second term as co-chair of BALIF—the oldest and largest LGBT bar association in the country. He spearheaded the organization's groundbreaking “It Gets Better” videos in response to the alarming rate of suicide among LGBT youth. He currently serves on the Board of Governors at the University of San Francisco School of Law, where he served as student body president. oN’s graduating class voted him as the “Leader Who Contributed Most to the Character of the Law School” and selected him to speak at commencement. Recently, oN designed and led the campaign to rally 600+ alumni to create a $100K endowment in less than three months to fund USF’s diversity recruiting and mentoring initiative.
What do you focus on?
Global Intellectual Property Protection
I collaborate with some of the most prestigious technology companies in China, Taiwan, Japan and Korea to convert their IP cost centers into profit centers. I focus on creating IP portfolios and strategies to minimize litigation, cross-license with competitors, and monetize to generate revenue.
To do this, I leverage more than ten years of experience in complex, multiparty patent and trademark litigation before the International Trade Commission (ITC), and in federal district courts around the country. In addition, I develop anti-counterfeiting initiatives, including working with U.S. Customs & Border Protection (CBP), to prevent counterfeit products from entering the United States.
Emerging Company Representation
One of my favorite undertakings as an IP lawyer is working with startups to elevate their ideas and inventions into protectable IP. It has been such a joy to work one-on-one with 250+ startups across the globe. For the last five years, I have served as chief IP counsel for the European Innovation Academy (EIA), where I developed and teach the IP curriculum that has trained over 2,000+ startups from 90+ countries.
What do you see on the horizon?
Multinationals—particularly those in Asia—are realizing that litigation is not the best use of their resources. Simultaneously, these companies are asking more fervently, “what are the patents and trademarks that we have invested so much time and money in actually doing for us?”
In response, I anticipate greater emphasis on building and refining IP portfolios that serve targeted purposes such as defending against litigation, or cross-licensing with competitors, or monetization to generate revenue—thereby converting an IP department from a cost center to a profit center.
- Won a unanimous defense verdict in jury trial in the Northern District of Texas for Chinese stationery manufacturer sued for trademark infringement over a fight for shelf space at Wal-Mart. Jury returned in 90 minutes.
- Overhauled IP prosecution strategy and created a defensive portfolio for one of the largest laptop and electronics manufacturers in the world in response to increasing threats of litigation and demands for licensing.
- Constructed global IP strategy that included patenting mining, litigation and monetization for one of the largest chemical companies in Asia to counter litigation initiated by competitors in Japan and Korea.
- Created alliance of eight Taiwan public companies to defend against multi-million dollar patent infringement suit over gaming hardware. Case was fought over seven years in three countries (USA, China and Taiwan) in four U.S. federal district courts before the ITC, through five retailers and before the USPTO.
- Pioneered anti-counterfeiting initiative for HDMI licensing that included collaborating with several dozen U.S. Customs ports on hundreds of enforcement actions to prevent $5M+ in counterfeit HDMI products from entering the U.S. and initiating police raids in China to shut-down factories where the knock-offs originated.
- Defended public Taiwanese peripherals manufacturer in a three-year-long patent and copyright litigation. Secured insurance coverage from two difference insurance carriers to fund cost of defense and settlement.
- Secured insurance coverage for a renowned producer of cheese in Sonoma that was sued in a trademark infringement suit, and strategically filed a counterclaim that triggered insurance coverage for plaintiff—resulting in a settlement that fully compensated client for cost of defense and settlement.
- Successfully defended San Francisco wholesaler of Japanese toys that was raided by the Department of Homeland Security for importing allegedly counterfeit Sanrio- and DC Comics-branded products. Secured insurance coverage for client, which not only reduced the defense costs, but also funded the entire settlement amount.
- Developed enforcement strategy to force 35+ manufacturers, distributors and retailers to stop counterfeiting high-end cosmeceuticals by way of federal litigation, warning letters, private investigations, Internet monitoring and seizing shipments at U.S. ports of entry. Won $1.2M judgment against one particularly egregious counterfeiter—one of the largest damages award granted at the time by judge.
- Created and successfully defended group of Vietnamese supermarkets based in Orange County that was sued over the use of “pineapple mushroom” trademark.
- In response to patent infringement suit over a stationery product—prepared an exhaustive 166-page letter detailing the basis for defense and countersuit—which persuaded plaintiff to promptly reevaluate its position and dismiss the case in its entirety.
- Formed coalition of Chinese and U.S. mission-critical flashlight manufacturers to share costs and jointly defend against multiple patent suits.
- Defended Bay area business owner in economic espionage suit that alleged theft of DuPont’s titanium dioxide trade secrets.
Presentations and Publications
- “David vs. Goliath: Startups Against Giants,” Tsinghua x-lab, School of Economics and Management, Tsinghua University, Beijing, China, 2017
- “Monetizing IP,” National Taiwan University, Taipei, Taiwan, 2017
- “Case Studies on IP Monetization,” Advance China IP Law Office (ACIP) + Beijing Intellectual Property Office, Beijing, China, 2017
- “How Tech Companies (from Startups to World Leaders) Use IP to Compete,” Daegu Metropolitan City, Korea, 2017
- “IP for Startups,” European Innovation Academy (EIA), Lisbon, Portugal, 2017; Turin, Italy, 2016–2017; Nice, France, 2014–2016; Tallinn, Estonia, 2013
- “Working Backwards from Trial Victory for Chinese Defendant in Texas,” Ministry of Industry and Information Technology (MIIT), Beijing, China, 2015
- “IP Post Funding,” HAX Accelerator, Shenzhen, China, 2015
- “Power Networking,” BALIF Career & Networking Expo, San Francisco, CA, 2013 and 2014
- “Anti-Counterfeiting for Licensed Products: What You Don’t Know Can Hurt Your Business,” Bloomberg BNAWebinar, 2014
- “Discovery and How It Impacts Trial,” Korean Patent Attorneys Association (KPAA), Seoul, Korea, 2014
- “Legal Careers for Chinese/Asian American Children—the Good, the Bad, and the Unexpected,” Chinese American Lawyers of the Bay Area, Stanford University, CA, 2014
- “IP for SMEs,” Korean Invention Promotion Association (KIPA) of Korean Intellectual Property Office (KIPO), Seoul, Korea, 2014
- “Did you hear the one about the clipcase?” Westlaw Journal, 2014
- “Careers in Intellectual Property Litigation,” University of San Francisco Intellectual Property and Cyber Law Association, San Francisco, CA, 2013
- “Discovery: A Practical Workshop,” National Taiwan University, Taipei, Taiwan, 2013
- “Intellectual Property Litigation for Dummies,” University of San Francisco School of Law Academic Support Program, San Francisco, CA, 2010–2012
- “30 Years of LGBT Advancement in the San Francisco Bay Area,” BALIF Homecoming, San Francisco, CA, 2012
- “Licensing: the New Counterfeiting,” U.S. Customs & Border Protection, Port of San Francisco, CA, 2012
- “ITC Defense Strategies and Costs,” Power Supply Manufacturers Conference, Taipei, Taiwan, 2011
- “Licensing vs. Counterfeiting,” U.S. Customs & Border Protection, Port of Chicago, IL, 2011
- “Working with U.S. Customs and Border Protection to Stop Knock-Offs at the Border,” International Trademark Association (INTA) Roundtable, San Jose, CA, 2010