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oN Lu



oN Lu is a partner in our Intellectual Property Counseling and Transactions practice group and is based in our San Francisco office. oN leverages a decade 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—during the fight for marriage equality. He also 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 was elected 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 Monetization

I collaborate with some of the most prestigious technology companies in China, Taiwan, Japan, Korea, and Australia to convert their IP cost centers into profit centers. My expertise is in monetizing IP by creating patent portfolios to generate revenue, cross-license, increase company valuation, and defend against litigation.

To do this, I leverage a decade 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 scrappy 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 eight 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 7,000+ startups from 90+ countries. Before becoming a lawyer, I spent a decade working in four “dot.coms”.

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.

Representative Matters

  • 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
  • Customized patent mining to lead the creation of a software portfolio designed to be monetized for one of the largest medical device manufacturers in the world
  • Overhauled IP prosecution strategy to create a defensive patent 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 patent 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 multimillion-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 cable manufacturer that included collaborating with several dozen U.S. Customs ports on hundreds of enforcement actions to prevent $5M+ in counterfeit 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 consortium 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

  • “IP for Startups,” European Innovation Academy (EIA), Virtual, 2020; Lisbon, Portugal, 2017-2019; Turin, Italy, 2016–2019; Nice, France, 2014–2016; Tallinn, Estonia, 2013
  • “Monetizating IP,” University of Turin Department of Law, Turin, Italy, 2019
  • “How Startups Use IP to Compete,” Feng Chia University, Taichung, Taiwan, 2018–2019
  • “IP Law for Innovators”, da Vinci Center Masters Program, Virginia Commonwealth University School of Business, Richmond, VA 2018–2019
  • “Monetizating IP,” FuturePlay Accelerator, Seoul, Korea, 2017–2019
  • “Monetizating IP in Asia,” Jiaquan IP Law + Shenzhen Intellectual Property Office, Shenzhen, China, 2018
  • “Monetizating IP,” Taiyo, Nakajima & Kato, Tokyo, Japan, 2018
  • “Case Studies on How Startups Use IP to Compete with the Giants,” Gengdan Institute of Beijing University of Technology, Beijing, China, 2018
  • “David vs. Goliath: Startups Against Giants,” Tsinghua x-lab, School of Economics and Management, Tsinghua University, Beijing, China, 2017
  • “Monetizing IP,” Wideband IP Office + 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
  •  “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
  •  “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 + 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

An IP guide to winning investors for biotech start-ups

Managing Intellectual Property | April 08, 2021

This article on challenges biotech startups face in their patent strategies quotes San Francisco Intellectual Property partner oN Lu on how startups can take advantage of the USPTO’s provisional patent application system, utilizing an expedited examination, to get an early decision the startup can present to investors.

Why start-ups need to learn about IP

Managing Intellectual Property | October 01, 2020

This article on what entrepreneurs need to know about IP quotes San Francisco Intellectual Property partner oN Lu extensively on whether startups need IP, strategies they can take to monetize their IP, and when to engage an attorney. The article—resulting from NP’s European Innovation Academy involvement—also includes commentary from NP clients on how IP strategies have benefitted their companies in terms of funding, growth, and other factors.

Contact

On Lu

Partner

San Francisco

Phone: 415-984-8371


Fax: 844-884-8035

University of San Francisco School of Law, J.D.

National University, MBA, Global Marketing

University of Redlands, B.A., International Relations

California

U.S. District Court, Central District of California

U.S. District Court, Eastern District of California

U.S. District Court, Northern District of California

U.S. District Court, Southern District of California

U.S. Court of Appeals, Ninth Circuit

U.S. Court of International Trade

Selected as a “Rising Star” by Thomson Reuters’ Super Lawyers Magazine, 2013–2016.

  • Asian American Bar Association (AABA)
  • American Intellectual Property Law Association (AIPLA)
  • The Bar Association of San Francisco (BASF)
  • Bay Area Lawyers for Individual Freedom (BALIF)
  • Chinese American Lawyers of the Bay Area (CALOBA)
  • Human Rights Campaign (HRC)
  • International Trademark Association (INTA)
  • LGBT Bar Association of DC
  • Minority Bar Coalition, The Bar Association of San Francisco (BASF)
  • The National LGBT Bar Association
  • Vietnamese American Bar Association of Northern California (VABANC)
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