Annita Zhong focuses her practice on patent litigation, contested patent office proceedings and licensing in the United States, the European Union and China.
Examples of her recent, diverse practice include serving as lead Patent Trial and Appeal Board (PTAB) counsel defending a portfolio of patents in 29 inter partes review (IPR) proceedings filed by the largest handset manufacturers in the world, resulting in a perfect record with no claims invalidated including two final written decisions upholding all challenged claims. This was the largest campaign against a single patent owner in a single year.
Annita also served as lead PTAB counsel defending a large cellular standard essential patent (SEP) portfolio against Apple, resulting in a perfect non-institution record in the PTAB. Additionally, she served as lead Chinese patent and litigation counsel in the defense of a large cellular SEP portfolio in China that involved 28 contested proceedings before the Chinese Intellectual Property Office and the Shenzhen Intermediate People’s Court.
After receiving her Ph.D. from California Institute of Technology and before attending law school, Annita worked as a senior research scientist in the areas of catalysis, semiconductor packaging and bio-imaging at General Electric Company's Global Research Center in Niskayuna, New York. She is a co-author and co-inventor of peer-reviewed journal articles and issued patents, including serving as a lead author on a paper that garnered over 300 citations.
Annita’s time as a senior research scientist exposed her to a wide array of technology and allows her to rapidly develop subject matter expertise in diverse technologies. Her deep knowledge in semiconductor fabrication and packaging, computer architecture, telecommunication technology, artificial intelligence, renewable energy, and chemistry and materials, makes her an extraordinarily valuable asset for holders and creators of intellectual property.
Annita was selected as one of the 2021 “Minority Leaders of Influence” by the Los Angeles Business Journal. Among other recent honors, she has been named to the PTAB Bar Association’s Top 50 Women in PTAB Trials list, has been recognized by The Legal 500 for Intellectual Property-Patent Litigation (Full Coverage), and has been listed as a “Notable Practitioner” in Managing Intellectual Property’s IP Stars.
Annita is a native speaker and writer of Chinese, and graduated at the top of her class from a leading Shanghai high school (one of only two directly under the Ministry of Education).
- Optis Wireless Technology LLC et al. v. Apple Inc. (E.D. Tex.). Secured a $300 million jury award for PanOptis in a patent infringement suit against Apple involving 4G LTE technology. The award represented the fair, reasonable and non-discriminatory (FRAND) royalty that jurors determined Apple owes PanOptis. Jurors in a previous trial found Apple infringed claims of the five patents at issue, determined all asserted claims were valid and found Apple’s infringement was willful.
- Fundamental Innovation Systems International LLC v. Samsung (E.D. Tex.). Served as counsel to Fundamental Innovation Systems International LLC in a 10-patent infringement suit on USB charging technology patented by Blackberry. Served as lead counsel on 29 related IPR proceedings filed by Samsung and defendants in other related infringement actions, in which not a single claim was "knocked out." Also consulted in the parallel German enforcement and nullity proceedings as well as European oppositions. Settled actions against Samsung favorably.
- Apple v. Optis Cellular Technology LLC; Apple v. Optis Wireless Technology LLC; Apple v. Unwired Planet Int’l Ltd. (PTAB, Fed. Cir.). Successfully defended PanOptis entities against three IPR petitions filed by Apple related to patents for 4G LTE technology. The Federal Circuit rejected Apple’s attempt to overturn the PTAB's non-institution decisions. The three patents involved in the IPRs are a subset of the patents that secured a $506.2 million jury award, plus a willful infringement finding, against Apple in related patent litigation.
- Amkor Technology v. Tessera (I.C.C., PTAB, Cal. Sup. Ct., D. Del., Cal. Ct. App.). Served as counsel to Tessera in a dispute over royalty payments due under a license to semiconductor packaging technology, which involved arbitration before a panel constituted under the rules of the International Chamber of Commerce. Also successfully defended a key patent in an IPR, which resulted in upholding of major claims subject to the review and defeated efforts to vacate and modify the panel's awards in state and federal courts.
- Amkor Technology v. Synaptics (D. Del., PTAB). Defended Synaptics on allegations of patent infringement, trade secret misappropriation and other related claims. Served as lead counsel on the associated IPR proceedings. After the court dismissed a number of claims and stayed the infringement proceeding pending the outcome of IPRs, the plaintiff sought multiple extensions for petitioner's replies in the IPR proceedings and settled the case on eve of the deadline.
- Constellation Technologies, Inc. v. Time Warner Cable, Cisco Systems et al. (E.D. Tex., D. Del., PTAB). Served as counsel to Constellation Technologies in multiple infringement and declaratory relief civil actions and IPR proceedings involving telecommunications and cable service inventions patented by Nortel Networks. Also served as lead counsel and prevailed in defending multiple IPRs of patents in suit.
- Intellectual Ventures v. Hynix, Elpida et al. (ITC). Served as counsel to Intellectual Ventures in a § 337 investigation involving five patents asserted against DRAM and NAND memory devices and products containing the same. The client settled the case on favorable terms on eve of hearing.
- Wisconsin Alumni Research Foundation v. Apple (PTAB). Successfully defended a patent, directed to memory disambiguation technologies developed at the University of Wisconsin, before the PTAB. The PTAB declined to institute review based on detailed documentary evidence submitted by WARF.
- Brocade v. A10 (N.D. Cal., Fed. Cir.). Brought onto the case as counsel to A10 after trial and substantially involved in post-trial motions and Federal Circuit appeal on injunction. The parties settled on eve of damages retrial.
Honors & Awards
- Selected to Los Angeles Business Journal’s “Minority Leaders of Influence: Attorneys” and “Women of Influence: Attorneys” lists (2021)
- Recognized on the PTAB Bar Association’s Top 50 Women in PTAB Trials list (2019)
- Recognized by The Legal 500 for Intellectual Property-Patent Litigation (Full Coverage) (2020)
- Listed as a “Notable Practitioner” in Managing Intellectual Property’s IP Stars (2020)
- Named to the Southern California Rising Stars list (2018-2019)
- Listed among the “Rising Stars” in Managing Intellectual Property’s IP Stars (2018)
- "PTAB Patent Proceedings: Best Practices and Strategies You Must Know for 2018," The Knowledge Group webinar (February 20, 2018)
Yale Law School (J.D., 2009)
California Institute of Technology (Ph.D., Inorganic Chemistry, 2001); Thesis: "Ancillary Ligand Effects: from Zironium (IV)-Catalyzed Homogeneous Propylene Polymerization to Platinum (II)-Mediated C-H Bond Activation"
Massachusetts Institute of Technology (B.S., Chemistry and Chemical Engineering, 1996); Alpha Chi Sigma Award for Outstanding Scholarship and Undergraduate Research; Phi Beta Kappa
- California, 2009
- U.S. District Court for the Northern District of California, 2013
- U.S. Court of Appeals for the Federal Circuit, 2013
- U.S. Court of Appeals for the Fifth Circuit, 2020
- U.S. Patent and Trademark Office, 2010