William “Skip” Fisher

William “Skip” Fisher is a Partner in the firm’s Intellectual Property, Litigation, and Technology and IP Transactions practices where he focuses on strategic counselling, high-stakes litigation, and complex licensing in all areas of intellectual property, with a particular emphasis on patents and trade secrets and a niche practice in Chinese intellectual property law, practice, and procedure.  

Mr. Fisher works closely with large and small companies to establish and implement strategies for procuring, protecting, commercializing, and enforcing their patent, trade secret, and other IP rights in the U.S., China, and globally. Having spent the past 20 years practicing both U.S. and Chinese IP law, with 12 years based in China, he has the unique ability to explain Chinese IP laws, practices, and procedures to U.S. and other Western clients in a way they can easily understand and likewise to explain U.S. IP laws, practices, and procedures to Chinese clients. Because of this, he is often called on by clients to act as a strategic advisor on IP matters involving one or both jurisdictions.  

Mr. Fisher represents companies in a broad spectrum of IP matters, including IP and business counseling, IP portfolio management, IP and corporate due diligence, licensing and technology transfer, commercial contracts and business transactions, and patent and other IP-related litigation and dispute resolution. 

Mr. Fisher has experience in a variety of industries, including computer hardware and software, computer networks, mobile devices and applications, telecommunications, Internet and e-commerce, pharmaceutical, biotechnology, chemical, medical devices, mechanical and industrial products, aerospace, automotive and manufacturing.  

An accomplished and well-respected attorney with over 20 years of experience, Mr. Fisher has been recognized for his IP expertise by leading legal directories, including Chambers and Legal 500, with one client commenting “I really like [Fisher]…He is very, very strong in the patent category. Clients love him, he does very good work.” (Chambers Global & Greater China Region 2022). 

In its Global and Asia-Pacific rankings spanning 2018-2022, Chambers noted “[Fisher] is highly experienced representing major global clients against patent trolls, as well as taking on licensing and trade secret matters. He is especially well known for advising on cross-border technology-related transactions,” “[Fisher] is a well-regarded patent litigator, regularly acting on enforcement actions, trade secrets and licensing agreements on the non-contentious side,” and “[Fisher] is widely respected as ‘a great guy who really knows his patents.’” 

Representative Experience

Litigation/Enforcement 

• Represented a global chemicals company in connection with patent enforcement campaign against multiple Chinese infringers on patents relating to structure and method of making cathode materials used in lithium-ion batteries for electric vehicles, including advising on multiple lawsuits filed against multiple defendants involving multiple patents and related invalidation actions and appeals. 
• Represented a global developer and manufacturer of innovative industrial/retail electronic products in global patent enforcement campaign against competitor, including preparation and filing of multiple patent infringement lawsuits filed against multiple affiliated defendants involving multiple patent families across multiple jurisdictions (including China). 
• Acted as external IP counsel in China for world’s leading manufacturer of plasma arc cutting torches and related consumables for over ten years, including (1) establishing and implementing anti-counterfeiting strategy; (2) advising on trademark portfolio and filing trademark applications, oppositions and cancellations; (3) registering copyrighted works; (4) taking enforcement action at trade fairs and customs (5) successfully invalidating patent covering client’s prior technology; (6) investigating and advising on suspected trademark and patent infringements; and (7) filing trademark and patent infringement lawsuits and administrative actions, including over ten lawsuits/actions that resulted in favorable judgments or settlements. 
• Represented a Chinese electronics manufacturer in U.S. lawsuit brought by IP-pool-licensing administrator claiming breach of license and trademark infringement and involving related U.S. Customs enforcement action. 
• Represented a leading US-based retailer of home-improvement (DIY) products and the Chinese manufacturers of floor panels sold by the client in US International Trade Commission Section 337 investigation initiated by competitor claiming infringement of several patents relating to composition and interlocking mechanism of certain floor panels. 
• Represented a manufacturer of innovative high-capacity low-sag conductor for electric power grid transmission lines in parallel trade secrets infringement lawsuits in China and U.S. against former executive and multiple co-conspirators who disclosed and used the company’s proprietary product and manufacturing know-how during his employment and after leaving the company. 
• Represented a leading developer and manufacturer of action cameras in trade secrets infringement lawsuit in China against former employee engineer who disclosed and used one of the company’s proprietary algorithms after leaving the company. 
• Represented an IT/Internet networking equipment company in patent litigation brought in China by Chinese non-practicing entity (NPE) involving invention patent covering method of providing Web access through access server and virtual Web server. 
• Represented a leading camera-technology company in CIETAC arbitration against Chinese licensee involving claims of breach of the parties' patent license agreement and infringement of the client’s patents. 

Licensing/Transactions 

• Advised provider of proprietary platform for managing energy assets using combination of artificial intelligence (AI), data analytics, and the cloud/Internet of Things (IoT) on structuring complex cross-border multi-party project involving licensing the platform and technology to a Chinese State-owned enterprise for implementation at a coal-fired-power-generation plant to demonstrate feasibility of using platform and technology to remove CO2 from the waste stream and reduce carbon, including on topics such as IP protection, technology export, data protection, and anti-bribery. 
• Advised a global semiconductor and wireless technology company on IP and tax aspects of cross-border intra-company transfer of patents and other IP rights relating to discrete analog electronic radio frequency filters for electronic devices as part of business restructuring, including (1) reviewing existing joint development agreement, (2) conducting due diligence on target IP assets; (3) drafting IP transfer agreement; and (4) advising on compliance with China’s technology export regulations, and registering IP transfer agreement with relevant authority. 
• Conducted due diligence in connection with a global semiconductor and wireless technology company’s purchase of software, IP, and other assets relating to automated driving systems and virtual/augmented reality controller systems, including (1) reviewing existing employee agreements, technology development and consulting services agreements, software and IP transfer agreements, IP license agreements, technology ownership agreements, intra-company agreements, inventor assignment agreements, and equity transfer agreements; (2) conducting due diligence on target IP assets; (3) advising on perfecting chain of title of target IP assets for purchase, and drafting necessary IP confirmatory assignments and patent assignments; and (4) reviewing and revising asset purchase agreement and ancillary contracts. 
• Advised a leading developer of wireless charging systems for electric vehicles on bringing its university-in-licensed patented technology into China, including (1) advising the company on standard-essential patents (SEP) and the standards-setting process, including preparing submissions to China’s national standards-setting organization declaring certain patents as SEP and making licensing declarations; and (2) negotiating and drafting non-disclosure agreements, patent and technology license agreements, and collaboration agreements with Chinese automotive partners. 
• Advised a Chinese private equity firm in connection with its investment in a company with cutting-edge technology relating to a “clean” coal refining process, including (1) advising and conducting due diligence on the patents and technology being licensed to the company; (2) negotiating and drafting a patent and technology license agreement and a raw material supply agreement; and (3) negotiating and drafting subscription and shareholders agreements and ancillary documentation.  
• Assisted a Vietnamese conglomerate and their newly-formed-automobile-manufacturing affiliate in negotiating and drafting a technology license and services agreement with a major Chinese automobile manufacturer for essential technology related to the vehicle’s electrical and electronic architecture. 
• Advised a global ride-hailing company on various IP and employment issues relating to a new business venture in China, including (1) advising on IP ownership and other rights associated with software developed by employees and contractors; (2) advising on legal compliance with China’s employee-inventor reward and remuneration and technology import and export regimes; (3) drafting a company-wide employee inventor reward and remuneration policy; and (4) drafting an employee proprietary rights agreement and IP assignment agreements.  
• Advised the global leader in nylon intermediates and fibers on IP issues relating to construction of nylon intermediates manufacturing facility in China, including advising on protection of trade secrets and technology, advising on remuneration requirement for employee service inventions, and negotiating and drafting confidentiality and non-compete agreements. 
• Represented a French agricultural and food products company in complex joint venture and technology licensing transaction with Chinese seed company, including (1) negotiating and drafting license agreement for hybrid corn seed technology and related trademark license and (2) supporting corporate team on structuring joint venture. 
• Advised a U.S. manufacturer of ultracapacitors and other energy storage solutions on long-term collaboration with Chinese state-owned railway transportation company to develop and commercialize lithium capacitor technology, including drafting master collaboration agreement and ancillary lithium capacitor development agreement. 
• Advised a U.S. manufacturer of emissions control systems for power plants and other industrial applications on collaboration with Chinese partner to promote and sell the company’s systems in China, including drafting technology license and services agreements to license the company’s advanced technology for removing harmful pollutants from emissions sources and maximize protection of its trade secrets and technical know-how. 
• Advising a global medical device company on various investments in China, including (1) conducting IP due diligence with respect to target company and its stent product, including confirming ownership of and other rights to patent and other IP assets and conducting patent freedom-to-operate analysis; (2) conducting IP due diligence with respect to third party’s balloon catheter product, including conducting patent freedom-to-operate analysis; and (3) conducting IP due diligence with respect to third party’s medical technology, including confirming ownership of and other rights to patents and other IP assets, and negotiating and drafting license agreement for rights to those IP assets. 
• Advised one of the top U.S. R&D universities on minimizing risks associated with licensing university innovations into China, including on topics such as compliance with technology import and export regulations, disclaimer of warranties and liabilities for licensed technology, and enforcement of such regulations and disclaimers. 
• Advised a global pharmaceutical company on licensing recombinant limulus amebocyte lysate (LAL) technology, including proprietary purified protein, used to make formulations for LAL assays for endotoxin detection and related IP to its Chinese joint venture biopharmaceutical partner, and structuring and drafting associated technology license, material transfer, and services agreement. 
• Represented a Chinese pharmaceutical company in negotiating and documenting (1) two license agreements with Belgian biopharmaceutical company for exclusive right to manufacture and commercialize anti-TNFa Nanobody®, ozoralizumab (ATN-103), for rheumatoid arthritis, and anti-RANKL Nanobody®, ALX-0141, for osteoporosis and bone metastasis in China; and (2) one license agreement with French biopharmaceutical company for exclusive right to manufacture and commercialize ImmuFact® IMP321, a LAG-3Ig fusion protein for treatment of metastatic breast cancer, in China. 
• Advised a U.S.-headquartered global pharmaceutical company on cross-border legal compliance issues arising from use of electronic laboratory notebooks (ELN), including (1) advising on topics such as data privacy, technology import and export, and IP ownership and transfer; (2) developing and implementing internal compliance program; and (3) conducting legal/compliance training for China-based researchers. 
• Advised a global provider of pharmaceutical development and manufacturing services on laboratory services agreement with Chinese service provider for validation and clinical delivery of the company’s proprietary clinical trial assay (companion diagnostic) in China.  
• Advised a leading U.S. research hospital on (1) collaborative research agreement with Chinese medical materials company for scientific research in area of cartilage and skin regeneration and (2) patent and know-how license agreement with Chinese biotechnology company for developing and commercializing certain medical devices. 
• Advised a U.S. healthcare technology start-up on collaboration with Chinese hospital for deployment of Web-based healthcare management and communication platform, including drafting collaboration agreement and end user (patient) license agreement for mobile application.