Grace L. Pan, partner in the New York office of Kaye Scholer, is an intellectual property counselor and litigator, with particular strength in polymer chemistry, recombinant technology, herbicides, pharmaceutical compositions and formulations, vaccines, organic and inorganic compounds, medical devices, semiconductor-related technology, consumer electronics, DVD, Blu-Ray® technology and mechanical devices. She also focuses her practice in patent, trademark, trade dress, trade secret, copyright and unfair competition law.MEHR
Grace represents clients from the United States, Japan, Taiwan and China mainly in federal district courts and appeal court. She also has done many ICC and AAA arbitrations. Her litigation experiences principally are in the semiconductor, chemistry, biotechnology, electronic and mechanical fields. She is also experienced in client counseling, including IPO, license negotiation, due diligence and freedom-to-operate opinions. In addition to enforcing and defending her clients’ intellecutal property rights in various US Courts, she also defends foreign patents in Taiwan and Japan and has argued before the Trial Examiners at the Japan Patent Office, Tokyo High Court and Taiwan Taipei District Court. In addition, Grace has experience in obtaining, defending and licensing patents, copyright, trademark and domain name applications (including ICANN proceedings).
Grace has extensive experience representing Tokyo Electron Limited in all of its United States patent litigation, both in the District Courts and the Court of Appeals for the Federal Circuit, in technology relating to semiconductor equipment manufacturing processes, etching, vapor deposition and LED technology. She also represents CMC Magnetics Corporation in defending its DVD and Blu-Ray® technology. Additionally, she also represents Kyocera Document Solutions, Allure Home Creations Co., Inc., Wondertex Corporation and Merial Limited. She has broad experiences in all phases of trials in the US.
Grace was recently ranked in Chambers Global 2013 (USA: Intellectual Property (Foreign Experts) (Spotlight Table) and Japan: Intellectual Property (Experts Based Abroad) (Spotlight Table)), gaining praise from a client who noted, “’With regard to Asian – and particularly Japanese – cases, I think she exhibits the highest level of skill.’”
Grace is fluent in both Japanese and Mandarin Chinese and is admitted as a Gaikokuho Jimu Bengoshi in Japan and is a member of the Daini Bengoshi Kai. Because of her fluency in Japanese, she also has broad experiences in all phases of Japanese litigation both before the Tokyo District Courts and the Tokyo High Court.
Recent Representative Matters
- Representing Merial’s Frontline and Frontline Plus pet products against Fujita Pharmaceuticals in Tokyo District Court and Tokyo High Court regarding four patent infringement cases.
- Representing BioCARE Corporation, an original equipment manufacturer (OEM), in an AAA arbitration against Criticare Systems Inc. for an alleged breach of contract (exclusive supply agreement).
- Representing Allure Home Creation Co., one of the largest shower curtain manufacturers in the US, in all IP-related concerns, including patents, trademarks and copyrights.
- Representing Minhou Minxing Weaving Co., Ltd. against allegations of copyright infringement after a major retailer had given purchase orders for manufacturing.
- Representing CMC Magnetics Corporation, one of the three largest DVD/Blu-Ray® OEMs in the world, in a suit against US Disc.com in California for breach of contract and $1.6 million in payments owed.
- Representing Velocity Micro Electronics regarding a breach of sales agreement. Grace was able to dismiss her client from the lawsuit early.
- Representing Hudson Home Group LLC, a leading supplier of branded cookware, bakeware, cutlery and food preparation products, regarding client counseling, licensing deals, freedom-to-operate opinions, transactional work and product development.
- Represented Allure Home Creation Co. regarding a novel shower curtain hook design that was protected by more than one utility patent.