Jerry' C. Liu's Detailed Bio Jerry C Liu, LLC email: jliuatl@outlook.com tel: (678) 325-8951 Linkined: https://www.linkedin.com/in/jerrycliu SUMMARYJerry is a Register U.S. Patent Attorney and Entrepreneur having Georgia Tech Bachelor and M.S. degrees in electrical engineering and J.D. degree from Emory Law School. Jerry has extensive engineering, innovation, patent prosecution (procurement), litigation, M&A, and patent asset management experience, and has been an adjunct professor and guest lecturer for over 2 decades. He is also a named inventor on over two dozen U.S. patents. WORK HISTORY AND EXPERIENCEAdjunct Professor, Georgia Institute of Technology (a.k.a. Georgia Tech) Feb. 2002 – May 2023• Since 2002, has taught 30 classes in several subjects (Technology Law, Policy, and Management; Constitutional Issues; and Pre-Law Seminar). Partner, Hill, Kertscher & Wharton, LLP Jan.2020 – Apr.2022• Patent litigation and litigation support, including infringement and invalidity analysis, patent strategy and planning. Patent preparation and prosecution (procurement), including patent portfolio management, due diligence in corporate acquisitions (M&A), and related counseling. Partner, Amin, Turocy & Watson, LLP Oct.2016 – Jan.2020• Patent prosecution and related counseling for Fortune 500 companies and high technology start-ups. Areas of technology included 5G cellular communications, IoT and IIoT, Cellular Vehicle-to-Everything (C-V2X) communications, privacy and cybersecurity, Software as a Service (SaaS), electric power delivery and smart grid solutions, and semi-conductor assembly. Senior Counsel, ARRIS Group, Inc. (now CommScope) Mar.2009 – Feb.2016• Developed and drove patent litigation strategy to mitigate liability and effectuate favorable outcomes. Managed outside litigation counsel. Advised executives and senior management on key cases and issues, including litigation summary, risk, and strategy. Analyzed IP indemnification terms and initiated actions or responses with vendors and customers. Drafted discovery responses, noninfringement and invalidity charts, joint defense agreements, and other litigation-related documents. Coordinated all in-house discovery responses. Prepared and prosecuted patents. Educated stakeholders and raised awareness of patent rights and operating procedures. Conducted patent harvesting and invention disclosure meetings. Performed due diligence in support of mergers and acquisitions, including the review of litigation actions, patent assets, and technology licensing agreements. Successfully negotiated joint development agreement with multiple service operator. As interim trademark counsel, prosecuted all trademarks, including the mark “ARRIS.”• Selected Achievements: Directly impacted cases, saving ARRIS over $50 million. Succeeded in Inter Partes Review (IPR) petitions and a Federal Circuit appeal. Instrumental in the evaluation and establishment of eDiscovery and patent docketing, management, and mapping systems and tools. Director of Innovation and Patent Development, AT&T Apr.2005 - Mar.2009• Managed and developed portfolios of 1,000+ patent assets in key technologies, including digital messaging and IPTV. Conducted brainstorming, patent harvesting, and invention disclosure meetings. Worked with legal, R&D, and engineering teams to develop strategy to identify and protect technologies. Engaged in assessment and business valuation of innovations. Directed claim strategy for patent prosecution. Reviewed applications, evaluated PTO office actions and responses, and decided whether to continue patent pursuit. Generated revenue by mining and analyzing portfolio, and deciding which patents to sell or assert, including infringement analysis. Coordinated with both inside and outside counsel to achieve objectives.• Selected Achievements: Streamlined workflow processes that led to expedited patent issuances and reduced costs. Contributed to the development of third-party patent docketing and management system. Named as an inventor on multiple patents. Associate, Eversheds Sutherland Oct.2000 – Mar.2005• Litigation: Served as lead associate on numerous patent litigations. Litigated electronic theft cases for satellite TV company, including first-chairing two cases. Managed large-scale document production, took depositions, wrote briefs, prepared claim charts and expert reports, drafted and responded to discovery, negotiated protective and scheduling orders, prepared for Markman hearings (including briefing), and managed associates, paralegals, and other staff.• Transactional work: Drafted patent applications, patentability and clearance opinions, nondisclosure agreements, conducted IP due diligence, negotiated settlement agreements (including patent licenses), nondisclosure agreements, right of publicity agreements. Prosecuted trademarks and copyrights. Counseled clients on patent strategy.• Selected Achievements: Staffed on one of the largest, multidistrict, multi-party patent cases in U.S. history, leading to settlements of over $200 million dollars for clients. Successfully defended DirecTV against SLAPP counterclaims in approximately 30 cases. Strategic discovery decisions led to multimillion-dollar verdict for a client in the paper-making industry. Associate, Jones and Askew (now Kilpatrick Townsend) Sept.1999 - Sept.2000• Drafted and prosecuted patent applications, including for large and start-up companies. Counseled clients regarding IP strategies. Performed legal research and wrote patentability and clearance opinions. Summer Associateships at:Jones and Askew 1997, 1998Pillsbury Winthrop Shaw Pittman (Los Angeles, CA) 1998• Responded to Patent Office Actions, prepared patentability opinions, interviewed clients, and conducted legal research.Asian Pacific American Legal Center (Los Angeles, CA) 1996• Provided legal support for indigent clients Cooperative Education Employee, Georgia Power Company Sept.1990 - Sept.1993• Performed drafting and design work on transmission and distribution substations. Maintained the corporate LAN and telephone system. Provided technical and instructional support for corporate and regional departments. Supervised two projects, including containment of a computer virus outbreak. EDUCATIONEmory University School of Law (J.D. with Honor) May.1999• Full tuition scholarship.• Managing Editor, Emory International Law Review; Thomas Tang Moot Court Competition; Emory Mock Trial Team (William Daniels Mock Trial Competition).• President, Asian American Law Student Association; Student Legal Services. Georgia Institute of Technology (a.k.a. Georgia Tech) • Master of Science (M.S.) June.1996 o Graduate Teaching Assistant (included scholarship and stipend).o Electrical Engineering major; domains: Biomedical Engineering, Optics, and Telecommunications.o Public Policy Minor.• Bachelor of Electrical Engineering (B.E.E. with Honor) Sept.1994o Certificate (Minor) in Industrial and Organizational Psychology (7 classes, GPA 4.0)o Cooperative Education Degree (with Georgia Power Company)o Certificate in Bio/Rehabilitation Engineering (Oxford University Study Abroad Program).o Eta Kappa Nu electrical engineering honor society. Phi Eta Sigma honor society.o Vice-President, Chinese Student Association. Programs Director, Pre-law Society. Community Service Chairperson, Delta Sigma Phi Fraternity. Hall Council Representative. OTHER CREDENTIALSProfessional Memberships and Certifications:• Legal: Georgia Bar. United States Patent Bar.• Engineering: Certified EIT-State of Georgia. Inventor Named on More than Two Dozen Issued U.S. Patents:• 7,359,491, 7,451,922, 7,620,161, 7,624,152, 7,693,741, 7,715,881, 7,756,934, 7,821,874, 7,896,240, 7,986,772, 8,027,438, 8,041,716, 8,065,709, 8,802,305, 8,126,978, 8,286,866, 8,352,768, 8,393,537, 8,707,189, 8,763,899, 8,881,422, 8,892,927, 10,415,176, 10,541,965, 11,149,378. Awards and Honors:• IAM Patent 1000 (2021, 2022)• Georgia Trends Legal Elite (2020, 2021) Presentations and Publications:• Routinely serve as a panelist and speaker for student groups and guest lecturer for college classes, including for Georgia Tech’s Schools of:o Chemical Engineering: o Electrical Engineering:o International Affairs: and o Scheller Business School:• Panelist, Monetization for Operating Companies in a Post AIA & Alice World (April 14, 2015 for CenterForce IP Strategy Summit).• Presentation, Protecting and Commercializing Innovations in Energy Efficiency and Renewable Energy (March 5-8, 2009 for IEEE SoutheastCon)• Moderator, What Every Lawyer Should Know About IP (April 19, 2008 for NAPABA 3rd Annual Southeast Regional Conference). • Presentation, What Engineers Should Know About Patent Law (Feb 21, 2008 for IEEE S-PAC).• Chairperson, Doing Business in China (September 28, 2006 for Georgia ICLE). • Moderator, Expert Witnesses in Patent Litigation (June 9, 2006 for Georgia ICLE). • Presentation and paper, Provisional Patent Applications: Advantages and Pitfalls (April 15, 2005 for Georgia ICLE). • Presentation and paper, Overview of Patent Ownership Considerations in Joint Technology Development (January 23, 2004 for Georgia ICLE), also published at 2005 SYRACUSE SCI. & TECH. L. REP. 1. • Presentation and paper, Intellectual Property Considerations in Early Stage Venture Capital Transactions (March 6, 2003 for Georgia ICLE). • Paper, Electronic Commerce: Using Clickwrap Agreements, 15 NO. 12 COMPUTER LAW. 10 (1998).
Bilingual:• Mandarin Chinese (conversational). NON-PROFITS AND VOLUNTEER WORK• Board Member and University Alliance Co-Chair, Georgia Intellectual Property Alliance (GIPA) (www.gaipalliance.org)• Volunteer Mentor, WildCat 5E, a non-profit high school robotics team (www.wildcat5e.com)• Former Board Member, Georgia Asian Pacific American Bar Association.