Joe Yang, Partner. PatentEsqe Law Group; Board Member, LES Silicon Valley Chapter

May is Asian American and Pacific Islander Heritage Month, and LES is proud to celebrate this month with our members.  In recognition of this heritage month, we would like to spotlight one of our active volunteer members, Joe Yang, who shared highlights from his illustrious IP career in an interview with LES.  Over the past 30 years, Joe has deeply engaged in various aspects of intellectual property, including patent prosecution, licensing, and technology mergers and acquisitions. Now running an IP boutique firm in the San Francisco Bay area, Joe routinely engages in complex IP transactions, including licensing in Asia, and serves as an expert witness in major licensing disputes. Joe also contributes to the field by teaching at institutions like Stanford and through organizations like LES and PLI.  Joe is actively involved with LES as a Board Member of the Silicon Valley Chapter, and is also on the board of the Asian Pacific American Bar Association – Silicon Valley (APABASV), where he builds bridges between the two organizations through joint events.

Interview with Joe Yang, Partner. PatentEsqe Law Group; Board Member, LES Silicon Valley Chapter

Q: Tell us about your “Life in IP”?

A: Joe: I was originally an engineer with no interest in law. Worked in defense in the 1980s.  Boom times.  My mentors said “Get an advanced engineering degree.”  I finished 5 years later, as the cold war was ending.  Switched to the energy industry.  The company licensed out some software I had developed.  I thought it was fun.  I moved to Silicon Valley (Stanford Law + work) and changed careers.  For the past 30 years, I’ve been fortunate to have deep-dived in a variety of IP areas.  Initially, patent prosecution, counseling & enforcement/defense.  Then licensing – approaching a thousand deals soon.  Tech M&A.  Co-founding (& later leading) the IP practice at Skadden Palo Alto.  VP/GC at Cryptography Research, Inc., licensing our technology into tens of billions of consumer devices.  Every smart card and Blu-Ray device. Major printer brands and SatTV systems.  I also lived the full “IP lifecycle” there — writing, licensing, enforcing and defending our suite of pioneering patents.  Now I have an IP boutique, doing complex IP transactions.  Some expert witness work for high stakes licensing disputes.  Teaching at LES, locally, nationally & internationally.  Also PLI (20+ years), Stanford (10+ years) and elsewhere.  I’ve loved my life in IP.

Q: You are involved in international IP dealmaking involving the US and Asia – what are some of your takeaways?

A: Joe: For a while, everyone chased big China deals. I did a couple, including licensing out Yahoo!’s technology to kickstart a little known company called Alibaba. But China deals were rare for me. And of course they’re not happening now. My Asia deals were always predominantly Japanese, plus a few Taiwanese. Incidentally, my parents, uncles and aunts grew up in Taiwan, when it was Japanese. People flowed back and forth until the end of WWII. They say if you want to see old-time Japan (or hear old-time Japanese), go to Taiwan. After the war, my parents emigrated to the U.S. I have multiple generations of family in all 3 countries. Somehow my U.S.-Asia deals have aligned with my family heritage. Japan is where the action is. Japanese dealmaking is unique. Technologists play an outsized role – most corporate execs come from engineering, not finance. Lawyers participate in the background (and sometimes not at all). Cultural nuances are key, including patience. Japanese build trust first, and only later do a deal. Contracts are shorter, and emphasize making a commitment (as opposed to how to bail out securely) It’s a marriage, not a prenup.

Q: Tell us about your involvement as an LES Silicon Valley Chapter board member?

A: Joe: I joined LES in my 30s. In my 40s, work and family commitments exploded, and I left LES for a while. I got re-engaged in my 50s, and have been active for almost a decade now. Five years ago, I joined the Silicon Valley Chapter board. It’s a vibrant group of lawyers, execs, entrepreneurs, consultants, and VCs/financial experts. I love teaching, and focus on our educational efforts. I try to build bridges between different LES communities. I have many good friends in LES Japan. When I’m there, I learn what’s happening in Japan, and I present updates from the U.S. By the way, the LES Japan leadership and membership are world class. It’s the leading IP organization for Japanese industry, and their level of sophistication about U.S. (and worldwide) IP developments is amazing.

Q: You are on the board of APABASV – what are the goals and activities of this organization?

A: Joe: Asian Pacific American Bar Association of Silicon Valley is a fraternal organization. Our members hail from the Asian American legal community, and others who have an interest in things Asian-Pacific-American. The goal is similar to that of LES – to facilitate professional development, and build friendships, among a community of people sharing common interests. But you might be surprised to learn that APABASV has a lot of overlap with LES Silicon Valley – a majority of APABASV members are high tech lawyers, including a huge IP and licensing contingent. I lead its IP committee, and we have about 10 IP events a year, half educational and half social.

Q: You have been instrumental in building bridges between LES Silicon Valley chapter and APABASV (and other professional organizations involving the Asian Pacific American community) – please share some of the joint programs that LES Silicon Valley and the other organizations collaborated on.

A: Joe: I’ll give you some recent examples.  Last summer, LES Silicon Valley and APABASV held a joint in-person event called “Is Unauthorized Copying an Infringement or Fair Use? Are the Rules Different for Content and Tech?”  This spring, LES Silicon Valley and the Bay Area Chizai Group had a joint in-person event this year called “The Ubiquitous World of Internet of Things (IoT) Connected Devices – and the Coming Tsunami of Patent Licensing.”  In case you’re wondering, “chizai” in Japanese means IP, and the Bay Area Chizai Group is a group of Japanese expats (living in the U.S. and working in their companies’ U.S. offices) and local U.S. IP folks, who network and exchange information about U.S. and Japanese IP developments.

Q May is Asian American and Pacific Islander Heritage Month – what should the LES USA-Canada community do to honor this month?

A: Joe: Something at the geographical and cultural intersection of the Americas and the Asia-Pacific region would be perfect … Spring meeting in Honolulu, anyone? Jokes aside (or not!), I think LES is doing a nice job of welcoming and honoring all its members, whether it’s by practice area, industry, geography or heritage. I happen to like these LES member interviews as they allow me to get to know fellow members that I might not otherwise meet. It’s been an honor to be spotlighted. Thank you.

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