Cindy Yang serves as a team lead for the Duane Morris Fintech industry group and is a partner in the Intellectual Property Practice Group. She was recognized by the National Law Journal as a 2018 Cryptocurrency, Blockchain and FinTech Trailblazer and the New York Law Journal as a 2019 New York Trailblazer.
Ms. Yang counsels clients on legal and regulatory issues in the fast-paced world of FinTech, cryptocurrencies, digital assets, cryptocurrency exchanges and fund formation, token technology, smart contracts, initial coin offerings (ICOs), security token offerings (STOs), initial exchange offerings (IEOs), cryptocurrency mining and public and permissioned blockchain-based technologies in a variety of applications, and handles inquiries involving cryptocurrencies and other digital assets before the U.S. Securities and Exchange Commission (SEC). She also counsels FinTech startups and banks on alternative payment and banking platforms and systems.
Ms. Yang focuses her practice on patent, trademark and copyright litigation; U.S. and foreign patent and trademark prosecution; Hatch-Waxman litigation; AIA proceedings before the U.S. Patent and Trademark Office's Board of Patent Trial and Appeal Board; opinion work; licensing; due diligence investigations in M&A deals; sports and entertainment law; and counseling regarding the procurement and enforcement of IP rights worldwide.
Ms. Yang has extensive multidistrict experience and represents a broad spectrum of U.S. and international clients before courts throughout the United States. Ms. Yang’s litigation and counseling experience involves an expansive array of products and technologies, such as blockchain and distributed ledger technology, cryptocurrency and fiat payment systems, digitized assets, quantum computing, gene and protein therapeutics, molecular diagnostics, vaccines, treatment methods, pharmaceutical compounds and formulations, medical devices, smart environmental monitoring systems, aquaculture production methods, light-emitting diode (LED) lamps and lighting systems, telemedicine, radio frequency identification systems, teleconferencing systems, magnetic fluid conditioning systems, website builders, music apps, public art works, jewelry and clothing designs. She also assists clients who must navigate issues involving U.S. federal regulatory agencies, such as the Federal Communications Commission (FCC), the Food and Drug Administration (FDA), the U.S. Patent and Trademark Office (USPTO) and the International Trade Commission (ITC).
Ms. Yang also prosecutes and manages U.S. and international patent portfolios for corporations, major universities, hospitals, research centers and startup ventures; handles inventor remuneration, licensing, collaboration and sale and acquisition issues related to IP portfolios; and provides freedom-to-operate and competitive landscape analyses.
In addition, Ms. Yang has negotiated and drafted license agreements, joint venture agreements, settlements of complex lawsuits, non-disclosure agreements, media and entertainment agreements, research & development agreements, software development agreements, and asset acquisition agreements. Ms. Yang also assists high tech, fashion, blockchain, media and entertainment companies, nonprofit organizations and professional sports teams with their trademark, advertising and branding strategies.
Before her legal career, Ms. Yang was a research associate at the Brain Tumor Research Center at the University of California, San Francisco, studying the effects of seizures and ionizing radiation therapy on the hippocampal region of the brain, and exploring brain tissue repair modalities that promote neuronal stem cell proliferation and differentiation and migration of newly generated neurons toward damaged areas of the brain.
In addition to her scientific background, Ms. Yang performed professionally with various modern dance companies, physical dance theater companies and independent choreographers based in California and New York. She also cofounded an award-winning physical theater company based in San Francisco.
Areas of Practice
- Intellectual Property Law
- Trademark and Copyright Litigation
- Patent and Trademark Prosecution
- Inter Partes Review
- In the Matter of Certain Modular LED Display Panels and Components Thereof, ITC Investigation No. 337-TA-1114; Ultravision Technologies, LLC v. Lighthouse Technologies Limited, C.A. No. 2:18-cv-00104-JRG-RSP (E.D. Texas); Ultravision Technologies, LLC v. Panasonic Corporation et al., C.A. No. 2:18-cv-00107-JRG-RSP (E.D. Texas). Represented Lighthouse Technologies Limited, Panasonic Corporation and Panasonic Corporation of North America in an ITC investigation and related patent infringement litigations in the Eastern District of Texas involving modular LED display panels.
- Avid Identification Systems, Inc. v. Phillips Semiconductor Inc., C.A. No. 2:04-cv-183 (TWJ) (E.D. Texas). Represented Swiss-based Datamars, SA and its U.S. subsidiary The Crystal Import Corp. in a patent infringement case involving RFID animal identification products. Obtained a judgment that the plaintiff’s patent was unenforceable due to inequitable conduct, the first such finding in the Eastern District of Texas.
- In re Katz Interactive Call Processing Patent Litigation, C.A. No. 2:07-ML-1816 (RGK) (E.D. Texas & C.D. California). Represented Global Crossing Telecommunications, Inc. in the largest Multi-District Litigation (MDL) patent case in history involving interactive call processing and digital teleconference patents.
- Kraft Foods Group Brands, LLC v. Bega Cheese Limited, C.A. No. 1:17-cv-8104-ER (S.D.N.Y.). Representing Bega Cheese Limited in a trade dress dispute involving peanut butter in Australia.
- Sharpe Innovations, Inc. v. KDDI America, Inc. and Locus Telecommunications, LLC, C.A. No. 1:17-cv-05460-VMK (N.D. Ill,). Representing KDDI America, Inc. and Locus Telecommunications, LLC in a patent infringement case concerning SIM card adaptor technology.
- GE Lighting Solutions, LLC v. Technical Consumer Products, Inc., C.A. No. 5:12-cv-03127 (JRA) (N.D. Ohio). Represented Technical Consumer Products, Inc. in a patent infringement case involving light-emitting diode (“LED”) light bulbs.
- Pfizer Inc. et al. v. Fresenius Kabi USA, LLC, C.A. No. 13-1893 (SLR) (D. Del.). Represented Fresenius Kabi USA, LLC in an ANDA litigation involving the antibiotic tigecycline.
- Innovation Automation LLC v. Midwest Tape, LLC et al., C.A. No. 2:16-cv-01 (RG) (E.D. Texas) - Represented Midwest Tape, LLC in patent infringement case involving digital data duplication onto digital recording mediums.
- DataTern, Inc. v. Abbott Laboratories, et al., C.A. No. 2:11-203 (JRG) (E.D. Texas). Represented PepsiCo Inc. in patent infringement case concerning systems for enabling access to relational databases from object oriented programs.
- e.Digital Corporation v. Avid Technology, Inc., et al., C.A. No. 2:08-cv-93 (DF) (E.D. Texas). Represented Olympus America Inc. in a patent infringement case involving handheld record and playback devices with flash memory.
- NMT Medical, Inc. v. W.L. Gore & Associates, Inc., C.A. No. 1:08-cv-790 (SLR) (D. Del.). Represented W.L. Gore in a patent infringement case involving a medical device used to treat atrial septal defects.
- Network-1 Security Solutions, Inc. v. Alcatel-Lucent USA Inc. et al., C.A. No. 6:11-cv-492 (LED) (E.D. Texas). Represented NEC Corporation and NEC Corporation of America in a patent infringement case involving Power over Ethernet (“PoE”) products and the IEEE 802 standard.
- Consolidated Work Station Computing, LLC v. Acer America Corporation et al., C.A. No. 6:11-cv-00696 (LED) (E.D. Texas). Represented NEC Corporation of America in a patent infringement case concerning blade server technology.
- Cameron Industries, Inc. v. Walmart Stores, Inc., et al., C.A. No. 1:09-cv-6671 (DC) (S.D.N.Y.). Represented Walmart against copyright infringement claims involving fashion designs.
- Counseling blockchain-related clients on their respective cryptocurrencies and their access to secondary market platforms.
- Counseling U.S. and foreign investors on potential investments in ICOs and blockchain-related technologies and companies.
- Counseling an Asian-based company in an FCC investigation concerning LED video screens in the U.S. market.
- Counseling LED lighting companies based in the U.S. and Asia regarding global intellectual property portfolio development, strategic business partnerships, and intellectual property acquisition and enforcement.
- Counseled one of the U.S. Major League Baseball teams on trademark issues concerning its new marquee stadium.
- Conducted patent due diligence projects for potential and actualized M&A deals which strengthened a global actionable intelligence solutions company’s leadership position in the enterprise workforce optimization market.
- New York
- U.S. Court of Appeals for the Federal Circuit
- U.S. District Court for the Eastern District of New York
- U.S. District Court for the Southern District of New York
- U.S. District Court for the Western District of New York
- U.S. Patent and Trademark Office
- Benjamin N. Cardozo School of Law, J.D., 2002
- University of California, San Diego, B.S., Biochemistry and Cell Biology, 1997
- University of California, San Diego, B.A., History, 1997
- Duane Morris LLP
- Partner, 2017-present
- Schiff Hardin LLP
- Partner, 2013-2017
- Dickstein Shapiro LLP
- Partner, 2012-2013
- Associate, 2005-2011
- Ostrolenk, Faber, Gerb & Soffen LLP
- Associate, 2005
- Cooper & Dunham LLP
- Associate, 2002-2005
- American Chemical Society
- American Intellectual Property Law Association
- Licensing Executives Society (U.S. and Canada)
Honors and Awards
Named a Trailblazer by the New York Law Journal, 2019
Named to the National Law Journal’s list of Cryptocurrency, Blockchain and FinTech Trailblazers, 2018
Selected Speaking Engagements
Panelist, "Trending Tech in CRE Finance," CRE Financial Council’s Young Professionals Back-to-Campus at Fordham Gabelli School of Business, New York City, September 23, 2019
Moderator, "The Inherent Risks of Crypto: The Flip Side of Privacy," Legal Forum on Cryptocurrency, American Conference Institute, New York City, September 19, 2019
Speaker, "Blockchain Disruption in the Real Estate Market," Cherry Bekaert’s 2019 ReCon Conference, Charlotte, NC, July 30, 2019
Speaker, "Facebook’s Bid to Break Banking," The American Banker Bankshot Podcast, July 25, 2019
Panelist, "Stepping Outside the Comfort Zone: Diversification for Fintechs," Fearless in Fintech West, San Francisco, CA, July 15, 2019
Speaker, "FinTech and Intellectual Property Lunch Talk with Cindy Yang," Harvard Law School, Cambridge, MA, April 25, 2019
Speaker, "Smart-Talk: IP Issues in FinTech/AI," Cyberport HK Smart-Space, Hong Kong, April 11, 2019
Speaker, "Blockchain in Real Estate & Other Industry Innovations," Miami Real Estate Forum Breakfast Meeting, Miami, FL, January 22, 2019
Speaker, "The Regulatory Landscape of FinTech,” Chambers and Partners/Multilaw’s General Counsel Seminar, New York City, November 20, 2018
Panelist, "Emerging Practice Areas: e-Discovery, Privacy, Cryptocurrency," New York City Bar, New York City, October 30, 2018
Speaker, "Overview Of Legal Issues Facing the Fintech Industry," Duane Morris Annual Alumni CLE, Philadelphia, PA, October 25, 2018
Presenter, "Blockchain Business Applications: Dot-Com Bust or Business Boom?" Duane Morris Commercial Contracts Checkup Series, Philadelphia, PA, and Webinar, October 11, 2018
Panelist, "Raising the 'Bar' - Key Legal Issues When Using Crypto Assets," Crypto Evolved, New York City, June 27, 2018
Panelist, "Women in the Legal Profession: Leadership from Law School to Practice," New York Law School Law Review Symposium, New York City, February 2018
Moderator, "Opportunities in Blockchain Technology," Roundtable, ACG New York Women of Leadership Summit 2018, New York City, January 18, 2018
Speaker, "Smart Tips and Insights - U.S. Patent Prosecution Practice," Hong Kong University of Science and Technology (HKUST) Entrepreneurship Center, Hong Kong, October 11, 2017
- Speaker, "How New Developments of Patent Laws and Practices in China, U.S. & Europe Affect Your Patent Prosecution, Enforcement and Monetization Strategies," Hong Kong University of Science and Technology, Hong Kong, October 24, 2016
- Panelist, "Emerging Companies: From Domestic Establishment to International Expansion - International Expansion: Preparing to Take Your Business Abroad," The Cardozo Journal of International and Comparative Law/The Cardozo Business Law Society Spring Symposium, New York City, March 16, 2016
- Panelist, "Issues in the U.S. for Chinese Businesses," Fall 2015 Fashion Law Symposium: The U.S. & China: Perspectives on Brand Protection and Intellectual Property, New York City, September 24, 2015
- Panelist, "See It Coming: New Eyewear & Accessory Technologies, New Legal Issues" with Vision Monday and the Accessories Council, New York City, June 25, 2013
- Co-presenter, abstract and poster, "EGF Affects Radiation Response of the Rat Subependyma," 11th International Congress of Radiation Research Conference, Brain Tumor Research Center, U.C.S.F., July 1999
- Co-presenter, abstract and poster, "Isolation and Characterization of a Novel Potassium Transporter from Plants," 1997 American Society of Plant Physiology conference, Department of Biology and Center for Molecular Genetics, U.C.S.D.
Quoted, "4 Considerations to Mull Over Before Joining a Blockchain Consortium," LegalTech News, June 12, 2019
Quoted, "5 Things JPM Coin Will Do for Banking and Blockchain," American Banker, February 14, 2019
- Co-author, "Long-Term Impairment of Subependymal Repopulation Following Damage by Ionizing Irradiation," Experimental Neurology, 160:66-77 (1999)