Areas of Focus:Patent Counseling and Prosecution, Intellectual Property Litigation, Emerging Companies, Life Sciences, International Transactions, Intellectual Property Transactions, Medical Devices, Licensing, Venture Capital & Angel Financing, Intellectual Property Transactions and Due Diligence
Peng Chen leads his biotechnology, pharmaceutical, and diagnostics clients through the technical and legal challenges involved in developing and protecting their critical IP assets. Dr. Chen’s practice focuses on patent prosecution and counseling and he also is experienced in the areas of patent litigation, inter parties review, reexamination, interference, opposition, and licensing. Dr. Chen has been ranked in the fields of biotechnology law, patent law and patent litigation 2009-2018 by Best Lawyer in America. In 2018, Dr. Chen was selected as "Lawyer of the Year" in Patent Law in San Diego by Best Lawyer. Dr. Chen also was ranked as a regional expert on China intellectual property 2011-2015 by Chambers Global.
For numerous clients, Dr. Chen manages entire patent portfolios, advising the clients on maximizing their patent positions and designing patent strategies. On behalf of one client, he obtained U.S. patent protection for its novel diagnostic test and advised the client in designing around a third party’s patents. When the third party threatened to sue the client, he worked with several Morrison & Foerster patent litigators in obtaining summary judgments of non-infringement twice from the District Court, and eventually won the appeal from the Federal Circuit. (General Atomics Diazyme Labs. Div. v. Axis-Shield ASA, 277 Fed. Appx. 1001, 2008 U.S. App. LEXIS 10235 (Fed. Cir. 2008)).
In another case, Dr. Chen worked with a team of litigation attorneys, successfully reversing a summary judgment of infringement and eventually obtaining a jury verdict of non-infringement for the client in the District Court. After the case was remanded to the District Court, he filed reexamination request of the claims asserted by the patentee to the USPTO. The Board of Patent Appeals and Interferences (Board) in the USPTO invalidated the claims and the Federal Circuit affirmed the Board’s decision. (In re Swanson, 540 F.3d 1368; 2008 U.S. App. LEXIS 18928 (Fed. Cir. 2008)).
While earning his B.S., Dr. Chen was on the Dean’s List. After receiving his Ph.D., Dr. Chen conducted his post-doctoral fellowship at Yale University School of Medicine. He was also a Harlan Fiske Stone Scholar while in law school.
Patent Litigation Matters
Abbott Laboratories v. Syntron Bioresearch.
Successfully reversed a summary judgment of infringement of a biotechnology patent for a client and eventually obtained a jury verdict of non-infringement for Syntron Bioresearch in a patent suit brought by Abbott Laboratories alleging that Syntron’s test kits infringed two of Abbott’s lateral flow immunoassay patents. Before Morrison & Foerster was retained, the Court had granted summary judgment of infringement in favor of Abbott. We successfully persuaded the Court to reconsider its ruling and to allow Syntron to proceed to trial. After a three-week trial, the jury returned a verdict of non-infringement on both patents asserted by Abbott. On appeal, the Federal Circuit affirmed all issues, except the construction of a single claim term. Following appeal, the case was settled on the terms Syntron had originally proposed.
Abbott’s glucose sensor patents.
Abbott sued DexCom using seven patents in anticipation of FDA approval of DexCom’s short term embedded glucose sensor. Abbott threatened to seek preliminary injunction when DexCom was getting ready to launch its products. We used reexamination as part of the strategy to defeat the anticipated preliminary injunction motion from Abbott. We requested reexamination of all seven Abbott patents. The U.S. PTO granted reexamination of all seven Abbott patents. The Court stayed the litigation pending the resolution of the reexamination. As for Abbott, it backed down on seeking a preliminary injunction when DexCom launched its glucose sensor in 2006.
Zyon’s urine cup collection patents.
Zyon sued Acon for infringement of U.S. Patent Nos. 6,805,837 (‘837 patent) and 6,805,838 (‘838 patent). We requested reexamination of the ‘837 and ‘838 patents on a double patenting issue. The U.S. PTO invalidated Zyon’s patents based on the double patenting issue.
Inter Partes Review Experience
Ancestry.com LLC v. DNA Genotek Inc.
Represent DNA Genotek Inc.
Obalon Therapeutics, Inc. v. POLYZEN, INC.
Represent Obalon Therapeutics, Inc.
Representative Patent Re-Examination Matters
U.S. patent No. 5,418,141
The examiners rejected ‘141 patent, alleging obviousness over a number of prior art references. Successfully convinced the Examiners to withdraw all obviousness rejections.
U.S. patent No. 6,689,566 B1
Represented the patent owner in the reexamination of the ‘566 patent, and overcame numerous rejections raised by the examiners.
U.S. patent No. 5,073,484
Requested reexamination of certain claims of the ‘484 patent. The Board of Patent Appeals and Interferences (Board) in the USPTO invalidated the claims and the Federal Circuit affirmed the Board’s decision. In re Swanson, 540 F.3d 1368; 2008 U.S. App. LEXIS 18928 (Fed. Cir. 2008).
U.S. Patent Nos. 6,805,837 and 6,805,838
Requested reexamination of the ‘837 and ‘838 patents on a double patenting issue. The Board of Patent Appeals and Interferences (Board) in the USPTO invalidated the claims based on the double patenting issue.
U.S. patent No. 6,030,790
Requested reexamination of the ‘790 patent. The examiners canceled certain originally issued claims based on Federal Circuit’s decision, and maintained rejection of other claims pending in the reexamination. The Board of Patent Appeals and Interferences (Board) in the USPTO affirmed the examiners’ rejections in March, 2009.
U.S. patent No. 6,485,982
Requested reexamination of the ‘982 patent. The U.S. PTO ordered the reexamination and maintained final rejection based on a double patenting issue. This final rejection forced the patent owner to file a terminal disclaimer to overcome the final rejection, which leads to shortened patent term for the ‘982 patent.
Multiple glucose sensor patents
Requested reexamination of 7 glucose sensor patents involved in a litigation. The U.S. PTO granted reexamination of all 7 patents. The Court stayed the litigation pending the resolution of the reexamination.
US Patent No. 6,794,410
Represented the patent owner in the reexamination of the ‘410 patent, and overcame numerous rejections raised by the examiners.
US Patent No. 5,795,587
Represented the patent owner in the reexamination of the ‘587 patent, and overcame numerous rejections raised by the examiners.
Representative Patent Prosecution and Counseling Matters
Prepared, prosecuted and supervised the prosecution of over 800 U.S. and foreign patent applications in the fields of biotechnology, pharmaceuticals and diagnostics.
Successfully convinced the U.S. Patent Office to allow broad claims for an application that had been prosecuted for 10 years. (U.S. Patent No. 6, 627, 610 B1)
PAST AND UPCOMING SPEAKING ENGAGEMENTS
- April 9, 2017 Workshop: From Bench to Business, Patent Strategy for Life Science Startups, 1st SoCal Taiwanese Biotechnology Symposium, San Diego, CA
- November 16, 2016 Morrison & Foerster Symposium 2016: Recent Developments in Intellectual Property Law, Tokyo, Japan
- September 26, 2015 The Advanced Lateral Flow Course, DCN Diagnostics and QIAGEN, 10/12/2016, 11th SABPA Pacific Forum, San Diego, CA
- November 6, 2014 Doing Business in China: New Developments in Intellectual Property Law, 21st Century China Program, San Diego, CA
- September 15, 2014 Advanced Lateral Flow Course, San Diego, CA
View More Speaking Engagements
- November 5, 2013 Engagement with China: Issues for Small & Medium Enterprises, San Diego, CA
- October 5, 2013 Implications of Myriad on IP Protection for Personalized Medicine and Protecting IP in US and China, 9th Annual SABPA Pacific Forum, San Diego, CA
- April 23, 2013 “Spotlight on Chinese Life Sciences and Biotech, The International Market - What Chinese Companies Should Know Now, Focus on Intellectual Property issues and Outbound Investment,” Morrison & Foerster co-hosted conference, Beijing, China
- April 9, 2013 “International Conference on Investment, Merger & Acquisition and Intellectual Property Deployment & Transaction in Biotech/Pharma Industry,” Morrison & Foerster Conference, Taipei, Taiwan
- March 28, 2013 “Leveraging China to Build a Global Biotech Business,” ChinaBio® Executive San Francisco Workshop, San Diego, CA
- November 3, 2012 “America Invents Act – Challenges and Opportunities,” SABPA Medical Device and Diagnostics Forum II: Advances in Diagnostics for Improved Patient Care, La Jolla, CA
- October 4, 2012 “Roadmap to a Successful Legal Career,” San Diego Chinese Attorneys Association, the Pan Asian Lawyers of San Diego, and the Filipino American Lawyers of San Diego event, San Diego, CA
- May 24, 2011 “Understanding China’s Changing IP Landscape,” U.S. China-Pharma Conference, Philadelphia, PA
- March 19, 2011 “New Trends in Drug Development: Companion Diagnostics,” SABPA Science & Technology Forum, La Jolla, CA
- November 3, 2010 “Drugs - Novel vs Generics,” ChinaBio Suzhou Investor Forum, Suzhou, China
- October 5, 2010 “Patent Procurement and Litigation in China,” CALAsia, San Diego, CA
- January 13, 2010 “Leveraging China to Build a Global Biotech Business,” ChinaBio® Executive San Francisco Workshop, San Francisco, CA
- April 10, 2009 “Building a Global Biotech Business in China,” ChinaBio® Executive Workshop, Shanghai, China
- November 7, 2009 SABPA 5th Annual Pacific Forum, San Diego, CA
- September 2008: “Federal Circuit Gives Big Nod to the Patent Office,” Morrison & Foerster client alert
- March 2006: “Patent Law Strategies for Protecting Your Intellectual Property,” Trends in Bio