Dr. Chen is a partner in the Business Department’s Patent Group of Morrison & Foerster’s San Diego office. His practice focuses on patent prosecution, counseling and litigation, encompassing all fields of the biotechnology, pharmaceutical and diagnostic industries.

Dr. Chen has a significant amount of experience in preparing and prosecuting biotechnology and pharmaceutical patents. In one case, Dr. Chen successfully convinced the U.S. Patent Office to allow broad claims for an application that had been prosecuted for 10 years. In numerous instances, Dr. Chen has been managing entire patent portfolios for biotechnology clients, advising the clients on maximizing their own patent positions and designing patent strategy in dealing with other entities’ patents.

Dr. Chen has also actively been involved in litigating biotechnology patents. In one case, Dr. Chen, working closely with other team members, successfully reversed a summary judgment of infringement for a client and eventually obtained a jury verdict of non-infringement for the client. In another case, Dr. Chen advised a client in designing around a third party’s patents. When the third party brought a patent infringement action against the client, Dr. Chen designed non-infringement, invalidity, and unenforceability defenses that resulted in the third party’s voluntary withdraw of the action.

Dr. Chen was selected by his peers for inclusion in the 2009 edition of The Best Lawyers in America in the specialties of Biotechnology Law and Intellectual Property Law. He was also ranked in the 2008 edition of Legal 500 United States® as a leading lawyer in patent licensing.

Prior to joining the firm, Dr. Chen practiced patent law at a national intellectual property boutique firm and a major California general practice firm. In 1997, he received his J.D. from Columbia University School of Law where he was a Harlan Fiske Stone Scholar (1995-1996). Dr. Chen received his undergraduate degree in Biochemistry from the Beijing Normal University in 1986 and his Ph.D. from Johns Hopkins University School of Medicine in 1993.

Dr. Chen is a member of the California and New York bars and is registered to practice before the U.S. Patent and Trademark Office. Dr. Chen is admitted in the U.S. District Court for the District of Southern California, U.S. District Court for the District of Northern California, U.S. District Court for the District of Massachusetts, and Court of Appeals for Federal Circuit.

Representative Patent Litigation Matters

• Abbott Laboratories v. Syntron Bioresearch
  Successful representation of Syntron Bioresearch in a patent suit brought by Abbott Laboratories alleging that Syntron’s test kits infringe Abbott’s lateral flow immunoassay patents. Morrison & Foerster took over the defense of Syntron Bioresearch after summary judgment of infringement was entered against Syntron. We won a motion for reconsideration vacating the infringement ruling. One year later, 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 for the construction of a single claim term. Following appeal, the case was settled on the terms Syntron had originally proposed. We also requested reexamination of the U.S. patent No. 5,073,484, the only relevant patent after the Fed. Cir.’s decision, to the U.S. Patent and Trademark Office (U.S. PTO). The reexamination is currently pending before the Board of Patent Appeals and Interferences within the U.S. PTO.
• Inverness Medical Switzerland and Unipath Diagnostics v. Acon Laboratories
  Represented Acon in two patent suits brought by Inverness alleging that Acon’s test kits infringe a total of nine patents. Inverness won a preliminary injunction prohibiting Pfizer from selling its e.p.t product (the market leader). Inverness filed a similar motion against Acon, asserting the same patent it had used against Pfizer, but Inverness was unsuccessful in its two year effort to obtain a preliminary injunction against Acon. The case was recently settled on terms favorable to Acon Laboratories.
• General Atomics (Diazyme division) v. Axis-Shield
  Represents the Diazyme division of General Atomics in a declaratory relief patent case against Axis-Shield. The patents in the case involve homocysteine assay technology. Axis-Shield had threatened to sue Diazyme, claiming that Diazyme’s new homocysteine assay technology is covered by Axis-Shield’s homocysteine’s assay patents covering older technology. To clear the negative market effect of this accusation of infringement, Diazyme brought a declaratory relief action in the United States District Court for the Northern District of California. Diazyme has won a partial summary judgment and has a final summary judgment motion pending before the Court.

Representative Patent Reexamination and Opposition Matters

• Abbott’s ‘484 lateral flow patent
  After Fed. Cir.’s reversal of the non-infringement verdict on the ‘484 patent, we requested reexamination of the relevant claims of the ‘484 patent. The U.S. PTO maintained final rejection of certain claims and the proceeding is currently pending before the Board of Patent Appeals and Interferences within the U.S. PTO.
• Nichols’ U.S., EP and JP patents on PTH test
  During the Nichols’ v. Scantibodies litigation, we identified a prior art reference, the inventors’ own publication before their patent filing date. We initiated reexamination, opposition and invalidation proceedings in the U.S., Europe and Japan patent offices based on the prior art. After Fed. Cir.’ decision invalidating Nichols’ ‘790 patent, the U.S. PTO cancelled all originally issued claims of the ‘790 patent. Both European and Japanese patent offices invalidated Nichols’ patents in Europe and Japan, respectively.
• Inverness’ lateral flow patents in Europe
  Working closely with our EP associates, we successfully opposed Inverness’ lateral flow patent, EP 0 560 411 B1 in EPO based on the lack of sufficient disclosure ground. The Board of Appeals within EPO later reversed the Opposition Division (OD)’s decision and remanded the opposition to the OD for considering other prior art based grounds. Working closely with our EP associates, we also successfully invalidated the German portion of another Inverness’ lateral flow patent, EP 0 291 194 B2 in a nullity action in German Federal Patent Court.
• Church and Dwight’s ‘982 lateral flow patent
  During the Inverness v. Acon litigation, we requested reexamination of U.S. patent No. 6,485,982 (‘982 patent), the patent having the longest term in Inverness’s lateral flow patent portfolio. The U.S. PTO ordered the reexamination and maintained final rejection based on a double patenting issue. This final rejection forced Church and Dwight to file a terminal disclaimer to overcome the final rejection, which leads to shortened patent term for the ‘982 patent.
• 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 ordered the reexamination and maintained final rejection based on the double patenting issue.
• Abbott’s glucose sensor patents
  Abbott sued DexCom using 7 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 7 Abbott patents. The U.S. PTO granted reexamination of all 7 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.
• Scantibodies’ U.S. patent on PTH test
  We prosecuted and obtained a patent for Scantibodies in the U.S. on PTH test, U.S. patent No. 6,689,566 B1 (‘566 patent). Scantibodies sued Immutopics using the ‘566 patent. Immutopics submitted new prior art in the litigation. We filed reexamination based on the newly discovered art and the Court stayed the litigation. In January, 2007, the U.S. PTO issued a Notice of Intent to Issue Reexamination Certificate (NIRC) confirming patentability for all the originally issued method claims and the amended product claims.
• CTI’s U.S. patent on homocysteine test
  Competitive Technology, Inc. (CTI) owns a dominant patent, U.S. patent No. 4,940,658 (‘658 patent), in the homocysteine test field. CTI sued Lab Corp. and scored a major victory when the Supreme Court decided not to look at the “natural phenomenon” issue on the ‘658 patent this year. After the Supreme Court’s ruling, CTI asserted the ‘658 patent against Diazyme/General Atomics. We filed a reexamination request and the U.S. PTO recently granted our reexamination request.
• Axis-Shield’s EP patent on homocysteine test
  Working closely with our EP associates, we successfully opposed Axis-Shield’s homocysteine test patent, EP 0 726 322 B1 in EPO, which greatly narrowed Axis-Shield’s patents in Europe and the remaining claims are no longer relevant to Diazyme’s tests.

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)