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Peng Chen

Chen, Peng

Partner

San Diego, (858) 720-5117

Education

Beijing Normal University (B.S., 1986)
Johns Hopkins University (Ph.D., 1993)
Columbia Law School (J.D., 1997)

Bar Admissions

New York
California
U.S. Patent & Trademark Office

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 is also experienced in the areas of patent litigation, reexamination, interference, opposition, and licensing.

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.

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 USPTO 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 USPTO invalidated Zyon’s patents based on the double patenting issue.
Ancestry.com LLC v. DNA Genotek Inc.
Represent DNA Genotek Inc.
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 the 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 USPTO 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 seven glucose sensor patents involved in a litigation. The USPTO granted reexamination of all seven 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.