Ching-Lee Fukuda

Lead counsel for Nevro in securing wins on all counts brought by Nevro and by Mayo in arbitration, relating to patent and licensing issues in the neuromodulation field. Successfully obtained an injunction in the Northern District of California against Mayo’s continued breach of contract. A two-day arbitration hearing was held in Minneapolis, during which 19 fact and expert witnesses were examined by both sides. The arbitrator found in favor of Nevro on all counts, denied all of Mayo’s counts in their entirety (including Mayo’s royalty demand for many millions of dollars), and ordered Mayo to return control of patent prosecution to Nevro, pay Nevro’s past prosecution costs, and pay Nevro’s fees for the California action.

Led a damages trial team that successfully obtained a jury award of US$155 million for Bayer that ranks among the 10 largest patent verdicts in the District of Delaware for the past decade, which was recently affirmed by the Federal Circuit. After a six-day jury trial involving 18 witnesses, the jury found in favor of Bayer across the board. Also obtained supplemental damages and interest, bringing the total past damages award to US$182 million. Technology involves recombinant factor VIII for treating hemophilia.

Led an appellate team that successfully obtained a significant § 101 patent eligibility win for CardioNet at the Federal Circuit. In a precedential opinion, the Federal Circuit reversed the District of Massachusetts and upheld the eligibility of CardioNet’s remote cardiac monitoring software patent.

Co-led an ITC team that successfully defended Apple at the ITC against three patents involving audio processing and noise suppression technology. After a one-week bench trial, obtained initial determination finding of no infringement, no technical domestic industry, and no standing. Commission affirmed finding of no violation based on no technical domestic industry.

Successfully defended Illumina in a District of New Jersey case involving correction of inventorship and conspiracy claims relating to DNA sequencing technology. After considering Illumina’s motion to dismiss and motion for sanctions, Court dismissed the plaintiff’s claims in their entirety, putting to an end over a decade of serial litigation by the plaintiff.

Successfully defended Nevro in three cases in the District of Delaware relating to spinal cord stimulation and implantable medical device technology. After Boston Scientific asserted 20 patents and over 60 trade secrets, turned the tables when the six-year litigation resolved with plaintiff Boston Scientific paying Nevro US$85 million. Defeated Boston Scientific’s § 101 challenge to Nevro’s core paresthesia-free patents. Lead counsel for Nevro in a series of IPR proceedings and appeals that successfully invalidated claims of 11 Boston Scientific patents.

Lead counsel for Cranial Technologies in a five-patent case in the Central District of California relating to technology for manufacturing cranial orthotics to correct infant head deformities.  Successfully upheld the eligibility of the asserted software patents during a § 101 challenge during a motion to dismiss and again at summary judgment.

Led a team for Pine River Capital Management in asserting trade secret claims under DTSA and other IP claims in SDNY for Two Harbors’ improper taking of all software and other IP owned by Pine River relating to the management of mortgage REITs. Defeated Two Harbors’ motion to dismiss and summary judgment motions.  Two Harbors paid $375 million to PRCM in settlement.

Lead counsel for Auris Health, a subsidiary of J&J, in a series of IPR proceedings challenging the validity of multiple Intuitive Surgical patents asserted in the District of Delaware. The PTAB invalidated all claims of a key asserted Intuitive Surgical patent relating to surgical robotics technology but upheld the claims of two other patents. Then led an appellate team that argued all three appeals on the same day, and successfully obtained an affirmance of Auris’ PTAB win below, at the same time successfully vacated and remanded most claims of the other two patents upheld by the PTAB.

Successfully invalidated on behalf of Microsoft and HP, three of four remote storage patents asserted by SynKloud in the District of Delaware, under § 101 on motions to dismiss. The case settled shortly thereafter.