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.
Dr. Chen was selected by his peers for inclusion in the 2009–2016 editions of Best Lawyers in America in the specialties of Biotechnology Law and Intellectual Property Law. He was listed as a regional expert in China intellectual property by Chambers Global 2011–2015. He was also ranked in the 2008 and 2009 editions of Legal 500 United States® as a leading lawyer in patent licensing.
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