Roger J. Chin

Dr. Chin’s representative matters include:

• Represented a molecular diagnostics company in patent infringement and inventorship litigation involving DNA microarray technology. Successfully argued claim construction, which resulted in summary judgment of noninfringement that was affirmed on appeal
• Represented a manufacturer of laser surgery equipment in patent infringement and inventorship disputes spanning over a decade. Successfully argued a precedential appeal that established laches as a defense to correction of inventorship
• Represented pharmaceutical companies in a number of patent cases involving multi-billion dollar products, including patent infringement disputes on marketed pharmaceutical products and litigation under the Hatch-Waxman Act
• Represented a biotechnology company in multiple patent disputes involving DNA sequencing technology
• Represented a manufacturer of tissue-based diagnostic instruments in patent litigation across multiple federal district courts and two international arbitration tribunals
• Represented various clients in international patent litigation, including coordination of patent disputes in the UK High Court of Justice, the German Federal Patent Court, and the European Patent Office

Select Cases

• MorphoSys AG v. Janssen Biotech, Inc., 358 F. Supp. 3d 354 (D. Del. 2019) (summary judgment of invalidity and noninfringement)
• Straumann USA, LLC v. TruAbutment Inc., 2019 WL 6887172 (C.D. Cal. Oct. 1, 2019) (denying preliminary injunction)
• Novartis Pharmaceuticals Corp. v. Par Pharmaceutical Inc., 2014 WL 4364674 (D. Del. Aug. 29, 2014), aff’d, 611 Fed. Appx. 988 (Fed. Cir. 2015) (trial judgment of noninfringement, affirmed on appeal)
• Illumina, Inc. v. Affymetrix, Inc., 2010 WL 11530528 (W.D. Wis. Dec. 14, 2010, aff’d, 427 Fed. Appx. 898 (Fed. Cir. 2011) (summary judgment of noninfringement, affirmed on appeal)
• Serdarevic v. Advanced Medical Optics, Inc., 2007 WL 2774177 (S.D.N.Y. Sept. 25, 2007), aff’d, 532 F.3d 1352 (Fed. Cir. 2008) (summary judgment of laches, affirmed on appeal)
• CytoLogix Corp. v. Ventana Medical Systems, Inc., 2007 WL 3037404 (D. Mass. Oct. 17, 2007) (dismissing infringement claim for lack of standing)
• STMicroelectronics, Inc. v. SanDisk Corp., 2007 WL 951655 (E.D. Tex. Mar. 26, 2007) (summary judgment of license)
• Digene Corp. v. Ventana Medical Systems, Inc., 511 F. Supp. 2d 418 (D. Del. 2007) (claim construction)
• Digene Corp. v. Ventana Medical Systems, Inc., 484 F. Supp. 2d 274 (D. Del. 2007) (denying preliminary injunction)
• Digene Corp. v. Ventana Medical Systems, Inc., 476 F. Supp. 2d 444 (D. Del. 2007) (dismissing civil conspiracy claim)
• Ventana Medical Systems, Inc. v. BioGenex Laboratories, Inc., 473 F.3d 1173 (Fed. Cir. 2006) (claim construction)
• BioGenex Laboratories, Inc. v. Ventana Medical Systems, Inc., 2005 WL 1869342 (N.D. Cal. Aug. 5, 2005) (dismissing infringement claim due to claim splitting)
• BioGenex Laboratories, Inc. v. Ventana Medical Systems, Inc., 2005 WL 7139102 (Feb. 24, 2005) (summary judgment of noninfringement and invalidity)
• Digene Corp. v. Ventana Medical Systems, Inc., 316 F. Supp. 2d 174 (D. Del. 2004) (compelling arbitration)
• Resonate Inc. v. Alteon WebSystems, Inc., 338 F.3d 1360 (Fed. Cir. 2003) (claim construction)
• Pioneer Magnetics, Inc. v. Micro Linear Corp., 330 F.3d 1352 (Fed. Cir. 2003) (affirming judgment of noninfringement) In re VISX, Inc., No. 9286, 1999 WL 33577396 (F.T.C. May 27, 1999) (trial judgment of no inequitable conduct)