Roger J. Chin

Roger has represented:

• Janssen Biotech, a subsidiary of Johnson & Johnson, and Genmab in a high-stakes patent infringement case involving Darzalex®, their breakthrough treatment for multiple myeloma. Successfully argued summary judgment of noninfringement, obtaining a ruling that Darzalex® did not infringe its opponent’s “human” antibody claims
• Affymetrix, a provider of molecular diagnostic products, in patent infringement and inventorship cases against Illumina related to DNA microarrays. Successfully argued claim construction, resulting in summary judgment of noninfringement that was affirmed on appeal
• Johnson & Johnson Surgical Vision in a dispute involving its pioneering “Palanker” patents covering laser cataract surgery, held by its subsidiary AMO Development. Successfully argued twelve related inter partes review challenges, obtaining determinations upholding 220 out of 235 claims.
• Ion Torrent Systems, Life Technologies, and Thermo Fisher Scientific in several patent infringement cases related to next generation DNA sequencing technology and real-time PCR assays
• AbbVie, a research-based biopharmaceutical company, in patent litigation involving its discovery of direct-acting antiviral therapies for the treatment of hepatitis C virus infection
• Advanced Medical Optics and VISX, providers of refractive and cataract laser surgery equipment, in a number of patent litigation matters. Successfully argued a precedential appeal that established laches as a defense to correction of inventorship.  
• Thoratec, a subsidiary of Abbott Laboratories, in international patent litigation related to catheter-based heart pumps, including coordination of patent disputes before the UK High Court of Justice, the German Federal Patent Court, the Düsseldorf District Court, the US District Court for the Northern District of California, and the Technical Board of Appeal of the European Patent Office

Select Cases

• Alcon Inc. v. AMO Development, LLC, 2022 WL 15527597 (Pat. Tr. App. Bd. Oct. 26, 2022) (upholding patentability of claims)
• 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)
• Regents of the University of California v. Affymetrix, 2017 WL 5614904 (S.D. Cal. Nov. 20, 2017) (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)