Overview

Byron Chin is an intellectual property litigator. Mr. Chin has experience with patent litigation, inter partes review proceedings, complex business litigation, patent opinions, and trademark litigation. He has expertise in medical devices, biologics, pharmaceuticals (Hatch-Waxman Act/ANDA), consumer products, licensing disputes, and privacy issues. Mr. Chin also litigates before administrative entities in pro bono work relating to affirmative and defensive asylum cases, and veterans’ benefits.

Mr. Chin was a member of the team that obtained a summary judgment victory for Kilpatrick Townsend client Seattle Genetics, Inc. The underlying case involved a technology licensing and breach-of-contract dispute involving a life-saving cancer therapy. After years of litigation and arbitration in district courts, state courts, and the American Arbitration Association in Arizona and Washington, Kilpatrick Townsend obtained a definitive victory on summary judgment for Seattle Genetics against Arizona State University in the District of Arizona. The Court held on August 4, 2015, that ASU’s patent infringement claims were barred by the written terms of a contract amendment it had executed with Seattle Genetics over ten years ago.

Prior to joining Kilpatrick Townsend, Mr. Chin was a summer associate at a New York-based law firm. There, he focused on patent litigation, patent prosecution, and trademark law. In law school, Mr. Chin was also a Senior Articles Editor of the U.C. Davis Law Review.

Mr. Chin was recognized from 2013 to 2017 as a Northern California “Rising Star” for Intellectual Property Litigation by Super Lawyers magazine. Mr. Chin actively participates in the local legal community and mentors law students through the San Francisco Intellectual Law Property Association.

Mr. Chin speaks conversational Mandarin and Cantonese.

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Experience

Defended Edwards Lifesciences in a four patent case Medtronics brought involving Edwards’ flagship prosthetic surgical heart valves. Furthermore, Kilpatrick Townsend led the countersuit asserting Edwards patents infringed by Medtronics’ valve reconstruction products. The team successfully challenged the validity of three of the four Medtronic patents-in-suit and two other threatened patents in proceedings before the U.S. Patent and Trademark office, winning cancellations of virtually all pertinent claims. The case settled as part of a global settlement of multiple cases with an exchange of cross-licenses and license payments by Medtronic of over $1 billion. Medtronic, Inc. et al. v. Edwards Lifesciences Corp, et al., No. 11-cv-01650 (D. Minn. filed June 24, 2011).

Represented appellee Watson Pharmaceuticals, Inc. in successful defense of district court’s order dismissing Bayer’s claims of patent infringement. The Federal Circuit agreed with Watson that for a generic drug maker to infringe a method-of-use patent, the proposed label must indicate that the drug is approved (i.e., safe and effective) for the claimed method. Bayer Schering Pharma AG v. Lupin, Ltd., et al., 2012 U.S. App. LEXIS 7570, Fed. Cir. Appeal No. 2011-1143 (April 16, 2012).

Summary Judgment Victory for Seattle Genetics in a technology licensing and breach of contract dispute involving a life-saving cancer therapy. After years of litigation and arbitration in district courts, state courts and the American Arbitration Association in Arizona and Washington, Kilpatrick Townsend obtained a definitive victory on summary judgment for Seattle Genetics against Arizona State University in the District of Arizona. The Court held on August 4, 2015, that ASU’s patent infringement claims were barred by the written terms of a contract amendment it had executed with SeaGen over ten years ago. Arizona State University v. Seattle Genetics (D. Ariz.)

Represent Actuate Corporation, a manufacturer of business intelligence software, in breach of contract and copyright infringement litigation against Aon Corporation and TWG, Inc. Aon licensed a certain quantity of software from Actuate. Aon then spun off one of its divisions into a new company, TWG. Now both Aon and TWG are using Actuate’s software which Actuate contends violates both the terms of its license contract with Aon and violates Actuate’s copyrights in its software. Matter settled. Actuate Corp. v. Aon Corp., et al., No. 10-5750 (N.D. Cal. filed Dec. 16, 2010).

Obtained summary judgment and a permanent injunction against a computer company utilizing Apple’s copyrighted operating system software on non-Apple hardware based upon copyright infringement and violation of the Digital Millennium Copyright Act. The ruling resulted in a published opinion which affirmed liability for distributing copies of operating software and circumvention technology. The Ninth Circuit affirmed the permanent injunction and inapplicability of copyright misuse. Apple Computer Inc. v. Psystar Corporation, 673 F.Supp.2d 943 (N.D. Cal. 2009), 673 F.Supp.2d 931 (N.D. Cal. 2009), 586 F.Supp. 2d 1190 (N.D. Cal. 2008), aff’d in relevant part, 658 F.3d 1150 (9th Cir. 2011) (affirmed on infringement, remand regarding sealing of certain information), cert. denied 132 S. Ct. 2374 (May 14, 2012).

Lead counsel for respondents Sennheiser electronics & Co. GmbH and Sennheiser USA in patent investigation involving Bluetooth headphones. Settled favorably before significant discovery or litigation activity.

In re Certain Wireless Headsets, ITC Investigation No. 337-TA-943.

Represented Watson in pending ANDA litigation of generic version of SEASONIQUE®. Duramed Pharmaceuticals, Inc. v. Watson Laboratories, Inc., et al., No. 3:08-cv-116 (D. Nev. filed Mar. 6, 2008).

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Education

University of California, Davis School of Law, J.D. (2008) UC Davis Law Review, Senior Articles Editor; UC Davis Business Law Journal, Executive Editor

Georgetown University, M.S., Physiology and Biophysics (2004)

Williams College, B.A., Biology and Psychology (2003)

Admissions

California (2008)

Professional & Community Activities

American Intellectual Property Law Association, Member

American Psychology and Law Society, Member

San Francisco Intellectual Property Law Association, Member

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