Recent weeks have seen US-Israeli tech-driven law firm Rimon Law hire pharma and biotech patent specialist Peng Chen from Morrison & Foerster in San Diego, while litigation firm Robins Kaplan has recruited Kasowitz Benson Torres partner Steven Carlson in Silicon Valley.
⇒ Chen arrived at Rimon on 8 March after 18 years a MoFo, where he made partner in 2005. Earlier in his career he was an associate at New York IP boutique Pennie & Edmonds and California-headquartered multinational firm Heller Ehrman, which folded in 2008.
Chen advises pharmaceutical, biotechnology and diagnostics companies on patent prosecution, counselling and litigation.
He was a member of the MoFo team that successfully represented Diazyme Laboratories, a division of US nuclear defence contractor General Atomics, in a dispute with Norwegian diagnostics company Axis-Shield in the California Northern District Court and later before the US Federal Circuit Court of Appeals.
He also acted for Syntron Bioresearch in a patent suit brought by Abbott Laboratories alleging that Syntron’s test kits infringed two of Abbott’s patents. While Abbott had already been awarded summary judgment in the case, Chen and his team successfully pressed for a jury trial of the issue, which ended in a verdict of non-infringement that was later upheld on appeal.
In another case against Abbott, Chen acted for device manufacturer DexCom in its fight against a preliminary injunction barring the launch of its glucose sensors. Chen was part of a team that clinched a re-examination of Abbott’s patents by the US Patent and Trademark Office. Abbott abandoned its case in 2006.
Speaking to PLN, Chen says he was attracted to Rimon Law’s innovative structure, which utilises cloud computing to allow its lawyers and support staff to work remotely. “Rimon offers an optimal structure for providing top quality client service in a cost-effective manner,” he said in a statement. “I am also very impressed by Rimon’s expertise in many crucial practice areas, such as corporate and licensing, and Rimon’s international reach including the rapidly growing China practice.”
“Peng is at the very cutting edge of the biotech industry and his expertise will strengthen our biotech team,” added Rimon CEO Michael Moradzadeh.
MoFo did not respond to PLN’s request for comment.
⇒ Kasowitz Benson Torres partner Steven Carlson joined Robins Kaplan’s intellectual property and technology litigation group in Silicon Valley on March 15.
Carlson began his career as a clerk for Judge Roderick McKelvie in the Delaware District Court and Judge Paul Michel at the Federal Circuit, and spent time at Weil Gotshal & Manges and Fish & Richardson before joining Kasowitz Benson in 2013.
He focuses on IP litigation and has experience in pharmaceutical and medical device cases as well as disputes in the chemicals, robotics and telecoms sectors.
As lead counsel, Carlson has invalidated patents at the Patent Trial and Appeal Board, and has acted in cross-border enforcement actions, including a worldwide licensing campaign concerning biotech diagnostics.
He has represented medical device company ZOLL Medical in the assertion of its patents on hypothermia-inducing catheters in a case that required cross-border coordination with proceedings in Germany. He also acted for Applied Biosystems in US and German proceedings related to its DNA analysis instruments, which resulted in the company obtaining a worldwide licence.
“Steve has built an impressive practice… that dovetails well with the portfolio of our clients’ technologies, and further enhances our capabilities in California,” Michael Geibelson, managing partner of Robins Kaplan’s California offices, said in a statement.
“I’ve long recognised Robins Kaplan as a powerhouse in patent litigation, and I’m thrilled to be joining such a talented group of trial lawyers,” Carlson said, “Robins Kaplan is one of the great trial firms in the country, with a truly polished and collegial group of individuals.”
Kasowitz Benson Torres did not respond to PLN’s request for comment.