Alex K.Chung Ph.D.

Associate

(T) 1.202.879.3857

Alex Chung's practice involves a mix of patent prosecution, counseling, and litigation in the areas of biotechnology and pharmaceuticals. He has extensive experience in procuring, managing, evaluating, enforcing, and defending patents and in providing strategic IP counsel to clients. Alex's practice includes the preparation and prosecution of patent applications, providing patentability, infringement, validity, and freedom-to-operate opinions, and conducting due diligence analysis on IP portfolios.

Prior to joining Jones Day in 2017, Alex successfully represented clients in patent infringement and Hatch-Waxman actions involving biotechnology and pharmaceutical patents in district courts and the United States International Trade Commission (ITC). He also has in-depth experience with inter partes review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB). Alex has extensively represented U.S., European, Korean, and Japanese companies in the biotechnology and pharmaceutical industries.

Prior to attending law school, Alex worked as a postdoctoral fellow at the National Institutes of Health (NIH), where he investigated photoreceptor differentiation and designed switchable adeno-associated virus (AAV) gene therapy vectors for clinical trials. He is a co-inventor of a U.S. patent on RNA interference (RNAi) expression vector, which was commercially licensed to and is currently marketed by Thermo Fisher (f.k.a. Invitrogen).

Alex is a native speaker of Korean and regularly travels to Korea to visit clients.

Experience

Ajinomoto Co., Inc.



Certain L-Tryptophan, L-Tryptophan Products, and Their Methods of Production (Inv. No. 337-TA-1005).





AstraZeneca LP



AstraZeneca LP et al v. Sigmapharm Laboratories, LLC, et al. (1:15-cv-01000-RGA; D. Del).





GeneDx Inc. (BioReference Laboratories, Inc.)



Univ. of Utah Research Found. v. GeneDx, Inc. (2:13-cv-00954-RJS; D. Utah).




ToolGen seeks patent protection for CRISPR technology
Jones Day is prosecuting patent applications and developing a patent portfolio on behalf of ToolGen, Inc. for CRISPR technology.

Represents experience prior to joining Jones Day.

Additional Publications

  • March 2018Incorporation by Reference Users Beware, PTAB Litigation Blog


May 2016

PTO designates new precedential opinions on additional discovery, one-year time bar, substitute claims, and interpretation of § 312(a)(2), Finnegan AIA Blog

Patent Owner’s Particular Fax Qualified as Invalidating Offer for Sale of Drug Despite Omission of Safety and Liability Terms, Finnegan Federal Circuit IP Blog


March 2016

PTAB’s institution decision, even if based on a subset of grounds, is still unreviewable, Finnegan AIA Blog

District Court: IPR Estoppel Does Not Exclude Cumulative Prior Art Not Reasonably Available in a Prior IPR Proceeding, Finnegan AIA Blog


August 2015

Direct infringement expands: Limelight’s and customers’ split performance of method infringes Akamai’s patent, Finnegan Federal Circuit IP Blog


July 2015

Teva’s “molecular weight” patent claims found indefinite, Finnegan Federal Circuit IP Blog

A Federal Circuit split saves broadest reasonable interpretation standard at PTAB, Finnegan Federal Circuit IP Blog


June 2015

Sequenom’s fetal DNA Diagnostic method not patent eligible subject matter, Finnegan Federal Circuit IP Blog


March 2014

The Patent Landscape of siRNA Nanoparticle Delivery, Nanotechnology Law & Business. 11:15-28.

 

April 2009

MicroRNA-based RNA Polymerase II Expression Vector for RNA Interference in Mammalian Cells, In Regulation of Gene Expression by Small RNAs. Eds. Gaur, R.K., Rossi, J.J. CRC Press, 301-315.


December 2008

Scaffold Protein POSH Regulates Axon Outgrowth, Molecular Biology of the Cell, 19:5181-5192.


August 2008

MiR-124a Regulates Neurite Outgrowth during Neuronal Differentiation, Experimental Cell Research, 314:2618-2633.


September 2006

Detection of mammalian microRNA expression by in situ hybridization with RNA oligonucleotides, Developmental Dynamics, 235: 2538-48.


April 2006

Polycistronic RNA Polymerase II Expression Vectors for RNA Interference Based on BIC/miR-155, Nucleic Acids Research, 34:e53.

Speaking Engagements

  • September 15, 2017Drafting U.S. Provisional and Non-ProvisionalApplications; U.S. Patent Litigation, Discovery, Privilege Protection and Inter Partes Review
  • September 14, 2017Drafting U.S. Provisional and Non-Provisional Applications; U.S. Patent Litigation, Discovery, Privilege Protection and Inter Partes Review
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