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).
Represents experience prior to joining Jones Day.
Additional Publications
- March 2018
Incorporation by Reference Users Beware, PTAB Litigation Blog
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.
- The George Washington University (J.D. 2012); National Institute of Health (Postdoctoral Research Fellow, 2007-2010); University of Michigan Medical School, Ann Arbor (Ph.D. in Neuroscience 2007); Seoul National University (M.S. in Immunology/Genetic Engineering 1999; B.S. in Microbiology 1996)
- District of Columbia, New York, and registered to practice before the U.S. Patent and Trademark Office
- Judicial intern to Judge Jimmie V. Reyna, U.S. Court of Appeals, Federal Circuit (2012)
- Korean