Cathy Chin Eng has significant experience working with clients to develop and strengthen patent portfolios and resolve disputes regarding patents and related matters. She has successfully prosecuted numerous patent applications in the fields of pharmaceuticals, dietary supplements, medical devices, and chemistry. She also has experience with inter partes review proceedings before the Patent Trial and Appeals Board. In addition, Cathy has extensive experience providing advice to clients regarding third-party patent portfolios and freedom to operate analyses relating to them.
Furthermore, Cathy has litigated patent cases, as well as contract, trade secret, and trade dress matters, representing both plaintiffs and defendants. These cases have involved pharmaceuticals, medical devices, rare earth magnets, diagnostic test kits, dietary supplement products, bicycle locks, golf shoes, and ring laser gyroscopes. These have been before several federal courts, including the district courts for California, Delaware, and Massachusetts, and the U.S. Court of Appeals for the Federal Circuit as well as the U.S. International Trade Commission. She also has experience with arbitration proceedings.
Cathy is a member of the New York Intellectual Property Law Association and the American Bar Association.
AbbVie successfully defends HUMIRA formulation patent against four IPR petitions filed by Coherus
Jones Day is serving as lead counsel and successfully defended AbbVie in connection with four (4) separate inter partes review (IPR) petitions brought by Coherus Biosciences, Inc. against U.S. Patent No. 9,085,619, which is related to formulations for AbbVie's antibody adalimumab, marketed as HUMIRA®.
Molycorp forms joint venture with Mitsubishi and Daido Steel to manufacture rare earth magnets
Jones Day advised Molycorp Minerals LLC with its entry into a Japanese joint venture with Mitsubishi Corporation and Daido Steel.
Cougar Biotechnology builds global patent portfolio for prostate cancer treatment
On behalf of Cougar Biotechnology, Inc. Jones Day assisted with the development of its global patent portfolio related to the use of 17 alpha-hydroxylase/C17,20-lyase inhibitors to treat cancer.
Cougar Biotech gets purchased by J & J, including global patent portfolio for prostate cancer treatment
Jones Day assisted Cougar Biotechnology in the management and prosecution of a worldwide patent portfolio for the phase III clinical candidate, abiraterone acetate, which is being developed for use in the treatment of prostate cancer and which resulted in the sale of Cougar to Johnson & Johnson for $970 million.
Musculoskeletal Transplant Foundation establishes global patent portfolio for bone implants
Jones Day assisted Musculoskeletal Transplant Foundation ("MTF") in the development of its global patent portfolio relating to bone implants.
Boston Scientific pursues claim against Medtronic involving inventorship dispute
Jones Day represented Boston Scientific Corporation in an inventorship dispute arising out of a USPTO patent interference.
Osteologix develops global patent portfolio for technology used in treating bone diseases
Jones Day represented Osteologix, Inc. in the establishment of its global patent portfolio relating to the use of its clinical candidate strontium malonate, to treat bone diseases.
Enzymatic Therapy pursues patent litigation relating to glucosamine sulfate compositions
Jones Day represented Enzymatic Therapy in a patent litigation involving glucosamine sulfate compositions.
Indena S.p.A. builds patent portfolio for plant extract technology
Jones Day represented Indena S.p.A. in the development of its patent portfolio concerning plant extracts.
Magnequench develops global patent portfolio for technology relating to rare-earth magnets
Jones Day assisted Magnequench with the development and defense of its global patent portfolio related to rare-earth magnets commonly used in electronic devices.
Trial Practice Guide Updates – Multiple Petitions, Claim Construction, and PO Testimonial Evidence, PTAB Litigation Blog
- New York University (J.D. cum laude 1994); The Cooper Union for the Advancement of Science and Art (B.S. in Chemical Engineering summa cum laude 1989)
- New York and registered to practice before the United States Patent and Trademark Office