Jennifer J.Chheda Ph.D.

Partner

New York + 1.212.326.3886

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Dr. Jennifer Chheda has over 20 years of experience developing, implementing, and managing worldwide patent portfolios covering commercial biologics and pharmaceuticals as well as products in development, including clinical candidates. She has developed patent strategies for marketed products, such as Synagis®, Auryxia®, Talymed®, and Translarna™, and products in development, including, for example, Crenezumab. Jennifer has worked with pioneers developing vaccines, such as a universal influenza virus vaccine, and virus-based cancer vaccines. Furthermore, she has evaluated patent portfolios and prosecuted patent applications relating to enzyme replacement therapy, RNA therapeutics, gene therapy, antibodies, antibody drug conjugates, and cell-based therapies (for example, CAR-T cells).

Jennifer's experience also includes patentability, invalidity, noninfringement, freedom-to-operate, and inventorship analyses and conducting due diligence for potential investors, acquirers, and licensees, such as venture capital firms, biotechnology companies, and pharmaceutical companies.

Jennifer has provided strategic advice to clients regarding Patent Trial and Appeal Board (PTAB) proceedings, such as inter partes review, interferences, and reexaminations, and other post-grant proceedings, such as oppositions and invalidity actions. In addition, she has patent litigation experience that includes coordinating worldwide litigations, drafting expert reports, and preparing experts for trial. Jennifer has worked on trade secret and patent cases.

Jennifer also has experience drafting and negotiating intellectual property agreements, including license, sponsored research, and development agreements. She has provided IP advice in the context of M&A transactions and has advised clients such as AbbVie, REGENXBIO, and Celgene in IP-related transactions.

Experience

  • Merck resolves trade secret dispute involving vaccineJones Day represented Merck Sharp & Dohme Corp. as plaintiff in a trade secret lawsuit filed in the Eastern District of Pennsylvania against Pfizer Inc. and a former Merck employee.
  • Merck unit resolves DJ action involving pneumococcal vaccine patentsJones Day represented Merck Sharp & Dohme Corp. in an action in Delaware district court against Pfizer (through its subsidiaries including Wyeth, LLC) involving several patents on Wyeth’s vaccine technology.
  • AbbVie acquires Mitokinin, Inc.Jones Day advised AbbVie Inc. in its exclusive right to acquire Mitokinin, Inc., a biotechnology company developing PINK1-targeted therapeutics for the treatment of neurodegenerative diseases, following completion of IND enabling studies on Mitokinin's lead PINK1 compound.
  • Shiseido acquires Olivo LaboratoriesJones Day advised Shiseido Americas Corporation, a subsidiary of Shiseido Co., Ltd., a leading global cosmetics company, in connection with the acquisition of substantially all of the assets of Olivo Laboratories, LLC, a startup advancing the dermatological field through proprietary biomaterials technology.
  • Celgene acquires Triphase Accelerator's first compound, MarizomibJones Day advised Celgene Corporation in the acquisition, through an affiliate, of Triphase Accelerator Corporation's assets related to its proteasome inhibitor, marizomib (MRZ), which is in development for glioblastoma and relapsed and/or refractory multiple myeloma.
  • REGENXBIO and Biogen enter exclusive license agreement for development of gene therapy treatments for rare genetic vision disordersJones Day advised REGENXBIO Inc. (Nasdaq:RGNX), a leading biotechnology company focused on the development, commercialization and licensing of recombinant adeno-associated virus (AAV) gene therapy based on its proprietary NAV® Technology Platform, in connection with an exclusive worldwide license agreement with Biogen for the development of gene therapy product candidates based on the NAV® Technology Platform for the treatment of two rare genetic vision disorders.
  • Merial successfully defends patent-ineligibility ruling before Federal CircuitJones Day, on behalf of Merial L.L.C., successfully obtained a precedential opinion from an unanimous panel of the U.S. Court of Appeals for the Federal Circuit on April 8, 2016, affirming a district court judgment that a patent asserted against Merial, as well as numerous other biotechnology and pharmaceuticals companies, is invalid under 35 U.S.C. § 101.
  • Idenix challenges Gilead's patent rights to Sovaldi® (sofosbuvir)Jones Day represents Idenix Pharmaceuticals LLC (a subsidiary of Merck & Co., Inc.) in patent interference against Gilead.
  • St. Jude and Juno secure $12.25 million settlement resolving patent dispute with Novartis Pharmaceuticals and University of PennsylvaniaJones Day represented St. Jude Children's Research Hospital ("St. Jude") in enforcing breach of contract claims and defending patent invalidity claims against the University of Pennsylvania ("Penn") and Novartis Pharmaceuticals ("Novartis").
  • Merial wins dismissal of patent claims directed to ineligible subject matterJones Day, with Merial Limited's Global Head of Intellectual Property, Dr. Judy Jarecki-Black, Esq., successfully defended Merial in a patent infringement case brought by Genetic Technologies Limited ("GTG").
  • Jefferies and Piper Jaffray underwrite $60.9 million IPO of Common Stock by Marrone Bio InnovationsJones Day advised Jefferies LLC and Piper Jaffray & Co., as underwriters, in connection with the $60.9 million initial public offering of Common Stock by Marrone Bio Innovations, Inc., a provider of bio-based pest management and plant health products for the agricultural and water treatment markets.
  • Leading U.S. cancer research institute successfully defends antibody patent in EuropeJones Day successfully represented major U.S. cancer research institute in opposition proceedings before the European Patent Office.
  • Jazz Pharmaceuticals acquires EUSA Pharma for $650 millionJones Day acted as IP counsel in advising Jazz Pharmaceuticals, Inc. in connection with the execution of a definitive agreement under which Jazz Pharmaceuticals has agreed to acquire EUSA Pharma for $650 million in cash and a potential $50 million milestone payable in cash based upon Erwinaze™ achieving a specified U.S. net sales target in 2013.
  • Martek Biosciences wins across-the-board victory in biotech dispute before five-judge Federal Circuit panelOn September 3, 2009, a rare five-judge panel of the U.S. Court of Appeals for the Federal Circuit issued an across-the-board appellate victory for Jones Day client Martek Biosciences Corp. in Martek Biosciences Corp. v. Nutrinova, Inc., Nos. 2008-1459 and 2008-1476.
  • King Pharmaceuticals faces Item Development AB in patent interference involving myocardial dysfunctionJones Day provided representation to King Pharmaceuticals, Inc. in a patent interference against Item Development AB before the U.S. Patent and Trademark Office involving methods for detecting the presence and assessing the severity of myocardial dysfunction.
  • Genencor defends against patent infringement claims brought by Novozymes over enzymes used in ethanol fuel productionJones Day represented Genencor in a patent infringement litigation related to alpha amylase enzymes used in the production of fuel ethanol.
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    September 27, 2022 Firm Hosted

    Women in IP Speaker Series: Global Patent Considerations: Written Description and Enablement

    October 2021 Blog

    Fed. Cir. Rejects New IPR Constitutional Challenges, PTAB Litigation Blog

    October 2021 Blog

    Fed. Cir. Directs Dismissal of Ex Parte Reexam, PTAB Litigation Blog

    January 2019 Alert

    Secret Sales Are Still Prior Art: U.S. Supreme Court Affirms Helsinn Healthcare

    October 2018 Blog

    Post-Priority Document Usable As Evidence of POSITA Motivation, PTAB Litigation Blog

    August 2018 Blog

    Petition For Writ Of Mandamus Not An End Run Around Cuozzo, PTAB Litigation Blog

    July 2018 Blog

    Federal Circuit Grants Motion Remanding For Consideration Of All Grounds, PTAB Litigation Blog

    February 2018 Blog

    Patent Prosecutors Beware: Earlier Publication Anticipates Broad Claims of Continuing Application, PTAB Litigation Blog

    November 2017 Commentary

    Federal Circuit Clarifies Probative Value of Patent Dance Statements

    June 2017 Commentary

    Supreme Court: Biosimilar Applicants May Provide Commercial Marketing Notice Before FDA Approval
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    Speaking Engagements

    • April 9, 2016
      PharmaDJ Roundtable Discussion on Biosimilar and Antibody Development: Options for Asian Biosimilar Companies in the U.S.
    • October 28, 2010
      The Advent of Biosimilars: What you (and your clients) should know

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