Jennifer J.Chheda Ph.D.

Partner

New York + 1.212.326.3886

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Dr. Jennifer Chheda has more than 25 years of experience in procuring and enforcing patents relating to biologics and small molecules, such as gene therapy, RNA (ribonucleic acid) therapeutics, antibodies, antibody drug conjugates, cell-based therapies (e.g., CAR-T cells), vaccines, and enzyme replacement therapy. She has developed, implemented, and managed worldwide patent portfolios covering commercial biologics and pharmaceuticals. Jennifer has worked with pioneers developing vaccines, such as a universal influenza virus vaccine, virus-based cancer vaccines, and products in development such as clinical candidates.

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. She advises clients regarding biosimilars and the Biologics Price Competition and Innovation Act (BPCIA).

Jennifer has coordinated worldwide litigations and invalidation proceedings to ensure consistency between the litigations and proceedings. She has provided strategic advice regarding invalidity and infringement contentions. Jennifer's experience prosecuting patent applications globally has proved to be beneficial in the development of arguments relevant to non-U.S. jurisdictions in global proceedings. She also has provided strategic advice to clients regarding Patent Trial and Appeal (PTAB) proceedings, such as inter partes review, interferences, and reexaminations, and other post-grant proceedings, such as oppositions. Her scientific background is an asset in working with experts to develop reports and to prepare them for depositions and trial. Jennifer has worked on trade secret and patent cases.

In addition, Jennifer has drafted and negotiated 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

  • Myeloma Investment Fund invests in Nammi Therapeutics, Inc.'s Series B financingJones Day advised Myeloma Investment Fund in $1 million investment in Nammi Therapeutics, Inc.'s Series B financing.
  • Masal builds patent portfolio involving advanced spinal stability technologiesJones Day is representing Masal, Inc. in the development and prosecution of a portfolio of patents involving advanced spinal stability technologies directed to addressing spinal injuries or deformities through vertebral body reconstruction, augmentation, and/or stabilization.
  • VasoRx develops patent portfolios relating to lipid nanoparticles for RNA-based therapiesJones Day is representing VasoRx, Inc. in connection with the development of patent portfolios relating lipid nanoparticles (LNP) and their use in the delivery of RNA-based therapeutics (e.g., RNAi, siRNA and miRNA) to endothelial cells for the treatment of vascular disorders, such as cardiovascular diseases and pulmonary arterial hypertension (PAH).
  • 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.
  • Mount Sinai develops patent portfolios relating to universal influenza vaccinesJones Day is representing Icahn School of Medicine at Mount Sinai in connection with the development and prosecution of patent portfolios relating to universal influenza virus vaccines.
  • 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.
    • View All

    November 20, 2024 Firm Hosted

    Considerations For the Development and Licensing of Patent Portfolios

    November 2024 Reprint

    Patent Licensing (The Licensing Journal)

    October 2024 Alert

    Supreme Court Denies Cellect Petition on Interplay Between PTA and ODP

    SEPTEMBER 2024 Alert

    USPTO Extends Comment Deadline on Patent Eligible Subject Matter Guidance for AI Inventions

    July 2024 Commentary

    U.S. Senate Unanimously Passes Bill Limiting Number of Patents Asserted Against Biosimilar Applicants

    JULY 2024 Commentary

    USPTO Issues Patent Eligible Subject Matter Guidance for AI Inventions

    July 2024 Alert

    USPTO Requests Comments on the Experimental Use Exception

    May 2024 Commentary

    NIH Seeks Comments on Patient Access Plan Requirements in Patent License Agreements

    May 2024 Commentary

    Canadian Drug Importation May Undermine Intellectual Property Protection

    May 2024 Blog

    Higher Burden of Demonstrating Public Accessibility of a Reference at Final Decision Stage, PTAB Litigation Blog
    View All

    November 20, 2024 Firm Hosted

    Considerations For the Development and Licensing of Patent Portfolios

    December 14, 2023 Firm Hosted

    Women in IP Speaker Series: Implications for the Life Sciences Industry of President Biden's Executive Order on Promoting Competition and the Inflation Reduction Act

    Additional 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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