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Jennifer C. Chen

Jennifer C. Chen Partner, Intellectual Property

Jennifer counsels clients in leveraging technology assets, including patents and product research and development, to achieve client goals using intellectual property law.  Focusing on clients’ outcomes and purposes, she finds strategies and solutions by drawing from varied legal tools and experience, including negotiated solutions in the form of technology and patent license agreements, as well as litigated outcomes via courts and administrative proceedings.  Her cross-border, multi-cultural business experience involves international technology companies based in Japan, Taiwan, Korea, China, Europe, and the United States.  A registered patent attorney, Jennifer has served as counsel for major international technology companies, including five years at Hitachi, Ltd., resident in its Tokyo headquarters, with over fifteen years of working with international companies based in the Asia Pacific region.

Jennifer’s experience includes negotiating and closing patent license agreements, know-how license agreements, joint research and development agreements, and advising senior management on patent strategies, including in licensing-in and licensing-out contexts involving NPEs and competitors. She has represented clients in patent disputes before federal courts, including the District of Delaware, the U.S. Court of Appeals for the Federal Circuit, the U.S. Supreme Court, as well as the U.S. Patent and Trademark Office and the International Trade Commission.

Jennifer has represented clients in technical fields such as computer and information technology, including large scale data storage and virtualization technology implemented by redundant array of independent disks; advanced high resolution displays and human-machine interfaces, including TFT-LCDs; and medical devices, including implanted cardiovascular stents and heart valves. Before practicing law, in addition to advising companies as an information technology consultant in computer aided software engineering in Australia and the U.S., Jenifer has served as a patent examiner at the U.S. Patent and Trademark Office in the field of multimedia and computer graphics.

Jennifer has also been designated a Certified Information Privacy Professional (CIPP/US) by the International Association of Privacy Professionals (IAPP).

RESULTS DEPEND ON A VARIETY OF FACTORS UNIQUE TO EACH MATTER. PRIOR RESULTS DO NOT GUARANTEE OR PREDICT A SIMILAR OUTCOME

Experience Highlights

Patent and Technology Licensing, Negotiation

  • (Europe, Japan) — Represented an international technology patent owner and manufacture of industrial products and systems in a revenue generating patent licensing-out project against a competing northern Europe-based international manufacturer, involving critical equipment for operating manufacturing facilities; served as negotiator and advisor to licensing and business executives
  • (United States, Japan) — Represented a global technology conglomerate patent owner and provider of computer and information technology products and systems in a comprehensive cross patent license project against a U.S.-based international provider of enterprise level computer and information solutions; served as negotiator and advisor to licensing staff and executives
  • (United States, Japan) — Represented a multinational patent owner and manufacturer of computer and information technology software and large scale hardware products in a comprehensive cross patent license project against a U.S.-based international computer and information technology provider; served as advisor to licensing staff and executives
  • (Taiwan, Japan) — Represented an international technology conglomerate manufacturer of advanced display products against multiple competing manufacturers in a revenue generating and R&D ROI licensing-out program; served as negotiator and advisor to licensing staff and executives
  • (Taiwan, China, Japan) — Represented a global provider of advanced mobile computing components against multiple competing manufacturers in a revenue- generating and R&D ROI licensing-out program; served as a negotiator and advisor to licensing staff and executives
  • (United States, Japan) — Represented an international supplier of critical components of communication devices in a licensing-in project against a licensing agent; served as a negotiator and advisor to licensing staff and executives, including developing and coordinating strategies involving third parties

Joint Development for Technology, Product, and Intellectual Property

  • (Europe, Japan) — Represented a global technology company in joint technology, product, and intellectual property development with a Europe-based company, involving advanced human-machine interface technology
  • (Silicon Valley, Japan) — Represented a global technology company in joint technology, product, and intellectual property development with a Silicon-Valley based manufacturer and seller; involving advanced mobile electronics displays and processor technology
  • (United States, Japan) — Represented an international manufacturer of advanced precision laboratory and research instruments in a joint technology, product, and intellectual property development and patent license project for new instruments and consumable products with a U.S.-based international manufacturer

    Counseling, Strategies

    • Advised a global technology patent owner and manufacturer of critical components in global supply chain on intellectual property issues, including joint developments and resulting inventions, indemnifications, and buy-sell agreements
    • Advised an Asia-based manufacturer of industrial products and systems on multiple licensing-in projects against NPEs, including defensive strategies and better practices in anticipation of litigation
    • Advised an international manufacturer and patent owner of advanced components for mobile electronics on licensing-out programs, including strategies for negotiating and closing deals, and licensing disputes and operations
    • Advised a global manufacturer of computer data storage products on patent licensing in the context of a patent pool involving essential patents
    • Advised an Asia-based patent owner and manufacturer of critical data storage components in multiple licensing-out projects, including strategies for negotiating license scope adjustments, after licensee underwent change of control
    • Advised an Asia-based manufacturer of advanced computer peripheral component on critical license coverage under a comprehensive cross patent license agreement
    • Advised an international patent owner and manufacturer of optical storage components on patent infringing business activities of its overseas competitors, affiliates, and customers, including potential liabilities under U.S. patent law or trade law
    • Advised a global technology company and patent owner of RFID technology on balancing its needs and optimizing its outcomes as a participant in a standard setting organization and as a patent owner with its revenue generating licensing-out programs
    • Advised multinational patent owner and manufacturer of technology products on status and strategies against various NPE activities
    • Advised an Asia-based international company on potential changes in critical license scope under a comprehensive cross patent license resulting from its planned spinoff a subsidiary
    • Advised an international patent owner and manufacturer on potential offensive patent litigation by a subsidiary against a competitor, including issues regarding standing, injunction, and lost profit
    • Advised an Asia-based patent owner and manufacturer on proposed unsolicited offer by buyer of certain strategic patent portfolios
    • Advised an international patent owner and manufacturer on its participation in a bankruptcy auction of a portfolio of patents developed under substantial R&D investments against bidders of competing interests
    • Advised a multinational patent owner and technology company on its licensing-out operations and strategies, including issues regarding have made rights, and patent exhaustion

    District Court and the International Trade Commission

    • (ITC) — Represented Hitachi, Ltd. of Japan and Hitachi Data Systems Corp. in a patent litigation brought by EMC Corporation involving large scale data storage and virtualization technology implemented by redundant array of independent disks
    • (ITC) — Represented Hitachi Maxell of Japan in a patent litigation involving patented zero-mercury-added alkaline battery technology
    • (D. Az) — Represented Research Corporation Technologies in a patent litigation against Hewlett Packard involving patented imaging technology for high speed half tone rendering implemented by Blue Noise Mask
    • (D. Del) — Represented a multinational medical devices company in a patent litigation involving patented implantable heart valves
    • (D. Del) — Represented an international medical devices company in a patent litigation involving patented implantable cardiovascular stents
    • (D. Conn) — Represented an inventor and physician in a patent infringement litigation against a pharmaceutical company involving patented dermatological chemical compounds

    Appellate Practice

    • (Fed. Cir.) — Authored briefs for Mars, Inc. against H.J. Heinz Company, Heinz Management Company, and Del Monte Corp. in appeal from summary judgment of noninfringement in a patent litigation involving patented animal food products technology
    • (U.S.) — Authored briefs for BriarTek Inc. and BriarTek IP, Inc. for petition for certiorari in appeal originating from E.D.Va. of invalidity in a patent litigation involving patented two-way satellite communication technology

    United States Patent and Trademark Office

    • (PTAB) – Represented a multinational technology manufacturer and patent owner in multiple related IPRs filed in connection with a licensing-out project and pending negotiations, including developing and executing strategies and coordinating between concurrent proceedings in China and the U.S.
    • Served as patent examiner in the technology field of multimedia and computer graphics

    Contact Details

    Washington

    T +1.202.639.6735
    F +1.202.879.8855
    jchen@velaw.com
    2200 Pennsylvania Avenue NW
    Suite 500 West
    Washington, DC 20037-1701
    Local time: 5:14 AM
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    Jennifer's Practices

    • George Washington University Law School, J.D., 1998 (Member of The Environmental Lawyer)  
    • Georgia Institute of Technology,  B.S. Industrial Engineering, with honors, 1990
    • Admitted to practice: California; District of Columbia; England & Wales; U.S. Patent & Trademark Office
    • Other Languages: Chinese (Mandarin), fluent; Japanese, intermediate
    • Patent and Licensing Counsel, Hitachi, Ltd., Intellectual Property Group (Tokyo), 2004–2009
    • Patent Examiner, U.S. Patent and Trademark Office, 1996–1997
    • Software Engineering Consultant, 1991–1995, including advising Charles Schwab (San Francisco) and IBM Asia Pacific Programming Center (Sydney, Australia)
    • Member: National Asian Pacific American Bar Association
    • Member: American Intellectual Property Lawyers Association
    • Member: Leadership Council on Legal Diversity