Jennifer C. Chen
Marunouchi Kitaguchi Building
27th Floor
1-6-5 Marunouchi
Chiyoda-ku, Tokyo 100-0005
Japan
2200 Pennsylvania Avenue NW
Suite 500 West
Washington, D.C. 20037
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 has been designated a Certified Information Privacy Professional (CIPP/US) and Information Privacy Manager (CIPM) by the International Association of Privacy Professionals (IAPP).
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.
Patent & 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
(Silicon Valley, Japan) — Represented a Japan-based technology company in a joint research development project for OLED display manufacturing
(Taiwan, Japan) — Represented an international supplier of electronic components including microprocessors in a joint product development project for an advanced image sensor for mobile and studio cameras
(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 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
Advised a Japan-based international manufacturer and supplier of advanced automotive transmissions in establishing its Texas-based company and manufacturing facility, involving legal and business teams in the U.S. and Japan regarding issues such corporate, tax, real estate, utilities, construction, and regulatory
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 standard 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
(E.D. Tex) — Represented Japan Display Inc. in a patent litigation to enforce patents directed to advanced thin film transistor liquid crystal display (TFT LCD) technology and products, and in settlement and patent license agreements
(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
(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
(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
Credentials
- George Washington University Law School, J.D., 1998 (Member of The Environmental Lawyer)
- Georgia Institute of Technology, B.S. Industrial Engineering, with honors, 1990
- 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)
- The Best Lawyers in America©(BL Rankings, LLC), Litigation–Patent (Washington), 2021–2024
- The American Chamber of Commerce in Japan (ACCJ)
- The Tokyo Intellectual Property American Inn of Court
- American Bar Association (ABA)
- International Bar Association (IBA)
- American Intellectual Property Law Association (AIPLA)
- The International Association for the Protection of Intellectual Property (AIPPI)
- California
- District of Columbia
- England & Wales
- U.S. Patent & Trademark Office
- English
- Chinese (Mandarin)
- Japanese
- Rankings & AwardsAugust 21, 2023
- Rankings & AwardsAugust 18, 2022
- “Almost Human – The Age of Applied Intelligence,” Women Corporate Directors 2019 Asia Pacific Institute Resilient Leadership for a Disruptive Era, February 21, 2019 (panelist)
- “To Dance or Not to Dance: Supreme Court Held Patent Dance Under BPCIA Not Enforceable By Injunction Under Federal Law,” V&E IP Insights E-communication, June 13, 2017 (co-author)
- “NPE Licensee Now, Reluctant ITC Discovery Participant Later: Satisfying Domestic Industry Activity Through Licensees,” V&E High-Tech Law & Litigation E-communication, April 19, 2017 (co-author)
- “USPTO Decision Favors MIT and Harvard in Epic CRISPR Gene-Editing Dispute, but Berkeley Maintains Broader Patent Coverage,” V&E High-Tech Law & Litigation E-communication, February 20, 2017 (co-author)
- “Special Flight Rules in the Vicinity of Grand Canyon National Park: A Deafening Debate over Restoring Natural Quiet,” 3 Envtl. Law. 877 (1997)