Catharina J. Chin Eng

• cchin@scciplaw.com
• Direct: 973.221.4534 

• New York University School of Law - J.D. (1994) 
• The Cooper Union for the Advancement of Science and Art - B.S., Chemical Engineering (1989)

• States: New York
• District Courts: Eastern District of New York, Southern District of New York
• Other: United States Patent and Trademark Office

Cathy has uncanny abilities in navigating and overcoming legal challenges and technical complexities. Her strength in developing invaluable litigation strategies and presenting persuasive legal arguments have achieved successful litigation outcomes for her clients, helping them to realize their business goals. In addition to her extensive experience with federal court patent litigations, Cathy has successfully advocated for clients in adversarial proceedings before the U.S. Patent and Trademark Office (e.g., inter partes reviews) and U.S. International Trade Commission. 

Her clients have included generic as well as branded pharmaceutical companies, particularly those involved in Hatch-Waxman (ANDA) litigations. Also, Cathy has represented clients in adversarial matters involving biological products, such as monoclonal antibodies (e.g., Humira), polypeptides, bacterial toxins and vaccines. Furthermore, Cathy has litigated cases relating to other technology areas, such as medical devices (stents, catheters), nutraceuticals (e.g., plant extracts) and industrial products (e.g., electric car batteries, magnets).

Cathy has handled all aspects of patent litigation from pre-suit investigations and preparation of notice letters through trial and appeal. She is highly experienced with claim construction, fact and expert discovery and preparing/examining witnesses at depositions/trial as well as motion practice. 

Through her persistence, keen observational skills and attention to details, Cathy has developed highly effective litigation strategies to achieve favorable decisions and settlements for her clients. Using her ability to identify and exploit the weaknesses in her opponent’s case, Cathy has devised successful non-infringement and patent invalidity arguments in defending clients in patent infringement cases. Her strategies have helped her clients’ accelerated market entry for new generic drugs. Likewise, Cathy’s ability to identify ways to present complex legal and technical issues to courts in a persuasive and easy to understand manner has achieved highly favorable outcomes, including avoiding injunctive relief/market exclusion.

In addition, to her experience with adversarial proceedings, Cathy has procured patents for clients and advised them on developing and managing global patent rights. Cathy has also counseled clients on various other patent-related matters, such as due diligence for patent portfolio acquisitions, patent design-around strategies as well as freedom to operate and patent validity opinions. Cathy has devised creative solutions that maximize opportunities for her clients.

Hatch-Waxman Litigation for Generic Pharmaceutical Companies

• Salix Pharmaceuticals, Inc. et al. v. Carnegie Pharmaceuticals, LLC et al., 24-10356-ESK (D.N.J) – represented Carnegie regarding Xifaxan (rifaximin) (irritable bowel syndrome)
• American Regent, Inc. f/k/a Luitpold Pharmaceuticals, Inc. v. Accord Healthcare, Inc. et al., 24-7791-BRM (D.N.J.) – represented Eugia relating to selenious acid injection (selenium for nutrition)
• In re Nexletol/Nexlizet ANDA Litigation, 24-5921-JXN (D.N.J.) – represented Aurobindo involving Nexetol (bempedoic acid) & Nexlizet (bempedoic acid and ezetimibe) (hypercholesterolemia)
• Azurity Pharmaceuticals, Inc. v. Aurobindo Pharma Limited et al., 23-23273-JKS (D.N.J.) – represented Aurobindo regarding Firvanq (vancomycin) (antibiotic)
• Jazz Pharmaceuticals Research UK Limited f/k/a GW Research Limited, 23-3914-MEF (D.N.J.) – represented Zenara relating to Epidiolex (cannabidiol) (epilepsy)
• Pfizer Inc. et al. v. Aurobindo Pharma Limited, 23-923-GBW (D. Del.) – represented Aurobindo involving Vyndaqel (tafamidis meglumine) (transthyretin-mediated amyloidosis)
• Chiesi USA, Inc. et al. v. Eugia Pharma Specialities Limited et al., 23-22-KMW (D.N.J.) – represented Aurobindo and Eugia involving Kengreal (cangrelor) (antiplatelet drug)
• Bristol-Myers Squibb Co., et al. v. Biocon Pharma Limited, 23-392-GBW (D. Del.) – represented Biocon relating to Eliquis (apixaban) (anticoagulant)
• AbbVie Inc. et al. v. Alkem Laboratories Limited et al., 22-1423-JLH (D. Del.) – represented Alkem, Hetero, and Zenara regarding Orilissa (elagolix) (endometriosis)
• Merck KGaA et al. v. Hopewell Pharma Ventures, Inc., et al., 22-1365 (D. Del.) – represented Aurobindo regarding to Mavenclad (cladribine) (multiple sclerosis)
• Intercept Pharmaceuticals, Inc. et al. v. Zenara Pharma Private Limited, 22-1215-MN (D. Del.) – represented Zenara involving Ocaliva (obeticholic acid) (primary biliary cholangitis)
• Merck Sharp & Dohme Corp. v. Aurobindo Pharma Ltd., 22-377-GBW (D. Del.) – represented Aurobindo and Zenara relating to Steglatro (ertugliflozin) (diabetes)
• Taro Pharmaceutical Industries Ltd., et al. v. Encube Ethicals Pvt. Ltd., 21-1614-RGA (D. Del.) – represented Encube regarding Ovide (malathion lotion) (head lice)
• Newron Pharmaceuticals S.p.A et al. v. Aurobindo Pharma Limited et al., 21-843-GBW (D. Del.) – represented Zenara involving Xadago (safinamide) (Parkinson’s)
• In re Entresto (Sacubitril/Valsartan) Patent Litigation, Nos. 20-md-2930-RGA (D. Del.), 23-2218-RGA (Fed. Cir.) – represented Hetero and Torrent relating to Entresto (sacubitril/valsartan) (heart failure)
• Allergan, Inc. v. Aurobindo Pharma Limited et al., 21-1808-RGA (D. Del.) – represented Aurobindo and Eugia regarding Alphagan (brimonidine solution) (glaucoma)

Non-Hatch-Waxman Litigation/Proceedings

• In the Matter of Certain Lithium-Ion Battery Cells, Battery Modules, Battery Packs, Components Thereof, and Products Containing the Same, Inv. No. 337-TA-1181 (2020)
  (U.S. International Trade Commission) – represented respondent SK Innovations Co., Ltd. in patent infringement action involving lithium-ion batteries for electric cars 
• Goeddel (Genentech Inc.) v. Sugano, 2009-1156, 2009-1157 (Fed. Cir.) – represented Goeddel/Genentech in an appeal relating to recombinant human fibroblast interferon
• Scimed Life Systems, Inc. (Boston Scientific Scimed Inc.) v. Medtronic Vascular, Inc., 01-2015-RJL (D.D.C.), 2006-1434 (Fed. Cir.) - represented Scimed/Boston Scientific in patent interference action regarding vascular stents
• International Nutrition Co. v. Horphag Res. Ltd., et al., 96-386-DJS (D. Conn.), 00-1408 (Fed. Cir.) - represented Indena U.S.A. and Enzymatic Therapy, Inc. in patent infringement action relating to plant extracted nutraceuticals

Post-Grant Proceedings in the USPTO

• SK Innovations Co., Ltd. v. LG Chem, Ltd., IPR2020-01239, -01240 (PTAB) – represented petitioner SK Innovations in inter partesreviews relating to lithium-ion batteries for electric cars
• Merck Sharp & Dohme Corp. v. GlaxoSmithKline Biologicals SA, IPR2019-00230, IPR2019-00241 (PTAB) – represented petitioner Merck in inter partes review regarding bacterial toxins
• Merck Sharp & Dohme Corp. v. GlaxoSmithKline Biologicals SA, IPR2018-01229,
  -01234, -01236, -01237 (PTAB) – represented petitioner Merck in inter partesreviews involving pneumococcal vaccines
• Coherus Biosciences Inc. v. AbbVie Biotechnology Ltd., IPR2017-00822, -00823, -01008, -01009 (PTAB) – represented patent owner AbbVie in inter partes reviews relating to the monoclonal antibody adalimumab (Humira)