PETER CHOI has nearly two decades of experience counseling clients on complex intellectual property matters and patent disputes. He has represented clients in cases involving a wide variety of technologies, including pharmaceuticals, medical devices, cloud-based data analytics platforms, web browsers, cosmetics, automobile parts and construction materials.
Peter’s practice primarily focuses on IP litigation. He has extensive experience in biologic-biosimilar patent litigation, Hatch-Waxman patent litigation and medical device patent litigation. He was recently recognized by Who’s Who Legal for his life sciences patent litigation work. He has been involved in all aspects of IP litigation, including pre-litigation investigations, trial, and appeals before the U.S. Court of Appeals for the Federal Circuit and the U.S. Supreme Court.
Peter also has significant experience counseling clients in IP portfolio management and patent due diligence matters involving important commercial assets. He has served as lead IP counsel in numerous high profile transactions. He is recognized for combining a deep understanding of the science and patent law with a seasoned patent litigator’s perspective on IP issues.
Prior to entering the legal profession, Peter worked as a molecular biology research assistant for Dr. J. Craig Venter at the Institute for Genomic Research (TIGR), in Rockville, MD. His research was part of the Human Genome Project, an international, multi-institutional effort that resulted in the successful sequencing of the entire human genome.
Peter was an articles editor for the Georgetown Law Journal in law school. While in law school, Peter worked as a patent agent for a boutique firm in Washington, D.C., where he gained extensive patent prosecution, patent counseling and patent portfolio management experience and where he prepared numerous freedom to operate and patentability opinions.
After law school, and before joining Sidley Austin, Peter served as a law clerk to the Honorable Eduardo C. Robreno, U.S. District Court for the Eastern District of Pennsylvania.
Peter is also active in promoting diversity in the IP legal profession. From 2013–2016, he was a Fellow with the HNBA/Microsoft Intellectual Property Institute, where he acted as a mentor to Latino law students interested in pursuing IP law careers.
Representative Patent Office, ITC, and district court engagements include:
- Immunex Corp. et al. v. Samsung Bioepis, No. 19-11755 (D. N.J.) (counsel for Immunex and Amgen in BPCIA patent litigation involving Amgen’s biologic drug, Enbrel®);
- Pfizer v. Hoffmann La-Roche, IPR2018-01219 (counsel for patent owner Roche in IPR proceedings involving antibody expression methods);
- Takeda Pharmaceuticals America, Inc. v. UCB Biopharma SPRL, No. 18-00078 (E.D. Va) (counsel for Takeda in declaratory judgment action on a patent involving antibody humanization methods);
- Coherus Biosciences, Inc. v. Hoffmann-LaRoche Inc., IPR2017-01916, -02066 (counsel for patent owner in IPR proceedings relating to Amgen’s biologic drug, Enbrel®);
- Immunex Corp. et al. v. Sandoz, No. 16-01118 (D. N.J.) (counsel for Immunex and Amgen in BPCIA patent litigation involving Amgen’s biologic drug, Enbrel®);
- Alza v. Amneal Pharm., No. 16-914 (D. Del.) (counsel for Alza, a Johnson & Johnson subsidiary, in Hatch-Waxman patent infringement matter involving the ADHD drug, Concerta®);
- MorphoSys Ag v. Janssen Biotech et al., No. 16-221 (D. Del.) (counsel for Janssen Biotech in patent infringement matter involving antibody-based cancer therapies);
- Owens Corning v. Fast Felt Corp., IPR2016-2613 (counsel for petitioner in inter partes review (IPR) proceedings relating to roofing and building cover materials);
- Amerigen Pharm. Ltd. v. Janssen Oncology, IPR2016-00286 (counsel for patent owner Janssen Oncology in IPR proceedings relating to hormone based methods for treating prostate cancer, i.e., Zytiga®);
- Fast Felt Corp. v. Owens Corning Roofing & Asphalt, LLC, No. 14-0803 (N.D. Ohio) (counsel in patent infringement matter involving roofing and building cover materials);
- Merck v. Actavis, No. 15-6541 (D. N.J.) (counsel for Merck in Hatch-Waxman patent infringement matter involving the novel antibiotic drug, Dificid®);
- Merck v. Ono Pharmaceutical Co., IPR2016-1217, -1218, -1219, and -1221 (counsel for petitioner Merck in IPR proceedings relating to antibody-based cancer therapies targeting PD-1 and involving Merck’s drug, Keytruda®);
- Coalition for Affordable Drugs V LLC v. Hoffmann-LaRoche Inc., IPR2015-1792 (counsel for patent owner in IPR proceedings relating to Amgen’s biologic drug, Enbrel®);
- Sanofi-Aventis and Regeneron Pharm. v. Genentech, IPR2015-01624 (counsel for patent owner Genentech in IPR proceedings relating to recombinant methods for producing antibodies in a single host cell);
- Owens Corning v. CertainTeed Corp., IPR2014-1397, -1401, -1402, -1403, and 1404 (counsel for petitioner Owens Corning in IPR proceedings relating to roofing materials);
- ABS Global v. XY LLC, IPR2014-1161,-1550 (counsel for petitioner ABS Global in IPR proceedings relating to cell sorting technology for use in the animal breeding industry);
- Alza v. Mylan, No. 14-085 (N.D. W. Va) (counsel for Alza, a Johnson & Johnson subsidiary, in Hatch-Waxman patent infringement matter involving the ADHD drug, Concerta®);
- Sequenom v. Stanford Univ., IPR2014-0337 (counsel for petitioner Sequenom in IPR proceedings relating to diagnostic PCR assays for detecting fetal DNA in maternal plasma);
- Baxter v. Millenium Biologix, IPR2013-00582, -583, -590, -591 (counsel for petitioner Baxter in IPR proceedings relating to calcium-phosphate bone implant medical device materials);
- In the Matter of Certain Rubber Resins & Processes for Manufacturing Same, Inv. No. 337-TA-849 (counsel for respondent chemical manufacturer in a trade secret and employment contract dispute);
- Forest Labs. Inc. v. Indchemie Health Specialties Pvt. Ltd. et al., No. 12-cv-01855 (N.D.Ill. 2012) (counsel for Forest in a multi-defendant, multidistrict, Hatch-Waxman litigation involving the blood pressure reducing agent, Bystolic®);
- Disney v. Kappos, No. 12-687 (E.D. Va) (counsel for Disney in Section 145 action brought against the PTO involving “cookies” used in web browsers);
- Sunovion v. Dey, No. 06-113 (D. Del) (counsel for Sunovion in Hatch-Waxman patent infringement matter involving the respiratory drug, Xopenex®);
- Merck v. Mylan, No. 09-6383 (D.N.J.) (counsel for Merck in Hatch-Waxman patent infringement matter involving cholesterol lowering drugs, Vytorin® and Zetia®);
- Genentech v. Univ. of Penn., No. 10-2037 (N.D. Cal.) (counsel for Genentech in patent infringement matter regarding HER2 antibodies);
- Alza v. Kremers Urban, No. 10-23 (D. Del.) (counsel for Alza in multi-defendant Hatch-Waxman patent infringement matter involving the ADHD drug, Concerta®);
- Cabilly v. Boss, Interference No. 105,531 (counsel for Genentech in a patent interference proceeding involving methods for making recombinant antibodies);
- Wyeth v. FDA, No. 08-981 (D.D.C.) (counsel in APA action brought by Wyeth against FDA);
- Pfizer v. FDA, No. 09-1810 (D.D.C.) (counsel in APA action brought by Pfizer against FDA);
- Ethicon Endo-Surgery v. Hologic, 07-834 (S.D. Ohio) (counsel for Ethicon, a Johnson & Johnson subsidiary, in patent infringement matter relating to Ethicon’s Mammotome® breast biopsy devices);
- Alza v. Andrx, No. 05-0642 (D. Del.) (counsel for Alza in in multi-defendant Hatch-Waxman patent infringement matter involving the ADHD drug, Concerta®); and
- GSK v. Teva Pharm., No. 03-4037 (D.N.J.) (counsel for GSK in multiple defendant Hatch-Waxman patent infringement matter involving the anti-cholesterol drug, Avandia®).
Federal Circuit engagements include:
- Owens Corning v. Fast Felt Corp., No. 2016-2613 (counsel for Owens corning in appeal of IPR decision in case involving roofing and building cover materials);
- Mylan v. Merck, No. 2012-1434 (counsel for Merck in Hatch-Waxman patent infringement matter involving cholesterol lowering drugs, Vytorin® and Zetia®);
- In re Tanaka, No. 2010-1262 (counsel for amicus curiae Merck in dispute with Patent Office regarding scope of correctable error in a reissue patent);
- Micron Tech. Inc. v. Rambus Inc., No. 2009-1263 (counsel for Rambus in patent infringement matter where patents were held unenforceable by the district court due to spoliation);
- Humanscale Corp. v. CompX Int’l, No. 2010-1549 (counsel for Humanscale in patent infringement proceedings relating to ergonomic keyboard stands);
- Prometheus Labs. Inc. v. Mayo Collab. Svcs., No. 2008-1403 (counsel for amicus curiae Biotechnology Innovation Organizastion (BIO) in matter relating to the patent eligibility of diagnostic subject matter);
- Star Scientific v. RJR Tobacco, No. 2007-1448 (represented Star in appeal of district court judgment finding Star’s patents on tobacco curing invalid and unenforceable; district court judgment reversed on appeal);
- ImClone Systems v. Aventis Pharm., 2007-1010, -1012 (represented Aventis in appeal of patent infringement proceedings relating to monoclonal antibodies targeting EGFR); and
- Pfizer, Inc. v. Apotex, Inc., No. 2006-1261 (represented GSK in the filing of an amicus brief in matter relating to the patentability of pharmaceutical salts).
Admissions & Certifications
- U.S. Patent & Trademark Office
- U.S. Court of Appeals, Federal Circuit
- District of Columbia
- New York
- Georgetown University Law Center, J.D., 2003 (cum laude)
- University of Maryland, B.S. Molecular Biology and Cell Biology, 1997
- Eduardo C. Robreno, U.S. District Court, E.D. of Pennsylvania (2003 - 2004)