CHING-LEE FUKUDA is the head of Sidley’s IP Litigation practice in New York and a member of the firm’s Global Life Sciences Leadership Council.
Ching-Lee is a reputable trial lawyer ranked by Chambers USA in Intellectual Property, in which she is described as “very well respected by clients” and “always sees the big picture without losing sight of the details.” She was shortlisted for “Practitioner of the Year (Litigation) – New York” by Managing IP (2021), “Patent Lawyer of the Year” by IFLR in its Women in Business Law (2021), and “Post-Grant Proceedings Attorney of the Year” by LMG Life Sciences (2022). For two years in a row, she was awarded “Post-Grant Proceedings Attorney of the Year” by LMG Life Sciences for her work on behalf of medtech, medical devices, and chemical companies (2020 – 2021). She has been named an “IP Star” by Managing IP and a “Leading Life Sciences Lawyer” by LMG Life Sciences (2018–2022), and one of Managing IP’s “Top 250 Women in IP” worldwide (2019 – 2022). She was also shortlisted by Managing IP for the “Best in Patents” category in its Women in Business Law Awards (2020), and for “Outstanding Litigator: PTAB” (2019 – 2020). Ching-Lee was recognized by Best Lawyers in America for her work in IP Litigation (2020 – 2022), and was named by IAM Patent 1000 as one of the world’s leading patent practitioners (2015 – 2022), in which clients describe her as having “superb legal acumen,” “a great intellect,” that she “can handle the most complex of cases,” and that
"Ching-Lee tells you what you need to hear, not just what you want to hear, and for that reason is someone you can trust, which is critical in big-ticket patent litigation."
With 25 years of experience, Ching-Lee has led significant IP litigation victories in federal courts, at the ITC, the PTAB, and the Federal Circuit, focusing on electronics, software, medtech, medical devices, and chemicals. Her successes include numerous jury and bench trial wins, as well as wins during preliminary injunction, at summary judgment, and on appeal. She also has led and/or participated in about 100 PTAB proceedings on behalf of petitioners and patent owners. Over the past several years, four of her cases have been awarded “Impact Case of the Year” by LMG Life Sciences.
- In 2019, Ching-Lee led a damages trial team for Bayer that helped secure a jury award of US$155 million against Baxalta, which was then increased to US$182 million with supplemental damages and interest. This jury award ranks among the top 10 largest patent verdicts in Delaware, and was affirmed by the Federal Circuit in 2021 to become the largest standing biotech patent verdict in the district. The case was widely reported in The New York Times, Law360, and Bloomberg Law, among other publications, and received the 2019 LMG Life Sciences Award for “Patent Impact Case of the Year.” For that win, the team was selected as a “Legal Lion” by Law360.
- In 2022, she completed a six-year set of litigations defending Nevro against Boston Scientific’s assertion of 20 patents and over 60 trade secrets, ultimately turning the tables on Boston Scientific: The lengthy litigations ended with plaintiff Boston Scientific paying defendant Nevro $85 million. During those six years, she led teams that obtained pivotal victories against Boston Scientific in the District of Delaware, at the PTAB, and at the Federal Circuit — Nevro obtained five straight wins at the Federal Circuit, defeated Boston Scientific’s §101 challenge to Nevro’s core paresthesia-free patents, and successfully invalidated claims of 11 Boston Scientific patents, including all asserted claims of a foundational Boston Scientific patent that voided 84% of Boston Scientific’s damages claim in the first Delaware action.
- Also in 2022, she led an appellate team that secured three straight victories, argued on the same day at the Federal Circuit, on behalf of Auris Health against Intuitive Surgical relating to surgical robotics technology. In a sweeping set of wins, the team obtained an affirmance of Auris’ win at the PTAB invalidating a key Intuitive patent, and at the same time successfully secured vacate and remand decisions of the other two Intuitive patents previously upheld by the PTAB. The cases received the 2022 LMG Life Sciences Award for “Patent Impact Case of the Year.”
- One of Ching-Lee’s areas of expertise is obtaining wins in 35 U.S.C. §101 patent eligibility dispositions on behalf of both patent owners and challengers. In 2020, Ching-Lee led an appellate team on behalf of BioTelemetry (CardioNet) that convinced the Federal Circuit to issue a precedential opinion (Judges Stoll, Plager, and Dyk), reversing a Massachusetts decision, to uphold the validity of BioTelemetry’s cardiac monitoring software patent. The decision was widely reported in Law360, Law.com, and The National Law Review as one of the rare decisions upholding a software patent, and received the 2020 LMG Life Sciences Award for “Patent Impact Case of the Year.” In 2021, she led a team for Microsoft and HP that invalidated three remote storage patents under §101 in Delaware district court. Later that same year, she led a team for Nevro that convinced the Delaware district court to uphold the validity of five key Nevro patents under §101 relating to spinal cord stimulation technology. One of her summary judgment arguments also helped shape an invalidity ruling that was affirmed by the Federal Circuit during the early days of modern-day §101 jurisprudence.
- In 2015, she helped lead a team that obtained a stunning victory in the Antares Pharma Inc. v. Medac Pharma Inc. case, affirmed in a precedential opinion by the Federal Circuit, which won the 2015 LMG Life Sciences award for “Patent Impact Case of the Year.”
Ching-Lee is a regular speaker at conferences and seminars and is widely quoted and published in media, particularly regarding §101 patent eligibility, PTAB proceedings, jury trials, and DEI issues. She is a Member of Law360’s 2022 Intellectual Property Editorial Advisory Board, and a Co-Chair of the IP Programming Subcommittee for NAPABA.