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.
She 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.” Ching-Lee was shortlisted for “Patent Lawyer of the Year” by IFLR in its Women in Business Law Awards Americas and for “Practitioner of the Year (Litigation) – New York” by Managing IP (2021). For two years in a row, she was named the “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 “Life Sciences Star” 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 Women in Business Law Awards for the “Best in Patents” category (2020), and shortlisted by Managing IP Americas Awards 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 (2015–2021), in which she is described as having “superb legal acumen” and “a great intellect,” and that she “can handle the most complex of cases.”
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. Over the past several years, three of her cases have been awarded “Impact Case of the Year” by LMG Life Sciences. With 25 years of experience, her successes include numerous jury and bench trial wins, as well as wins during preliminary injunction, summary judgment, and appeal. She also has led and/or participated in about 100 PTAB proceedings, on behalf of petitioners and patent owners.
In 2019, she 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. 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 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.” In 2019–2020, Ching-Lee led a team that obtained a pivotal victory for Nevro at the PTAB that voided 84% of Boston Scientific’s total damages claim in a Delaware case, and she then led the appellate team for Nevro that obtained a Federal Circuit affirmance of that PTAB win.
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 BioTelementry’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.
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, and 35 U.S.C. §112, ¶6 issues. She is a member of Law360’s 2022 Intellectual Property Editorial Advisory Board.