Partner

Ching-Lee Fukuda

- GoodLifeSci

IP Litigation

clfukuda@sidley.com

New York +1 212 839 7364

- GoodLifeSci
- Letter
- A4

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 New York Intellectual Property: Patent (2021–2024), in which she is described as “an exceptional litigator” and “great with clients.” In 2024, Ching-Lee was awarded “Patent Lawyer of the Year” by Women in Business Law Americas. She was twice shortlisted for “Litigator of the Year–New York” by Managing IP (2021 and 2023), and twice awarded “Post-Grant Proceedings Attorney of the Year” by LMG Life Sciences (2020 and 2021). Four of Ching-Lee’s cases have been awarded “Impact Case of the Year” by LMG Life Sciences. Clients have described 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.”
IAM Patent 1000

With 27 years of experience, Ching-Lee has led significant patent and trade secret litigation victories in federal courts, the International Trade Commission (ITC), the Patent Trial and Appeal Board (PTAB), and the Federal Circuit, focusing on medtech, medical devices, electronics, software, and chemicals. Her successes include numerous jury and bench trial wins, as well as wins during preliminary injunction, and on appeal. Ching-Lee also has led and/or participated in about 100 PTAB proceedings on behalf of petitioners and patent owners.

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, Ching-Lee 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 Boston Scientific paying Nevro US$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 a nine-figure damages claim.
Ching-Lee led an appellate team that secured three straight victories, which were 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 Surgical patent, and at the same time successfully secured vacate and remand decisions of the other two Intuitive Surgical 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 strength is obtaining wins in §101 patent eligibility dispositions on behalf of both patent owners and challengers. In 2020, she 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 District of Massachusetts decision to uphold the validity of BioTelemetry’s cardiac monitoring software patent. The decision was widely reported 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, Ching-Lee led a team for Microsoft and HP that invalidated three remote storage patents under §101 in a 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. In 2023, Ching-Lee led a team for Cranial Technologies that obtained a §101 win in the Central District of California upholding the eligibility of two software patents relating to the manufacture of orthotics to treat infant head deformities.
Ching-Lee also helped lead a team that obtained a stunning victory defeating a preliminary injunction in a Delaware district court and invalidating the other side’s patents on appeal, in Antares Pharma Inc. v. Medac Pharma Inc., 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 the media, particularly regarding medical device and medtech litigation, trade secret litigation, jury trials, § 101 patent eligibility, and DEI issues. She has been a member of Law360’s Intellectual Property Editorial Advisory Board, a member of ACI’s Advisory Board for Women Leaders in IP Law, and co-chair of the Intellectual Property Committee for the National Asian Pacific American Bar Association. In 2023, Ching-Lee became a founding member of Lead Counsel Summit, a non-profit organization that trains and supports women IP litigators who are on the cusp of serving as lead counsel, to help them master the courtroom, clients, and team skills needed to move from second-chair to first-chair roles.

Additional Awards and Rankings

Shortlists
- “General Patent Litigator of the Year – New York,” LMG Life Sciences Awards Americas (2023)
- “Post-Grant Proceedings Attorney of the Year,” LMG Life Sciences Awards Americas (2022)
- “Patent Lawyer of the Year,” Women in Business Law Awards Americas (2021)
- “Best in Patents,” Managing IP’s Women in Business Law Awards (2020)
- “Outstanding Litigator – PTAB,” Managing IP (2019 and 2020)
“Litigator of the Week” Runner Up, AmLaw (February 2019)
“Legal Lion,” Law360 (August 2019 and July 2015)
“Top 250 Women in IP (Worldwide),” Managing IP (2019–2023)
“IP Star,” Managing IP (2019–2024)
“Life Sciences Star,” LMG Life Sciences (2018–2024)
One of the “500 Leading Litigators in America,” Lawdragon (2022–2024)
Recognized by Best Lawyers in America for IP Litigation (2020–2024)
Named by IAM Patent 1000 as one of the world’s leading patent practitioners (2015–2024)

Experience

Nevro Corp. v. Mayo Clinic Ventures et al. — Lead counsel for Nevro in securing wins on all counts brought by Nevro and by Mayo in arbitration, relating to patent and licensing issues in the neuromodulation field. Successfully obtained an injunction in the Northern District of California against Mayo’s continued breach of contract. A two-day arbitration hearing was held in Minneapolis, during which 19 fact and expert witnesses were examined by both sides. The arbitrator found in favor of Nevro on all counts, denied all of Mayo’s counts in their entirety (including Mayo’s royalty demand for many millions of dollars), and ordered Mayo to return control of patent prosecution to Nevro, pay Nevro’s past prosecution costs, and pay Nevro’s fees for the California action.
Bayer Healthcare, LLC v. Baxalta Inc. et al. — Led a damages trial team that successfully obtained a jury award of US$155 million for Bayer that ranks among the 10 largest patent verdicts in the District of Delaware for the past decade, which was recently affirmed by the Federal Circuit. After a six-day jury trial involving 18 witnesses, the jury found in favor of Bayer across the board. Also obtained supplemental damages and interest, bringing the total past damages award to US$182 million. Technology involves recombinant factor VIII for treating hemophilia.
CardioNet, LLC v. InfoBionic, Inc. — Led an appellate team that successfully obtained a significant § 101 patent eligibility win for CardioNet at the Federal Circuit. In a precedential opinion, the Federal Circuit reversed the District of Massachusetts and upheld the eligibility of CardioNet’s remote cardiac monitoring software patent.
Certain Audio Processing Hardware, Software and Products Containing the Same, 337-TA-1026 — Co-led an ITC team that successfully defended Apple at the ITC against three patents involving audio processing and noise suppression technology. After a one-week bench trial, obtained initial determination finding of no infringement, no technical domestic industry, and no standing. Commission affirmed finding of no violation based on no technical domestic industry.
Zirvi v. Illumina, Inc. et al. – Successfully defended Illumina in a District of New Jersey case involving correction of inventorship and conspiracy claims relating to DNA sequencing technology. The Court dismissed Zirvi’s claims in their entirety and is currently considering Illumina’s Rule 11 motion for sanctions.
Boston Scientific Neuromodulation Corporation v. Nevro Corp. — Successfully defended Nevro in three cases in the District of Delaware relating to spinal cord stimulation and implantable medical device technology. After Boston Scientific asserted 20 patents and over 60 trade secrets, turned the tables when the six-year litigation resolved with plaintiff Boston Scientific paying Nevro US$85 million. Defeated Boston Scientific’s § 101 challenge to Nevro’s core paresthesia-free patents. Lead counsel for Nevro in a series of IPR proceedings and appeals that successfully invalidated claims of 11 Boston Scientific patents.
Intuitive Surgical, Inc. v. Auris Health, Inc. — Lead counsel for Auris Health, a subsidiary of J&J, in a series of IPR proceedings challenging the validity of multiple Intuitive Surgical patents asserted in the District of Delaware. The PTAB invalidated all claims of a key asserted Intuitive Surgical patent relating to surgical robotics technology but upheld the claims of two other patents. Then led an appellate team that argued all three appeals on the same day, and successfully obtained an affirmance of Auris’ PTAB win below, at the same time successfully vacated and remanded most claims of the other two patents upheld by the PTAB.
Microsoft Corp. v. SynKloud Tech., LLC / SynKloud Tech., LLC v. HP, Inc. — Successfully invalidated on behalf of Microsoft and HP, three of four remote storage patents asserted by SynKloud in the District of Delaware, under § 101 on motions to dismiss. The case settled shortly thereafter.
Cranial Technologies, Inc. v. OttoBock SE & Co. KGAA and Active Life, LLC – Lead counsel for Cranial Technologies in a five-patent case in the Central District of California relating to technology for manufacturing cranial orthotics to correct infant head deformities. Defeated OttoBock’s § 101 challenge on its motion to dismiss.
I-Mab Biopharma v. Inhibrx, Inc. and Brendan Eckelman – Lead counsel for I-Mab in asserting trade secret claims under DTSA in the District of Delaware relating to discovery and development of bispecific antibodies for cancer treatment. Defeated Inhibrx’s motion to dismiss on all grounds raised after a full day evidentiary hearing.
PRCM Advisors, LLC v. Two Harbors Investment Corp. — Represented Pine River Capital Management in asserting trade secret claims under DTSA and other IP claims in SDNY for Two Harbors’ improper taking of all software and other IP owned by Pine River relating to the management of mortgage REITs. Defeated Two Harbors’ motion to dismiss on all trade secret and IP claims.
Hanwha Solutions Corp. v. LONGi Green Energy Tech. Co. et al. — Lead counsel for LONGi in an IPR proceeding that successfully invalidated all patent claims asserted by Hanwha in an ITC action involving solar cell technology. Also led an appellate team that successfully affirmed the PTAB win at the Federal Circuit.
SightSound Tech., LLC v. Apple, Inc. — Successfully invalidated all 94 asserted claims in a three-patent case in the Western District of Pennsylvania involving electronic sale and transmission of music and video. Invalidated 87 claims in district court. Invalidated remaining seven claims in covered business method (CBM) proceedings at the PTAB. Federal Circuit affirmed.
Antares Pharma, Inc. v. Medac Pharma, Inc. et al. — Successfully defeated Antares’ motion for preliminary injunction in the District of Delaware in a “bet-the-company” patent infringement action involving concentrated methotrexate injection to treat rheumatoid arthritis. Federal Circuit affirmed and, in a precedential decision, found all claims on appeal invalid for failing the “original patent” requirement of 35 U.S.C. § 251 for reissue claims.
CardioNet, LLC et al. v. MedTel24, Inc. et al. — Obtained a bench trial win for plaintiff BioTelemetry (formerly CardioNet) in the Eastern District of Pennsylvania finding MedTel24 in contempt of a consent judgment, and finding all five CardioNet patents infringed, valid, and enforceable. MedTel24 was ordered to deliver to BioTelemetry all its hardware, software, and documentation related to the infringing technology at the penalty of US$20,000 for each day that the materials were not delivered. CardioNet was awarded its lost profits and lawyers’ fees.
Smartflash, LLC et al. v. Apple, Inc. — Defended Apple in a six-patent case in the Eastern District of Texas, including a jury trial, relating to purchase and digital rights management of content. Federal Circuit found all asserted claims ineligible under § 101. Also represented Apple in more than 30 CBM petitions on more than 150 claims resulting in five rounds of instituted proceedings at the PTAB; successfully invalidated all challenged claims in final decisions. Federal Circuit affirmed.

*Some of the above matters were handled by Ching-Lee prior to joining Sidley.

Credentials

Admissions & Certifications

U.S. Supreme Court
U.S. Patent & Trademark Office
U.S. Court of Appeals, 1st Circuit
U.S. Court of Appeals, Federal Circuit
U.S. District Court, District of Colorado
U.S. District Court, E.D. of New York
U.S. District Court, S.D. of New York
U.S. District Court, E.D. of Texas
New York

Education

Fordham University School of Law, J.D., 1997
Princeton University, B.S. in Mechanical and Aerospace Engineering, 1992 (with honors)