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Chiaki_Kobayashi
Chiaki Kobayashi
Associate
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vCard
  • 33rd Floor, Shiroyama Trust Tower
  • 3-1, Toranomon 4-chome
  • Minato-ku, Tokyo, Japan 105-6033
+ 813 3431 6525
chiaki.kobayashi@finnegan.com chiaki.kobayashi@finnegan.com

Chiaki Kobayashi

Associate

  • + 813 3431 6525 + 813 3431 6525
  • chiaki.kobayashi@finnegan.com chiaki.kobayashi@finnegan.com
  • 33rd Floor, Shiroyama Trust Tower
  • 3-1, Toranomon 4-chome
  • Minato-ku, Tokyo, Japan 105-6033
  • vCard
Chiaki_Kobayashi
Chiaki Kobayashi practices all aspects of intellectual property law, including client counseling, prosecution, opinion preparation, due diligence investigations, litigation, and post-grant review proceedings related to the chemical, biotechnology, and pharmaceutical fields.   

With her fluency in Japanese and cultural appreciation, Chiaki has significant experience counseling Japanese clients on strategic intellectual property development, patent portfolio management, due diligence, patent prosecution, litigation, and pre-litigation strategies. She frequently lectures on intellectual property issues affecting Japanese companies and their global businesses. Chiaki participates in local professional associations, such as the Licensing Executives Society of Japan. She has extensive experience in litigation involving Japanese parties, and she routinely works with in-house counsel and vendors to reduce the burden of U.S. litigation on Japanese clients.

Chiaki's experience includes numerous aspects of patent litigation, including coordinating discovery, developing infringement and invalidity strategies, preparing fact and technical expert witnesses, drafting a wide range of motions and briefs, and taking and defending depositions. She has particular experience in representing pharmaceutical patent holders in litigation arising under the Hatch-Waxman Act.

While in law school, Chiaki worked at Finnegan as a summer associate and as a law clerk. As an undergraduate, she assisted in research on lipid metabolism using Nile-rat models.

Et Cetera

  • ABA-Bloomberg BNA Award for Excellence in the Study of Intellectual Property Law, 2014.
  • Served as notes editor for the AIPLA Quarterly Journal, 2013-2014.
  • Former judicial extern handling vaccine injury claims for Special Master Dee Lord at the Office of Special Masters, Court of Federal Claims, Summer 2012.
  • Phi Beta Kappa, 2011.
  • Sidney S. Cohen Award in Economics, 2011.
  • CRC Press Award in Chemistry, 2008.

Experience

Senju Pharmaceutical Co.; Bausch + Lomb v. Lupin Ltd.

Represented Senju and Bausch + Lomb in Hatch-Waxman patent infringement litigation concerning multiple ANDAs for generic versions of Prolensa®.  Secured a permanent injunction against generic defendants.

1:14-cv-00667, -04149; 1:15-cv-00335; 1:16-cv-01097, D.N.J., Judges Goodman, Shipp, Simandle, Williams

Bausch + Lomb v. Sandoz, Inc.

Secured a permanent injunction against generic defendants on behalf of Bausch + Lomb, Mitsubishi Tanabe, Ube, and Senju in Hatch-Waxman patent infringement litigation concerning multiple ANDAs for generic versions of opthalmic drug Bepreve®.

1:14-cv-01325, D.N.J., Judges Arpert, Hillman, Schneider, Shipp

Commercial Copy Innovations, Inc. v. Mimaki USA, Inc. et al.

Represented Mimaki in a patent infringement action concerning inkjet inks and methods of printing.

8:17-cv-00437, C.D. Cal., Judges Scott, Selna

Dow Pharmaceutical Sciences, Inc. v. Tolmar, Inc.

Represented Dow and Valeant in Hatch-Waxman patent infringement litigation concerning multiple ANDAs for generic versions of Acanya®.  Secured a permanent injunction against generic defendants.

2:15-cv-07971, D.N.J., Judges Bongiovanni, Chesler, Waldor

Dow Pharmaceutical Sciences, Inc. v. Taro Pharmaceuticals U.S.A., Inc.

Represents Dow and Valeant in Hatch-Waxman patent infringement litigation concerning multiple ANDAs for generic versions of Onexton™.

2:16-cv-00217; 2:17-cv-00544, -01568, D.N.J., Judges Chesler, Waldor

Insights

Webinar

Hot Topics in Artificial Intelligence (AI) and Bio-pharm

Hot Topics in Artificial Intelligence (AI) and Bio-pharm Hot Topics in Artificial Intelligence (AI) and Bio-pharm

December 22, 2020

Webinar

Seminar

LES Japan Kansai Regional U.S. Working Group LES Japan Kansai Regional U.S. Working Group

November 20, 2020

Virtual

Conference

FCBA Global Series Fall 2020 FCBA Global Series Fall 2020

September 25 - December 15, 2020

Virtual

Webinar

Strategic Section 112 Considerations for Japanese Companies in the Hi-tech and Bio-pharm Industries

Strategic Section 112 Considerations for Japanese Companies in the Hi-tech and Bio-pharm Industries Strategic Section 112 Considerations for Japanese Companies in the Hi-tech and Bio-pharm Industries

August 20, 2020

Webinar

Seminar

Useful Strategies in Dealing with Post-Grant Proceedings and Patent Eligibility

Useful Strategies in Dealing with Post-Grant Proceedings and Patent Eligibility Useful Strategies in Dealing with Post-Grant Proceedings and Patent Eligibility

August 28, 2018

Tokyo

Seminar

Training Seminar on Delivering Outcomes in the Medical Field Training Seminar on Delivering Outcomes in the Medical Field

November 1, 2017

Tokyo

2 more

Professional Activities

  • Licensing Executives Society of Japan
Admissions and Education

Admissions

  • California
  • District of Columbia
  • Registered Foreign Attorney in Japan (Gaikokuho Jimu Bengoshi)

Education

George Washington University Law School
J.D., with honors, 2014
Brandeis University
B.S., Biochemistry, Economics, and Chemistry, magna cum laude, 2011

Languages

  • Japanese

Chiaki's Practices

Patent Litigation
Branded Hatch-Waxman (ANDA)
Pre-Trial Strategy
Patent Office Examinations
Prosecution
Patent Portfolio Management, Monetization, and Transactions
Due Diligence
Opinions and Counseling
Post-Grant Proceedings

Chiaki's Industries

Energy
Chemical
Life Sciences
Biotechnology
Pharmaceutical

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