Principal, Co-Chair / Southern California / 858-678-4730
shear@fr.com

Chad Shear

Chad Shear is a Principal in Fish & Richardson’s Delaware office. He is a member of the firm’s life sciences and pharmaceutical litigation group, and has represented clients across that technology spectrum as well as others. As lead trial counsel, Chad successfully defended Callaway Golf in a recent jury trial in the Eastern District of Texas. Another recent success involved a bench trial victory on behalf of a pioneering pharmaceutical developer of glaucoma medications as well as a favorable settlement after a full bench trial on behalf of a pioneer in cardiovascular medications.

 

Education

J.D., University of Illinois College of Law 1999
magna cum laude


B.S., Texas A&M University 1996
Chemistry

 

Admissions

  • U.S. Patent and Trademark Office 2001
  • Texas 1999
  • California 2004
  • Delaware 2012
  • Supreme Court of the United States
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the Central District of California
  • U.S. District Court for the Eastern District of California
  • U.S. District Court for the Northern District of California
  • U.S. District Court for the Southern District of California
  • U.S. District Court for the Northern District of Texas

 

Clerkships

United States Court of Appeals for the Federal Circuit, The Honorable Haldane Robert Mayer, 2001 – 2003

 

Memberships & Affiliations

​Member: Giles S. Rich American Inn of Court, Federal Circuit Bar Association, American Intellectual Property Law Association.

 

Other Distinctions

“Best for Life Sciences & Pharmaceutical Litigation – California,” Wealth & Finance Business Awards 2015

Chosen for “Sustained Excellence in Patent Litigation,” Corporate America Legal Elite 2015

 

Presentations and publications

Co-speaker for Fish Biosimilars Webinar, “Biosimilars 102 – Litigation: Planning and Strategy,” March 3, 2016.

Co-speaker for Fish Biosimilars Webinar, “Biosimilars 101,” January 21, 2016.

Co-lecturer for Patent Resources Group Advanced Patent Law Course, “Hatch-Waxman and Biosimilars: A Total Immersion Course Encompassing Strategies for Prosecution, FDA Regulation, Post-Grant Challenge, Litigation and Appeal,” April 16-18, 2015.

Co-speaker, “Biotech & Pharmaceutical Patent Cases: 2014 Year in Review,” Boston Breakfast Series (January 7, 2015).

I’ve Got My Eye on You – FDA May be More Closely Evaluating Generic Products,” Pharma Compliance Monitor (June 2014).

Hatch-Waxman at the Federal Circuit: Sustaining validity of formulation patents is no easy task,” Fish Litigation Blog (December 2013).

Author and lecturer for Patent Resources Group Advanced Patent Law Course, “Pharma & Biotech Strategies for Patent Prosecution, Hatch-Waxman, and Litigation.”

“The Ever Changing Seas of Patent Law,” BIO’s Intellectual Property Counsels’ Fall Conference (2007).

“How to Prepare for and Conduct Markman Hearings,” Claim Construction from the Appellate Perspective, Practicing Law Institute, San Francisco (2007).

KSR International vs. Teleflex – Understanding Obviousness and Pro Active Strategies for Protecting Your Patents” IP Law & Business, Innovations in IP Litigation – Spring Briefing (2007).

“From a Clerk’s Perspective: A Discussion of Recent Cases From an Insider’s Perspective,” BIO’s Intellectual Property Counsels’ Spring Conference (2007).

“How to Prepare for and Conduct Markman Hearings,” Claim Construction from the Appellate Perspective, Practicing Law Institute, San Francisco (2005).

“How to Prepare & Conduct Markman Hearings 2005,” with D. Grinshpun, anthology published by Practicing Law Institute (2005).

“Ethics: Document Retention, Spoliation and Related Ethical Issues,” Center for American and International Law’s 42nd Annual Intellectual Property Law Conference, Dallas, Texas (2004).

W. Chad Shear and Thomas J. Van Gilder, Spoliation and Document Retention: Know When to Hold ‘Em (2004).

“The Anti-Cybersquatting Consumer Protection Act – An Offensive Weapon for Trademark Holders,” 1 ILL. J. L. TECH. & POL’Y 219 (2001).

“The Ethics of Opinion Letters Under the United States Patent & Trademark Office Code of Professional Responsibility and the New York Code of Professional Responsibility,” ETHICS IN CONTEXT 1999: ETHICS FOR SECURITIES LAWYERS, CORPORATE COUNSEL, BANKRUPTCY LAWYERS, LITIGATORS, ESTATE PLANNERS AND TRADEMARK LAWYERS, Practicing Law Institute (1999).

“The Liability Implications of the Illinois Electronic Commerce Security Act,” 2 MOD. TRENDS INTELL. PROP. 87 (1998).

 

Experience

Coherus Biosciences v. Abbvie Biotechnology Ltd. (Patent Trial and Appeal Board): Representing biosimilar manufacturer Coherus in four inter partes review petitions filed against AbbVie patents covering dosing protocols for HUMIRA®.

Idenix v. Gilead Sciences, Inc., (D. Mass; D. Del): Representing defendant, Gilead, in worldwide litigation over its blockbuster hepatitis C treatments SOVALDI® and HARVONI®.

Gilead Sciences, Inc. v. AbbVie (D. Del.): Representing plaintiff in litigation over its hepatitis C treatment HARVONI®.

iCeutica Inc. et al v Lupin, LTD., et al (D. Del): Lead counsel for Plaintiffs in Hatch-Waxman litigation over pain medication ZORVOLEX®.

GSK v Teva; GSK v Glenmark (D.Del): counsel for plaintiffs in litigation over heart-failure medication COREG®.

Roche Palo Alto, et al v. Lupin, Ltd., et al (D.N.J.): Trial counsel for plaintiffs in Hatch-Waxman action over ANDA for angina drug RANEXA®; after three-week bench trial in May, 2013, case settled with Lupin agreeing to forestall entry until three months before patent expiry.

Allergan, Inc. v. Sandoz, Inc., et al (E.D.Tx.): Trial counsel for plaintiff in Hatch-Waxman actions over ANDAs for glaucoma drug COMBIGAN®.  Injunction entered against generic entry in August, 2011.  Injunction affirmed at 726 F.3d.1286 (Fed. Cir. 2013).

Allergan, Inc. v. Akorn, Inc., et al (D. Del.): Counsel for plaintiff in Hatch-Waxman action over ANDA for ocular pain drug ACUVAIL®.   Case amicably settled.

Allergan, Inc. v. Akorn, Inc, et al (E.D.Tx.): Counsel for plaintiff in patent infringement actions over generic versions of ocular pain drug ACULAR® LS.   Cases amicably settled.

Allergan, Inc. v. Sandoz, Inc., et al (E.D.Tx.): Trial counsel for plaintiff in Hatch-Waxman actions over ANDAs for glaucoma drug COMBIGAN®. Injunction entered against generic entry. Affirmed on appeal.

In re Brimonidine Patent Litigation, MDL No. 1866 (D. Del.): Trial and appellate counsel for Allergan in multi-district litigation regarding ANDAs for glaucoma drugs, ALPHAGAN P .15% and ALPHAGAN® P .1%. Injunction entered against generic entry in October, 2009. Injunction affirmed at 643 F.3d 1366 (Fed. Cir. 2011).

Colucci v. Callaway Golf (E.D. TX. 2010): Lead trial counsel for Callaway Golf – obtained successful defense jury verdict in a case involving several lines of Callaway Golf putters.

Allergan, Inc., et al v. Alcon Laboratories, et al (D.Del.):  Counsel for Allergan regarding a generic version of Allergan’s glaucoma drug, ALPHAGAN® P 0.15% that resulted in settlement on the morning of opening statements with defendant agreeing not to launch generic drug for several years and to pay royalty on release.

Bella Bella, Inc. v. Mary Kay, Inc. (C.D. Cal. 2008): Defended Mary Kay in patent litigation regarding micro-derm abrasion skin care products.

Microsoft Corporation adv. Data Encryption Corporation(C.D. Cal.): Won summary judgment of noninfringement for defendant Microsoft in patent infringement case against Windows involving file encryption technology, affirmed by the United States Court of Appeals for the Federal Circuit.

Dyneon LLC, et al v. Dupont Dow Elastomers (D. Minn.): Represented Dyneon in patent infringement action related to polymer processing additives. Case favorably settled shortly before trial.

Dimension One Spas v. Coverplay (S.D. Cal): Represented Dimension One Spas in patent infringement action related to spa cover lifters.  Won summary judgment of infringement and no invalidity after bench trial.

Microsoft Corporation adv. TV Interactive Data (N.D. Cal.): Defended Microsoft in four-patent litigation involving Windows operating system and device driver technology. Case favorably settled.

Callaway Golf Co. v. Thomas Golf, Inc. (S.D Cal.): Represented Callaway Golf in trademark infringement and patent declaratory judgment action. Case favorably settled.

DuFresne v. Microsoft Corp. et al. (D. Mass.): Counsel for Microsoft, Adobe Systems, Inc., and Macromedia, Inc. in litigation involving client-server programming environment where executable tags are embedded in an html file.

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