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

Chad Shear

Chad has earned a global reputation for successfully protecting the intellectual property rights and assets of pharmaceutical companies in high-stakes patent litigation in the U.S. and internationally. For his clients, such cases are not mere inconveniences — they are make-or-break disputes that determine returns on multibillion-dollar investments and decades of research.

Over the course of his career, Chad has represented clients in disputes involving some of the leading drugs on the market, including name brands such as SOVALDI®, HARVONI®, EPCLUSA®, RANEXA®, VEMLIDY®, DESCOVY®, ODEFSEY®, and DESCOVY for PrEP® (Gilead Sciences); LATUDA® and APTIOM® (Dainippon Sumitomo Pharma Co. Ltd./Sunovion);  ZORVOLEX® and VIVLODEX® (Iroko Pharmaceuticals); COREG®  and FLOVENT® (GlaxoSmithKline). Many of these cases are global in nature, often involving multiple jurisdictions and major markets in Europe, North America, and the Asia/Pacific region. Despite the scale of these matters, Chad is known for his approachability, pragmatism, legal and business acumen, unwavering dedication to his clients, and unflappability in even the most challenging of circumstances.

Chad’s trial experience is unparalleled. He has served as lead trial attorney or member of the trial team in nearly two dozen trials, including numerous Hatch-Waxman cases. Chad is equally well-versed in representing clients in post-grant proceedings before the U.S. Patent Trial and Appeal Board and in opposition proceedings before the European Patent Office. Drawing upon his experience as a Federal Circuit clerk, he has played a key role in hundreds of appeals.

 

Chad draws on his litigation experience, extensive network of scientific and business experts, and detailed knowledge of his clients’ companies to provide strategic legal counsel on a wide range of business matters. Able to communicate complex ideas in clear language, he speaks and writes frequently on issues such as biosimilars and generics, Hatch-Waxman litigation, Markman hearings, and biotechnology and pharmaceutical patent due diligence. Chad also teaches life sciences trial and patent practice courses around the country.

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
  • 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 District of Delaware
  • U.S. District Court for the Eastern District of Texas
  • 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

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

Recognitions

  • Named a “Leading Patent Professional” by IAM Patent 1000 (2019-2021)
  • Named to “Best of the Best USA Euromoney’s Expert Guide – Top 30 legal practitioners for life sciences” (nationally) (2019, 2021)
  • Named “Life Science Star” by LMG Life Sciences (2017–2020)
  • Finalist for “Hatch Waxman Litigator of the Year” LMG Life Sciences (2020)
  • Awarded “Patent Impact Case of the Year” (Idenix Pharmaceuticals LLC et al v Gilead Sciences, Inc. et al.) by LMG Life Sciences (2017, 2020)
  • Named “Intellectual Property Trailblazer” by National Law Journal (2019)
  • Named as a “California Top IP Lawyers” by Daily Journal (2019)
  • Named “Winning Litigator” by National Law Journal (2018)
  • Named to list of “Best Attorneys” by San Diego Metro Magazine (2018)
  • Recognized as “California Lawyer Attorneys of the Year” CLAY Award by Daily Journal (2018)
  • Awarded “Impact Case of the Year” (Idenix Pharmaceuticals et al. v. Gilead Sciences, Inc.) by LMG Life Sciences (2018)
  • Finalist for “Inter Partes Attorney of the Year”, LMG Life Sciences (2017)
  • Awarded “Patent Impact Case of the Year” (Coherus BioSciences Inc. v AbbVie Biotechnology Ltd.; Gilead Sciences, Inc. v Merck & Co, Inc. et al.); by LMG Life Sciences (2017)

Publications

  • “Hatch-Waxman Success: Start the Invention Story at the Beginning,” The Recorder (August 21, 2020)
  • “How to Build Your Life Sciences Patent Due Diligence Team,” The Recorder (July 20, 2020)
  • “The Data Room in Patent Due Diligence: Perspectives from Two Doors,” The Recorder (May 29, 2020)
  • “A Big Year Is Expected in Life Sciences Patent Litigation,” Metropolitan Corporate Counsel (March 2017)

Speaking Engagements

Experience | Representative Matters

Serves as co-lead counsel for a new Hatch-Waxman global litigation for Gilead Sciences involving the exclusivity of the company’s HIV compound Tenofovir Alafenamide (TAF). The matter involves nine generic drug companies and 15 abbreviated new drug applications (ANDAs), which follows the trend for such cases to become increasingly large each year. The battle, which is just getting started, includes challenges to patents expiring as late as 2032.

Helped wipe out the $2.5 billion willful infringement jury verdict against Gilead Sciences’ blockbuster drugs SOVALDI®, HARVONI®, and EPCLUSA® which cure hepatitis C. This was the largest patent damages award in history, and was reversed after Fish won a rare motion for judgment as a matter of law. In addition to federal court cases and post-grant proceedings at the USPTO, the five-year battle included litigation in Norway, the United Kingdom, Canada, Germany, and Australia, and before the European Patent Office. The Fish team convinced the judge that a reasonable jury, even taking all of the evidence in the light most favorable to Idenix, could only conclude that Idenix’s patent was invalid due to lack of enablement. (Idenix Pharmaceuticals LLC et al. v. Gilead Sciences, Inc.)

Served as co-lead counsel for client Dainippon Sumitomo Pharma Co. Ltd. (Sunovion) in protecting its multibillion-dollar branded drug LATUDA®, the company’s best-selling product. The first wave of litigation involved 16 generic drug company defendants. The case was settled on the first day of trial, and the magnitude of the result was reflected in the company’s stock, which went up nearly 20% in a matter of hours after settlement details were made public. To prevail in such a large case, Chad created and led an issue-focused sub-team, with each providing strategic input on specifically defined aspects of the case.

Handled 10 IPRs filed by Initiative for Medicines, Access & Knowledge Inc. (I-MAK) against multiple Gilead patents. The dispute was short-lived; Fish’s efforts prevented all of I-MAK’s IPRs from being instituted.

Helped win three IPRs for Coherus BioSciences that invalidated patents for the blockbuster drug HUMIRA®. The Coherus case was among the most closely watched life sciences IPRs in 2017 due to its broader implications for the biosimilar industry. (Coherus BioSciences, Inc. v. AbbVie Biotechnology Ltd.)

Led the IP due diligence for Gilead’s successful $11.9 billion acquisition of Kite Pharma, which immediately positioned Gilead as a leader in cell therapy. Since that 2017 deal, Chad has been tapped to help Gilead on several other related matters. While this work falls outside IP litigation, he was invited to participate because of the trust and rapport he developed through his efforts to fully understand his client’s operations and to be their strategic business consultant.

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