Desmarais
Betty Chen

Betty Chen

Partner, San Francisco
PHONE: 415-573-1905 FAX: 415-573-1901
bchen@desmaraisllp.com
Betty has nearly two decades of experience successfully representing tech companies in more than 130 high-stakes Hatch-Waxman, trade secret, antitrust, breach of contract, fraud, and patent cases. She has taken approximately 20 cases to trial in a variety of forums across the country, including federal district courts, state courts, and the International Trade Commission. Betty’s practice also focuses on strategic patent prosecution and portfolio management, as well as IP due diligence — particularly in the pharmaceutical and medical device space — for major mergers and acquisitions.  Her clients’ products include 5G wireless communication infrastructure, software and applications, medical devices and parts, semiconductors, hardware, consumer electronics, and other cutting-edge technologies.
 
Betty is an innovative, zealous, and talented trial lawyer with extensive courtroom experience, legal acumen, and a deep understanding of the technologies that underlie her clients’ products. Armed with these skills, she has achieved an impressive record in successfully litigating contentious, bet-the-company cases.  For example, on the defense side, her sophisticated legal strategies have helped numerous clients defeat claims with summary judgments, full-defense jury verdicts, and voluntary dismissals of plaintiff claims in multimillion-dollar disputes.  On the plaintiff’s side, Betty has helped her clients win tens of millions in damages.
 
Betty has been identified as an “IP Star” by Managing IP (2022-2023) and was listed among the “Top Intellectual Property Lawyers in California" by the Daily Journal (2022-2023).  Betty was selected as a Federal Circuit “Global Fellow” for 2022-2023, which identifies 24 attorneys around the world who are “members of the next generation leaders in patents.”  Betty was also the recipient of the American Bar Association’s 2020 “Top 40 Young Lawyers” and “On the Rise” award, given to members of the organization who have demonstrated a broad range of high achievement, innovation, vision, leadership, and service to the profession and community. She was also named one of Legal Momentum’s “Women of Achievement” and as a National Asian Pacific American Bar Association “Best Lawyers Under 40” in 2020. Throughout the years, she has received other accolades from organizations and publications such as “40 Under 40” by the Silicon Valley Business Journal, “Diversity Leader” by Profiles in Diversity Journal, “Rising Star” by Super Lawyers, and many more.
 
She is an active member of several legal organizations, including the Asian Law Alliance, the Asian Pacific American Bar Association of Silicon Valley, and NAPABA.  In the community, Betty regularly provides pro bono counsel to Kids in Need of Defense, an organization that helps unaccompanied immigrant children navigate asylum and immigration proceedings and find refuge in the U.S.

Clerk & Government Experience 

  • Law Clerk to the Hon. Ron Clark, United States District Court for the Eastern District of Texas, 2006-2008 

Media Mentions

Speaking Engagements

  • “Subject Matter Eligibility Limits: Protecting Brand when Patents are not Available,” Federal Circuit Global Series (Nov 2023)
  • “When Less is More: Judges From Other Ranches Explain What Pretrial and Trial Limitations Help them Steer the Herd,” EDTX Bench/Bar Conference (Oct 2023)
  • “Industry Leaders' Panel,” University of San Diego School of Law 10 Annual Patent Law Conference (March 17, 2023)
  • “Talk Slowly, Think Quickly: Lessons on Trial Presentation,” EDTX Bench Bar Conference (October 28, 2022)
  • “COVID-19: Contract Management and Litigation Risk,” Asian Pacific American Bar Association of Silicon Valley, Webinar (May 2020)
  • “Texas Engineering Law and Ethics,” San Antonio (September 2019)
  • “Pretrial Practice,” Litigating Patents Effectively, Stanford Law School (September 2018)
  • “Section 102/103 Invalidity,” 18th Annual Berkeley-Stanford Advanced Patent Law Institute(December 2017)
  • “Getting Your Foot in the Door for Big Law,” National Asian Pacific American Bar Association Convention (November 2017)
  • “Identifying, Developing & Retaining Minority Talent,” LegalWeek West Coast, San Francisco (June 13, 2017)
  • “IP Considerations in Cross-border Deals between China and U.S. Companies,” Conference of the Chinese American Biopharmaceutical Society (June 2017)
  • “Recent Flip-Flops in Intellectual Property Law,” Fish L.E.A.D. Event (September 2017)
  • “When the Boys Go Golfing: Bonding, Networking & Promoting Yourself,” Women in IP & Law Silicon Valley (June 2017)
  • “Judges Panel with NDCA and EDTX District Court Judges,” 17th Annual Berkeley-Stanford Advanced Patent Law Institute (December 2016)
  • “Revisions to the Local Rules, Standing Orders & Thoughts on Timing of PTAB Petitions & Stays Pending Inter Partes Review,” Eastern District of Texas Bench and Bar Conference(October 2016)
  • “Smarter, Faster, Cheaper Technology Dispute Resolutions,” Association of Corporate Counsel (September 2016)
  • “Next Steps for Next Gen: Practical Ways to Empower Younger, More Diverse Lawyers,” Fish Webinar Series (July 2016)
  • “Next Steps for Next Gen: Practical Ways to Empower Younger, More Diverse Leadership,” Federal Circuit Bar Association Bench/Bar Conference (June 2016)

Other Distinctions 

  • Super Lawyers, Rising Star, 2019-2024
  • Daily Journal, Intellectual Property Lawyers in California 2022-2023
  • Managing Intellectual Property, IP STAR, 2022-2023
  • Intellectual Asset Management, IAM Patent 1000, Leading Patent Litigator, 2021
  • Profiles in Diversity Journal, Diversity Leader, 2020
  • Legal Momentum, “Women of Achievement”, 2020
  • American Bar Association, Top 40 Young Lawyers 2020
  • Profiles in Diversity Journal, Women Worth Watching, 2019
  • Profiles in Diversity Journal, Women Worth Watching in STEM, 2017
  • National Asian Pacific Bar Association, Best Lawyers Under 40, 2017
  • Silicon Valley/San Jose Business Journal, Women of Influence, 2017
  • Silicon Valley/San Jose Business Journal, 40 Under 40, 2016

MORE LESS

Representative Matters

  • Chamberlain v. Overhead Door (EDTX) - Represented the plaintiff in successfully obtaining a $43 million jury verdict against its competitor Overhead Door in a patent infringement case related to garage door openers. The court then awarded attorneys’ fees and an ongoing royalty.
  • DUSA Pharmaceuticals, Inc. v. Biofrontera, Inc. (D. Mass.) – Represented plaintiff in successfully obtaining preliminary injunction in a medical device matter involving trade secret misappropriation, patent infringement, unfair and deceptive trade practices, and tortious interference claims. The case settled favorably on the eve of trial.
  • Galephar Pharmaceutical Research Inc. et al. v. Upsher-Smith Laboratories (D.N.J.) – Represented the plaintiffs in a Hatch-Waxman case regarding ABSORICA® (isotretinoin) capsules. The case went to a confidential binding arbitration in March 2020, which resulted in a favorable decision for the plaintiffs.
  • In the matter of Certain Electronic Shavers and Components and Accessories Thereof, No. 337-TA-1230 (ITC) – Represented Skull Shaver, a New Jersey-based company that produces a line of electric shaver products, in successfully obtaining a rare general exclusion order (GEO) against a range of manufacturers creating knock-off products. The GEO will prevent all importation of infringing products regardless of whether a company was specifically named in the investigation or how a product is branded/labeled in the marketplace.
  • Innovative Foundry Technologies LLC v. Semiconductor Manufacturing International Corporation et al (WDTX) – Represented Semiconductor Manufacturing International Corporation Americas (SMIC) in patent litigation asserted by Innovative Foundry Technologies LLC (IFT). IFT alleged that SMIC infringed four of its patents. SMIC subsequently filed inter partes review seeking to invalidate each of the four patents in the PTAB. After two of the IPRs were instituted, the matter was resolved via confidential settlement.
  • Realtime Adaptive Streaming v. Adobe Systems Inc. (C.D. Cal.) – Represented Adobe in the District of Massachusetts in an infringement matter asserted by Realtime Adaptive Streaming LLC. The case involved seven patents relating to video compression technologies. Adobe successfully defeated multi-district consolidation with other pending cases and transferred the case to the Central District of California. After multiple wins on claim construction and in inter partes review proceedings, Realtime voluntarily dismissed the case.
  • Taro Pharmaceuticals USA Inc., et al. v. Lupin Ltd. (D.N.J.) – Represented Taro in a Hatch-Waxman patent infringement matter against Lupin. The dispute arose from the submission of an ANDA directed to a generic version of Taro’s patented Topicort® (desoximetasone) Topical Spray, 0.25%, a leading treatment of plaque psoriasis. The case settled favorably during discovery.
  • Looksmart Group Inc. v. Microsoft Corp. (N.D. Cal.) – Represented Microsoft in a patent infringement suit involving Microsoft’s search technology. Won multiple motions to strike that wiped away Looksmart’s infringement and damages theories. Looksmart then dismissed the case with prejudice.
  • Represented a Fortune 50 consumer electronics manufacturer in an Eastern District of Texas patent infringement dispute with involving autocomplete technology. Successfully invalidated the patent on summary judgment.
  • EveryScape, Inc. v. Adobe Systems Incorporated (D. Mass.) – Represented Adobe in a patent infringement suit related to technology used in Photoshop. Won a jury trial of patent invalidity.
  • Reihanifam v. Fresenius (C.D. Cal.) – Represented Fresenius against claims of retaliation, failure to prevent retaliation, wrongful discharge in violation of public policy, breach of contract, and breach of implied covenant of good faith and fair dealing. Won a jury trial on all claims.
  • Ariba, Inc. v. Coupa Software Inc. – Represented Coupa in California state court against claims of misappropriation of trade secrets and conversion. The case settled favorably.
  • Hagenbuch v. Komatsu America Incorporated (C.D. Ill.) – Represented Komatsu against claims of breach of contract and patent infringement involving vehicular technology. The case settled favorably.
  • MasterObjects, Inc. v. Microsoft Corp. (N.D. Cal.) – Represented Microsoft in a patent infringement suit related to internet search and autocomplete technology. The case settled favorably.
  • Airmid IP LLC v. Terumo Cardiovascular System Corporation (E.D. Mich.) – Represented Terumo in a patent infringement suit related to technology for cardiopulmonary bypass and cardioplegia. The case settled favorably.
  • Hubbell Incorporated et al. v. The Watt Stopper, Inc. (WDTX) – Represented Watt Stopper in a patent infringement suit involving lighting technology. The case settled shortly before trial.

EDUCATION

University of Texas Law School, J.D., 2006

University of Southern California, B.S., Business, 2003

ADMISSIONS

2021, Washington

2013, California

2006, Texas
 

OFFICES

Contact

SUGGESTED READING

View bios of firm Partners

OFFICES

Contact