Tom Chen is a partner in the Intellectual Property Practice Group and member of the firm's Board of Directors. Tom's practice focuses on patent prosecution and counseling in a variety of technologies, including e-commerce and mobile payments, electrical circuits, semiconductor memories/processing, semiconductor equipment , fiber optic and wireless communications, televisions, mechanical devices, Internet related applications, microprocessors and other computer architecture. Tom also has experience in patent litigation, including matters before the International Trade Commission and district courts. He has been involved in all phases of litigation, including discovery, depositions, expert reports, and briefs.
Prior to entering law school, Tom worked in the Missile Systems Group at Hughes Aircraft. There he designed and tested logic to improve missile-tracking performance, presented logic designs internally and to the Navy, and developed, implemented, and tested missile system software and algorithms.
In addition to his law degree, Tom holds an Engineer's Degree in electrical engineering, an M.S. in electrical engineering, and a B.S. in physics.
Tom is a member of Haynes and Boone's 60-person Attorney Diversity Committee, which focuses on advancing the hiring, retention and promotion of diverse lawyers within the firm.
- In re Certain GPS Chips, Associated Software and Systems, and Products Containing Same (337-TA-596): Represented complainant SiRF Technology, Inc. in a patent infringement matter before the ITC involving global positioning system (GPS) technology.
- In re Field Programmable Gate Arrays (337-TA-441): Represented complainant Xilinx, Inc. in a patent infringement case involving field programmable gate arrays (FPGAs).
- SiRF Technology v. u-Nav Microelectronics Corporation (USDC ND Cal): Represented SiRF Technology in a patent infringement case involving global positioning system (GPS) technology.
- UPI Semiconductor Corporation v. Richtek Technology Corporation (CA State and USDC ND Cal): Represented UPI Semiconductor in a patent infringement case involving power management integrated circuits.
Recent Speeches and Publications
- "Managing Your IP Litigation Risk," co-author, Daily Journal, January 2, 2013.
- "Risk Management and Intellectual Property Issues," panelist, 24th Annual All Hands Meeting, Santa Clara, CA, December 6, 2012.
- "Conformity is a Virtue: The U.S. Patent and Trademark Office Proposes Changes to the Duty of Disclosure to Match the Therasense Standard," co-author, Lexology, July 26, 2011.
- "Patent Reform 2011: It Could Happen to You," co-author, Haynes and Boone Alert, June 28, 2011.
- "How Much Would You Pay For This Lovely Expedited Examination? USPTO Approves Priority Utility And Plant Patent Application Examination," co-author, Lexology, April 5, 2011.
- "On Patenting Business Methods," author, San Francisco Chronicle, July 7, 2010.
- "A Patently Ambivalent Decision," author, Orange County Register, June 30, 2010.
- Quoted in, "Supreme Court Voids a Patent, Avoids Big Changes to Patent System," Science Insider, June 28, 2010.
- "The Supreme Court Rules on Bilski: Business Method Patents Survive Another Day," author, Orange County Business Journal, August 1, 2010.
01/03/2013 - Daily Journal Guest Article: Managing Your IP Litigation Risk
Risks associated with intellectual property, or IP, can be significant. For example, Apple recently obtain a billion dollar jury verdict against Samsung for patent infringement. Although such disputes can be extensive, they usually involve assertion of IP by entities with competing commercial products and typically result in the entities licensing each other.
07/26/2011 - Conformity is a Virtue: The U.S. Patent and Trademark Office Proposes Changes to the Duty of Disclosure to Match the Therasense Standard
The U.S. Patent and Trademark Office (“PTO”) has proposed changes to two rules that are designed to streamline the obligations of innovators and their patent practitioners to disclose information to the PTO in patent applications and reexamination proceedings.
06/28/2011 - Patent Reform 2011: It Could Happen to You
On June 23, 2011, the U.S. House of Representatives passed House Bill H.R. 1249 (the “Leahy-Smith America Invents Act”) by a vote of 304-117. This follows on the Senate’s 95-5 passage of bill S. 23 (the “America Invents Act”) back on March 8, 2011.
06/29/2010 - The Supreme Court Rules on Bilski: Business Method Patents Survive
On June 28, 2010, the United States Supreme Court announced its decision on Bilski v. Kappos
regarding what inventions are eligible for patent protection. The decision affirms that business methods are patentable, although the specific business methods at the center of the case are not.