Eugene L. Chang

Partner

New York
Willkie Farr & Gallagher LLP
787 Seventh Avenue
New York, NY 10019-6099
T 212 728 8988
F 212 728 9988
echangwillkie.com

Eugene Chang is a partner in the Intellectual Property Department. He is an intellectual property litigator and licensing attorney who practices on the cutting edge of intellectual property, antitrust and bankruptcy law. He litigates intellectual property issues in the United States and internationally across a wide range of technology areas. He also counsels clients on intellectual property and technology services issues arising in complex transactions, like private equity, insurance mergers and acquisitions, public and private offerings, bankruptcy-related acquisitions and standards-related licensing programs.

Eugene was named to the 2012 BTI Client Service All-Star Team, an elite group of attorneys recognized by leading corporate counsel for delivering superior client service.

Highlights

Eugene Chang is a partner in the Intellectual Property Department. He is an intellectual property litigator and licensing attorney who practices on the cutting edge of intellectual property, antitrust and bankruptcy law. He litigates intellectual property issues in the United States and internationally across a wide range of technology areas. He also counsels clients on intellectual property and technology services issues arising in complex transactions, like private equity, insurance mergers and acquisitions, public and private offerings, bankruptcy-related acquisitions and standards-related licensing programs.

Eugene was named to the 2012 BTI Client Service All-Star Team, an elite group of attorneys recognized by leading corporate counsel for delivering superior client service.

Selected Significant Matters

  • Lead trial counsel representing GFI Software against four different patent assertion entities in separate patent infringement actions in the Eastern District of Texas; successfully resolved three actions on favorable terms.
  • Lead attorney on IP allocation and valuation issues representing the UK Pension Fund of Nortel Networks in the Nortel bankruptcy proceedings pending in the US and Canada concerning allocation of $7.5 billion in assets.
  • Represented Aviva plc in its $1.8 billion sale of Aviva USA Corporation to Athene Holding Ltd, including negotiating appropriate transition. services arrangements.
  • Currently representing Actavis against Galderma Laboratories in an ANDA patent litigation concerning a topical acne treatment.
  • Represented client in acquisition of Microporous from Polypore in FTC divestiture and representing Microporous in related patent litigation.
  • Representing The Mens Wearhouse in acquisition of Joseph Abboud and various other transactions, and in litigation concerning trademark licenses.
  • Represented Protective Life in $1.06 billion acquisition of MONY Life Insurance Company and certain other assets from AXA, including negotiating appropriate transition services.
  • Representing Syncsort Inc. on software IP issues in various acquisitions.
  • Representing Allstate in licensing transactions concerning software and technical services.
  • Trial counsel successfully representing Hospira Inc. and Orion Corp. in protecting the validity and enforceability of a patent for the active ingredient in the sedative Precedex.
  • Representing Westport Innovations in licensing transactions.
  • Representing Arkema against Honeywell in patent litigation concerning fluorochemical refrigerants.
  • Representing Hilite in patent litigation concerning automotive engine technology.
  • Representing Neos Therapeutics against Shire in an ANDA patent litigation concerning an amphetamine product.
  • Represented Nautilus Neurosciences against Sandoz in ANDA patent litigation concerning a migraine pharmaceutical treatment.
  • Represented Battelle Memorial on IP and software issues in the acquisition of Seebyte Corp.
  • Represented Telcordia Technologies, Inc., Providence Equity Partners and Warburg Pincus in the sale of Telcordia to Ericsson.
  • Represented Aquiline Capital in technology investments and acquisitions, including Clear2Pay.
  • Represented Insight Venture Partners in multiple transactions, including investment in Drilling Info Inc., the leveraged recapitalization of a German software company, and the sale of Hitwise Inc. to Experian.
  • Represented Spheris, Inc. in chapter 11 restructuring proceedings.
  • Successfully represented Philips Medical Systems in enforcing and defending against 21 patents relating to several different facets of automatic external defibrillator (AED) technology.
  • Successfully represented Philips Semiconductors in enforcing patents forming the basis for a successful licensing program covering an industry standard for communication between integrated circuit chips.
  • Successfully represented Johnson & Johnson in enforcing pioneering patents relating to coronary stent technology.

Selected Professional and Business Activities

Eugene is a past Vice Chair of the Asian Practice Committee of the Intellectual Property Owners Association (IPO), and has participated in IPO delegations meeting with judges, officials of various patent offices, and intellectual property organizations in China, Japan and Korea. Eugene has given presentations on Patent Law and Antitrust Law to organizations around the world, and has lectured on U.S. Patent and Antitrust Law at Franklin Pierce Law School in the United States and Fudan University School of Law in China.

Eugene has vast experience in addressing intellectual property issues and technology services arrangements in mergers and acquisitions, including in insurance-related transactions. In particular, he has represented both buyers and sellers in managing complex transition services arrangements related to the transfer or acquisition of insurance assets and securities, including for Aviva plc, Allstate, and Protective Life.

Eugene also has strong experience addressing intellectual property issues in renewable energy. He has given presentations on intellectual property topics at renewable energy conferences, including the 24th European Photovoltaic Solar Energy Conference (EUPVSEC) in Hamburg, Germany and the Tenth World Renewable Energy Congress (WREC X) in Glasgow, Scotland. Eugene has also litigated and counseled clients in environmentally friendly technologies such as light emitting diodes (LEDs), compact fluorescent lighting and automotive refrigerants with low global warming potential.

Eugene is also active in pro bono activities and has been honored by the Legal Aid Society of New York with an award for Outstanding Pro Bono Service.

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