Jiazhong (Jason) Luo, Ph.D.
Partner
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Phone: +1 215 979 1809
- Duane Morris LLP
30 South 17th Street
Philadelphia, PA 19103-4196
USA
Jiazhong (Jason) Luo, Ph.D., practices in the area of intellectual property law focusing on all aspects of patent law, including patent prosecution, due diligence, opinion and litigation. He has represented clients in patent prosecutions in the areas of chemistry; pharmaceuticals; material science; polymer science; nanotechnology; semiconductor devices and processing; optoelectronic materials and devices; organic light emitting diodes; photovoltaic devices; smart cards; sensors; green energy; hydrogen storage and refueling; electrical and automated vehicles; energy storage; computer simulation; medical devices; surgical tools; DNA chips; antibody; bioanalysis; and ornamental design.
He has performed analyses and drafted opinions on patentability, freedom-to-operate (FTO), non-infringement and invalidity in these technical areas, including invalidity opinions for generic pharmaceutical companies filing Abbreviated New Drug Applications (ANDA), and FTO opinions before commercialization of medical devices. Dr. Luo has also worked on patent litigation and inter partes review (IPR) cases involving plasma physics, semiconductor processing, chemicals, generic drugs and related applicators.
In addition to his patent law practice, Dr. Luo has also worked on pro bono matters involving trademark, immigration and citizenship.
Dr. Luo has more than a decade of industry experience including research and development work and project management. He developed and commercialized several new technologies and products of polymers and nanomaterials, especially for electric, electronic, optoelectronic and semiconductor applications. He had working experience in international collaboration with Japanese companies. Dr. Luo is an inventor of 11 U.S.-issued patents. He has also authored 15 peer-reviewed research papers, three legal articles, and a book chapter.
Dr. Luo earned a Ph.D. and an M.S. in Materials Science and Engineering from The Ohio State University. He also holds an M.S. in Polymer Chemistry and Physics and a B.S. in Chemistry from Nankai University. Dr. Luo graduated from Temple University Beasley School of Law with a J.D., cum laude, in 2013. He also received the Robert C. Podwil Memorial Prize, which is awarded annually to the graduate who demonstrates excellent academic performance and plans to practice in the area of intellectual property.
He is a native speaker of Chinese and speaks fluent English, and has studied Japanese and German.
Representative Matters
Represented Somerset Therapeutics LLC in settling Hatch-Waxman litigation related to 0.7% olopatadine ophthalmic solution in the United States, a generic version of PATADAY® Once-Daily, permitting entry into the market prior to patent expiry.
Represented Patrin Pharma in Hatch-Waxman litigation related to Assertio’s migraine medication, Cambia (Assertio Therapeutics, Inc. et al. v. Patrin Pharma, Inc., Civil Action No. 20-cv-05055 (N.D. Ill.). Achieved a settlement and license agreement related to all asserted patents.
Represented X Core Technologies, a leading smart card company, and drafted, prosecuted, and obtained a series of patents, including those sold to Idemia, a French multinational company specializing in security and identity solutions.
Member of a team that represented a Fortune 500 company in the sale of a stream of royalty revenue from commercialization of a drug candidate for $485 million in cash.
Member of a team that represented a leading semiconductor company (defendant) in two patent litigation cases involving 13 patents related to plasma technology for semiconductors.
Member of a team that represented a specialty chemical company (plaintiff) in two patent litigation cases involving chemicals and methods for environmental remediation.
Member of a team that represented generic drug companies in two ANDA litigation cases involving pharmaceutical compounds, formulations, and related applicators.
Represented and assisted a LED company to market its products in the U.S.
Admissions
- Pennsylvania
- New Jersey
- U.S. Patent and Trademark Office (USPTO)
- U.S. District Court for the Eastern District of Pennsylvania
Education
- Temple University Beasley School of Law, J.D., cum laude, 2013
- Recipient of the Robert C. Podwil Memorial Prize - The Ohio State University, Ph.D., Materials Science and Engineering, 1998
- The Ohio State University, M.S., Materials Science and Engineering, 1997
- Nankai University, M.S., Polymer Chemistry & Physics, 1993
- Recipient of Yang Shixian Prize - Nankai University, B.S., Chemistry, 1990
Experience
- Duane Morris LLP
- Partner, 2023-present
- Associate, 2013-2022
- Patent Agent, 2012-2013 - Greene Tweed Inc.
- Senior Scientist (Polymer R&D Chemist), 2005-2011 - Eikos Inc.
- Senior Scientist, 2003-2005 - Emerson & Cuming, Electronic & Engineering Division, National Starch & Chemical/ICI
- Senior Project Supervisor, 2001-2003 - Judd Wire Inc., Subsidiary of Sumitomo Electric Industries, Ltd.
- Materials R&D Engineer, 1998-2000 - The Ohio State University
- Research Associate, 1994-1998 - Nankai University
- Research Engineer, 1993-1994
Honors and Awards
- Selected to Metro Philadelphia's AAPI Power Players List, 2024
No aspect of these rankings has been approved by the Supreme Court of New Jersey. Further information on methodologies is available via these links.
Professional Activities
- American Inn of Court of Benjamin Franklin
- American Intellectual Property Law Association
- American Chemical Society
- Materials Research Society
- Temple Journal of Science, Technology & Environmental Law
- Research & Article Editor (2011-2012)
- Staff Editor (2010-2011) - Mid-Atlantic Rubber and Plastics Group
- Board Member, 2008-2009
Selected Publications
- Author, "Federal Crcuit Revives Induced Infringement Suit Against Generic Pharma When Its Skinny Label Is Skinny Enough," Duane Morris Alert, July 15, 2024
- Co-author, "District Court of Delaware Rules for Generic Pharma's Use of Skinny Label, but Permits Induced Infringement Suit to Proceed Against Insurer," Duane Morris Alert, February 10, 2022
- Co-author, "Federal Circuit's Rehearing Decision Confirms Induced Infringement Even When Skinny Label Was Used," August 30, 2021
- Co-author, "FDA's Additional Draft Guidance on Biosimilarity and Interchangeability to Seek Comments and Suggestions by January 19, 2021," Duane Morris Alert, December 11, 2020
- Co-author, "Federal Circuit Holds That, for Venue Purposes, Patent Infringement Occurs Only in Districts Where Actions Related to ANDA Submissions Occur," Duane Morris Alert, November 18, 2020
- Co-author, "Federal Circuit Finds Induced Infringement of Drug Patent, Even When Skinny Label Was Used," Duane Morris Alert, October 30, 2020
Co-author, "Chapter 3, Strategies for Patent Applications in the U.S.," Strategies for Patent Application Abroad and In Hong Kong, Macau, and Taiwan, Intellectual Property Publishing House (China), 2018
Co-author, "Benefits Of Expedited Review Of Sole-Source Drug ANDAs," Law360, April 22, 2016
Co-author, "FDA Implements Expedited Review of ANDA Submissions for 'Sole-source' Drug Products," Duane Morris Alert, March 31, 2016
- Author, "PTAB's Two Precedential Opinions And Impact Of Previous Proceeding On AIA Reviews," Duane Morris Blog; and IP Frontline, March 2016
- Author, "Cloudy Intent, Crowded Lawsuits and 'Atomic Bomb' Remedy: Intent Test in Inequitable Conduct Defense of Patent Infringement Litigation, 30 Temp. J. Sci. Tech. & Envtl. L.,239 (2011)
- Co-author, "Properties and characterization of carbon nanotube based transparent conductive coatings," Journal of the Society for Information Display, 2005, 13/9, 759-763
- "Transparent carbon nanotube electrodes for LCD color filter," Proc. International Display, 2004, 11, 557-559
- Co-author, "Phase transformation effects on the wear properties of alumina gel-polymer matrix nanocomposites," J. Materials Research, 2001, 16(6), 1680
- Co-author, "Solid-state NMR evaluation of the silane structure on nanoporous silica fillers," J. Adhesion Science and Technology, 2001, 15(3), 267-394
- Co-author, "Effect of silane coupling agents on the wear resistance of polymer-nanoporous silica gel composites," Materials Science & Engineering C, 1997, 5(1), 15
- Co-author, "Effect of filler porosity on the abrasion resistance of nanoporous silica gel/polymer composites," Dental Materials, 1998, 14, 29
- Co-author, "Study on the synthesis of high elongation polyurethane," European Polymer J., 1998, 24(1), 59-66
Selected Speaking Engagements
- Speaker, "Patent Fundamentals Bootcamp 2023: An Introduction to Patent Drafting, Prosecution, and Litigation," Practising Law Institute, September 12, 2023
- Speaker, "Legal Boot Camp: Electric Vehicles and Beyond," Duane Morris Webinar, July 12, 2023
Panelist, “Intellectual Property and Corporate Lawyering Panel,” University of Pennsylvania Carey Law School, Prof. Rebecca Clayton, November 30, 2022
- Panelist, “Intellectual Property and Corporate Lawyering Panel,” University of Pennsylvania Carey Law School, Prof. Rebecca Clayton, November 6, 2019
- Speaker, "Patent Fight Between Generic and Brand-name Pharmaceutical Companies,” Suzhou Industrial Park Intellectual Property Service Alliance and Duane Morris Shanghai Webinar, September 7, 2022
- Clinician, "Clinic II: Patent Amendment Writing, PLI Patent Fundamentals Bootcamp 2022: An Introduction to Patent Drafting, Prosecution, and Litigation," September 14, 2022
- Clinician, "Patent Amendment Writing," Practising Law Institute's Patent Fundamentals Bootcamp 2021, June 2-4, 2021
- Panelist, “Intellectual Property and Corporate Lawyering Panel,” University of Pennsylvania Carey Law School, Prof. Rebecca Clayton, Webinar, December 2, 2020
- Clinician, "Patent Fundamentals Bootcamp 2020: An Introduction to Patent Drafting, Prosecution, and Litigation," Practising Law Institute, Webinar, June 2-4, 2020
Speaker, "Intellectual Properties and Legal Considerations in Pharmaceutical Industry," 2017 Philadelphia Pharmaceutical Symposium, Invited Speaker for Advanced Course on Pharmaceutical R & D, Philadelphia, October 21, 2017
Speaker, "General Legal Considerations for Product Development in Polymer & Material Industries," Internal Elastomer Conference & 192nd Technical Meeting of the Rubber Division, American Chemical Society (ACS), Cleveland, October 11, 2017
Panelist, "Philly’s Global Lawyers: Educating and Training International Lawyers in the Philadelphia Metropolitan Area," International Law Committee of Philadelphia Bar Association, Philadelphia, October 6, 2017
Speaker, "ANDA Filing, Hatch Waxman Litigation, and Post Grant Patent Challenge," US-China Biopharma Congress 2017 organized by Sino-American Pharmaceutical Professionals Association - Greater Philadelphia (SAPA-GP) , King of Prussia, PA, June 23, 2017
- Speaker, "General Legal Considerations for Product Development in Polymer & Material Industries," MidAtlantic Rubber & Plastics Group (MARPG) Educational Symposium, November 17, 2016
- Speaker, "'Cross-links' Between Patent Law and Inventions in Polymer Science," MidAtlantic Rubber & Plastics Group (MARPG) Spring Tech Meeting, May 8, 2014