Jennifer Dienes concentrates on patent prosecution and litigation. Building on her background in biochemistry and molecular biology, she focuses her practice on biotechnology and pharmaceutical patent matters, including patent preparation and prosecution, intellectual property portfolio management, patent validity and infringement opinions, freedom-to-operate opinions, and patent litigation. She also has familiarity drafting intellectual property license agreements.
Jennifer serves clients throughout the entire patent litigation process, seeing them through all aspects of contested proceedings to trial and settlement. Her experience includes managing discovery, drafting various motions, preparing and managing fact and expert witnesses, and developing case strategies, such as infringement and validity arguments. She also has experience defending generic pharmaceutical companies in ANDA litigations and representing biotechnology companies in Section 337 investigations before the US International Trade Commission.
Additionally, Jennifer counsels innovators and biosimilar applicants in matters related to the Biologics Price Competition and Innovation Act, including by preparing freedom-to-operate and invalidity opinions, providing patent landscape analyses, and assessing loss of exclusivity dates.
Her work has spanned a multitude of technologies involving the biological, chemical, and mechanical arts. Jennifer has prosecuted patent applications involving stem cells, genetic innovations, cell culture related technology, medical devices, and chemical formulations. Similarly, her litigation experience has involved a variety of technologies, including ophthalmic lenses, printers, recombinant proteins, and antibodies.
Before joining Morgan Lewis, Jennifer was an associate at another international law firm. She also previously served as part of a trial team handling a patent infringement jury trial and two retrials in the Southern District of California, involving allegations of infringement, invalidity, and unfair competition issues. Additionally, she previously prosecuted trademark applications and maintained trademark portfolios. She has also been involved in performing due diligence related to intellectual property assets.
Jennifer previously worked as a lab technician in the Liebman lab at the University of Illinois, where she studied the effects of guanidine on fluorescent aggregates in prion-bearing yeast strains. As an undergraduate at Marquette University, she conducted research in the Yang lab, characterizing and sequencing a novel calcium binding protein in Chlamydomonas reinhardtii.
Note: This list includes engagements completed prior to joining Morgan Lewis.
Counsel for biologic company in District of Delaware patent infringement litigation against competitor involving antibodies
Counsel for biologic company in patent infringement trial involving a recombinant protein before the International Trade Commission, which resulted in settlement after obtaining a favorable decision from appeal to the full Commission
Counsel for generic company in ANDA trial in the District of Delaware involving a gaseous pharmaceutical product and related device, which resulted in a favorable opinion on all counts
Drafted and prosecuted domestic and international patent applications involving the biological, chemical, and mechanical arts, including stem cells, genetic innovations, medical devices, and chemical formulations
Performed analysis and rendered opinions directed to patentability, clearance, non-infringement, and invalidity regarding a variety of technologies
Counsel for plaintiff, a manufacturer of marking, tracking and computer printing technologies, in Northern District of Illinois patent infringement litigation against competitor, which resulted in an amicable settlement due to business considerations
Counsel for eyeglass lens manufacturer defending against patent infringement lawsuit in the Southern District of California
Counseled clients regarding trademarks, including clearance and usage issues
Prosecuted trademark applications, including successfully obtaining a registration for an animated trademark
Illinois Institute of Technology, Chicago-Kent College of Law, 2008, J.D.
Marquette University, 2005, B.S., Biochemistry and Molecular Biology, Magna Cum Laude, Phi Beta Kappa
US District Court for the Northern District of Illinois
US Patent and Trademark Office
Awards and Affiliations
Alumni Steering Committee for the College of Arts and Sciences, Marquette University