Representative Cases

 

  

• Advised  a leading U.S. pharmaceutical company in preventing a generic launch under the patent linkage system for the first time in Korean history by obtaining a sales stay from the Ministry of Food & Drug Safety followed by favourable decisions both in the patent infringement and invalidation actions
• Advised  a leading U.S. pharmaceutical company in a case before the Supreme Court in which a selection invention patent was held valid for the first time in Korean history
• Advised  a leading European pharmaceutical company in a case before the Patent Court in which an in vivo profile patent was held valid for the first time in Korean history
• Advised  a leading European pharmaceutical company in a patent litigation resulting in the recapture of drug price for the first time in Korean history
• Advised  a leading U.S. pharmaceutical company in a patent litigation resulting in a preliminary injunction order, while a related patent correction trial was pending, for the first time in Korean history
• Advised  a leading U.S. pharmaceutical company in a case before the Supreme Court in which a second medicinal use invention was held valid for the first time in Korean history
• Advised  a leading U.S. pharmaceutical company in a case recognizing a generic company’s liability for the price reduction of an original drug triggered by the generic’s early entry into the market for the first time in Korean history
• Advised a leading U.S. pharmaceutical company in a patent litigation resulting in successfully obtaining a preliminary injunction for the first time in Korean history against a generic product with skinny labeling infringing a patent for a nonlabeled indication
• Advised a leading U.S. pharmaceutical company in patent litigations resulting in successfully obtaining both preliminary and permanent injunction orders based on vaccine patents for the first time in Korean history   
• Advised a leading U.S. pharmaceutical company in a case before the Patent Court in which a patent directed to the use of a pharmaceutical product was held valid for the first time in Korean history
• Advised a leading U.S. pharmaceutical company resulting in a successful defense of key patent assets while redefining the standard for a “qualitatively different effect” for the first time in Korean history
• Advised a leading U.S. pharmaceutical company resulting in a successful defense of key patent asset directed to vaccine technology for the first time in Korean history
• Advised a leading U.S. pharmaceutical company in a patent litigation in which damages were awarded for the infringement of a medicinal use patent for the first time in Korean history against dozens of generic companies
• Advised a leading German automobile manufacturer in a patent litigation resulting in a successful defense against claims of infringement by a Korean conglomerate eventually leading to market protection of key technology
• Advised a leading U.S. pharmaceutical company in a case before the Patent Court in which the scope of patent term extension was successfully determined for the first time in Korean history to cover the products of numerous generic pharmaceutical companies that are only different from the original product in salt form 
• Advised a leading U.S. internet search engine company in a patent litigation resulting in a successful defense against claims of infringement after prevailing in multiple related administrative actions invalidating the asserted patent and finding outside of patent scope
• Advised a leading U.S. pharmaceutical company in a patent litigation resulting in a successful defense of key patent asset eventually leading to the enforcement of preliminary injunction orders against multiple generic pharmaceutical companies
• Advised a leading U.S. pharmaceutical company in a patent litigation resulting in a successful enforcement of key patent asset wherein an exception to the principle of territoriality was recognized for the first time in Korean history for a complicated vaccine technology
• Advised a leading U.S. internet corporation in a series of large scale invalidation and opposition actions resulting in the issuance and retention of key patent assets and technology
• Advised a leading German electrical connection/automation company in a patent litigation wherein its patent was held valid and infringed, leading to successful worldwide settlement 
• Advised a leading European furniture fitting manufacturer in a patent litigation resulting in successful enforcement of core essential technology and defense of key patent assets
• Advised a leading European maritime equipment manufacturer resulting in a successful defense of key patent asset despite negative outcomes in other jurisdictions
• Advised a leading multinational tool manufacturing company in a series of patent infringement and invalidation actions resulting in market protection and retention of key patent assets
• Advised a leading Taiwanese multitechnology company resulting in a successful invalidation of a competitor key patent directed to threedimensional printers eventually leading to the client’s entry of market
• Advised a leading German automobile manufacturer before the Korea Automobile Testing & Research Institute in connection with extensive investigations of vehicular product safety and disputes arising therefrom
• Advised a leading European power generation company in a successful defense against product defect claims
• Advised a leading German automobile manufacturer before the Ministry of Land, Infrastructure and Transport in connection with various recalls of vehicles to promote the compliance and safety of automobiles released to the public
• Advised a leading European pharmaceutical company before the Ministry of Food and Drug Safety to successfully create regulatory guidelines specific for client’s field for the first time in Korean history
• Advised a leading European pharmaceutical company resulting in a successful enforcement of a medicinal use patent and award of damages for the first time in Korean history
• Advised a leading German automobile manufacturer before the Ministry of Land, Infrastructure and Transport in connection with homologation of automobiles and parts as well as various disputes arising therefrom
• Advised a leading German automobile manufacturer before the police and Prosecutors’ Office in connection with vehicle safety investigations and liability disputes arising therefrom
• Advised various multinational pharmaceutical and chemical companies in effectively responding to intellectual property related antitrust agency sector surveys and inquiries
• Advised various multinational pharmaceutical companies in the listing of key patent assets in the Green List of the Ministry of Food and Drug Safety

Awards

• Legal 500 Asia Pacific: Named as a leading individual for intellectual property law in Korea (2024)
• Lexology: Recipient of Client Choice Awards – Intellectual Property - Patents (2024)
• “An exceptional attorney who provides stellar advice in an efficient and timely manner. He is proactive in addressing legal and, as appropriate, business issues as they arise in representing me. It is always a pleasure to be working with him” (The Legal 500 Asia Pacific 2024)
• Legal 500 Asia Pacific: Named as a key lawyer for intellectual property law in Korea (2024)
• “Key exceptional member of the team” (The Legal 500 Asia Pacific 2024)
• Who's Who Legal: Named as a global leader for intellectual property law in Korea (2023)
• Asialaw Awards: Recipient of Client Choice Award – South Korea (2023)
• Legal 500 Asia Pacific: Named as a key lawyer for intellectual property law in Korea (2023)
• Intellectual Asset Management (IAM) Patent 1000: Named as one of the world's leading patent professionals (2023)
• Asian Legal Business (ALB): Named as one of Korea's Super 30 Lawyers (2023)
• "Totally invested in providing the best legal and business advice possible, regardless of the matter . . . extremely knowledgeable, and adds team members as needed.  Our matter was and still is the first and only case to successfully recapture the price reduction of an original drug after generic entry" (Asialaw Profiles 2023)
• "Very service-minded and knowledgeable . . . Walks the extra mile to understand the needs of the client" (The Legal 500 Asia Pacific 2023)
• "Cosmopolitan . . . A US patent attorney to whom major chemical and pharmaceutical companies turn to with high-stakes cases" (Intellectual Asset Management 2023)
• "Very professional" (Asialaw Profiles 2023)
• "Exceptional private practitioner in the country renowned for outstanding client service . . . distinguished lawyer" (Asian Legal Business 2023)
• "In the pharmaceutical space . . . continues to represent Pfizer in enforcement and defense actions" (The Legal 500 Asia Pacific 2023)
• "Admire in-depth thought for the overall case . . . ensures that each response aligns with the overall goal . . . has an uncanny knack for honing in on the underlying issues and addressing these from the outset, which leads to good results" (Intellectual Asset Management 2023)
• Asialaw Awards: Named as an honourable mention lawyer – South Korea (2023)
• Who's Who Legal: Named as a leading lawyer for patent law in Korea (2023)
• Asialaw Profiles: Recognized practitioner for intellectual property law in Korea (2023)
• Lexology: Recognized as a leading practitioner for intellectual property law in Korea (2023)
• Asian Legal Business (ALB): Named as one of Korea's Super 30 Lawyers (2022)
• Intellectual Asset Management (IAM) Patent 1000: Named as one of the world's leading patent professionals (2022)
• "Has done licensing-related work and patent-related submissions concerning regulatory matters . . . proactive, raising issues for our consideration and review beyond the immediate issue that we have presented . . . always a pleasure to work with . . . advice is insightful, proposing courses of action that address and seek to obtain the end we seek" (The Legal 500 Asia Pacific 2022)
• "Exceptional private practitioner" (Asian Legal Business 2022)
• Legal 500 Asia Pacific: Named as a key lawyer for intellectual property law in Korea (2022)
• "Having gained experience at a prominent U.S. law firm . . . now specializes in trailblazing litigations involving issues such as profile patents or drug price recapture" (Intellectual Asset Management 2022)
• "Recommended with focusing on product liability matters" (The Legal 500 Asia Pacific 2022)
• Client Choice Awards: Named as a finalist in the patent category (2022)
• Intellectual Asset Management (IAM) Patent 1000: Named as one of the world's leading patent professionals (2021) 
• "Well disposed to support clients in complex disputes that involve US law" (Intellectual Asset Management 2021) 
• "Represented Pfizer in an appeal to the Patent Court following a decision of non-infringement against the client’s patent covering an anti-smoking drug during the patent term extension (PTE) period" (The Legal 500 Asia Pacific 2021)
• Legal 500 Asia Pacific: Named as a key lawyer for intellectual property law in Korea (2020)
• Intellectual Asset Management (IAM) Patent 1000: Named as one of the world's leading patent professionals (2020) 
• "Highly knowledgeable and experienced IP professional with great communication and technical skills" (The Legal 500 Asia Pacific 2020) 
• "Dishes out advice on patent disputes to leading multinationals in pharmaceutical matters, the chemical engineering field and multi-jurisdictional negotiations, respectively" (Intellectual Asset Management 2020) 
• Intellectual Asset Management (IAM) Patent 1000: Named as one of the world's leading patent professionals (2019) 
• "When they enlist him, companies invariably find a reliable partner for the most important patent prosecution work" (Intellectual Asset Management 2019) 
• "Enforced and defended one of Pfizer's top selling drugs, Lyrica, in various patent actions against generic companies (i.e., invalidation actions, preliminary injunction actions and main infringement actions for damages) in Korea" (Chambers Global 2019) 
• "A formulator of strategies to strengthen any patent portfolio" (Intellectual Asset Management 2019) 
• "Successfully defended Pfizer in KRW2.2 billion patent actions in relation to a second medical use protection of pregabalin" (Chambers Asia Pacific 2019) 
• Chambers Global: Named as a recognized practitioner for intellectual property law in Korea (2019) 
• Intellectual Asset Management (IAM) Patent 1000: Named as one of the world's leading patent professionals (2018) 
• "Exceptional foreign attorney" (The Legal 500 Asia Pacific 2018) 
• Chambers Asia Pacific: Named as a recognized practitioner for intellectual property law in Korea (2018)
• Legal 500 Asia Pacific: Named as a key lawyer for intellectual property law in Korea (2018)
• "An outstanding patent attorney who earns his place at the table through the incredible support he offers clients in contentious and non-contentious settings" (Intellectual Asset Management 2018) 
• "Stand out individual in the sizeable team" (The Legal 500 Asia Pacific 2018) 
• "A seamless communicator, he identifies potential problems before they arise and offers robust advice on securing and enforcing IP rights" (Intellectual Asset Management 2018) 
• "Client feedback forms note his expertise in patent litigation" (Managing Intellectual Property IP Stars 2018) 
• "Acted in successfully blocking sales by generics companies by obtaining a sales stay and obtained favourable decisions for the originator patentee in infringement and invalidation actions" (Chambers Asia Pacific 2018) 
• "Advised on a landmark case, successfully blocking a generic launch by obtaining a sales stay under the patent linkage system" (Benchmark Litigation Asia Pacific 2018)
• Managing Intellectual Property IP Stars: Recognized practitioner for intellectual property law in Korea (2018)
• Legal 500 Asia Pacific: Named as a key lawyer for intellectual property law in Korea (2017)
• "Provides excellent advice, representing sector behemoths in patent litigation" (The Legal 500 Asia Pacific 2017) 
• "Won the first case decided by the Supreme Court which recognized the inventiveness of a secondary medicinal use invention" (Asian Legal Business 2016) 
• "Successfully acted in a first for the market, the preliminary injunction orders were granted based on corrected patent claims where the correction was still pending final approval" (The Legal 500 Asia Pacific 2015) 
• "Represented in patent infringement actions against domestic generics and successfully obtained preliminary injunctions" (Chambers Asia Pacific 2015) 
• "Successfully obtained preliminary injunctions on client's patent against domestic generics" (Asialaw Profiles 2015) 
• "Represented in the first case in which the Korean Supreme Court upheld the validity of a selection invention in a patent invalidation action" (The Legal 500 Asia Pacific 2014) 
• "Successfully enforced patent and obtained a preliminary injunction for the first and only time in Korean history based on corrected patent claims yet to be finalized through appeal" (Chambers Global 2014) 
• "Successfully represented the first invalidity case to go to the Supreme Court in respect of a selection invention" (Chambers Asia Pacific 2014)
• Legal 500 Asia Pacific: Named as a key lawyer for intellectual property law in Korea (2013)
• "Highly competent, responsive, and motivated" (The Legal 500 Asia Pacific 2013) 
• "Represented in the first and only case in history where the Supreme Court upheld the validity of a selection invention" (Managing Intellectual Property IP Handbook 2013)
• "Contributes to an excellent team" (The Legal 500 Asia Pacific 2013)
• Legal 500 Asia Pacific: Named as a key lawyer for intellectual property law in Korea (2012)
• "Commended for outstanding contribution to the team effort" (Managing Intellectual Property IP Handbook 2012) 
• "Provides exceptional substantive and strategic advice to the clients" (The Legal 500 Asia Pacific 2012)

Publications/Activities

• Patent Approval Linkage System (South Korea), Practical Law Global, Thomson Reuters (2023)
• Patent Protection for Life Sciences Inventions (South Korea), Practical Law Global, Thomson Reuters (2023)
• Why Did a South Korea Court Invoke the ‘Extraterritorial Activity' Exception in Prevenar 13 Case? Life Sciences Intellectual Property Review, Newton Media Ltd. (2023)
• Patent Scope Confirmation Trials (South Korea), Practical Law Global, Thomson Reuters (2023)
• Korean District Court Recognizes Infringement of Pfizer’s Patent for Prevenar 13® Based on Extraterritorial Activity, Lexology, Law Business Research (2023)
• Trials for Patent Correction (South Korea), Practical Law Global, Thomson Reuters (2023)
• Pharmaceutical IP and Competition Law in South Korea: Overview, Practical Law Company, Thomson Reuters (2019)
• International Patent Litigation: A Country-by-Country Analysis, Republic of Korea, American Intellectual Property Law Association, Bloomberg Law (2018) 
• Drug Manufacturer Obtains First Damages Award for Infringement of Second Use Medical Patent, International Law Office, Globe Business Publishing Ltd. (2017) 
• First Damages Award for Infringement of Second Medical Use Patent, Lexology, Law Business Research (2017)
• Pfizer Gets First Generics Ban Under Korea Patent Linkage Law, Word Intellectual Property Report, Bloomberg BNA (2016) 
• Korean Supreme Court Upholds Validity of Pfizer's Patent, World Intellectual Property Report, Bloomberg BNA (2016) 
• Patent Act Amended to Implement Patent Law Treaty, Global Business Publishing, ILO Intellectual Property Newsletter (2015) 
• First Korean Court Finding of Infringement Against Generic Over Unlabeled Indication, World Intellectual Property Report, Bloomberg BNA (2014) 
• Erganzene Schuzzertifikate - Patent Term Extensions, Korean Chapter, Arne Markgraf, Nomos Verlagsgesellschaft Publishing Co. (2014) 
• Pfizer Obtains Preliminary Injunction in Korea Based on Unfinalized Patent Claims, World Intellectual Property Report, Bloomberg BNA (2013) 
• Preliminary Injunction Based on Unfinalized Claims, Global Law Watch, Bloomberg BNA International (2013) 
• Supreme Court Upholds Validity of Selection Invention Patent for First Time, International Law Office, Globe Business Publishing Ltd. (2012) 
• Supreme Court Upholds Selection Inventions for First Time (South Korea), Intellectual Asset Management, Globe White Page Ltd. (2012)
• Validity of Selection Invention Patent for First Time, Lexology, Law Business Research (2012)
• International Patent Litigation: A Country-by-Country Analysis, Republic of Korea, American Intellectual Property Law Association, Bloomberg BNA Books (2011) 
• Landmark Patent Decision Leads to First Recapture of Original Drug Price, World Intellectual Property Report, Bloomberg BNA (2011) 
• KTC Invalidates Patent for the First Time, Intellectual Asset Management, Globe White Page Ltd. (2011) 
• New Precedent: Commission Finds Patent Invalid for the First Time, International Law Office, Globe Business Publishing Ltd. (2011)
• Commission Finds Patent Invalid for First Time, Lexology, Law Business Research (2011)
• International Licensing, Korea Chapter, Intellectual Property, Bloomberg BNA International (2005-2009) 
• An Overview of the Korean Patent Litigation System, Intellectual Property Litigation, American Bar Association (2008) 
• Developments in Intellectual Property in South Korea, Asialaw IP Review, Asia Law & Practice, Legal Media Group (2008) 
• Speaker on the Topic of Employee-Inventor Compensation at the International Association of Korean Lawyers Seoul Conference (2007) 
• Globe White Page, World Trademark Law Report, The IP Media Group, Globe Business Publishing Ltd. (2006-2007) 
• Patent Issue: Specification and Claim Drafting Practices in Korea, Asia Law & Practice, IP Profiles, Legal Media Group (2006) 
• Working It Out, New Korean Laws Governing Work-For-Hire Inventions, Patent World, Informa Law & Business (2006) 
• A Review of Case Law Covering Step-Plus-Function Claims: Tips for the Patent Practitioner, New Matter, Volume 31, Issue 1 (2006) 
• Reasonable Compensation for Work-For-Hire Inventions, IP Value, Intellectual Asset Management (2005) 
• Korea: Reasonable Compensation for Work-For-Hire Inventions, Building & Enforcing IP Value, Intellectual Asset Management (2005) 
• Korea Chapter, World Trademark Review Yearbook, The IP Media Group, Globe Business Publishing Ltd. (2005) 
• Drug Data Given Strong Protection, Life Science Focus, Managing Intellectual Property, The Global IP Resource (2005) 
• Improved Access to Patent Documents, Managing Intellectual Property, The Global IP Resource (2005) 
• Recent Developments on IP Legislation in Korea, Asia Law & Practice, IP Profiles, Legal Media Group (2005) 
• Korea Revises Its Compulsory License Rules, Managing Intellectual Property, The Global IP Resource (2005) 
• Rule Change for Computer-Related Inventions, Managing Intellectual Property, The Global IP Resource (2005) 
• Free Trade Agreement Smoothes Singapore Patent Procedure, Managing Intellectual Property, The Global IP Resource (2005) 
• Burden Eased for Patent Restoration, Managing Intellectual Property, The Global IP Resource (2005) 
• Korea Readies for Patent Act Changes, Managing Intellectual Property, The Global IP Resource (2005) 
• Tackling the Pendency Problem, Managing Intellectual Property, The Global IP Resource (2005) 
• Hard Times Ahead for Counterfeiters: How Tough Legislation Aims to Foil the Counterfeiting Industry, Business Law News, Volume XXIV, Issue 2 (2003) 
• Speaker at the 10th Annual Law Practice event sponsored by Orange County Bar Association (2003) 
• Trade Secrets Practice in California, Continuing Education of the Bar - California, Updated Chapters 2, 3, 4 and 6 (1999-2003) 
• Case Comments: Report of U.S. Case Developments, New Matter, The State Bar of California (2000-2003) 
• Recording Confidential Communications, OCPLA Newsletter, Orange County Patent Law Association (2002) 
• Author's Rights On-Line: New York Times Co., Inc. v. Tasini, OCPLA Newsletter, Orange County Patent Law Association (2001) 
• The Retroactive Effect of Festo: Litton Systems, Inc. v. Honeywell, Inc., OCPLA Newsletter, Orange County Patent Law Association (2001) 
• The Effect of Utility Patents on Trade Dress Infringement, Orange County Lawyer, Orange County Bar Association (2000)