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Minho LEE Patent Attorney

Minho LEE Patent Attorney
Minho LEE Patent Attorney

Minho LEEPatent Attorney

T.+82-2-2122-3538F.+82-2-2122-3800E.mhlee1@kimchang.com

Areas of Expertise

Overview

Minho Lee is a Korean patent attorney in the Electrical Group of the intellectual property practice at Kim & Chang.  

Since his admission to the Korean patent bar, Mr. Lee has focused his practice on various patent litigations and prosecution matters for computer-related and electrical/electronic technologies in Korea.  Mr. Lee is also experienced in various aspects of intellectual property counseling including patent licensing and patent monetization.  He also has experience with supporting U.S. patent litigations on behalf of Korean clients since his admission to the California bar in 2008.  Mr. Lee also has provided technical support for high profile trade secret cases involving high technologies.

Patent Matters: Mr. Lee has practiced patent law on behalf of clients to procure and enforce patents through patent prosecution, patent litigations, invalidation actions and scope confirmation actions and appeal proceedings.  In particular, Mr. Lee has argued before the Intellectual Property Trial and Appeal Board, the Seoul district court, and Patent Court.  He has advised major international companies on managing their Korean patent portfolios to enhance patent enforcement.  Mr. Lee also represented international clients in legal matters, including intellectual property counseling in patent portfolio management, domestic and international licensing and negotiations, and intellectual property acquisitions.  He also prepared patent licensing strategies for foreign and domestic companies and participated in face-to-face licensing negotiations on behalf of foreign companies.  Mr. Lee has handled a number of multi-national patent litigations involving semiconductor manufacturing devices and LEDs.  

US Litigation Support: Mr. Lee has experiences with various aspects of U.S. patent litigations including, ITC actions and district court actions.  More specifically, Mr. Lee has advised Korean clients in strategizing litigations, and preparing action plans for negotiation and settlement and worked closely with U.S. counsels on behalf of Korean clients.  In order to enhance chance of success, Mr. Lee has accompanied Korean clients and advised on Markman hearings, Summary Judgment Motion hearing, and trials.  He also assisted U.S. law firms with the discovery process, including reviewing Korean documents, managing Korean staffs/attorneys for document review and privilege logs, preparing for depositions, and preparing deponents for depositions.

Other Practice Areas: Mr. Lee's practice has expanded to technology-driven trade secret misappropriation cases.  Based on his knowledge and understanding of relevant technologies and forensic science, Mr. Lee has provided technical support in trade secret cases.  He also has experience in presenting technical materials to investigative authorities for criminal trade secret cases.  He has also helped clients to successfully prevent their employees from misappropriating trade secret without resorting to litigation.

Technology areas: semiconductor manufacturing equipment and process, semiconductor wafer and chips, LED, software, internet-based technology, telecommunication, cellular and smart phone design and manufacturing (including user interface), home appliances, ceramic engineering, metallurgy.  

Profile

Experience

Kim & Chang (2001-Present)

Representative MattersView All

Patent Litigations/Disputes
  • represented a global technology company in multiple patent litigations before district courts and multiple invalidation actions before the Intellectual Property Tribunal and Appeal Board ("IPTAB") (successfully invalidated asserted patents) 

  • epresented a global semiconductor equipment manufacturer in multiple patent litigations before district courts and multiple invalidation actions before IPTAB (settled favorably for the client)

  • represented a global cellular phone manufacturer in a patent and trademark infringement action against a competitor (settled favorably for the client)

  • represented a U.S. semiconductor material manufacturer in an invalidation action at all levels of instances (IPTAB, the Patent Court and the Supreme Court)

  • successfully defended a global cellular phone manufacturer in a patent infringement action brought by a Korean company (earphone technology)

  • successfully defended a global cellular phone manufacturer in scope of confirmation action brought by a Korean company before the IPT and invalidated the asserted patent in a separate invalidation action

  • successfully defended a multi-national cellular phone manufacturer in scope of confirmation action initiated by an individual inventor and invalidated the asserted patent in a separate invalidation action

  • successfully defended a Japanese toy manufacturer in a criminal charge of patent infringement by invalidating the registered utility model through the invalidation action

  • effectively and efficiently ran patent enforcement campaigns for a leading home appliance manufacturer against Chinese copycats and their online and offline Korean distributors for several years. 

 

Patent Prosecution
  • personally prosecuted various applications before the Korean Intellectual Property Office (KIPO), including appeals to the IPTAB against final rejection and appeals to the Patent Court
  • reviewed and advised on prosecution of Korean patent applications for global technology companies 

 

US and other Foreign Jurisdiction Patent Litigation Support
  • advised a Korean electronics company on patent litigation/settlement strategy and provided case assessment (District Court case)
  • provided interface between U.S. counsel and Korean clients re patent litigation strategy, preparation of invalidity contentions, infringement contentions, Markman briefs, summary judgment motions, and expert reports; attended Markman hearing, a hearing for summary judgment motion, and jury trials (District Court case)
  • managed a group of reviewers for reviewing Korean documents to locate hot documents (ITC Section 337 action)
  • prepared deponents for deposition, including preparing a list of expected questions and relevant documents (District Court case)
  • reviewed Korean documents for document production and for deposition preparations (both for Korean companies and against Korean companies) (District Court and ITC cases)
  • provided technical advices to a client and U.K. counsel in a U.K. patent lawsuit (based on issues presented in the co-pending Korean patent litigation). 

Representative ActivitiesView All

Awards

  • Cum Laude (Duke University, School of Law)

Publications/Activities
    • Online Transmission of Software May Now Infringe Software Patents in Korea (K&C newsletter dated Feb. 12, 2020)
    • New patent cancellation system enacted (Co-author, International Law Office, 2017) 
    • KIPO’s Growing Popularity as an ISA for U.S.-Originating PCT Applications (2013/14 winter issue of K&C newsletter) 
    • Korean Filings Continue to Increase Despite Global Economic Recession (2012/13 winter issue of K&C newsletter) 
    • Co-author of "Korea" section in "International Post-Grant and Related Proceedings" chapter of Patent Office Litigation (Thomson Reuters Westlaw, 2012) 
    • Co-author of "Korea" Chapter of International Intellectual Property Litigation (Sweet & Maxwell, 2011-Present) 

     

Education

School of Law, Duke University (LL.M., 2007) 

Department of Law, Korea National Open University (LL.B., 2006) 

College of Engineering, Seoul National University (B.E., Material Science & Engineering, 2000)

Qualifications

Admitted to bar, California, 2008 

Admitted to patent bar, Korea, 2000

Languages

Korean and English

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Minho LEE
Patent Attorney


T. +82-2-2122-3538      
F. +82-2-2122-3800
     


  




Minho Lee is a Korean patent attorney in the Electrical Group of the intellectual property practice at Kim & Chang.  

Since his admission to the Korean patent bar, Mr. Lee has focused his practice on various patent litigations and prosecution matters for computer-related and electrical/electronic technologies in Korea.  Mr. Lee is also experienced in various aspects of intellectual property counseling including patent licensing and patent monetization.  He also has experience with supporting U.S. patent litigations on behalf of Korean clients since his admission to the California bar in 2008.  Mr. Lee also has provided technical support for high profile trade secret cases involving high technologies.

Patent Matters: Mr. Lee has practiced patent law on behalf of clients to procure and enforce patents through patent prosecution, patent litigations, invalidation actions and scope confirmation actions and appeal proceedings.  In particular, Mr. Lee has argued before the Intellectual Property Trial and Appeal Board, the Seoul district court, and Patent Court.  He has advised major international companies on managing their Korean patent portfolios to enhance patent enforcement.  Mr. Lee also represented international clients in legal matters, including intellectual property counseling in patent portfolio management, domestic and international licensing and negotiations, and intellectual property acquisitions.  He also prepared patent licensing strategies for foreign and domestic companies and participated in face-to-face licensing negotiations on behalf of foreign companies.  Mr. Lee has handled a number of multi-national patent litigations involving semiconductor manufacturing devices and LEDs.  

US Litigation Support: Mr. Lee has experiences with various aspects of U.S. patent litigations including, ITC actions and district court actions.  More specifically, Mr. Lee has advised Korean clients in strategizing litigations, and preparing action plans for negotiation and settlement and worked closely with U.S. counsels on behalf of Korean clients.  In order to enhance chance of success, Mr. Lee has accompanied Korean clients and advised on Markman hearings, Summary Judgment Motion hearing, and trials.  He also assisted U.S. law firms with the discovery process, including reviewing Korean documents, managing Korean staffs/attorneys for document review and privilege logs, preparing for depositions, and preparing deponents for depositions.

Other Practice Areas: Mr. Lee's practice has expanded to technology-driven trade secret misappropriation cases.  Based on his knowledge and understanding of relevant technologies and forensic science, Mr. Lee has provided technical support in trade secret cases.  He also has experience in presenting technical materials to investigative authorities for criminal trade secret cases.  He has also helped clients to successfully prevent their employees from misappropriating trade secret without resorting to litigation.

Technology areas: semiconductor manufacturing equipment and process, semiconductor wafer and chips, LED, software, internet-based technology, telecommunication, cellular and smart phone design and manufacturing (including user interface), home appliances, ceramic engineering, metallurgy.  






    Kim & Chang (2001-Present)






Patent Litigations/Disputes
  •   

    represented a global technology company in multiple patent litigations before district courts and multiple invalidation actions before the Intellectual Property Tribunal and Appeal Board ("IPTAB") (successfully invalidated asserted patents) 

  •   

    epresented a global semiconductor equipment manufacturer in multiple patent litigations before district courts and multiple invalidation actions before IPTAB (settled favorably for the client)

  •   

    represented a global cellular phone manufacturer in a patent and trademark infringement action against a competitor (settled favorably for the client)

  •   

    represented a U.S. semiconductor material manufacturer in an invalidation action at all levels of instances (IPTAB, the Patent Court and the Supreme Court)

  •   

    successfully defended a global cellular phone manufacturer in a patent infringement action brought by a Korean company (earphone technology)

  •   

    successfully defended a global cellular phone manufacturer in scope of confirmation action brought by a Korean company before the IPT and invalidated the asserted patent in a separate invalidation action

  •   

    successfully defended a multi-national cellular phone manufacturer in scope of confirmation action initiated by an individual inventor and invalidated the asserted patent in a separate invalidation action

  •   

    successfully defended a Japanese toy manufacturer in a criminal charge of patent infringement by invalidating the registered utility model through the invalidation action

  •   

    effectively and efficiently ran patent enforcement campaigns for a leading home appliance manufacturer against Chinese copycats and their online and offline Korean distributors for several years. 

 

Patent Prosecution
  •   personally prosecuted various applications before the Korean Intellectual Property Office (KIPO), including appeals to the IPTAB against final rejection and appeals to the Patent Court
  •   reviewed and advised on prosecution of Korean patent applications for global technology companies 

 

US and other Foreign Jurisdiction Patent Litigation Support
  •   advised a Korean electronics company on patent litigation/settlement strategy and provided case assessment (District Court case)
  •   provided interface between U.S. counsel and Korean clients re patent litigation strategy, preparation of invalidity contentions, infringement contentions, Markman briefs, summary judgment motions, and expert reports; attended Markman hearing, a hearing for summary judgment motion, and jury trials (District Court case)
  •   managed a group of reviewers for reviewing Korean documents to locate hot documents (ITC Section 337 action)
  •   prepared deponents for deposition, including preparing a list of expected questions and relevant documents (District Court case)
  •   reviewed Korean documents for document production and for deposition preparations (both for Korean companies and against Korean companies) (District Court and ITC cases)
  •   provided technical advices to a client and U.K. counsel in a U.K. patent lawsuit (based on issues presented in the co-pending Korean patent litigation). 





Awards

  •   Cum Laude (Duke University, School of Law)

Publications/Activities

  •   Online Transmission of Software May Now Infringe Software Patents in Korea (K&C newsletter dated Feb. 12, 2020)
  •   New patent cancellation system enacted (Co-author, International Law Office, 2017) 
  •   KIPO’s Growing Popularity as an ISA for U.S.-Originating PCT Applications (2013/14 winter issue of K&C newsletter) 
  •   Korean Filings Continue to Increase Despite Global Economic Recession (2012/13 winter issue of K&C newsletter) 
  •   Co-author of "Korea" section in "International Post-Grant and Related Proceedings" chapter of Patent Office Litigation (Thomson Reuters Westlaw, 2012) 
  •   Co-author of "Korea" Chapter of International Intellectual Property Litigation (Sweet & Maxwell, 2011-Present) 

 






Education

    School of Law, Duke University (LL.M., 2007) 

    Department of Law, Korea National Open University (LL.B., 2006) 

    College of Engineering, Seoul National University (B.E., Material Science & Engineering, 2000)


Qualifications

    Admitted to bar, California, 2008 

    Admitted to patent bar, Korea, 2000


Languages
  •    Korean and English





Patent & Utility Model ,  Intellectual Property Dispute ,  Electrical & Semiconductors ,  Privacy & Data Security ,  Fintech & IT Compliance ,  Intellectual Property ,  China (IP) ,  Computers & Software ,  Trade Secret & Corporate Information Protection ,  IP Administrative Action & Appeal ,  International IP Disputes