Overview
Profile
Experience
Kim & Chang (2001-Present)
Representative MattersView All
Patent Litigations/Disputes
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Represented a global technology company against a Korean Patent Assertion Entity (PAE) in three consecutive patent lawsuits before district courts; successfully invalidated all ten asserted patents across various technologies (e.g., cellular phone user interface, memory-saving technology) through invalidation actions. Notably, in one case, successfully overturned the Patent Court's decision at the Supreme Court—twice—making it one of only two instances in the year where the Supreme Court reversed lower court rulings in patent matters.
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Represented a global semiconductor equipment manufacturer in patent litigations before district courts and invalidation actions before IPTAB, achieving favorable settlements for the client.
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Represented a global cellular phone manufacturer in a patent and trademark infringement action against a competitor, reaching a favorable settlement for the client.
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Represented a U.S. semiconductor material manufacturer in an invalidation action across all levels of instances (IPTAB, the Patent Court, and the Supreme Court).
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Successfully defended a global cellular phone manufacturer in a patent infringement action brought by a Korean company involving earphone technology.
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Successfully defended a global cellular phone manufacturer in a scope confirmation action brought by a Korean company before the IPTAB and invalidated the asserted patent in a separate invalidation action.
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Successfully defended a multi-national cellular phone manufacturer in a scope confirmation action initiated by an individual inventor and invalidated the asserted patent in a separate invalidation action.
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Successfully defended a Japanese toy manufacturer against a criminal charge of patent infringement by invalidating the registered utility model through an invalidation action.
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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 rejections and appeals to the Patent Court.
- Reviewed and advised on the prosecution of Korean patent applications for global technology companies.
US and other Foreign Jurisdiction Patent Litigation Support
- Advised a Korean solar panel manufacturer in an ITC Section 337 investigation; successfully achieved a favorable outcome for the client.
- Advised a Korean electronics company on patent litigation and settlement strategy, providing case assessments for district court cases.
- Acted as an interface between U.S. counsel and Korean clients regarding patent litigation strategy, preparation of invalidity contentions, infringement contentions, Markman briefs, summary judgment motions, and expert reports. Attended Markman hearings, summary judgment motion hearings, and jury trials in district court cases.
- Managed a group of reviewers for document review in ITC Section 337 actions, identifying key documents and prepared deponents for depositions, including compiling expected questions and relevant documents in district court cases.
- Provided technical advice to a client and U.K. counsel in a U.K. patent lawsuit, based on issues presented in a co-pending Korean patent litigation.
Representative ActivitiesView All
Awards
- ranked as Siver in patent litigation in South Korea by IAM Patent 1000 (2024)
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
Insights
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Recognitions
Kim & Chang Named in IAM Patent 1000: The World's Leading Patent Professionals 2024
2024.06.06 -
Newsletters
Online Transmission of Software May Now Infringe Software Patents in Korea
2020.02.12 -
News
Seminar on "Protection and Enforcement of Software Inventions in DE, KR and US" in Düsseldorf, November 7, 2019
2019.11.11 -
Articles
ILO Intellectual Property Newsletter - New patent cancellation system enacted
2017.07.11