Overview
Profile
Experience
Kim & Chang (2001-Present)
Representative MattersView All
Patent Litigations/Disputes
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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)
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epresented a global semiconductor equipment manufacturer in multiple patent litigations before district courts and multiple invalidation actions before IPTAB (settled favorably for the client)
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represented a global cellular phone manufacturer in a patent and trademark infringement action against a competitor (settled favorably for the client)
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represented a U.S. semiconductor material manufacturer in an invalidation action at 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 (earphone technology)
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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
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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
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successfully defended a Japanese toy manufacturer in a criminal charge of patent infringement by invalidating the registered utility model through the 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 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
- IAM Patent 1000: The World's Leading Patent Professionals (IAM, 2024)
- 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
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