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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 Korean patent bar, Mr. Lee focuses 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 on the areas of patent licensing and patent monetization.  He also has experience with U.S. patent litigations including discovery in which he worked closely with U.S. counsels on behalf of Korean clients since his admission to the California bar in 2008.  Mr. Lee also has provided technical supports for high profile disputes over advanced technologies, such as trade secret cases.

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 presented technical presentations before the Intellectual Property Tribunal in the invalidation actions and scope confirmation actions, before the Seoul district court in patent infringement actions, and before the Patent Court, in the appeal of the invalidation actions.  He advised major international companies on managing their Korean patent portfolios for 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 both ITC actions and district court actions.  In particular, 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.  For providing optimal results in litigations, Mr. Lee also accompanied Korean clients to attend Markman hearing, 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 log, preparing for depositions, and preparing deponents for depositions.

Other Practice Areas: His practices have been expanded to technology-driven and non-patent disputes, in particular, trade secret misappropriation cases.  Based on his knowledge and understanding of related technologies and forensic science, Mr. Lee has provided technical supports in these non-patent disputes.  He has experiences in presenting technical explanations to investigative authorities in trade secret cases.  He also advised clients to successfully prevent their employees from misappropriating trade secret without a need to seek legal measures.

Technology areas: semiconductor manufacturing equipment and process, semiconductor wafer and chips, LED, 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 semiconductor equipment manufacturer in multiple patent litigations before district courts and multiple invalidation actions before the Intellectual Property Tribunal ("IPT") (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 (IPT, 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
  • Patent Prosecution
  • personally prosecuted dozens of applications before the Korean Intellectual
  • Property Office (KIPO), including appeals to the IPT against final rejection and appeals to the Patent Court
  • reviewed and advised on prosecution of Korean patent applications for global

 

companies (technology areas: semiconductor, equipment for semiconductor manufacturing, LED, etc.)

  • 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)
  • prepare 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
    • 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

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

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

Seoul National University, College of Engineering (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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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 Korean patent bar, Mr. Lee focuses 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 on the areas of patent licensing and patent monetization.  He also has experience with U.S. patent litigations including discovery in which he worked closely with U.S. counsels on behalf of Korean clients since his admission to the California bar in 2008.  Mr. Lee also has provided technical supports for high profile disputes over advanced technologies, such as trade secret cases.

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 presented technical presentations before the Intellectual Property Tribunal in the invalidation actions and scope confirmation actions, before the Seoul district court in patent infringement actions, and before the Patent Court, in the appeal of the invalidation actions.  He advised major international companies on managing their Korean patent portfolios for 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 both ITC actions and district court actions.  In particular, 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.  For providing optimal results in litigations, Mr. Lee also accompanied Korean clients to attend Markman hearing, 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 log, preparing for depositions, and preparing deponents for depositions.

Other Practice Areas: His practices have been expanded to technology-driven and non-patent disputes, in particular, trade secret misappropriation cases.  Based on his knowledge and understanding of related technologies and forensic science, Mr. Lee has provided technical supports in these non-patent disputes.  He has experiences in presenting technical explanations to investigative authorities in trade secret cases.  He also advised clients to successfully prevent their employees from misappropriating trade secret without a need to seek legal measures.

Technology areas: semiconductor manufacturing equipment and process, semiconductor wafer and chips, LED, 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 semiconductor equipment manufacturer in multiple patent litigations before district courts and multiple invalidation actions before the Intellectual Property Tribunal ("IPT") (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 (IPT, 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
  •   Patent Prosecution
  •   personally prosecuted dozens of applications before the Korean Intellectual
  •   Property Office (KIPO), including appeals to the IPT against final rejection and appeals to the Patent Court
  •   reviewed and advised on prosecution of Korean patent applications for global

 

companies (technology areas: semiconductor, equipment for semiconductor manufacturing, LED, etc.)

  •   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)
  •   prepare 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

  •   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

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

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

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


Qualifications

    Admitted to bar, California, 2008 

    Admitted to patent bar, Korea, 2000


Languages
  •    Korean and English





Patent ,  Intellectual Property Litigation ,  Electrical & Semiconductors ,  Privacy & Data Security ,  Fintech & IT Compliance ,  Trade Secret & Corporate Information Protection ,  Intellectual Property