紹介
プロフィール
経歴
KIM&CHANG(2001~ )
主な実績View 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).
主な活動View All
受賞等
- Cum Laude (Duke University, School of Law)
- IAM Patent 1000: The World's Leading Patent Professionals (IAM, 2024)
著書/活動
- 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)
学歴
College of Engineering, Seoul National University (B.E., Material Science & Engineering, 2000)
Department of Law, Korea National Open University (LL.B., 2006)
School of Law, Duke University (LL.M., 2007)
資格
Admitted to bar, California, 2008
Admitted to patent bar, Korea, 2000
言語
韓国語, 英語