Kongsik Kim

Kongsik Kim, as a versatile intellectual property attorney, counsels start-up, emerging-growth, and established companies in many industries regarding innovations in a wide range of technologies. His practice encompasses litigation, due diligence investigation, drafting and negotiating transactional agreements, legal opinions, and IP rights procurement and monetization.

Kongsik has led the firm’s growing Korean practice and is a trusted advisor to many Asian clients seeking intellectual property protection in the US.

Kongsik provides individuals, universities, institutions, and companies with strategic advice on building and managing defensive and offensive patent portfolios, renders patent opinions, conducts due diligence investigations, drafts and negotiates transactional agreements, and litigates to monetize, enforce, and defend intellectual property rights.

His practice covers a wide range of technologies such as chemistry, biochemistry, pharmaceuticals, biosimilars, chemical engineering, biochemical engineering, agricultural and food biotechnology, biomedical engineering, enzyme technology, environmental engineering, polymer engineering, semiconductor technology, LCD, LED, and OLED technology, fuel cell technology, solar energy and clean technology, automobiles, medical devices, testing and measuring instruments, wireless communication, computer software, touch-screen display panels, 3D display panels, high efficiency video coding (HEVC) apparatuses and methods, blockchain-based technology, and biometric authentication.

Prior to joining the firm, he was a partner in the Boston office of another international law firm. Before practicing in the US, he worked at Kim & Chang, the largest law firm in Korea, as a registered Korean patent attorney. He authored books on Korean patent law and design protection law.

EXPERIENCE :

• Samsung Electronics Co., Ltd. v. InfoBridge Pte. Ltd., Appeal No. 2018-2007, -2012 (Fed. Cir.) – Representing InfoBridge to keep PTAB’s final written decisions of IPR2017-00099 and -00100 involving a patent directed to a method of constructing merge list (HEVC standard essential patent).
• Green Cross Corporation v. Shire Human Genetic Therapies, Inc., Appeal No. 2017-2071 (Fed. Cir.) – Represented Green Cross Corporation to vacate PTAB’s final written decision of IPR2016-00258 involving a patent directed to a purified recombinant iduronate-2-sulfatase.
• NanoEnTek, Inc. and Digital-Bio Technology Co., Ltd. v. Bio-Rad Laboratories, Inc. (E.D. Va.) – Represented NanoEnTek and Digital-Bio to assert patent infringement against Bio-Rad, which involved a patent directed to a method for bonding a plastic micro chip.
• DR Systems, Inc. v. Infinitt North America (S. D. Cal.) –  Represented Infinitt North to defend from DR Systems’ assertion of patent infringement, which involved a patent directed to an automated system and a method for organizing, presenting, and manipulating medical images.
• Samsung Electronics Co., Ltd. v. M & K Holdings Inc. (IPR2018-00696, -00697, 00698) –  Representing M & K Holdings to defend an M & K’s patent directed to an image encoding apparatus and a method of decoding moving picture (HEVC standard essential patent).
• Green Cross Corporation v. Shire Human Genetic Therapies, Inc. (IPR2016-00258) – Represented Green Cross to invalidate a Shire Human’s patent directed to a purified recombinant iduronate-2-sulfatase.
• Representing pharmaceutical and biotech companies in building patent portfolio and negotiating with investors and business partners
• Representing a global vehicle manufacturer and a global vehicle parts manufacturer in building patent portfolio.
• Representing a global secondary lithium battery manufacturing company in building patentportfolio.
• Representing IP asset management companies in building offensive patent portfolio.

INVOLVEMENT :

• Executive Director, Korean American Bio Industry Council
• Director, World Federation of Overseas Korean Traders Association, Boston
• Member, Korean Patent Attorney Association
• Member, American Intellectual Property Law Association

EDUCATION :

• University of New Hampshire (JD, cum laude)
• Seoul National University (MEng)
• Seoul National University (BS, cum laude)

ADMISSIONS :

• Massachusetts
• New York
• Korean Patent Court
• United States Court of Appeals for the Federal Circuit
• United States Patent and Trademark Office