Rich Kim is a patent attorney in the San Diego office of Duane Morris. His practice focuses on patent law, and includes representing clients in patent litigation, patent procurement and counseling, patent interference, patent reexamination, inter partes review, and patent due diligence matters. Mr. Kim was elected by his attorney peers to be included in the 2012 and 2014-2019 editions of Best Lawyers in America and Southern California's Best Lawyers, in the area of patent litigation. Mr. Kim is a frequent speaker on patent-related topics and is a past President of the San Diego Intellectual Property Law Association and a past Chair of the Intellectual Property Section of the San Diego County Bar Association. 

Patent Litigation

Mr. Kim represented Netgear, Inc. in a patent infringement lawsuit filed by non-practicing entity, Chrimar Systems, Inc. (Chrimar), which was previously pending in the Eastern District of Texas (TXED). Mr. Kim and the Duane Morris team successfully moved to transfer the case from TXED to the Northern District of California (NDCA). Mr. Kim assisted co-defendants’ counsel in preparing inter partes review (IPR) petitions against each of the four patents asserted by Chrimar.  The Patent Trial and Appeal Board instituted IPR proceedings against each of the asserted patents and ultimately found all asserted claims for each asserted patent to be invalid.

Mr. Kim represented Netgear, Inc. in a patent infringement lawsuit filed by non-practicing entity, Innovative Wireless Solutions, Inc. (IWS) in the District of Delaware. After a favorable Markman ruling was obtained by Duane Morris in a related litigation involving the same patent, IWS voluntarily dismissed the case against Netgear.

Mr. Kim represented Taiwan Semiconductor Manufacturing Co., Ltd (TSMC) in patent infringement lawsuits filed by non-practicing entity Zond, Inc. in U.S. District Courts, Districts of Massachusetts and Delaware. These cases were settled by the parties.

Mr. Kim represented Seagate Technology LLC, which obtained an order granting summary judgment of non-infringement in a patent dispute filed by non-practicing entity Garnet Digital, LLC brought over a telecommunications patent in U.S. District Court, Eastern District of Texas, Tyler Division.

Mr. Kim represented Cisco Systems, Inc. in a patent infringement law suit brought by non-practicing entity, American Radio LLC, in U.S. District Court, Central District of California. American Radio asserted that Cisco infringed three patents generally related to radio-frequency (RF) signal processing. Mr. Kim was primarily responsible for working with Cisco's experts to formulate claim construction, non-infringement and invalidity positions against the asserted patents. After the Court's claim construction ruling, the parties stipulated to non-infringement of all asserted patents, and a final judgment of non-infringement of all asserted patents was entered by the Court in favor of Cisco.

Mr. Kim was part of the litigation team that represented Kyocera Communications, Inc. in a multi-defendant patent infringement suit brought by Fractus, S.A., in the Eastern District of Texas, Tyler Division. The case involved multi-band antenna technologies. Mr. Kim was primarily responsible for formulating Kyocera's claim construction, non-infringement and invalidity positions. Mr. Kim also assisted Kyocera's experts with preparation of their expert reports and preparation for trial. The case settled on the morning of trial.

Mr. Kim was part of the litigation team that assisted Nikon in its patent infringement dispute against ASML and Carl Zeiss, in which the defendants agreed to pay $145 million to Nikon to settle the case. The case involved photolithography systems used in semiconductor manufacturing processes.

Mr. Kim was also part of the team that successfully represented Echostar Communications Corp. against Gemstar/TV Guide in one of the largest International Trade Commission (ITC) cases ever filed at the time. Echostar won on numerous grounds including non-infringement as to all asserted patents and invalidity as to one of the asserted patents.

Mr. Kim was part of the litigation team that successfully represented Macronix America, Inc., in a patent infringement litigation initiated by Atmel Corporation involving Flash memory semiconductor manufacturing processes. The asserted patent was ultimately found to be unenforceable, resulting in a total victory for Macronix.

Patent Interference

Mr. Kim represented Electro Scientific Industries (ESI) against market competitor GSI Lumonics, Inc. (GSI) in a patent interference matter pending before the United States Patent and Trademark Office (USPTO). ESI was designated as the Junior Party in the Interference. After two rounds of expert cross-examinations, completion of briefing on over ten motions filed by the parties, the USPTO ruled that GSI's interfering patent application did not support the full scope of the claimed invention at issue, thereby holding GSI's patent claims invalid for lack of written description support. It was a complete victory for ESI.

Patent Procurement and Counseling

Mr. Kim represents large corporations, mid-size companies as well as startup companies and individual inventors in connection procuring patents for their inventions and developing patent portfolio strategies to maximize value and meet business objectives. Mr. Kim's clients span a broad range of technical fields, including electronics, telecommunications, semiconductor manufacturing, computer hardware and software, sports equipment, medical devices and business methods, among others.

Patent Reexamination/Inter Partes Review

Mr. Kim has significant experience representing both requesters and patent owners in ex parte and inter partes reexamination proceedings before the USPTO. Mr. Kim has filed more than twenty-five ex parte or inter partes reexamination requests before the USPTO, and has also successfully represented patent owners in ex parte and inter partes reexamination requests filed against their patents.

Mr. Kim also served as counsel for TSMC in connection with seventeen Inter Partes Review Petitions filed against seven patents asserted in litigation by Zond, LLC against TSMC. Based on the petitions, Inter Partes Review of all asserted claims was granted by the Patent Trial and Appeal Board of the United States Patent and Trademark Office. Subsequently every claim of each asserted patent was found invalid by the PTAB.

Opinions/Patent Due Diligence

Mr. Kim has provided numerous opinions of patent non-infringement and/or invalidity for his clients in various technology fields.

Mr. Kim's patent due diligence practice includes analyzing patent portfolios to assess their quality and strength for purposes of acquisition, possible enforcement against competitors and/or potential defensive value against competitor infringement claims. Mr. Kim has successfully evaluated patent portfolios consisting of several hundreds of patents to determine potential infringement and/or value of the portfolio.

Education

Mr. Kim is a 1995 graduate of the University of San Diego School of Law where he was the recipient of the Dean's Outstanding Scholar Award, and holds a B.S.E.E. from the University of California, San Diego.

Admissions

  • California
  • U.S. Patent and Trademark Office
  • U.S. District Court for the Southern District of California
  • U.S. District Court for the Central District of California
  • U.S. District Court for the Northern District of California
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Patent and Trademark Office

Experience

  • Duane Morris LLP
    - Partner, 2012-present
  • Morrison & Foerster LLP
    - Partner, 2007-2012
    - Associate, 2000-2007
  • Baker & McKenzie
    - Associate, 1998-2001
  • Knobbe Martens Olson & Bear LLP
    - Associate, 1995-1998

Professional Activities

  • CommNexus San Diego
    - member of Board of Directors
  • San Diego County Bar Association (SDCBA)
    - past Chair of the Intellectual Property Section
  • San Diego Intellectual Property Law Association (SDIPLA)
    - past President
  • American Intellectual Property Law Association (AIPLA)
  • UCSD Connect

Honors and Awards

  • Listed in U.S. News/Best Lawyers "The Best Lawyers in America" in the area of Patent Litigation, 2012, 2014-2019

  • Listed in 2012 and 2014-2016 editions of Southern California's Best Lawyers

Selected Publications

  • Featured in "IP in the Balance" by Emmet Pierce, San Diego Business Journal, November 3, 2014
  • "The Narrowing of Patentable Subject Matter by the Federal Circuit: In re Nuijten and In re Comiskey," Morrison & Foerster Client Alert, December 18, 2007
  • "Supreme Court Clarifies Extraterritorial Reach of 35 U.S.C. § 271 (f) with Respect to Software Patents," Morrison & Foerster Client Alert, May 3, 2007
  • "The Narrowing of Patentable Subject Matter by the Federal Circuit: In re Nuijten and In re Comiskey," Morrison & Foerster Client Alert, December 18, 2007
  • "Supreme Court Clarifies Extraterritorial Reach of 35 U.S.C. § 271 (f) with Respect to Software Patents," Morrison & Foerster Client Alert, May 3, 2007
  • "Technology in a Post-Grokster World,"San Diego Lawyer, January/February 2006, (Patent Counseling & Prosecution)
  • "The Admissibility of Expert Testimony in Intellectual Property Cases in View of Daubert and Kumho," New Matter, December 2003, (Intellectual Property Litigation, Patent Counseling & Prosecution, Patent Litigation)
  • "Determining the Scope of Patent Rights," Federal Bar Association Newsletter, San Diego Chapter, Summer 2003, (Patent Counseling & Prosecution)
  • "Will the Real Inventor Please Stand Up? A Brief Overview of U.S. Patent Interference," New Matter, Summer/Fall 2000, (Patent Counseling & Prosecution)
  • "Simplified Process—Filing Foreign Applications Under the Patent Cooperation Treaty," Los Angeles Daily Journal, 2000, (Patent Counseling & Prosecution)

Selected Speaking Engagements

  • "Practical Implications of the America Invents Act (AlA)," CommNexus IP SIG panel, San Diego, December 2011
  • "Bilski v. Kappas: The Supreme Court Saves Business Method Patents," July 29, 2010
  • "Patent Issues Post-Bilski: Navigating the (Still) Uncertain Patent Waters," San Diego Presentation, July 22, 2010
  • "Protecting Electronics Inventions Via Patents," IEEE Seminar, San Diego, CA June 2009
  • "Business and Legal Implications of the Supreme Court's Decision in Quanta Computer, Inc. v. LG Electronics, Inc.," San Diego, July 15, 2008
  • "2006 Patent Law Highlights," February 21, 2007
  • "Web Analytics: Maximizing Return on Investment," February 1, 2007
  • "Strategies for Protecting Software Via Patents and Copyrights," May 1, 2006
  • "2005 Patent Law Highlights," February 28, 2006
  • "2005 Patent Law Year In Review," January 1, 2006