Concentration

Patent litigation; patent and trademark procurement; portfolio management; written opinions regarding patentability, patent validity, infringement and freedom to operate; licensing

Summary

Dr. Chang Sik Kim practices in all areas of intellectual property law, including patent litigation, patent prosecution, IP risk management, IP portfolio management, licensing and client counseling.  He has successfully argued before the Board of Patent Appeals and Interferences at the United States of Patent and Trademark Office and has also practiced before the United States International Trade Commission.

Working across numerous technological areas, Dr. Kim has legal experience involving LCD display, touch screen technology, refrigerators, fluorescent light conversion materials, LED technology, lithography, TV signal processing technology, antenna, cell phones, lasers, steel alloy, silicon production process, green energy production, titanium alloy, antihistamine, a and ß blockers, generic drug, drug formulation nanotechnology and crystallography.

Before he joined Baker Botts, Dr. Kim represented a generic pharmaceutical company and assisted with the company's heavily competitive ANDA (Abbreviated New Drug Application) practice. He was actively involved in one client's strategic patent portfolio management, serving as a member of the invention review committee and preparing numerous patent legal opinions. These opinions related to invalidity, noninfringement, and freedom-to-operate issues, as well as patentability questions involving compound patent invalidity, formulation noninfringement/invalidity and process noninfringement.

Dr. Kim also worked as a judicial intern in the United States District Court for the District of New Jersey in Newark, where he was extensively involved in a pharmaceutical ANDA patent litigation relating to the antihistamine drug Claritin.

Dr. Kim is fluent in Korean.

Representative Engagements

• Anvik Corp. v. Samsung Electronics Co., Ltd. (S.D.N.Y.) currently defending Samsung in patent infringement suit relating to scanning microlithography.
• Commissariat à l'Energie Atomique v. Samsung Electronics Co., Ltd. (D. Del.) defended Samsung in patent infringement suit relating to vertical alignment mode liquid crystal display devices; obtained summary judgment of invalidity for failure to disclose best mode on one of two asserted patents, as well as summary judgment of non-infringement for most asserted claims in second patent; settled before trial.
• Ethypharm, S.A. – ANDA related intellectual property litigation and counseling for patents related to methods of delivering pharmaceutical products
• Fractus, S.A. v. Samsung Electronics Co., Ltd. (E.D. Tex.) currently defending Samsung in patent infringement suit relating to mobile phone antenna technology.
• Nippon Steel - Patent portfolio management and procurement.
• Samsung LED - counseling for patents related to LED technology.
• Texas MP3 Technologies v. Samsung Electronics,(E.D. Tex.) Baker Botts represented Samsung Electronics in a patent infringement action concerning a patent directed to handheld MP3 devices.
• Whirlpool Corp. v. LG Electronics (I.T.C. and D. Del.) represented Whirlpool in the International Trade Commission and in the District of Delaware in a patent infringement dispute involving indoor ice making systems for refrigerators and other refrigerator technologies.

Publications, Speeches, and Presentations

Speeches

• "Effective Patent Litigation Management," Samsung LED Presentation, February 2010
• "Patentability of Enantiomers Over Their Racemate," Baker Botts Life Science Meeting, May 2009
• "Winning Metallurgy Patent Application," Nippon Steel Presentation, August, 2009

 Publications

• "Will the Supreme Court Expand Licensees' Options for Challenging a Licensed U.S. Patent?" Baker Botts IP Report, September 2006