Karen Chuang Kline

Partner

  • Karen Chuang Kline
  • Phone: +1 561 962 2132

    Karen Chuang Kline - LinkedIn Import to Address Book

  • Duane Morris LLP
    Boca Center Tower II
    5100 Town Center Circle, Suite 400
    Boca Raton, FL 33486-1008
    USA
  • Duane Morris LLP
    201 S. Biscayne Boulevard, Suite 3400
    Miami, FL 33131-4325
    USA

Karen Kline practices in the area of intellectual property ("IP") law and technology transactions and licensing. With over fifteen years of legal practice, Ms. Kline has established herself as a trusted advisor to clients in matters of trademark, copyright and technology law, data protection and privacy, and commercial transactions involving IP or proprietary information. She works with clients that range in size from start-ups to established national and multinational corporations, and across a wide range of industries including medical technology, immersive (VR/AR/MR) technologies, computer vision, engineering, hospitality, fashion, cosmetics and personal care products. Ms. Kline provides strategic guidance in protecting and monetizing company’s intellectual assets.

Ms. Kline counsels clients in all aspects of their domestic and international trademark, copyright and patent portfolios, including strategic planning, clearance and prosecution, due diligence and acquisition, and enforcement of rights. She has also provided product counsel support to tech clients, working closely with product teams and company stakeholders to advise on IP issues and privacy-first approaches in all stages of research and development. Ms. Kline has also assisted clients with IP litigation matters before U.S. federal district courts and in proceedings before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office.

Ms. Kline also advises clients in technology-related transactional matters, including structuring, drafting, negotiating, and providing legal advice regarding data, content and brand licensing, collaboration and development agreements, consulting and professional services agreements. In this respect, she has drafted and negotiated agreements directed to a range of intellectual property issues, including software licenses, patent and related know-how licenses, joint development, trademark licenses and publicity rights.

Ms. Kline is also admitted as a patent practitioner before the U.S. Patent and Trademark Office. She earned her J.D. and M.B.A. from the George Washington University, and she holds a B.S. in Biology from the University of Miami.

Representative Matters

  • Coordinated with in-house counsel on the management of the trademark and patent portfolio for an international engineering and consulting services company.

  • Managed an international trademark portfolio with more than 1,000 domestic and foreign trademark matters for a food products company, specializing in snack foods.

  • Regularly advised a consulting and industrial design company on drafting and negotiation of agreements concerning intellectual property development, ownership and licensing.

  • Represented a software solutions company specializing in advanced network planning, management, design and the optimization of next-generation multi-layer networks, regarding intellectual property and source code software issues in a sale by reverse triangular merger.

  • Represented a hospital during its negotiation of a software license agreement for an ICD-9 and ICD-10 coding software system with a leading vendor of healthcare software products.

  • Represented a marketing executive during his negotiation of a professional services agreement with a patentee for exploitation of patents and royalty payment structure.

  • Represented BeachGlow: Concerts for Charity, Inc., a non-profit concert producer, in helping the organization obtain trademarks for use of the BeachGlow name.

  • Obtained a decision on behalf of Yellow Pages Group, LLC in a copyright infringement trial in the Middle District of Florida where the jury awarded the opposing party only $123,000, a small fraction of what could have been a $1.5 billion award.

  • Obtained a settlement on behalf of a national magazine publisher in a federal action for infringement of its trademark and trade dress brought against a beauty salon and medical spa.

  • Obtained an injunction in favor of a patentee and supplier of optoelectronics devices and components in an action before the U.S. International Trade Commission for infringement of patents directed to an optical communication system.

Areas of Practice

  • Intellectual Property
  • Trademark and Copyright
  • Technology Transactions and Licensing
  • Patents

Admissions

  • Florida
  • U.S. Patent and Trademark Office (USPTO)
  • U.S. District Court for the Southern District of Florida
  • U.S. District Court for the Middle District of Florida
  • U.S. District Court for the Northern District of Florida

Education

  • The George Washington University Law School, J.D., with honors, 2008
  • The George Washington University, M.B.A., 2004
  • University of Miami, B.S. Biology, 2000

Experience

  • Duane Morris LLP
    - Partner, 2018-present
    - Special Counsel, 2017
    - Associate, 2010-2016

  • Novak Druce + Quigg LLP
    - Associate, 2009-2010
  • Akerman Senterfitt PA
    - Associate, 2008-2009
    - Summer Associate, 2007
  • U.S. District Court for the Northern District of Texas
    - Judicial Intern to District Judge Barbara M. G. Lynn, 2006
    - Judicial Intern to Magistrate Judge Irma C. Ramirez
  • National Cancer Institute, National Institutes of Health
    - Grants Management Specialist, 2000-2005

Professional Activities

  • The Florida Bar
  • International Trademark Association (INTA)
  • Asian Pacific American Bar Association of South Florida (APABA)

Honors and Awards

  • Listed in Florida Trend's Legal Elite, 2019

  • The Florida Bar President’s Pro Bono Service Award, 2019

  • Listed in Super Lawyers Rising Stars, 2015-2018

  • Member, 2014 Managing Intellectual Property North America Awards: Top Patent Litigation Practice in the Southern United States
  • Named to the Lawyers of Color Inaugural Hot List, 2013
  • Named to Florida Trend's Legal Elite "Up & Comer" List, 2012-2014

Selected Speaking Engagements

  • Presenter, "Leveraging Intellectual Property," Life Science Women’s Conference, February 20, 2020
  • Speaker, "Strategies for Protection Intellectual Property Involving SaMD and Artificial Intelligence," Life Science Women's Conference, Tampa, FL, February 19, 2020
  • Panelist, "Regulation of Software as a Medical Device," Life Science Women’s Conference, February 19, 2020
  • Moderator, "Intellectual Property: Have You Protected Your Company’s Most Valuable Asset?" Session Six in the Doing Business in South Florida Roundtable Series, Duane Morris LLP, Boca Raton, Florida, December 11, 2019
  • Presenter, "Up in Smoke: Common Provisions in Canna-Contracts That Could Blow Up a Deal," Duane Morris Commercial Contracts Checkup Series, Webinar, December 5, 2019

  • Panelist, "Start-Up 101 (Intellectual Property Issues)", National Association of Asian American Professionals Miami Chapter Regional Leadership Conference, November 2, 2019

  • Speaker, "Data Privacy and Security: How to Protect Your Business and Workplace," Session Three in the Doing Business in South Florida Roundtable Series,  Duane Morris LLP, Boca Raton, Florida, June 12, 2019

  • Presenter, “Are You Up-to-Date on Key Provisions and Confidential Information Protections in Term Sheets, MOUs and Letter Agreements?” Duane Morris Commercial Contracts Checkup Series, Webinar, June 21, 2018

  • Speaker, "Preparing for an Exit: Is Your Company Positioned to Obtain the Highest Value When It Comes Time to Sell?" Session Two in the Doing Business in South Florida Roundtable Series,  Duane Morris LLP, Boca Raton, Florida, April 10, 2019
  • Presenter, "Creative Laws: Legal Considerations for Artists, Galleries & Art Owners," March 28, 2017
  • Panelist, "Legal Symposium for Start Ups & Entrepreneurs," The LAB Miami and Asian and Pacific American Bar Association of South Florida, June 16, 2015
  • Panelist, "Social Media and Privacy: The Struggle for Balance for Clients and Lawyers," National Asian and Pacific American Bar Association Southeast Regional Conference, June 12, 2015
  • Moderator, "Cyberspace, Snags & Strategies: Trademark Enforcement on the Internet," International Trademark Association Table Topic, May 6, 2013
  • Presenter, "Intellectual Property Rights: Public Participation in the Development of IP," International Visitor Leadership Program Site Visit, Miami Council for International Visitors, February 14, 2013