Richard C. Kim

Areas of Practice

• Patent Litlgation
• Patent Procurement and Counseling
• Post-grant Proceedings Before the USPTO
• Patent Due Diligence/Opinions

Admissions

• California
• 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

Education

• University of California, San Diego School of Law, J.D., 1995
  - Recipient of the Dean's Outstanding Scholar Award
• University of California, San Diego, B.S.E.E., 1990

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

• American Bar Association
  - Patent, Trademark and Copyright Section
• 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)
• National Asian Pacific American Bar Association (NAPABA)
• Korean American Bar Association (KABA), San Diego Chapter

Honors and Awards

• Listed in The Best Lawyers in America, 2012, 2014-2023

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

• Speaker, "Legal Boot Camp: Electric Vehicles and Beyond," Duane Morris Webinar, July 12, 2023
• "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

Representative Matters

Patent Litigation

• 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). Successfully moved to transfer the case from TXED to the Northern District of California (NDCA) and 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.

• 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.

• 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.

• 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.

• 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. Worked 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.

• 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. Formulated Kyocera's claim construction, non-infringement and invalidity positions, and also assisted Kyocera's experts with preparation of their expert reports and preparation for trial. The case settled on the morning of trial.

• 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.

• 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.

• 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 Procurement and Counseling

• Represents large corporations, mid-size companies as well as startup companies and individual inventors in connection with procuring patents for their inventions and developing patent portfolio strategies to maximize value and meet business objectives. These 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.

Post-Grant Proceedings

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

• 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

• Provided numerous opinions of patent non-infringement and/or invalidity for clients in various technology fields for purposes of assessing business risks, guarding against potential allegations of willful infringement and/or preparing for potential future litigation, as part of a patent due diligence practice that 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. Has successfully evaluated patent portfolios consisting of several hundreds of patents to determine potential infringement and/or value of the portfolio.