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Kongsik Kim

Member

[email protected]

+1.617.348.3087

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Kongsik, 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.

Education

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

Experience

Patent & Trade Secrets Litigation

  • 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.
  • Industry-Academic Cooperation Foundation, Chosun University v. EMD Millipore Corporation(D. Mass.) - Represented Chosun University to assert patent infringement against EMD, which involved a patent directed to a thiazolidinedione derivative and use thereof.
  • Adaptive Headlamp Technologies, Inc. v. Hyundai Motor America (D. Del) - Represented Hyundai Motor to defend from Adaptive Headlamp’s assertion of patent infringement, which involved a patent directed to an automatic directional control system for vehicle headlights.
  • Green Cross Corporation v. Nektar Therapeutics (D. Del.) - Represented Green Cross to assert trade secrets misappropriation against Nektar, which involved polymer-factor VIII moiety conjugates.
  • 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.
  • Boram Pharm. Co. Ltd. v. Life Technologies Corporation (D. Del.). - Represented Boram to assert patent infringement against Life Technologies, which involved a patent directed to a high throughput system for producing recombinant viruses using site-specific recombination.

Inter Partes Review and Other Post-Grant Proceedings

  • Genome & Company v. The University of Chicago (PGR2019-00002) - Representing Genome & Company to invalidate a University of Chicago’s patent directed to a method of treating cancer with an immune checkpoint inhibitor combined with a bacterial formulation comprising Bifidobacterium.
  • 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).
  • Samsung Electronics Co., Ltd. v. InfoBridge Pte. Ltd. (IPR2017-00099, -00100) - Represented InfoBridge to defend an InfoBridge’s patent directed to a method of constructing merge list (HEVC standard essential patent).
  • SL Corporation v. Adaptive Headamp Technologies, Inc. (IPR2016-00193) - Represented SL Corporation to invalidate an Adaptive Headlamp’s patent directed to an automatic directional control system for vehicle headlights.
  • 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.
  • Intromedic Co., Ltd. v. Given Imaging Ltd. (IPR2015-00579) -Represented Intromedic to invalidate a Given Imaging’s patent directed to a device for in-vivo Imaging.
  • Ace Bed Co., Ltd. v. Sealy Technology LLC (IPR2014-01119) - Represented ACE Bed to invalidate a Sealey’s patent directed to a bed spring structure having certain innerspring coils and innersprings with non-helical segments.

Patent Prosecution & Strategic Counseling

  • 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 a global display panel manufacturing company in building offensive patent portfolio.
  • Representing IP asset management companies in building offensive patent portfolio.

Recognition & Awards

  • Included on the Massachusetts Super Lawyers: Rising Star list (2009, 2013 – 2016)

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

Languages

- Korean

Recent Insights

News & Press

Viewpoints

On March 14, 2017, the United States Court of Appeals for the Federal Circuit clarified, in a precedential opinion, that an anticipating reference must supply all of the claim elements, regardless of what a person of skill in the art might envision when reading the reference.

News & Press

A team of Mintz Levin attorneys has successfully defended two separate Inter Partes Reviews (IPRs) challenging the validity Infobridge PTE LTD.’s U.S. Patent No. 8,917,772 (“’772 Patent”).
Mintz announced a pair of victories before the Patent Trial and Appeal Board on behalf of SL Corporation and Hyundai Motor America, Inc. against Adaptive Headlamp Technologies, Inc.
Fifty-three Mintz attorneys have been named Massachusetts Super Lawyers for 2016 and thirty-one have been named Massachusetts Rising Stars. The findings will be published in the November 2016 issue of Boston Magazine and in a stand-alone magazine, New England Super Lawyers. 

Events

Speaker
Jun
8
2016

2016 Korea Biotech Networking Seminar

Korea Biotechnology Industry Organization & KOTRA

San Francisco, CA