Yoonhee Kim

Associate

+1 202 408 4214 +1 202 408 4214
yoonhee.kim@finnegan.com yoonhee.kim@finnegan.com

901 New York Avenue, NW
Washington, DC 20001-4413

vCard

Show Yoonhee's work in

Yoonhee Kim focuses his practice on complex patent litigation before U.S. district courts and the U.S. Court of Appeals for the Federal Circuit and on patent prosecution in the chemical and pharmaceutical fields, including Hatch-Waxman litigation arising from the filing of Abbreviated New Drug Applications (ANDA).

Yoonhee's experience includes developing pre-litigation strategy, fact discovery, preparing witnesses, developing validity and infringement strategies, motion practice, taking and defending depositions, and handling day-to-day litigation activities. He also has experience handling contested proceedings before the Patent Trial and Appeal Board (PTAB), including interferences and inter partes reviews (IPRs).

Yoonhee's practice also includes preparing validity, infringement, and freedom-to-operate opinions and conducting due diligence investigations and portfolio reviews for clients in the petrochemical and pharmaceutical fields. Yoonhee additionally maintains an active patent prosecution practice, preparing and prosecuting U.S. patent applications and coordinating global patent portfolio management in the chemical and pharmaceutical arts.

Yoonhee gained significant patent experience while working as a Korean patent attorney in Seoul, where he handled a wide range of matters including trials, prosecution, and infringement and validity opinions.

Et Cetera

Recipient of the Edward C. Bou Award for the American University Washington College of Law Class of 2014.
Served as a legal intern to Director and Chief IP Counsel in the Office of Policy Planning at the U.S. Federal Trade Commission, 2013.
Served as a research assistant to Professor Jorge L. Contreras on the issues at the intersection of IP and antitrust law, including standard essential patents and Fair, Reasonable, and Non-Discriminatory (FRAND) licensing terms, 2013-2014.

Experience

Secured a permanent injunction against generic defendant on behalf of Valeant in Hatch-Waxman patent infringement litigation concerning an ANDA for generic versions of Carac®.

2:16-cv-04344, D.N.J., Judges Linares, Dickson

Insights

Federal Circuit IP Blog

Corroborating Evidence of Conception Must Be Independent of Inventor Testimony Corroborating Evidence of Conception Must Be Independent of Inventor Testimony

May 4, 2018

Federal Circuit IP Blog

USPTO Can Receive Its Attorneys’ Fees for Applicant Appeals to District Court USPTO Can Receive Its Attorneys’ Fees for Applicant Appeals to District Court

June 30, 2017

Federal Circuit IP Blog

No Abuse of Discretion in Awarding Prejudgment Interest Based in Part on Patents Not Yet Issued at the Time of Hypothetical Negotiation No Abuse of Discretion in Awarding Prejudgment Interest Based in Part on Patents Not Yet Issued at the Time of Hypothetical Negotiation

April 18, 2017

IP FDA Blog

FDA Final Rule on Citizen Petitions, Petitions for Stay of Action, and Submission of Documents to Dockets FDA Final Rule on Citizen Petitions, Petitions for Stay of Action, and Submission of Documents to Dockets

January 10, 2017

IP FDA Blog

CAFC Holds Patentee’s Diligence Required for Antedating Prior Art Is Reasonably Continuous in Perfect Surgical v. Olympus CAFC Holds Patentee’s Diligence Required for Antedating Prior Art Is Reasonably Continuous in Perfect Surgical v. Olympus

December 1, 2016

Federal Circuit IP Blog

Diligence Required for Antedating Prior Art Is Reasonably Continuous Diligence—Not Continuous Exercise of Reasonable Diligence Diligence Required for Antedating Prior Art Is Reasonably Continuous Diligence—Not Continuous Exercise of Reasonable Diligence

November 29, 2016

2 more

Professional Activities

Virginia State Bar
Korean Patent Attorney Association
Order of the Coif

Admissions and Education

Admissions

District of Columbia
Virginia

Korean Intellectual Property Office

Education

American University, Washington College of Law: J.D., magna cum laude, 2014

Seoul National University: B.S., Chemical Engineering, 2005

Languages

Japanese
Korean

Yoonhee's Practices

Patent Litigation: Branded Hatch-Waxman (ANDA); Patent Trial; Pre-Trial Strategy
Patent Office Examinations: Prosecution; Reexaminations
Patent Portfolio Management, Monetization, and Transactions: Opinions and Counseling
Post-Grant Proceedings: Interferences; IPR, PGR, and CBM

Yoonhee's Industries

Energy: Chemical
Life Sciences: Pharmaceutical