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Finnegan
Yoonhee Kim
Partner
More
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  • 901 New York Avenue, NW
  • Washington, DC 20001-4413
+1 202 408 4214
yoonhee.kim@finnegan.com yoonhee.kim@finnegan.com

Yoonhee Kim

Partner

  • +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

Yoonhee Kim focuses 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).

In addition to his litigation practice, Yoonhee frequently advises clients on various contracts, including collaboration agreements, nondisclosure agreements, and other types of IP transactions. 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. He 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

Pioneer Hi-Bred International, Inc. et al. v. Syngenta Seeds, LLC

Representing plaintiff Pioneer in a district court patent infringement litigation involving methods for producing doubled haploid maize plants.

1:22-cv-01280, D. Del.

Bayer Cropscience LP et al. v. Corteva Agriscience LLC et al.

Representing defendant Corteva in a Delaware state court action for breach of contract arising out of a patent cross-license agreement relating to Agrobacterium-mediated plant transformation and transgenic seeds.

N22C-07-168, Delaware Superior Court, Complex Commercial Litigation Division

Nippon Shinyaku Co., Ltd. v. Sarepta Therapeutics, Inc.

Represented Sarepta Therapeutics, Inc. and its licensor The University of Western Australia in patent litigation relating to nucleic acid therapies for treatment of Duchenne muscular dystrophy (DMD). A federal jury in the District of Delaware awarded Sarepta Therapeutics over $115 million in its patent infringement case against Nippon Shinyaku Co. Ltd. This substantial verdict upholds the validity of Sarepta's groundbreaking exon-skipping treatment, and the underlying work at the University of Western Australia.

1:21-cv-01015, D. Del., Judges Hall, Williams

Valeant Pharmaceuticals North America, LLC v. Actavis, Inc.

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

Webinar

Patent Ownership and Inventorship: Avoiding Pitfalls in Defending Against Infringement and Enforcing Patents Patent Ownership and Inventorship: Avoiding Pitfalls in Defending Against Infringement and Enforcing Patents

August 03, 2023

Webinar

Federal Circuit IP Blog

Federal Circuit Confirms Joint Inventorship on Nobel Prize Winner’s Cancer Treatment Patents Federal Circuit Confirms Joint Inventorship on Nobel Prize Winner’s Cancer Treatment Patents

July 21, 2020

Books

ANDA Litigation: Strategies and Tactics for Pharmaceutical Patent Litigators, Third Edition ANDA Litigation: Strategies and Tactics for Pharmaceutical Patent Litigators, Third Edition

June 16, 2020

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

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News

Award/Ranking

Best Lawyers Recognizes 44 Finnegan Attorneys in its 2026 Edition of The Best Lawyers and Ones to Watch Best Lawyers Recognizes 44 Finnegan Attorneys in its 2026 Edition of The Best Lawyers and Ones to Watch

August 21, 2025

Best Lawyers

Press Release

Finnegan Elects Eight New Partners Finnegan Elects Eight New Partners

January 3, 2023

Press Release

46 Finnegan Attorneys Named to 2021 Capital Pro Bono Honor Roll 46 Finnegan Attorneys Named to 2021 Capital Pro Bono Honor Roll

June 3, 2022

Professional Activities

  • Korean Patent Attorney Association
  • Order of the Coif
  • Virginia State Bar
Admissions and Education

Admissions

  • U.S. Patent and Trademark Office
  • District of Columbia
  • Virginia
  • Korean Intellectual Property Office (KIPO)

Education

American University, Washington College of Law
J.D., magna cum laude, 2014
Seoul National University
B.S., Chemical Engineering, 2005

Languages

  • Korean
  • Japanese

Yoonhee's Practices

Diligence, Licensing, and Opinions
Due Diligence
Freedom to Operate Opinions
Licensing, Pooling, and Other Transactions
Opinions and Counseling
Patent Mining and Mapping
Global IP Enforcement, Litigation, and Trials
Branded Hatch-Waxman (ANDA) Litigation and Trials
Patent Litigation and Trials
Pretrial Strategies
Patent Office Invalidation Proceedings
Ex Parte Reexamination (EPR)
Interferences
PTAB Invalidation Proceedings: IPR and PGR
Prosecution and Portfolio Management
Ex Parte Reexamination (EPR)
Patent Drafting and Prosecution

Yoonhee's Industries

Chemicals, Industrials, and Materials
Chemical
Life Sciences
Pharmaceutical

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