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