- J.D., University of Illinois College of Law, 2007, cum laude
- M.S., Physics, Cornell University, 1990
- B.S., Physics, Stanford University, 1985, with honors
- U.S. Patent and Trademark Office
Nam Kim is a partner in the Intellectual Property Practice Group in the firm's San Diego (Del Mar) office and spends a considerable amount of time in our Seoul office.
Areas of Practice
Mr. Kim's practice focuses on patent litigation, patent preparation and prosecution, ex parte reexamination, AIA post-grant review proceedings, and IP counseling. He is involved in patent litigation matters to defend clients' IP rights against infringers and defend clients against alleged infringements. He also has extensive experience in preparing and prosecuting patent applications and provides strategic IP counseling. Mr. Kim also represents clients in reexamination and inter partes review proceedings . He has experience and knowledge in a variety of technologies including various wireless technologies (WCDMA, HSPA, LTE, CDMA2000, wireless modems, cellular Multi-media Messaging Service (MMS)), vehicle navigation systems, digital and analog electronics, optics, LCD, and other display technologies, magnetic resonance imaging technology, digital image processing, nanotechnology, MEMS devices, photovoltaic cells, hard disk drive technology, semiconductor devices and processing, medical devices, computer software, motors and motor drives for electric vehicles and CNC machining centers.
- San Diego Rising Star, Super Lawyers, 2015, 2016, 2017
Representative Patent Litigation Experience
Ericsson v. TCL: Representing TCL in a multi-patent patent infringement lawsuit in the Eastern District of Texas.
TCL v. Ericsson: Representing TCL in a breach of contract action based on FRAND obligations relating to Ericsson’s standard essential patents.
Parallel Networks v. Abercrombie: Represented Sony in the Eastern District of Texas in a patent infringement lawsuit involving a software patent relating to web browsers and Java applets. Resulted in summary judgment of non-infringement on behalf of Sony.
Wi-LAN v. Alcatel: Represented HTC Corporation and HTC America, Inc. in a multi-patent lawsuit in the Eastern District of Texas relating to 3G cellular technology, including HSDPA, HSUPA, and HSPA. Resulted in jury verdict of invalidity and non-infringement of all claims of the asserted patents.
Wi-LAN v. Apple: Represented HTC America, Inc. in a multi-patent lawsuit in the Eastern District of Texas relating to Wi-Fi, HSPA, LTE and CDMA2000 (EVDO Rev. A) technologies. Resulted in a favorable settlement on behalf of HTC.
Novatel Wireless v. Franklin Wireless: Represented Franklin Wireless, Inc. in a four patent lawsuit in the Southern District of California relating to wireless modems, USB modems, and Wi-Fi.
Golden Bridge v. HTC: Represented HTC Corporation and HTC America, Inc. in a two patent lawsuit in the District of Delaware relating to WCDMA 3G technology.
Intellect Wireless v. HTC: Represented HTC Corporation and HTC America, Inc. in a two patent lawsuit in the Northern District of Illinois relating to sending pictures to a paging receiver. The accused technology is multimedia messaging service (MMS).
Extricom, Inc. v. Meru Networks LLC (D. Del. 2010): Represented plaintiff Extricom involving patent infringement claims relating to WLAN and Wifi technologies and advanced managerial functions.
Wi-LAN v. PCD: Represented Personal Communication Devices, LLC (PCD) in a two patent lawsuit in the Eastern District of Texas relating to Wi-Fi and CDMA2000 technologies. Resulted in favorable settlement for PCD.
Patent Preparation, Prosecution and Transaction Experience
Mr. Kim prepared and prosecuted numerous domestic and foreign patent applications for various clients including Samsung, Qualcomm, Western Digital, CareFusion, Lawrence Livermore National Laboratory, and Lockheed Martin.
Mr. Kim represented clients in inter partes and ex parte reexaminations of issued U.S. patents.
Mr. Kim also provided various opinions and counseling relating to patent infringement and validity issues in the context of litigation and licensing.
- While in graduate school, Mr. Kim developed and patented world's first electronic compass involving a metallic glass material and licensed the technology to a startup that manufactured electronic compasses based on the technology for consumer, automotive and military markets.
- Prior to becoming a patent attorney, Mr. Kim founded and worked as a chief engineer for a startup that specialized in industrial sensors and developed new sensor technologies for which he obtained a number of U.S. and foreign patents.
- While in law school, Mr. Kim worked for the technology transfer office of the University of Illinois at Urbana-Champaign, where he evaluated technologies developed at the University for patentability and commercial viability.
Intellectual Property Law Blog Posts
- "Software and Business Method Inventions After Alice," September 26, 2016
- "Federal Circuit Reaffirms Its Longstanding Patent Exhaustion Precedents in Lexmark. v. Impression Products (Fed. Cir. Feb. 12, 2016) (en banc)," March 18, 2016
- "Calcar and Thorner: Attempting to Reconcile the Federal Circuit's Claim Construction Jurisprudence," July 23, 2012
- "US Patent Law: Patent Prosecution and Litigation," delivered at the Electrical Engineering department of University of California at San Diego to visiting Korean scholars, January 5, 2012
- "Protecting IP and Licensing Technology In & Out," William J. von Liebig Center Entrepreneurial Seminar Series, May 9, 2009
- July 27, 2013
- A member of legal advisors to Korea Trade-Investment Promotion Agency (KOTRA) advising on IP-related issues
- A member of Board of Advisors for U.S.-Korea Law Foundation
- Former President of Korean American Bar Association of San Diego (KABA-SD)
- National Asian Pacific American Bar Association (NAPABA)