International IP Disputes
overview
As companies accelerate their global expansion and develop international supply chains, the scope and complexity of intellectual property disputes are rapidly evolving. Increasingly, disputes involving patents, trademarks, designs, and trade secrets related to a single technology or product are being litigated simultaneously across multiple jurisdictions, with litigations, patent invalidation, and import ban proceedings often unfolding in parallel. To effectively respond to such cross-border IP disputes, a strategic approach is required that not only takes into account the legal systems and procedures of each country but also considers the interplay of proceedings in each country and their impact on business operations.
Shin & Kim LLC’s Intellectual Property Practice Group has established a robust network of close collaboration with local law firms and experts in key jurisdictions, including the United States, Europe, China, Japan, Taiwan, and Latin America. Leveraging this network, the IP Group provides comprehensive representation in both overseas IP disputes involving Korean companies and domestic IP disputes involving foreign companies. The IP Group’s experience spans a wide range of cross-border matters, including overseas patent, trademark, and design infringement litigation; trade secret misappropriation and technology leakage cases; U.S. International Trade Commission (ITC) Section 337 investigations; patent invalidation proceedings, such as Inter Partes Review (IPR); European Patent Office (EPO) oppositions; licensing disputes; and international discovery and international legal assistance procedures.
When disputes are pending in multiple jurisdictions, the IP Group goes beyond handling individual cases in isolation and conducts a holistic analysis of procedures, issues, evidence, and business implications specific to each country and works closely with local counsel to coordinate a unified strategy and response. Shin & Kim delivers practical solutions tailored to the specific characteristics and business objectives of each case, ensuring effective protection of our clients’ intellectual property rights while minimizing the impact of disputes on their global operations.
Key Services
Shin & Kim provides the following services related to international IP disputes:
- Overseas patent, trademark, and design infringement disputes
- Overseas trade secret and technology leakage cases
- Strategy development for overseas litigation and arbitration
- Overseas preliminary injunctions and injunction proceedings
- Overseas customs and border enforcement actions
- Overseas licensing disputes and contract interpretation
- Management of multinational disputes (global IP portfolio disputes)
Experience
United States
- U.S. District Court (Western District of Texas) and Patent Trial & Appeal Board – Represented a Korean company in a civil patent infringement lawsuit regarding “quick fitting” technology, filed an Inter Partes Review (IPR), and advised on settlement negotiations
- U.S. Federal Court (Central District of California) – Provided legal advice regarding U.S. litigation for 7 out of 10 companies in a lawsuit filed against Korean music distribution companies
- U.S. Federal Court (Central District of California) – Assisted with and negotiated a U.S. lawsuit filed against a Korean drama production company for copyright infringement
- U.S. International Trade Commission (ITC) – Provided strategic and discovery advice regarding a 337 investigation to block the importation into the U.S. of products containing technology obtained through trade secret misappropriation by a Chinese company from a Korean company
- Advised on USITC case involving the misappropriation of a botulinum strain.
- Represented a Korean portal company and advised on patent infringement lawsuit filed by a non-practicing entity (NPE)
- Assisted a Korean parts supplier with discovery proceedings in a patent infringement case filed by an NPE against an electronics company over demand pulse regulation technology
- Advised on a patent infringement claim involving a Korean webtoon service
- Advised a Korean global in vitro diagnostic reagent company on a USITC complaint filed by an Italian company
- Represented a Korean parts supplier in a request for international judicial cooperation to collect evidence related to a patent lawsuit filed against a Korean automaker
Europe
- Mannheim Regional Court, Germany – Assisted with civil infringement lawsuit filed against a Korean company regarding a patent for in vitro diagnostic medical device
- German Federal Patent Court – Advised on an invalidity action concerning a German company’s patent
- European Patent Office – Assisted with opposition proceeding filed by an anonymous base against a continuous glucose monitory system-related patent
Latin America
- Mexican Institute of Industrial Property (IMPI, Instituto Mexicano de la Propiedad Industrial) – Assisted with a patent infringement case involving a heat treatment device filed against a Korean company and related settlement proceedings.
Asia
- Taiwan Intellectual Property and Commercial Court – Assisted a Korean electronics company in a patent infringement lawsuit initiated against a Taiwanese company
- Advised on a patent invalidation proceeding in China concerning a semiconductor wafer drying device patent filed against a Korean company
- Advised a major Korean steel conglomerate on a patent infringement lawsuit in China
- Advised on a Chinese patent invalidation proceeding regarding semiconductor dryers
Multi-Jurisdiction
- Monitored and analyzed patent disputes in the U.S. and Europe among global CGM companies in preparation for potential CGM patent dispute on behalf of Korean medical device manufacturers
- Advised a major Korean chemical and industrial machinery conglomerate on trademark opposition proceedings in seven foreign countries regarding its group logo
- Assisted with trademark infringement lawsuits and opposition proceedings in Russia and Kazakhstan
Key Contacts
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Kyle J. Choi Senior Foreign Attorney
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Da Yoon Shin Senior Foreign Attorney
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Minyoung Park Senior Foreign Attorney
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Ying Li Senior Foreign Attorney
