Kathryn Hong

Counsel

hong-kathryn-300
  • JD, University of California, Berkeley School of Law (Boalt Hall), 2008; Berkeley Technology Law Journal; Asian American Law Journal ; Berkeley Business Law Journal
  • BS (Mechanical Engineering), with Distinction, Stanford University, 2004

Qualifications

  • California, 2014
  • New York, 2009
  • U.S. Patent and Trademark Office, 2008

Court Admissions

  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the Eastern District of Texas
  • U.S. District Court for the Eastern District of New York
  • U.S. District Court for the Southern District of New York

Kathryn Hong

Counsel

Kathryn Hong is counsel in the intellectual property group. Kathryn represents clients in patent matters across a broad range of technologies, including consumer electronics, computer software, wireless communications, semiconductors, mechanical devices, and the Internet.

Kathryn has extensive experience representing clients in patent litigation in federal district court and in post-grant review proceedings before the Patent Trial & Appeal Board (PTAB) of the USPTO. She has conducted pre-suit analyses, drafted pleadings and motions, developed positions on claim construction, infringement, and validity, managed discovery, worked with witnesses and experts, taken and defended depositions, and drafted and negotiated license and settlement agreements. She has significant experience working on post-grant review proceedings before the PTAB, from filing through final written decision and appeal at the Federal Circuit. Her work in this area has included developing invalidity theories, drafting petitions, working with experts, deposition and motion practice, preparation for and attendance at oral argument at the PTAB, and drafting briefs and preparing for oral argument at the Federal Circuit. In addition, Kathryn has worked on licensing matters and patent reexaminations before the USPTO.

As a part of her pro bono practice, Kathryn has represented clients seeking asylum and disability benefits.

Prior to joining the firm, Kathryn was an extern for the Honorable Judge Vaughn Walker, who at the time was Chief Judge of the United States District Court for the Northern District of California.

Experience

  • A leading multinational technology company v. Fujinomaki (PTAB): Representing a leading multinational technology company in IPR challenging patent generally related to a wireless security system for a mobile phone.
  • A leading multinational technology company v. Mobile Telecommunications Technologies, LLC (PTAB) (IPR2016-00768): Representing a leading multinational technology company in IPR challenging a patent related to multicarrier modulation. Successfully obtained final written decision finding all claims unpatentable.
  • Affinity Labs of Texas v. Samsung et al. (E.D. Tex., W.D. Tex., N.D. Cal.): Representing Samsung in two multi-defendant cases alleging infringement of patents relating to systems and methods for communicating media content. Successfully transferred the cases from E.D. and W.D. Tex. to the N.D. Cal. and stayed them pending the outcome of IPR proceedings.
  • Samsung (PTAB, Fed. Cir.) (IPR2014-00209, IPR2014-00212, IPR2014-00407, IPR2014-00408, IPR2014-01181, IPR2014-01182, IPR2014-01184, Appeal Nos. 15-1933, 16-1208, 16-2022, 16-2023, 16-2024): Representing Samsung in IPRs challenging claims of three patents generally related to the delivery of Internet media content to a portable device. Successfully obtained final written decisions finding all challenged claims of the three patents unpatentable and successfully obtained Rule 36 affirmances on appeal to the Federal Circuit.
  • A leading multinational technology company v. Core Wireless Licensing S.A.R.L. (PTAB) (IPR2015-01898, IPR2015-01899): Representing a leading multinational technology company in IPRs challenging two patents related to graphical user interfaces for mobile phones. Successfully obtained final written decisions finding all challenged claims unpatentable.
  • A major semiconductor manufacturing company v. Optical Measurement Systems, LLC (D. Del.): Obtained favorable early resolution on behalf of client in litigation involving networking hardware technology.
  • Worlds.com v. Activision Blizzard et al. (D. Mass.): Representing Activision in patent litigation involving virtual world client-server technology for video game products.
  • LG Electronics et al. v. Whirlpool (D.N.J.): Represented LG Electronics in patent litigation involving refrigeration technology.
  • Wi-LAN v. LG Electronics et al. (E.D. Tex.): Represented LG Electronics in patent litigation involving CDMA and Wi-Fi technology.

Publications

  • Cited, “PTAB Finds Wireless Patent Challenged by Arris, HP Invalid,” Law360 (September 20, 2017)
  • “Rule 34: A Cause for Confusion,” Law Technology News (January 16, 2009)
  • “Understanding Native Hawaiian Rights: Mistakes and Consequences of Rice v. Cayetano,” 15 Asian Am. L. J. 9 (2008)
  • “Third-Party Intervention in Section 337 Investigations,” 22 337 Reporter 53 (2006)