Overview
Rudy Kim is a partner in the Intellectual Property practice of Paul Hastings and is the Chair of the Litigation Department in Palo Alto.
Mr. Kim has over 20 years of experience representing clients in high-stakes IP and technology-related litigation involving patent infringement, trade secret misappropriation, and complex commercial claims in federal district and appellate courts, in private arbitration, and before the U.S. International Trade Commission (ITC) and the U.S. Patent and Trademark Office (PTO). He has also successfully tried criminal jury cases with the San Francisco District Attorney’s Office and regularly teaches Trial Advocacy classes at Stanford Law School.
Mr. Kim’s representative clients include AEM, Autodesk, Freescale (now NXP Semiconductor), Fujitsu, HP, Kahoot!, Logitech, Netgear, Palo Alto Networks, Silicon Image (now Lattice Semiconductor), Tencent, TSMC, and Uber. His matters have involved a wide range of complex, cutting-edge technologies, including:
- Autonomous vehicles
- Computer hardware and software
- Consumer electronics
- Data storage
- Network security
- Semiconductors (design and fabrication)
- Wireless communication
- Medical devices
Mr. Kim previously served as a law clerk to the Honorable Alan D. Lourie of the United States Court of Appeals for the Federal Circuit in Washington, D.C. He is a Fellow of the American Bar Foundation, an honorary organization limited to one-third of one percent of lawyers licensed to practice in each jurisdiction. Mr. Kim has been recognized by the Best Lawyers in America for Litigation – Intellectual Property. He has also been recognized as a Law Firm Leader in Patent & ITC litigation by Lawyers of Color and by Who’s Who Legal: Patents.
Mr. Kim serves as a Vice Chair of the Patent Litigation Committee of the Federal Circuit Bar Association. He is a past President of the Asian Pacific American Bar Association of Silicon Valley and a member of the Silicon Valley Intellectual Property Law Association, the San Francisco Bay Area Intellectual Property American Inn of Court, the National Asian Pacific American Bar Association, and the International Association of Korean Lawyers.
Recognitions
- Legal 500, Recommended for Intellectual Property: Patents: Litigation, (2024)
- IAM Patent 1000, Leading Patent Practitioner
- Managing Intellectual Property, IP Star
- Life Fellow, American Bar Foundation
- Best Lawyers in America, Litigation – Intellectual Property
- Lawyers of Color, Law Firm Leader – Patent & ITC Litigation
- Who’s Who Legal, Global & Thought Leader (IP – Patents)
- Federal Circuit Bar Association Pro Bono Advocacy Award
Education
- Georgetown University Law Center, J.D., 1998
- University of California, Los Angeles, B.S. in Electrical Engineering, 1994
Representations
- Confidential Arbitration (JAMS). Representing CTO and current employer against former employer and competitor in employee mobility case involving complex commercial claims related to semiconductor test technology.
- Rubin v. Kahoot! (Western District of Texas). Defending Kahoot! in multi-patent case involving online gaming patents. Successfully obtained intra-district transfer and order granting stay of litigation pending inter partes review of all asserted claims.
- Nature Simulation Systems v. Autodesk (Northern District of California). Represented Autodesk and won a complete walk-away dismissal, with prejudice, of all asserted patent claims in multi-patent litigation involving CAD software-related technology.
- Globalfoundries v. TSMC et al. (International Trade Commission). Successfully defended TSMC and downstream respondents in two concurrent ITC investigations involving multiple patents relating to semiconductor manufacturing and design technologies.
- X One v. Uber (Northern District of California). Represented Uber and won summary judgment of noninfringement of all asserted claims in multi-patent litigation involving location sharing technology.
- Innovative Foundry Technologies v. TSMC et al. (District of Delaware & International Trade Commission). Successfully defended TSMC in multi-patent case involving semiconductor manufacturing and design technology.
- Confidential Arbitration (JAMS). Won award of $7.5M in damages plus prejudgment interest on behalf of a small medical technology fund against a large pharmaceutical company in a breach of contract case involving medical device technology.
- Waymo LLC v. Uber Technologies Inc. et al. (Northern District of California). Defended Uber in a high-profile trade secrets and patent infringement case against Waymo, Google’s autonomous vehicle subsidiary. Successfully defended Uber against far-reaching motion for preliminary injunction and secured dismissal of all patent infringement claims prior to favorable settlement.
- Cohen v. TSMC, Huawei, et al. (Northern District of California). Successfully defended TSMC, Huawei and other defendants in multi-patent case relating to semiconductor fabrication technology.
- GBAS v. Autodesk (District of Massachusetts). Successfully defended Autodesk in multi-patent case relating to software activation technology.
- Finjan v. Palo Alto Networks (Northern District of California). Representing Palo Alto Networks in a multi-patent case involving Internet security-related technology. Successfully moved to stay case after initiating inter partes review (IPR) of asserted patents.
- Realtime v. Fujitsu America, Inc. (Eastern District of Texas). Representing Fujitsu in multi-patent case involving data compression technology. Successfully moved to stay case pending inter partes review (IPR) of asserted patents.
- Uniloc v. Autodesk (Eastern District of Texas). Defended Autodesk in a patent case involving computer-assisted design (CAD) technology. Initiated covered business method (CBM) challenges to asserted patents, resulting in all asserted claims being found unpatentable by the U.S. Patent Trial and Appeal Board (PTAB).
- MediaTek v. Freescale (Northern District of California). Defended Freescale through trial in a multi-patent litigation involving semiconductor bus architecture, arbitration, and power-management technology. Successfully secured summary judgment and judgments as a matter of law (JMOLs) of non-infringement on several claims prior to global settlement of related actions.
- Pherah v. Autodesk (Eastern District of Texas). Defended Autodesk in litigation involving a patent directed to product knowledge management. Obtained a “walk away” dismissal, with prejudice, of all claims against Autodesk.
- Data Speed v. Autodesk (District of Delaware). Defended Autodesk in litigation involving memory mass storage device technology. Obtained a “walk away” dismissal, with prejudice, of all claims against Autodesk.
- Wi3 v. Netgear (Western District of New York). Successfully defended Netgear in a patent case involving digital network technology.
- Rothschild v. Logitech (Eastern District of Texas). Successfully defended Logitech in a patent case involving data processing and home automation systems.
- Marking Object Virtualization Intelligence v. Fujitsu Ltd., et al. (Eastern District of Texas). Successfully defended Fujitsu in multi-patent case involving digital rights management (DRM) technology.
- Fastenetix, LLC v. Medtronic Sofamor Danek, Inc. (District of New Jersey). Represented Fastenetix in litigation to enforce patents covering spinal implant devices. Successfully obtained a highly favorable Markman ruling prior to settlement. As reported in Medtronic’s 10-Q filed on December 3, 2008, Medtronic paid a total of $125 million cash, which included payment for past damages and the purchase of patents.
- Applied Biosystems Group v. Illumina, Inc. (Northern District of California). Represented Applied Biosystems in litigation involving DNA-sequencing products. Participated in pre-trial preparations. Resulted in jury verdict of non-infringement and invalidity in favor of Applied Biosystems.
- Applied Materials, Inc. v. Advanced Micro-Fabrication Equipment, Inc., et al. (Northern District of California). Represented Advanced Micro-Fabrication Equipment in litigation involving allegations of trade secret misappropriation, breach of contract, and unfair competition related to semiconductor chemical-vapor deposition (CVD) and etch tools. Resulted in favorable settlement prior to trial.
- Micron Technology, Inc. v. Tessera, Inc. (Eastern District of Texas). Represented Tessera in an action involving multiple patents related to semiconductor chip packages. Appeared and argued on behalf of Tessera at a pre-trial Markman hearing, which resulted in favorable Markman order. Part of team that helped secure upfront payment of $80 million from Micron and Infineon to settle this and related offensive action.
- IpVenture, Inc. v. ProStar Computer, Inc. et al. (Central District of California, Court of Appeals for the Federal Circuit). Represented IpVenture in suit to enforce patents covering thermal and power-management technology for laptop computers. Successfully appealed case to the Federal Circuit, which resulted in a published opinion. Case ultimately settled with entry of a consent judgment in favor of IpVenture.
Matters may have been completed before joining Paul Hastings.
Engagement & Publications
- Speaker, The Rise of the Trade Secrets Empire – How to Protect Your Company’s Gen AI, Software Innovations, Research Data, and Other “Crown Jewel” Technologies as Trade Secrets, National Asian Pacific American Bar Association, 2024 Convention, Seattle, WA, November 2024
- Moderator, Section 101 and 112 Issues at Trial and on Appeal, Federal Circuit Bar Association, 2024 Bench & Bar Conference, Isle of Palms, SC, June 22, 2024
- Moderator, One Size Does Not Fit All: Strategies for Patent Jury Selection in Delaware and Texas, Federal Circuit Bar Association, Patent Litigation Committee, Webinar, April 30, 2024
Involvement
- Judge, Stanford Law School, 2024 Marion Rice Kirkwood Moot Court Competition, January 23, 2024.
- Instructor, Stanford Law School, 2023 Trial Advocacy Program, September – November 2023.