Intellectual Property and Technology

Grant Kim has deep expertise with intellectual property (IP), including patents, copyrights, trade secrets, trademarks, and Internet domain names.  He has served as an arbitrator or counsel in numerous arbitrations arising from IP and technology licenses, indemnity agreements, technology transfers, development agreements, and other contracts with an IP component.  He has also served as counsel in numerous lawsuits in the U.S. courts and before the U.S. International Trade Commission involving patent, copyright, trade secret, and trademark infringement claims.  

Mr. Kim is a quick study and has experience with a wide range of technology, including biotech, computer software and hardware, semiconductors, cryptography, and medical and mechanical devices.  He understands the complex legal issues raised by the laws governing the various types of IP rights, which are not intuitive and differ significantly based on the specific right and jurisdiction.  

The Silicon Valley Arbitration and Mediation Center (SVAMC) has recognized Mr. Kim’s expertise by selecting him for its Tech List® of the World’s Leading Technology Neutrals.  Mr. Kim has spoken about arbitration of IP and tech disputes at programs hosted by numerous organizations, including SVAMC, AAA/ICDR, ICC, CPR, KCAB International, JAMS, Chartered Institute of Arbitrators, Stanford, USC, and the Schiefelbein Global Dispute Resolution Center.

Intellectual Property and Tech Cases -- As Arbitrator

IP and tech disputes that Mr. Kim has handled as an arbitrator or neutral decisionmaker include:

  • Sole ICDR arbitrator in dispute arising from development and license agreement related to angioplasty, including claims regarding royalties, patent invalidity, and double-patenting

  • Chair of ICDR tribunal in patent indemnity dispute between major semiconductor companies; co-arbitrator in separate ICDR patent indemnity dispute

  • Sole AAA arbitrator in case arising from development and supply agreement for self-adjusting smart beds, involving claims and counterclaims for trademark and trade dress infringement, misappropriation of trade secrets, breach of contract, and business torts 

  • Sole AAA arbitrator in trade secret, contract, and business tort dispute arising from database hosting contract

  • One of three AAA arbitrators in trade secret, contract, and business tort dispute involving tablet-based fuel payment system for the trucking industry

  • Sole ICDR arbitrator in dispute arising from license of patented lighting technology

  • CPR arbitrator in trade secret and contract dispute involving tax preparation software

  • Sole KCAB arbitrator in dispute involving license to develop and manufacture touchpad sensors

  • Sole ICDR arbitrator in dispute arising from license to computer software and related IP

  • One of three ICDR arbitrators in dispute about catheter license and development agreements 

  • One of three ICDR panelists in ICANN Independent Review Process involving generic top-level domain name policies

  • Sole ICDR arbitrator in trade secret dispute between company and former employee

  • Sole AAA arbitrator, dispute about customized Enterprise Resource Planning software  

  • Decisionmaker in two ICDR cases involving disputes about new Chinese-language gTLDs

  • WIPO Panelist in numerous Internet domain disputes

Intellectual Property and Tech Cases -- As Counsel

IP and tech disputes that Mr. Kim has handled as counsel in arbitration or litigation include:

  • Counsel in ICDR arbitration involving cross-license to semiconductor microlithography patents that arose from settlement of global patent litigation

  • Counsel in HKIAC arbitration involving license to standards-essential audio compression patents

  • Counsel in ICC arbitration involving license and development agreement for DNA vaccine

  • Counsel in ICC arbitration involving development and cross-license agreement for the Linux operating system, and in related U.S. litigation about ownership and infringement of UNIX 

  • Counsel in ICC arbitration in California arising from license to digital video technology  

  • Counsel in ICC arbitration arising from online game license and distribution agreement

  • Counsel in bet-the-company AAA international arbitration between U.S. and Japanese companies involving claims for infringement of computer software copyrights

  • Counsel in billion-dollar dispute about smartphone and tablet patents

  • Counsel in ICC arbitration arising from technology transfer agreement for microprocessor manufacturing technology between Silicon Valley and Asian companies

  • Counsel in U.S. International Trade Commission patent trial involving video chip technology

  • Counsel in patent jury trial in Northern District of California involving computer peripheral

  • Counsel in patent jury trial in Northern District of California involving photocopiers

  • Counsel in patent litigation in Northern District of California involving cryptography patents

  • Counsel to AI-based cooling system company for patent infringement claims and lawsuits

  • Counsel in numerous other patent, copyright, and trade secret lawsuits involving computer software and hardware, biotech, semiconductors, and medical and mechanical devices

  • Counsel in multiple adversarial patent license negotiations and patent analysis projects