Franklin D. KangFranklin D. Kang is a Senior Counsel at Brown Neri Smith & Khan LLP, where he focuses on intellectual property (IP) litigation and counseling for high tech clients throughout the U.S. and Asia. He has particular expertise in patent litigation before U.S. federal courts and the International Trade Commission (ITC), as well as other IP disputes and complex international arbitration matters.
Mr. Kang was formerly the Chair of the Korea Practice of several prominent AmLaw100 firms, assisting clients with vital cross-border litigation and transactional matters. Mr. Kang is a native Korean speaker and has represented Korean clients in dozens of depositions, hearings, trials and other court or arbitral proceedings, as well as negotiations, transactions and investigations.
Throughout the past three decades, Mr. Kang has successfully litigated some of the most significant and high-profile patent cases and complex arbitration matters in recent years, in addition to overseeing as a relationship partner numerous cross-border and other transactional related matters.
Mr. Kang has been honored repeatedly as a Super Lawyer in the field of intellectual property litigation and was nominated by the Los Angeles Business Journal as a Finalist for the 2018 Firm Attorney of the Year. He has also served as a board member of the Los Angeles Intellectual Property Law Association (LAIPLA), on the Executive Committee of the Michel Intellectual Property Inn of Court, and as a co-chair of numerous patent litigation subcommittees of the American Bar Association Section of Intellectual Property Law (ABA-IPL).
Education
JD, Cornell Law School 1997
Cornell Law Review, Notes Editor
University of California at Los Angeles (UCLA) 1994
Summa cum laude, Phi Beta Kappa
BAR ADMISSIONS
Admitted in California, N.D. Cal., C.D. Cal., S.D. Cal., E.D. Tex., Fed. Cir., 9th Cir., and pro hac vice in numerous jurisdictions
Languages
English, Korean
REPRESENTATIVE EXPERIENCE
- Representation of a Korea-based manufacturer of point-of-service printers in a key competitor-to-competitor patent litigation matter (C.D. Cal.)
- Successful dismissal of a telecommunications carrier client in defense of a patent infringement suit involving MMS and ringtone functionalities (E.D. Tex.)
- Representation of a telecommunications carrier client in a patent infringement suit involving LTE related technologies (D. Del.)
- Representation of a telecommunications carrier client in a patent infringement suit involving Wi-Fi, CDMA, GSM, and handset technologies (S.D. Cal.)
- Representation of a telecommunications carrier client in a patent infringement suit involving LTE and handset technologies (E.D. Tex.)
- Representation of the largest Korea-based manufacturer of LEDs (light emitting diodes) in a key competitor-to-competitor patent litigation matter
- Representation of a significant Korea-based conglomerate in a highly publicized bid to acquire a professional baseball team located in Los Angeles
- Representation of one of the largest manufacturers of plasma display panels (PDPs) in the world, a Korea-based high-tech company, in several high-profile suits against a significant competitor involving 19 patents-in-suit
- Final determination of non-infringement in defense of a supplier of integrated circuits used for backlighting displays in a major competitor-to-competitor ITC litigation
- Jury verdict of more than $184 million in a seminal patent infringement case on behalf of one of America’s most distinguished research universities
- Exclusion order from the ITC barring importation of various competitive products found to infringe the patents of a leading biometric solutions client
- Trial victory of a complex multinational arbitration relating to biologics technology and award of more than $80 million, in addition to preserving exclusive ownership of all IP rights, on behalf of a biomedical company owned by a Korea-based conglomerate
- Judgment of dismissal with prejudice on eve of a significant competitor-to-competitor patent trial, pursuant to a broad covenant not to sue, in defense of a high-performance semiconductor company, as well as an award of attorneys’ fees of $9.4 million
REPRESENTATIVE PUBLICATIONS
- “Federal Circuit Issues First Published Decision Applying High Court’s T.C. Heartland Decision Regarding Patent Venue,” published in McGuireWoods Client Alert (Sept. 2017)
- “Practical Implications of the America Invents Act on United States Patent Litigation,” published in Latham & Watkins Client Alert, Vol. 1241 (Sept. 2011)
- “Claims of Inequitable Conduct in Light of Exergen Corp. v. Wal-Mart Stores, Inc.,” published in American Bar Association, Section of Litigation, Intellectual Property Litigation (May 2010)
- “International Arbitration of Patent Disputes: When, How and Why,” published in Global Intellectual Asset Management Report (World Trade Executive Publication), Vol. 9, No. 11 (Nov. 2007)
- “Pleading Patent Infringement Claims: Does Form 16 Suffice for All Purposes?” published in Intellectual Property Law Newsletter (Publication of ABA), Vol. 24, Number 2 (Winter 2006)
- “The Acquisition and Licensing of Intellectual Property: Antitrust Implications” published in Competition (the Journal of the Antitrust and Unfair Competition Law Section of the State Bar of California), Vol. 14, No. 2 (Fall/Winter 2005)
REPRESENTATIVE LECTURES AND SPEAKING ENGAGEMENTS
Frequent lecturer on patent and other IP related issues and Korea related matters. Some examples include:
- Speaker, “Latest Developments in U.S. ITC Section 337 IP Litigation,” In-House Counsel Forum Korea (IHCF) Summer Workshop, September 2017
- Speaker, “Successful Strategies for Litigation or Settling IP Cases and Minimizing the Costs of IP Litigation,” In-House Counsel Forum Korea (IHCF) Jeju Workshop, September 2015
- Speaker, “Latest Developments in Patent Litigation and Legislation in the U.S.,” In-House Counsel Forum Korea (IHCF) Spring Academy, April 2014
- Speaker, “New Challenges in Managing IP Litigation,” 5th Annual Medical Device and Life Sciences Conference: Innovation, Investing and Regulatory Issues, November 2013
- Speaker, “Risks and Strategic Considerations in Intellectual Property Litigation for Korea-Based Companies,” 2013 Korea Trade-Investment Promotion Agency (KOTRA) Intellectual Property & Business Strategy Forum, June 2013
- Speaker, “Recent U.S. Supreme Court Cases Involving Intellectual Property Law,” In-House Counsel Forum Korea (IHCF) Spring Academy, April 2013
- Speaker, “Strategic Considerations in ITC Patent Litigation for Korea-Based Companies,” International Association of Korean Lawyers (IAKL) Annual Convention, September 2012, and In-House Counsel Forum Korea (IHCF) Fall Academy, November 2012
- Speaker, “Depositions in Korea in Aid of U.S. Court Proceedings,” U.S.-Korea Law Forum, July 2012
- Speaker, “Implications of Recent U.S. Patent Developments for Korea-Based Life Sciences Companies,” Global Bio & Medical Forum, June 2012
- Speaker, “Hot Issues in Cross-Border M&A/JV for Korea-Based Companies,” In-House Counsel Forum Korea Spring Academy, April 2012
- Speaker, “But It’s Only a Drop in the Bucket! Closing Arguments and JMOL Hearing Arguments in a Mock Patent Infringement Case,” Michel Intellectual Property American Inn of Court Meeting, November 2011
- Speaker, “The Law, Economics and Business of Patent Infringement Damages in an Era of Innovation & Global Competition,” 22nd Annual National Asian Pacific American Bar Association Convention, November 2010
- Chair, “Intellectual Property Spring Seminar,” co-sponsored by LAIPLA, State Bar of California IP Section and other IP organizations, June 2009
- Speaker, “Emerging Trends in Global Intellectual Property Litigation,” American Chamber of Commerce in Korea Legal Affairs Seminar, January 2009
- Speaker, “Deposition Techniques and Strategies in Intellectual Property Litigation,” 19th Annual National Asian Pacific Bar Association Convention, November 2007