Kim, Ph.D., William W.

William W. Kim, Ph.D.

Dr. William Kim is an experienced intellectual property lawyer who focuses his practice on patent litigation, post-grant proceedings, US and foreign patent prosecution and client counseling for patent matters. Since joining WilmerHale in 2002, Dr. Kim has successfully represented a wide range of life science clients, including those in the biotechnology, pharmaceutical, nutraceutical, diagnostic, bioenergy and academic fields. Over the course of his career, he has advised on many aspects of intellectual property and has represented clients in patent litigation in Federal Courts and in patent prosecution, inter partes review, reexamination, and interference proceedings before the US Patent and Trademark Office.

Dr. Kim's patent practice includes US and foreign patent prosecution, freedom-to-operate analysis, patentability or validity assessment, diligence, competitive intelligence, post-grant proceedings, patent interference, pre-litigation patent strategy, and litigation.

Dr. Kim has worked on a wide range of technologies, including therapeutic antibodies, small molecule drugs, second generation and third generation sequencing technologies, oncolytic viruses, genetic and cellular diagnostics, recombinant vaccines, stem cell technologies, siRNA, engineered microorganisms for clean-energy applications, nutraceuticals and three-dimensional tissue systems.

Professional Activities

Dr. Kim was a Norman and Rosita Winston postdoctoral fellow and a Cancer Research Institute postdoctoral fellow in the Laboratory of Molecular Genetics and Immunology at The Rockefeller University. He received a PhD, with distinction, in the Cellular, Molecular and Biophysical Studies program from Columbia University. His thesis research focused on the molecular and genetic mechanisms of T-cell development. Dr. Kim is a member of the American Intellectual Property Law Association.

Experience

    • Achieved a significant victory on behalf of our clients, multiple medical device and diagnostics companies, when the District of Delaware granted summary judgment invalidating the key patent asserted against our clients. The judge ultimately entered a final judgment as to that patent, stayed the remainder of the claims and closed the cases.
    • Obtained a favorable result for our client, a large pharmaceutical company, resolving global litigation with a rival pharmaceutical company related to their competing vaccines. A settlement resolved proceedings in Australia, Ireland, Italy, the United Kingdom, the United States, the European Patent Office and the USPTO.
    • Favorable settlements in inter partes review proceedings regarding antibody humanization technology and recombinant antibody production
    • Representing multiple defendants in pending patent infringement over DNA probe technology
    • Representing plaintiff in a pending patent infringement over sequencing based diagnostics
    • Successfully represented defendant in patent infringement over genetic polymorphism detection method
    • Represented plaintiff in patent litigation regarding an antibody drug
    • Prosecuting a portfolio of applications relating to HIV-1 vaccines
    • Prosecuting a portfolio of applications relating to human mesenchymal stem cells
    • Successfully represented a client in a patent interference regarding interferon-beta

Recognition

  • Recognized as a "Rising Star" in the 2011-2017 editions of Northern California Super Lawyers

Insights & News

Credentials

  • Education

    • JD, Fordham University School of Law, 2006

    • PhD, Cellular, Columbia University, 2000

      with distinction
    • MPhil, Columbia University, 1997

    • MA, Columbia University, 1995

    • BS, Biology, DePaul University, 1994

    • BA, Philosophy, University of Chicago, 1992

      with honors
  • Admissions

    • California

    • New York

    • United States Patent and Trademark Office

Credentials