Kenneth Cho, Esq.
Of Counsel
Overview
Ken has represented a diverse client base ranging from individuals and small business owners to large international companies involved in partner and shareholder disputes, employee theft and misappropriation of trade secrets, and patent, copyright and trademark infringement claims. Ken has also handled licensing, IP asset management, valuation and counseling matters involving cryptocurrency exchanges, semiconductor and OLED manufacturing, telecommunications and mobile telephony, biomedical devices, optical disc storage technologies, and others; as well as counseling and acquisition of intellectual property rights.
In addition to handling intellectual matters in the United States, Ken’s experience is international in scope and spans Europe and the Far East. Ken previously worked overseas as a U.S. attorney at South Korea’s most prestigious law firm and spent about a decade working “in-house” in the Intellectual Property and Standards group of Philips Electronics and as a patent assertion attorney for AT&T Corp. specializing in offensive patent assertion and licensing matters.
Ken has designed and implemented international intellectual property licensing programs for clients to withstand antitrust scrutiny by foreign and domestic regulators, prepared and executed global litigation strategies to leverage diverse legal systems to assist clients to realize their business objectives, defended clients against third party patent assertions while balancing exposure and risk, and advised clients on intellectual property asset identification and acquisition.
Kenneth Cho is a former member of the Board of Directors of the American Intellectual Property Law Association (AIPLA) and a former Chairman of the IP Practice in the Far East committee; a member of the Asia Practice Committee of the Intellectual Property Owners Association (IPO); and a member of the Intellectual Association of the International Association of Korean Lawyers (IAKL) where he served as the chairman of the Board of Directors and past President. Ken also served on the Board of Directors for the Korean American Lawyers Association of Greater New York (KALAGNY). Ken is a trained mediator through the New York State Office of Court Administration.
Detailed Work Experience
CHO LAW GROUP, LLC (Managing Attorney, November 2021 to present)
Managing and Founding Attorney focusing on efficient solutions for commercial and intellectual property dispute resolution, licensing and asset procurement.
SANTOMASSIMO DAVIS LLP, Parsippany, NJ (Partner, May 2021 to November 2021)
Partner tasked with expanding the intellectual property practice group and creating a patent practice group at the firm. Continuing to litigate commercial and intellectual property matters and also developing a Korean practice group at the firm.
WIGGIN AND DANA LLP, New York, NY (Partner, March 2019 to April 2021)
Partner in the Litigation Department and Intellectual Property Group specializing in commercial and intellectual property litigation. Originated a number of litigation matters involving commercial disputes and investment vehicles for foreign companies. Involved in seeking injunctive relief for misappropriation of trade secrets by a departing employee, as well as originating patent and trademark matters.
KIM & CHANG, Seoul, Korea (Senior U.S. Attorney, 2009- to March, 2019)
Senior U.S. Attorney responsible for cross border dispute resolution, IP asset management and valuation; design and execution of global patent litigation, licensing, procurement and monetization projects on behalf of multinational and domestic clients primarily in diverse technology fields such as cryptocurrency exchanges; internet, multiplatform messaging, and software related inventions; semiconductor and solar cell devices and manufacturing equipment; telecommunications and mobile telephony; LEDs; biomedical devices; optical discs and storage technologies and the like. Responsibilities also include drafting, reviewing and revising technology license and intellectual property agreements which are international in scope, and working with clients to identify and evaluate patents for defensive and offensive purposes, and conducting business development activities. International experience has provided a unique exposure to the intellectual property laws of many civil law countries that is essential to filing and prosecuting, monetizing and enforcing a growing global patent portfolio.
ALTITUDE CAPITAL PARTNERS, New York, New York (Chief Patent Counsel and Managing Director-Strategic Alliances, 2008-2009)
Responsible for developing and managing strategic alliances with key strategic patent owners and potential partners of this private equity fund which is dedicated to investing in IP centric opportunities. Responsibilities included advising on patent matters, identifying patents available for sale to source IP deals, conducting economic analyses and hedging against litigation costs, working with patent brokers and outside counsel, and overseeing IP due diligence on possible acquisitions.
PHILIPS INTELLETUAL PROPERTY & STANDARDS, Briarcliff Manor, New York / Eindhoven, Netherlands (IP Counseling & Acquisition Manager/Senior Director, Principal Attorney, 2004-2008)
Responsible for managing 30 patent attorneys located in the US, Netherlands, France, Germany, China, Singapore, and Japan on a wide variety of IP counseling and acquisition matters for the Consumer Electronics product division. Counseling activities included advising clients on various contractual, transactional, litigation, defensive licensing and IPR strategy issues, and reviewing the business case and competitive intelligence to advise the business units on a particular transaction and/or arrangement; and acquisition activities included overseeing the IPR aspects in various merger, acquisition and divestiture activities of technology ventures/joint ventures; the procurement of rights to practice third party IPR, and the identification and purchase of IPR. Previous responsibilities also included offensive licensing and assertion activities against targets in Korea, Japan, Taiwan, China, U.S. and Europe to license and monetize Philips’ patents to optimize value to the company; strategizing and participating in patent pools (MPEG LA and Via Licensing) and early new patent pool formation discussions; and working on and supervising Senior Attorneys on patent licensing related matters. Responsibilities also included acting as an annual outside counsel auditor for law firms performing patent prosecution work for Philips IP&S in the U.S.
AT&T Corp., Bedminster, New Jersey (Patent Assertion Attorney, 2000-2004)
Responsibilities included asserting/licensing AT&T’s patent portfolio against potential licensees; mining future patent assertion/licensing activities; negotiating a variety of agreements for the use of AT&T’s intellectual property; acting as the lead corporate patent attorney in patent infringement litigation involving speech codecs (AT&T Corp. v. Microsoft); working with technical business teams to identify, protect and monetize IP assets; and advising clients (business units and corporate management) on intellectual property matters.
DARBY & DARBY P.C., New York, New York (Senior Associate, 1998-2000)
Formerly involved in intellectual property litigation, software licensing, opinion work and trademark counseling. Practice also included patent and trademark litigation, advising clients on protecting software related inventions, interference practice before the U.S.P.T.O. and evaluating patent portfolios for possible licensing. Litigation responsibilities included litigating patent infringement cases in the semiconductor and radio frequency tag technology areas, and trademark and trade dress infringement cases.
KIM & CHANG, Seoul, Korea (Foreign Attorney, 1995-1998)
Foreign Attorney in the intellectual property practice group with a focus in patent licensing, litigation and client counseling. Involved in intellectual property licensing and litigation in South Korea and the U.S. where responsibilities included coordinating licensing and litigation strategy on an international level and advising clients on the intricacies of U.S. and Korean patent licensing and litigation practice. Patent licensing activities were against the top South Korean conglomerates on behalf of U.S. clients where responsibilities involved preparing for and negotiating licensing arrangements in the optical disc, optical disc player, and semiconductor technology areas. Also involved in transactional work for technology joint ventures, mergers and acquisitions, and various technology related business transactions.
KECK, MAHIN & CATE, New York, New York (Associate, 1994-1995)
Member of the Intellectual Property and Technology Services Group focusing in trade dress litigation, interference practice on integrated circuit technology, and patent and trademark prosecution. Obtained a “secret” U.S. Government security clearance in order to work on patent matters for U.S. defense contractors. I also had the opportunity to work on general litigation matters and took a leave of absence to join Kim & Chang before the firm became insolvent.
AMSTER, ROTHSTEIN & EBENSTEIN, New York, New York (Associate, 1990-1994; Summer Associate, 1989)
Practiced all phases of patent, copyright and trademark law with an emphasis in patent litigation. Responsibilities included drafting and responding to pleadings, motions and discovery; opinion work and patent prosecution.
Bar Admissions:
New York, New Jersey and District of Columbia
USPTO Registration:
Registration No. 37,595
Education:
Rutgers School of Law – Newark (J.D. 1990); Rutgers College of Engineering (B.S.E.E. 1987)
Activities
Co-chair of the annual NY two-day program titled “IP Issues in Business Transactions” presented by Practicing Law Institute (PLI).
American Intellectual Property Law Association (“AIPLA”), former member of the Board of Directors (2013-2016) and Lead Board member for the Global Leadership sector, former member of the Budget and Finance committee, and former member of the AIPLA Industry delegations sent to the IP5 meetings in Tokyo, Japan (2016), Suzhou, China (2015) and Busan, Korea (2014). Former chairman of the IP Practice in the Far East Committee. Currently serving as a member of the AIPLA Fellows and Membership Committee, and former Harmonization Task Force member.
Intellectual Property Owners’ Association (“IPO”), former member of the Asia Practice Committee.
International Association of Korean Lawyers, former member of the Board of Directors, Past President of the U.S. chapter (2005-2007), former chairman of the Board of Directors (2008-2016) and NY/NJ Regional Governor.
Korean American Lawyers’ Association of Greater New York (“KALAGNY”), former member of the Board of Directors.
American Chamber of Commerce (“AmCham”), Seoul, Korea; Co-chairman of the Intellectual Property and Security committee, 1997-98.
Trained mediator through the New York State Office of Court Administration.
Boy Scouts of America, Former Advancement Chairman for Troop 120, and former Cubmaster of Pack 120 – Trained leader in the Norwood, NJ Boy Scout and Cub Scout programs.