Jae Won Song

Experience

1. Partner

   Fenwick & West

   Sep 2001 — Present

   Multidisciplinary intellectual property practice spanning strategic IP counseling, patent portfolio development and prosecution, patent litigation and licensing, IP transactions, IP due diligence, and evaluation of patents for patent licensing pools and technology standards, etc.• Led patent portfolio development and patent prosecution in technical areas of electronics, computer hardware, computer software, and digital health technologies for a number of multinational company clients as well as emerging company clients, with technical expertise and experience in display technology, machine learning/AI, autonomous driving, healthcare IT and bioinformatics, semiconductors, microprocessors, memory devices and interfaces, high speed communication interfaces, power electronics, wireless communication, virtual machines, virtual reality/augmented reality, etc.• Worked on all phases of patent litigation and trade secret litigation in U.S. district courts, Court of Appeals for the Federal Circuit, and before the U.S. International Trade Commission, including jury trials in district courts and bench trials before the U.S. International Trade Commission. Experienced in post-grant proceedings before the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office. Litigated patents were in a variety of technology areas, including LEDs, satellite antenna, wireless communication, power electronics, ASIC design, computer software, database applications, smartphones, biometric scanners, and organic chemistry.• Negotiated and drafted complex patent license agreements, patent litigation settlement agreements, patent purchase agreements, joint venture and related IP agreements, etc.• Led in-depth IP due diligence in numerous M&A and venture capital financing transactions and patent/IP acquisitions.• Served on various law firm leadership committees.

Education

• Seoul National University

  B.S.E., Electronics Engineering

  1990 — 1994

• Vanderbilt University Law School

  J.D., Law

  1998 — 2001

Skills

• Copyright Law
• Patent Litigation
• Corporate Law
• Legal Writing
• Litigation
• Licensing
• Patents
• Trade Secrets
• Patentability
• Intellectual Property
• Legal Research
• Patent Prosecution
• Patent Law
• Trademarks