Yeah-SilMoon

Partner

(T) 1.212.326.3778

Yeah-Sil Moon is a leading U.S. and Korean patent attorney as recognized by Chambers, Super Lawyers, and The New York Times. Her 30-year practice is an extraordinarily rich experience of successfully handling patent prosecution, litigation, and strategic counseling matters for clients in the pharmaceutical, biotechnology, chemical, automobile, telecommunication, electronic, mechanical, and medical device sectors. Yeah-Sil has prosecuted and enforced patents worldwide for some of the most successful therapeutics. She assists Celgene Corporation in establishing its global patent portfolio, including prosecution, strategic counseling, litigation, inter partes review (IPR), opposition, invalidation, and transactions for products including billions dollar a year drugs REVLIMID®, POMALYST®, OTEZLA®, VIDAZA®, THALOMID®, and ABRAXANE® for treating cancers and immune, inflammatory conditions.

Yeah-Sil has successfully defended patent infringement actions in various district courts and the International Trade Commission (ITC). Recently she won a summary judgment of noninfringement for SKC Kolon PI, Inc. in the Central District of California and obtained a jury verdict of noninfringement for SOLiD in the Northern District of California. Yeah-Sil also has in-depth experience in IPR. She has significant experience with patent prosecution, litigation, opposition, and invalidation proceedings in Asia, Europe, Australia, Mexico, and Brazil.

Yeah-Sil regularly travels to Korea to visit clients and to lecture on hot topics of U.S. and international IP protection. She leads the Firm's Korea Practice and is a member of the Firm's Patent Prosecution Council.

Experience

  • SKPI defeats Kaneka in patent infringement action regarding polyimide filmsJones Day obtained a summary judgment win on behalf of Korean-based SKC Kolon PI, Inc. ("SKPI"), which is principally engaged in the manufacture and distribution of polyimide films.
  • Celgene to be acquired by Bristol-Myers Squibb for approx. $74 billionJones Day advised Celgene Corporation (NASDAQ: CELG) in connection with the intellectual property and technology transactions aspects of its cash-and-stock merger with Bristol-Myers Squibb (NYSE: BMY) which has an equity value of approximately $74 billion.
  • SOLiD and Reach obtain jury verdict finding non-infringement in competitor-vs.-competitor patent caseFollowing a seven day trial, a jury in the Northern District of California unanimously found that Jones Day clients SOLiD, Inc. and Reach Holdings LLC did not infringe any claims of a 16-year-old wireless communications patent owned by Corning Optical Communications Wireless Ltd., a subsidiary of Corning, Inc.
  • Kakao obtains dismissal of patent infringement action relating to teleconferencing technologyAfter filing a motion to dismiss for lack of personal jurisdiction for Korea-based Kakao Corporation in a patent infringement action involving two patents relating to teleconferencing technology, Jones Day obtained dismissal of the action with prejudice.
  • Kakao patent infringement action relating to voice messaging technology successfully dismissedJones Day successfully defended Kakao Corporation in a patent infringement action involving five patents relating to voice messaging technology.
  • Sewoon obtains dismissal of patent infringement action regarding stent technologyJones Day successfully defended Sewoon Medical Co., Ltd., Standard Sci-Tech Inc., and EndoChoice, Inc. in a patent infringement action regarding stent technology.
  • Taewoong Medical resolves patent infringement dispute over stent technologyJones Day successfully defended Taewoong Medical Co., Ltd. in a patent infringement action regarding stent technology.
  • CJ CheilJedang defends German patent infringement action by Japanese competitorJones Day is representing CJ CheilJedang Corporation, a major Korean-based multinational company, in a patent dispute with a Japanese competitor before the courts in Germany.
  • ToolGen seeks patent protection for CRISPR technologyJones Day is prosecuting patent applications and developing a patent portfolio on behalf of ToolGen, Inc. for CRISPR technology.
  • Celgene develops patent portfolio for use of different polymorphic forms of 5-AZACYTIDINEJones Day assists Celgene Corporation with obtaining patent protection for different polymorphic forms of 5-AZACYTIDINE.
  • Celgene seeks patent protection for different oral formulations of 5-AZACYTIDINEJones Day is prosecuting applications and developing a patent portfolio on behalf of Celgene Corporation for oral formulations of 5-AZACYTIDINE.
  • Celgene establishes global patent portfolio for its brands REVLIMID®, POMALYST®, OTEZLA®, VIDAZA®, ABRAXANE® and ISTODAX®Jones Day assists Celgene Corporation in the establishment of its global patent portfolio related to lenalidomide (REVLIMID®), pomalidomide POMALYST®), apremilast (OTEZLA®), azacitidine (VIDAZA®), ABRAXANE® and romidepsin (ISTODAX®) for the treatments of cancer and immune, inflammatory conditions.
  • Hyundai fends off patent infringement actionJones Day successfully represented Hyundai Motor America in a patent infringement suit filed in the Central District of California related to telematic technology.
  • Hyundai fends off patent infringement action related to vehicle telematicsJones Day successfully represented Hyundai Motor America in a patent infringement suit filed in the District of Minnesota related to vehicle telematics. 
  • Hyundai defends against patent infringement action brought by Remote Vehicle Technologies involving vehicle telematics technologyJones Day successfully represented Hyundai Motor Company in a patent infringement case relating to vehicle telematics technology.
  • STI defends against patent infringement action over liquid crystal display technologyJones Day successfully represented the Systems Technology Incorporated defendants in a patent infringement case relating to LCD manufacturing technology.
  • Celgene defends patents covering lenalidomide and apremilast before European Patent OfficeJones Day represents Celgene Corporation in defense of patents covering lenalidomide and apremilast against oppositions brought before the European Patent Office by generic pharmaceutical companies.
  • LS Cable defends against patent infringement action over data and communications cablesJones Day successfully represented LS Cable Ltd. defendants in a patent infringement case relating to data and communications cables.
  • Speaking Engagements

    • April 2018
      IP Infringement Claims at the U. S. International Trade Commission – A Comparison to U.S. District Court Actions
    • January 2018
      U. S. Patent Litigation and Inter Partes Review Proceedings
    • December 2017
      Intellectual Property Protection Of Artificial Intelligence and Big Data Technologies
    • September 2017
      Drafting U.S. Provisional and Non-Provisional Applications; U.S. Patent Litigation, Discovery, Privilege Protection and Inter Partes Review
    • May 2017
      Issues And Strategic Considerations For The Protection and Use Of Artificial Intelligence Technologies
    • September 2016
      U.S. IPR and Patent Prosecution Strategy
    • September 2016
      Global IP Procurement and Enforcement for Pharmaceutical and Biotechnology Inventions
    • June 2016
      Artificial Intelligence Intellectual Property: Players, Issues, and Strategic Considerations
    • January 2016
      IP Enforcement, Discovery & Privilege Issues in the US
    • March 2015
      Television Interview: Jones Day's Global Presence, TV Korea Daily Pharm
    • September 26, 2014
      IP Enforcement in the US: the Jury Trial, Asia Intellectual Property Finance and Business Conference
    • September 22, 2014
      Inter Partes Review in the United States Patent Office; Deposition and Trial Strategies for Witnesses in United States Lawsuits
    • April 2014
      Growing Pharmaceutical & Health Care Business Using Global Patent Strategy
    • April 2014
      U.S. Patent Litigation Guide and Overview of Standard-Essential Patents
    • November 2013
      Post-Grant Proceedings and New Developments in the U.S. - a Year After the 2011 Patent Law (AIA)
    • September 10-13, 2013
      Recent Developments and Uncertainties in the Law on Patent Eligible Subject Matter; Recent Developments in the ITC and Injunctive Relief For Standard-Essential Patents; US Patent Litigation Reform – Legislative Efforts and Practical Strategy Dealing with Non-Practicing Entities
    • September 24-28, 2012
      US Patent Litigation in the Wake of AIA, and Using the New Post-Grant Proceedings; Strategic Decisions Regarding the Upcoming US Move to a First-To-File System; Myriad Case: Patentable Subject Matter
    • October 4-7, 2011
      The 2011 Patent Reform Act
    • June 15, 2010
      Pharmaceutical Polymorphism and U.S. Patent Law: Recent Developments
    • March 2009
      Comparison and Strategy of U.S. ITC Investigation and Patent Infringement Litigation in U.S. District Courts
    • September 2008
      Patent Procurement and Portfolio Management Strategy
    • June 1, 2007
      Intellectual Property Litigation and ITC Litigation in the U.S.A., Korea Drug Research Association
    • May 30, 2007
      Intellectual Property Litigation and ITC Litigation in the U.S.A., Korea Small Business Corporation Association and Korea Intellectual Property Lawyer Association
    • August 15, 2004
      Patent Litigation and U.S. ITC Litigation, LG Cable Co., Ltd.
    • August 14, 2004
      Effective Patent Portfolio, LG Cable Co., Ltd.
    • March 25, 2004
      Developments in the U.S. Doctrine of Equivalents; IP Due Diligence, Korea Drug Research Association
    • May 15, 2003
      Focus on U.S. Patent Litigation;  Patent and Telecommunication Standardization, Korea Telecommunication Technology Association
    • May 27, 2002
      Copyright and Internet, SK Telecom Co., Ltd.
    • May 26, 2002
      Doctrine of Equivalents in the U.S.A., Korean IP Firms
    • May 25, 2002
      Patent Procurement and Litigation in the U.S.A., Hyundai Motor Company and Kia Motor Company
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