Rex Hwang

Partner

Rex Hwang is a registered patent attorney with significant experience litigating complex patent, trademark, copyright and trade secret disputes. Rex’s practice covers all aspects of intellectual property law, including intellectual property litigation, patent and trademark prosecution, licensing negotiation, AIA proceedings such as IPRs, CBMs and PGRs, and counseling relating to intellectual property procurement and development. Rex has handled matters covering a wide range of technologies and products including mobile communication devices, flash memory devices, LED lights, semiconductors, medical devices, consumer chemical products, and computer hardware and software.

Rex has represented both large and small companies including LG, VIZIO, British Broadcasting Corp., SHFL entertainment, Bally Gaming, BEA Systems, Inc., Oracle, Fuji Xerox, and others.

Rex has served as litigation counsel in a variety of intellectual property litigation matters at the federal district court and appellate court levels, and before the United States Patent and Trademark Office in both interference and post-grant review proceedings.

While in law school, Rex was the managing editor of the Kansas Journal of Public Policy and was selected to participate regionally in the Saul Lefkowitz Moot Court Competition.

Rex is also an active member of both the legal and local community. He is a member of the Los Angeles Korean American Bar Association (Board member), and the KU Alumni Association (Big 12 LA Liaison). Rex also penned the “Federal Circuit Report” column in New Matter, which is the official publication of the Intellectual Property Section for the State Bar of California.

Rex also coaches his sons’ little league baseball teams.

Representative Matters

Represented defendant VIZIO in a patent infringement lawsuit involving five patents relating to digital rights management, cryptography, steganography, and digital watermarking technologies resulting in favorable settlement for VIZIO. Secured two sanction awards against the plaintiff for $65,345 during the lawsuit. Final settlement required the plaintiff to pay VIZIO $100,000 as an initial payment, and an addition $650,000 in contingent payments.

 

Won summary judgment of non-infringement for defendant VIZIO in a patent infringement lawsuit involving de- interlacing and multimedia encoding system technologies.

 

Represented a university-based licensing entity in a patent litigation over FinFET semiconductor technology. Member of trial team that secured a $400 million jury verdict. The jury found the claims to be valid and that all the defendants infringed the asserted patent. Successfully handled related IPR matters.

 

Secured partial summary judgment for plaintiffs British Broadcasting Corporation and affiliated entities in two lawsuits involving trademark infringement and dilution claims, which led to the matter being resolved with a Consent Judgment and Permanent Injunction against defendants.

 

Secured partial summary judgment on behalf of Conan O’Brien, TBS, and related entities, finding no infringement of certain copyright infringement claims.

 

Secured partial summary judgment for defendant VIZIO in a trademark infringement and dilution matter, which led to plaintiff dropping its damages claim.

 

Won summary judgment of non-infringement on behalf of manufacturer of outdoor activity equipment, which involved three patents directed to clip-lights.

 

Represented LG Electronics in patent infringement lawsuit involving microprocessor technology resulting in favorable settlement for client.

 

Successfully handled appeal before the United States Court of Appeals for the Federal Circuit where district court’s patent invalidity determination of three utility lighter patents was affirmed.

 

Represented owner of patents directed to mobile network technology against major computer manufacturers resulting in favorable settlements after Markman hearing.

 

Successfully invalidated patent claims involving flash memory technology as lacking written description support in a patent interference action before the Board of Patent Appeals and Interferences.

 

Represented nail polish distributor in litigation involving lacquer composition patent resulting in favorable settlement for client.

 

Represented major distributor of various seafood products in trademark infringement litigation resulting in favorable settlement for client.

 

Successfully obtained summary judgment invalidating five design patents covering and dismissing related trade dress claims for automobile parts, directly leading to a consent judgment invalidating two additional patents and a six figure award of damages for client’s counterclaim.

 

Represented major electronics manufacturer of mobile devices in various patent licensing negotiations involving digital image processing, digital music player, mobile telecommunications and Internet protocol television technologies.

Speaking Engagements, Presentations and Publications

“Federal Circuit Report,” New Matter, Official Publication of the Intellectual Property Law Section of the State Bar of California, Volume 42, Number 1, 2017

 

“Federal Circuit Report,” New Matter, Official Publication of the Intellectual Property Law Section of the State Bar of California, Volume 41, Number 4, 2016

 

“Federal Circuit Report,” New Matter, Official Publication of the Intellectual Property Law Section of the State Bar of California, Volume 41, Number 3, 2016

 

“The Supreme Court Relaxes the Standard for Increased Patent Damages,” June 14, 2016

 

“35 U.S.C. § 101 – If At First You Don’t Succeed, Try, Try Again,” April 6, 2016

 

“Laches As a Defense to Patent Damages Survives – For Now,” September 30, 2015

 

“Federal Circuit Attacks Functional Claim Drafting Under 35 U.S.C. § 101,” July 14, 2015

 

“Supreme Court Modifies Claim Construction Review Standard,” January 21, 2015

 

“Federal Circuit Reverses Judgment for Willful Infringement,” December 23, 2014

 

“Ultramercial Finally Strikes Out at the Federal Circuit,” November 17, 2014

 

“Federal Circuit Decision Highlights Risk of Co-owning Patents,” October 7, 2014

 

“PTAB Issues First Precedential Opinion in an AIA Post-Grant Proceeding,” August 7, 2014

 

“Foreign Privilege Issues in U.S. Patent Litigation with Focus on Korea,” 2014 U.S.-Korea Law Journal, July 2014

 

“High Court Says Computerized Abstract Ideas Not Patent Eligible,” June 23, 2014

 

“The Supreme Court Overturns Two More Federal Circuit Decisions,” June 10, 2014

 

“SimpleAir Wins a $85 Million Jury Verdict Against Google,” April 23, 2014

 

“Patent False Marking Claims – Another Opportunity for Trolls?” New Matter, Vol. 34, No. 3 (2009).

Contact Information

800 Wilshire Blvd., Suite 1450, Los Angeles, CA 90017

(213) 788-4500

rhwang@skiermontderby.com

Education
THE UNIVERSITY OF KANSAS SCHOOL OF LAW

Class Rank: 44 / 170 (top 26%)

Managing Editor of the Kansas Journal of Public Policy

Saul Lefkowitz Moot Court Competition Participant at the Regional Level

Legal Research Assistant for Professors David Gottlieb, Jean Phillips, and Philip Kissam

Legal Intern at U.S. Attorney’s Office

 

THE UNIVERSITY OF KANSAS

Bachelor of Science, Chemical Engineering

Member of the Golden Key International Honour Society (limited to top 15% of class)

University of Kansas Endowment Association Merit Scholarship Recipient

Phillips Petroleum Merit Scholarship Recipient

Presson Scott Shane Memorial Merit Scholarship Recipient

Bar Admissions

U.S. Supreme Court

U.S. Court of Appeals for the Federal Circuit

U.S. District Court for the Northern District of California

U.S. District Court for the Central District of California

U.S. District Court for the Southern District of California

U.S. District Court for the Eastern District of Texas

U.S. Patent and Trademark Office

Professional & Community Involvement
Korean American Bar Association (Board of Governors)
 
KU Alumni Association (Big 12 Liaison)
 
Los Angeles Intellectual Property Association (invited speaker)
 
National Association of Asian American Professionals – Los Angeles (former Board member)
 
Judge Paul R. Michel Intellectual Property American Inn of Court
 
Asian Business Association
 
NAAAP-LA, Director of Administration

Dallas
1601 Elm St
Suite 4400
Dallas, TX 75201

(214) 978-6600

 

info@skiermontderby.com

Los Angeles
800 Wilshire Blvd
Suite 1450
Los Angeles, CA 90017

(213) 788-4500

 

info@skiermontderby.com