Miyoung Shin
Shareholder

Miyoung Shin is an experienced patent attorney who has an electrical engineering background and focuses on the technical fields of electrical engineering, computer science, and mechanical engineering. She analyzes and understands the patented technology, reviews relevant prior art and evidence, writes petitions, requests, motions, responses, etc. and argues before U.S. Patent and Trademark Office and the district courts. Based on her significant hands-on experience, she has earned a reputation for legal excellence, extensive knowledge, deep understanding and solid experience on a wide range of patent matters, and business-focused advice.  

Her practice includes all areas of patent law, with a particular focus on complex, rapidly-evolving issues such as post-grant proceedings, patent protection and enforcement.  Miyoung maintains all aspects of her large corporate clients’ patent portfolios. Her work has helped protect the important technology of major national and international companies.

Miyoung’s role as co-chair of the firm’s Post Grant Review Patent Practice group reflects her leadership in this dynamic area. Prior to joining Brinks, she has practiced as a registered Korean patent attorney in patent prosecution and litigation matters, and has worked with a worldwide network of associates (all of whom are top-flight lawyers in their home countries).

Miyoung assists clients with:

  • Post-grant proceedings
  • Patent Litigations
  • Patent Prosecution
  • Strategies to defend patent infringement assertions
  • Strategies to assert patents and prevent infringement
  • Strategies to assert invalidity of patents
  • Filing Strategies and Case management
Education
  • J.D., cum laude, Order of the Coif
    Northwestern University School of Law, 2003
  • B.S., Electrical Engineering
    Korea University, 1995
Bar Admissions
  • Illinois
  • Illinois Supreme Court
  • U.S. Dist. Court, N.D. Illinois
  • U.S. Patent & Trademark Office
Area of Focus
Technical Background
  • Analog
  • Business Methods
  • Digital
  • Semiconductors
  • Signal Processing
  • Software
Languages
  • Japanese (read only)
  • Korean
Experience | Overview
  • Miyoung successfully defended the clients in the patent infringement action by invalidating several asserted patents before the Patent and Trademark Office. The clients successfully settled the patent infringement action on favorable terms.     
  • Miyoung prepared, coordinated and managed several ongoing inter partes review trials. She attended and defended depositions and argued at multiple oral hearings.   
  • Miyoung successfully secured several U.S. patents and managed a patent portfolio directed to a particular technical focus.  
  • Miyoung successfully settled the patent infringement action at the early stage by analyzing the patent and securing a highly relevant prior art reference.    
  • Miyoung is currently handling and managing several inter partes review petitions. She is working closely with the clients to formulate invalidity and non-infringement strategies.   
  • Miyoung is handling and managing USPTO actions and responses for a sizable number of patent cases.
Experience | Legal

Brinks Gilson & Lione, Chicago, Illinois
Shareholder, 2012-Present
Associate, 2003-2011

Nixon Peabody LLP, McLean, Virginia
Summer 2001

Law Offices Lee & Ko, Seoul, Korea
Korean Patent Attorney, 1996-2000

Law Offices Kim & Chang, Seoul, Korea
Korean Patent Attorney, 1994-1996

Forward Thinking
blogpost
May 31, 2017
In making a final written decision of AIA proceedings, the Patent Trial and Appeal Board (“the Board”) is not bound by findings made in an institution decision.  In three recent decisions, the Federal Circuit considered the ...
multimedia
May 18, 2017

On Thursday, May 18, 2017, attorneys from Brinks' Post-Grant Patent practice group presented the webinar, PTAB and the District Courts...

blogpost
April 25, 2017
ITC complainant Aspen Aerogels, Inc. (“Aspen”) filed on March 24, 2017 a motion and supporting memorandum to reopen proceedings for receipt of additional evidence.  In the Matter of: Certain Composite Aerogel Insulation Materials ...
blogpost
April 03, 2017
The Patent Trial and Appeal Board (PTAB) upheld the patentability of U.S. Patent No. 8,601,154 (“the ‘154 patent”), owned by SimpleAir, Inc. (“SimpleAir”) in an inter partes review petition filed by Google.  Google ...
in the media
March 27, 2017
On March 24, 2017, the Chicago Daily Law Bulletin mentioned Brinks Gilson & Lione Shareholder Laura Beth Miller as a featured presenter at Women In Bio-Chicago’s Women’s History Month event, Shattering the Glass Ceiling: Navigating ...
blogpost
January 24, 2017
The Patent Trial and Appeal Board (“PTAB”) found the asserted claims of U.S. Patent No. 8,337,856 (“the ‘856 patent”) are nonobvious in a final written decision. Phigenix, Inc. v. Immunogen, Inc., IPR 2014-00676 (PTAB ...
blogpost
November 10, 2016
The Federal Circuit granted Aqua Product Inc.’s en banc rehearing request on August 12, 2016.  See the blog posted August 24, 2016, entitled “Will the PTO Change their Motion to Amend Practices?”  In its order granting ...
in the media
September 26, 2016
On September 26, 2016, IPFrontline Magazine published an article written by Miyoung Shin called “PTAB Denies A Second IPR Petition Based On Estoppel And Redundancy.  Please click here to read the article.
blogpost
September 19, 2016
The Patent Trial and Appeal Board (“Board”) denied a petition to institute an inter partes review (IPR) trial filed by the Petitioner, Praxair Distribution, Inc. (“Praxair”) and NOxBOX Limited (“NOxBOX”) based on ...
blogpost
August 24, 2016
The Federal Circuit granted Aqua Product Inc.’s en banc rehearing request on August 12, 2016.  The court’s opinion in In re Aqua Products, Inc., 823 F.3d 1369 (Fed. Cir. 2016)(“the original decision") was vacated and the ...
blogpost
August 10, 2016
The Patent Trial and Appeal Board authorized the patent owner to file a motion for additional discovery in Inter Partes Review petition brought by the petitioner, Dr. Reddy’s Laboratories, Ltd. (“Dr. Reddy”).  (Case ...
blogpost
August 10, 2016
The Federal Circuit held that the Board should have applied the Philips standard of claim construction when the patent at issue expired during reexamination.   In re CSB-System International, Inc., Appeal No. 2015-1832 (Fed. Cir. August 9, ...
blogpost
July 21, 2016
Originally published on July 20, 2016 in Law360 During oral arguments in the closely watched Cuozzo Speed Technologies, Inc. v. Lee, the Supreme Court heard arguments from both sides describing the merits and consequences of allowing the Patent ...
in the media
July 20, 2016

On July 20, 2016, Chicago attorneys, Miyoung Shin and Peter Lee, wrote a guest article for Law360 entitled, "Finding ...

alert
June 21, 2016

The Supreme Court on June 20, 2016, upheld the AIA provisions allowing the USPTO’s Patent Trial and Appeal Board (“PTAB”) to interpret claims under the broadest reasonable construction (BRI) standard during an inter partes review...

blogpost
June 21, 2016
The Federal Circuit recently provided guidance on the role of institution decisions and differences in the scope of institution decisions and final written decisions.  Genzyme Therapeutic Products Limited Partnership v. Biomarin Pharmaceutical ...
blogpost
June 20, 2016
The Supreme Court on June 20, 2016, upheld the AIA provisions allowing the USPTO’s Patent Trial and Appeal Board (“PTAB”) to interpret claims under the broadest reasonable construction (BRI) standard during an inter partes ...
blogpost
June 14, 2016
On June 13, 2016, the Patent Trial and Appeal Board (“PTAB”) issued first ever final written decisions out of post grant review proceedings.  Post grant review is available only for patents stemming from applications filed on or ...
alert
June 13, 2016

On May 19, 2016, Robert Bahr, Deputy Commissioner for Patent Examination Policy of the U.S. Patent and Trademark Office...

multimedia
December 02, 2015

The Brinks Post-Grant Practice Group held the fourth in a series of webinars on recent developments in ...

Representative Matters
  • Dyson v. LG Electronics, Inc. et al. (N.D. Il. 2011). Subject: Patent Infringement. Resolution: Pending. Ms. Shin represents defendants LG Electronics, Inc. and LG Electronics U.S.A., Inc.
  • ZTE v. ContentGuard (PTAB 2013). Represented petitioner ZTE in six Inter Partes Review proceedings before the Patent Trial and Appeal Board. The patents in suit relate to digital rights management (“DRM”) technology. 
  • Automotive Technologies International, Inc. v. American Honda Motor Company, General Motors Corporation and Elesys North America, Inc. (D. Del. 2006). Subject: Patent Infringement. Resolution: Ongoing. Ms. Shin represents defendants American Honda, GM and Elesys North America. Resolution: Case stayed pending reexamination of asserted patents.
Press Releases & Events
June 06, 2017

CHICAGO—Intellectual property law firm Brinks Gilson & Lione has been recognized for the ninth year in a row as a top U.S. firm for patent prosecution, including for re-examination and post-grant proceedings, by The Legal 500 United States 2017...

May 18, 2017

CHICAGO—Gary M. Ropski, Miyoung Shin, Jafon Fearson, and Sen (Alex) Wang, attorneys in the post-grant patent practice group at intellectual property law firm Brinks Gilson & Lione, will present the webinar “PTAB and the District Courts” at 12:00 p.m. CDT on May 18, 2017...

May 18, 2017

On Thursday, May 18, 2017, Gary Ropski, Miyoung Shin, Jafon Fearson, and Alex Wang will present the webinar, PTAB and the District Courts...

March 21, 2017

On March 21, 2017, Gary Ropski and Miyoung Shin will serve as moderator and speaker on a panel session entitled ...

February 17, 2017

CHICAGO—Gary M. Ropski and Miyoung Shin, shareholders and patent litigators at intellectual property law firm Brinks ...

Honors
  • Recommended Lawyer, Legal 500, 2017
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