Kimberly E. Coghill

Kim is a partner in the firm’s Intellectual Property Department, resident in the Washington, D.C. office.

As a litigator, Kim is known for her ability to quickly analyze and identify strengths and weaknesses of IP portfolios (both those asserted by and against her clients) and to convert that analysis into a well-planned litigation strategy. She has extensive experience managing large-scale parallel litigations in multiple-fora, including coordinating strategy amongst simultaneous proceedings in federal district court, before the International Trade Commission, and at the Patent Office. Kim draws from her deep understanding of the procedural interplay across these forums, as well as her in-depth knowledge of patent prosecution and patent portfolio management, to develop winning arguments tailored to the appropriate audience, whether it be a jury, a district or appellate court judge, an ALJ or an APJ. She has particular prowess in developing invalidity and validity arguments, especially those relating to Sections 101 and 112.

Kim’s comprehensive understanding of IP portfolio management and assertion extends beyond utility patents to design patents, trademark, trade dress, and copyright; she has experience litigating in each of these areas in district court — both in tandem with and apart from patent litigation.

Prior to turning her focus to IP litigation, Kim purposefully spent time as a patent examiner at the U.S.P.T.O. in the area of nuclear technology and subsequently split her time between IP litigation, patent prosecution, and IP portfolio management.

• Successfully developed strategy for and argued multiple Rule 12 motions in district court resulting in the dismissal of patent infringement claims under Section 101.
• Developed and presented winning invalidity arguments for respondents in several Section 337 International Trade Commission Investigations (337-TA-1091 and 337-TA-1144), resulting in a finding of no violation.
• Represented numerous clients, both plaintiffs and defendants, in district courts across the U.S. in patent infringement matters relating to software, pharmaceuticals, materials science, and medical device technology.
• Counseled and represented a brand name pharmaceutical client in district court in an action involving both patent infringement and Lanham Act claims.
• Counseled fashion industry clients and provided representation in district court against serial copyright infringement lawsuits.
• Advised and represented a medical device client in a declaratory judgment action involving a design patent.
• Defeated institution of an inter partes review petition relating to foam roller technology.
• Represented a large pharmaceutical client managing their U.S. patent portfolio, including analyzing patent families and providing advice on strategies relating to obviousness-type double patenting, PTA, PTE, and Orange Book submissions, and the intersection between patent and FDA law.
• Experience preparing, validity, infringement and freedom-to-operate opinions, including for branded pharmaceuticals.
• Experience prosecuting patents across a wide variety of areas (including in the chemical, biochemical, materials science, computer, and electrical arts).

• Best Lawyers in America®: Ones to Watch: Litigation – Intellectual Property (2021-2022)