STRONGER Patents Act of 2017 Likely Too Heavy Lift for Congress
Managing AssociateOrange County
Jim assists technology companies develop and implement national and international intellectual property strategies. Jim draws upon more than 20 years of experience working in high-technology fields including aerospace, ballistic missile defense, and satellite technologies from his former career as a navy helicopter pilot.
Jim's practice focuses on complex patent and trademark infringement litigation cases in federal district courts and the United States International Trade Commission. He also represents patent owners and petitioners in post-grant review proceedings and ex parte review proceedings. Jim also counsels clients in patent and trademark prosecution and copyright enforcement actions. Jim has analyzed intellectual property portfolios prior to major company acquisitions and has advised start-up companies on patent landscape prior to investments.
During law school, he gained experience working in-house at NuVasive, Inc., an industry leader in minimally invasive spinal surgery and medical devices, and the patent office for the Space and Naval Warfare Systems Center, Pacific (SPAWAR).
With a wide range of
experience in technologies, ranging from semiconductor
devices, flash array devices, medical devices, portable electronic device
applications, computer accessories, e-commerce technologies, aircraft and helicopter components, intelligent scooters, Internet of Things (IoT) connected devices, and software he can advise many diverse businesses.
As a member of Orrick’s USPTO Trials Group, he represents clients in several inter partes review and covered business method review proceedings.
As a member of the firm’s veterans group and a Director for the Veteran’s Legal Institute (VLI), Jim is dedicated to the pro bono representation of veterans. VLI assists low income veterans and military members by providing free legal services in an effort to remove barriers to housing, health care, and employment while promoting empowerment and self-sufficiency.
Jim is a licensed commercial pilot of aircraft and helicopters.
The following is a sample of Jim's notable cases:
Advanced Ground Information Systems, Inc. v. Life360, Inc. (SD FL): Jim was a member of a team representing Life360 in a patent infringement action brought by AGIS. After a week-long trial, a Southern District of Florida jury found that Life360 did not infringe any of the patents asserted by the plaintiff.
Trustees of Boston University v. Fujifilm Holdings Corporation (MAD): Jim was a member of a team representing eight defendants in a patent infringement action concerning Light Emitting Diodes (LEDs). The team was able to obtain a stay of litigation against the customer defendants pending outcome of the cases against the manufacturer defendants saving the clients litigation costs.
Medtronic, Inc. v. Robert Bosch Healthcare Systems (IPR2014-00488/-00607/-00691): Jim was a member of a team that defended Bosch in a series of inter partes review proceedings at the PTAB. After the proceedings were instituted, the team convinced the PTAB panel that Medtronic had failed to identify all real parties-in-interest, resulting in the proceedings being terminated in favor of the patent owner.
RBIDR, LLC v. airbnb, Inc. (DED): Jim was part of a team that negotiated a favorable settlement for airbnb after filing a motion to dismiss on the pleadings, challenging the patent claims as ineligible subject matter under 35 U.S.C. §101.
EMC v. Pure Storage (DED): Jim was part of a team that secured a $14 million jury verdict for infringement of patents relating to flash array storage systems.