Practice Expertise

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Areas of Practice

  • Antitrust and Consumer Protection
  • Commercial Contracting and Contract ...
  • Discovery and E-Discovery
  • Information Technology
  • Intellectual Property
  • Intellectual Property and Life Sciences
  • Intellectual Property and Technology ...
  • International Trade Commission Section 337 ...
  • Litigation
  • Mergers and Acquisitions
  • Outsourcing, Technology and Commercial ...
  • Patent Litigation
  • Patent Procurement and Management
  • Post-Grant Proceedings Practice
  • View More

Profile

James is a Partner in the Intellectual Property section.

He has represented numerous large companies in patent litigations as well as in mediation, patent prosecution, patent portfolio development, copyright, trade secret, unfair competition, and general corporate matters. Representative clients include clients in the cell phone, consumer electronics software, and hardware industries. As the former global head of dispute resolution for Sony Mobile Communications, James has substantial knowledge of the fundamental business issues faced by in-house counsel teams and is experienced with working directly with senior management and engineering staff as well as outside experts and is frequently relied on to distill complex technical issues for non-technical audiences.

Representative Experience

  • Sony in an International Trade Commission (ITC) investigation brought by Complainant ARRIS Enterprises LLC alleging that certain Sony products infringed patents related to televisions, DVD and Blu-Ray players, mobile cellular devices, and gaming systems. Administrative Law Judge granted the parties motion to terminate the investigation. In Re Certain Consumer Electronic Devices, Including Televisions, Gaming Consoles, Mobile Phones and Tablets, and Network-Enabled DVD and Blu-Ray Players; ITC Investigation No. 337-TA-1060.
  • Sony in an International Trade Commission investigation (ITC) brought by Complainant Ziilabs Inc., Ltd. alleging that certain Sony products infringed patents related to graphics processors and memory interfaces. Administrative Law Judge granted the parties motion to terminate the investigation. In Re Certain Graphics Processors, DDR Memory controllers, and Products Containing the Same; ITC Investigation No. 337-TA-1037.
  • Sony in a patent infringement suit filed against it by Adaptix, Inc. directed to telecommunications standards and in related inter partes review (IPR) petitions challenging the asserted patents. The matter settled on favorable terms following Adaptix’s cancellation of all claims challenged in the IPR for one of the asserted patents in the IPR.
  • Sony in a patent infringement suit filed against it by e-Watch Inc. alleging that Sony Mobile camera phones infringed asserted patents, and in related inter partes review (IPR) petitions challenging the asserted patents. The matter settled on favorable terms following a stay of the litigation in light of the filed IPRs.
  • Sony in a patent infringement suit filed against it by Iris Connex, LLC alleging that Sony Mobile camera phones infringed asserted patents. The case was resolved following an early claim construction (Markman) hearing and the Court’s granting of a motion for summary judgment.
  • Sony in a patent infringement suit filed against it by Imperium IP Holdings (Cayman) Ltd. alleging that Sony imaging sensors infringed several asserted patents. The case was resolved on favorable terms following a claim construction (Markman) hearing.
  • Sony in a patent infringement suit filed against it by Cascades Computer Innovation, LLC alleging that Java virtual machine technology in Sony Android-OS mobile devices infringed patents relating to translation of binary code. The case was resolved on favorable terms following a claim construction (Markman) hearing and Order.
  • Sony in a patent infringement suit filed against it by SoftView LLC alleging that Sony Android-OS mobile devices infringed patents relating to web browsing. The case was resolved on favorable terms following the filing of an inter partes review (IPR) petition.
  • As head of dispute resolution for Sony Mobile, I was responsible for the company’s international patent litigation strategy and managed an international team of patent litigation attorneys. These patent matters were in various jurisdictions throughout the United States and before the U.S. International Trade Commission as well as in Germany, Italy and in the United Kingdom. In addition, I served as lead negotiator for Sony Mobile patent licenses.
  • As a Partner, I remain actively involved in the global coordination of patent litigation strategy for Sony Mobile and am responsible for over 35 Sony Mobile patent matters handled by the firm. These matters involve a range of wireless technologies as well as computer software and hardware patents. Representative technical areas include: online transaction processing; scanning software; optical recognition; camera and imaging; user interface; computer hardware configurations; database access; global positioning systems; multi-media systems; network interfaces and data translation.
  • Negotiated numerous patent license agreements with major companies in the consumer electronics, software and electronics industries.
  • Handled IP issues and due diligence in numerous M&A transactions for major corporations including providing advise with respect to scope of target company IP, enforcement potential, infringement risks, and impact of ongoing patent litigations.
  • Provide advice on patent infringement evidence and the issuance of patent opinions regarding validity and infringement.
  • Advised clients on the sale and purchase of IP assets.
  • Has negotiated numerous settlements for defendants in patent litigation in the United States and in Europe.
  • Drafted patents covering inventions in the computer software, hardware, financial systems and methods, communications technologies, and consumer goods fields.

Bar Admissions

    Education
    JD, Rutgers School of Law, Rutgers Computer and Technology Law Journal, Editor, 1996MS, Electrical Engineering, Columbia University School of Engineering and Applied Science, 1989BS, Computer Science, Hofstra University, cum laude, 1987

    Areas of Practice

    • Antitrust and Consumer Protection
    • Commercial Contracting and Contract Lifecycle Management
    • Discovery and E-Discovery
    • Information Technology
    • Intellectual Property
    • Intellectual Property and Life Sciences
    • Intellectual Property and Technology Transactions
    • International Trade Commission Section 337 Litigation
    • Litigation
    • Mergers and Acquisitions
    • Outsourcing, Technology and Commercial Contracting
    • Patent Litigation
    • Patent Procurement and Management
    • Post-Grant Proceedings Practice

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