James S. DeGraw

Partner

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  • JD, cum laude, New York University School of Law, 1991; Managing Editor, Law Review
  • BS (Computer Science), Columbia University, 1984

Qualifications

  • California, 2012
  • Hong Kong, Solicitor, 2011
  • Massachusetts, 1992
  • New York, 1992

Court Admissions

  • U.S. Court of Appeals for the Second Circuit, 1997
  • U.S. Court of Appeals for the Federal Circuit, 1996
  • U.S. District Court for the District of Massachusetts, 1994
  • Honorable Robert W. Sweet, U.S. District Court for the Southern District of New York
  • Honorable Amalya L. Kearse, U.S. Court of Appeals for the Second Circuit
  • American Bar Association
  • Licensing Executives Society
  • International Association of Privacy Professionals
  • Regis Bar Association
  • Law360 2014 Privacy and Consumer Protection Editorial Advisory Board
  • Frequent speaker, including presentations to the Berkman Center for Internet & Society, Council on Governmental Relations, American Health Lawyers Association, the Licensing Executive Society, Association of University Technology Managers, Stanford University, Boston Bar Association, and Massachusetts Continuing Legal Education, Inc.
  • Former Co-Chair of the Boston Bar Association's Intellectual Property Section and Committee

James S. DeGraw

Partner

Jim DeGraw is a corporate partner in Ropes & Gray’s technology group.  With a background in computer science, Jim regularly leads projects for clients where technology, data or other IP assets are the key drivers.  In addition to technology-focused mergers & acquisitions, Jim’s transactional work includes working with clients to structure complex and strategic technology relationships, such as cross-border joint ventures, multi-faceted business licensing transactions and tactical business process outsourcing relationships.

A certified privacy professional, CIPP/US, Jim’s practice includes advising clients on the collection, handling and protection of data by their organizations; evaluating data policies and practices; responding to data security breaches and incidents, and otherwise navigating the opportunities and concerns raised by developing data privacy and security laws and by the growth of cloud services and social media.

Jim also regularly advises clients on strategies for maximizing the value in their data, technology and intellectual property assets, whether through data aggregation and analysis, targeted marketing campaigns, international brand and product expansion efforts, or patent portfolio licensing programs by academic research centers, and on strategies for putting comprehensive intellectual property protection programs in place for those assets.

Experience

  • Advise major international consumer product company on its data privacy and collection practices.
  • Represented Quanta Computer in connection with its joint venture with 3M to develop, manufacture and market touch screen technology solutions.
  • Advise major PRC-based internet company on joint ventures and other relationships with multi-national software and technology providers.
  • Advise China-based app developers on international IP issues.
  • Advise leading US academic institution on its distance learning and MOOC initiatives.
  • Advise Korean manufacturer on its US distributor dealings.
  • Represented Bain Capital in its acquisition of D&M Holdings, a Japanese publicly traded company controlling Denon, Marantz, and other audio branded product companies. This transaction was named ALB Japan Deal of the Year (TM&T).
  • For major pharmacy benefits management concern, handled renegotiation of troubled, existing IT outsourcing relationship and subsequent RFP for and negotiation of replacement outsourcing relationship.

Awards

  • IAM Licensing 250 – The World's Leading Patent and Technology Licensing Lawyers
  • IAM The World’s Leading Patent Practitioners – Recommended individual for licensing
  • Expert Guides Guide to Leading Practitioners: China – Patent, Trademark, Private Equity

Insights

Publications

  • Quoted, “More Advisers Insuring Against Cyberthreats: Not all policies will reimburse a firm for stolen money,” The Wall Street Journal (June 13, 2014)
  • "Thoughts on Academic Research Institution Technology Transfer, Intellectual Property Principles, and Japan," Institute of Intellectual Property (IIP) (May 2014)
  • Co-author, "Preparing a Company for Data Security Flaws: Heartbleed and Beyond," The Wall Street Journal "CIO Journal" (April 17, 2014)
  • Quoted, "Facebook-WhatsApp Deal Gets FTC's OK, But With Stern Privacy Warning," The Recorder (April 10, 2014)
  • Co-author, “When it happens to you: How to navigate a payment card breach,” InsideCounsel (March 31, 2014)
  • Quoted, "Privacy at the Fore in 2013," The Daily Journal (December 18, 2013)
  • Quoted, "Google Policy Worries Fellow Tech Companies," The Daily Journal (December 16, 2013)
  • Quoted, "Privacy a Sticking Point for Dealmakers,” The Recorder (December 6, 2013)
  • Co-author, "FTC's Increasingly Aggressive Assertion Of Authority," Law360 (October 9, 2013)
  • Quoted, "Gene-Patent Ruling Makes Data More Valuable," The Recorder (June 21, 2013)
  • Quoted, "Impact of Supreme Court's gene patent ruling uncertain for biotech companies: California reacts after high court says human DNA can't be Patented," The Daily Journal (June 14, 2013)
  • Quoted, "App Makers Want to Slow Rollout of Child Privacy Rules," The Recorder (April 22, 2013)
  • Quoted, "Arguments heard on patenting genes," Boston Business Journal (April 19, 2013)
  • Quoted, "Bill Summary: H.R. 624, Cybersecurity Information Sharing," Bloomberg Government (April 17, 2013)
  • Quoted, "High Court Set to Hear Arguments April 15 on Myriad Gene Patenting Case," Bloomberg BNA’s Patent, Trademark & Copyright Journal (April 12, 2013)
  • Co-author, "Meso Scale V. Roche Rethinks Reverse Triangular Mergers," Law360 (March 21, 2013)
  • Quoted, "IP Lawyers Weigh In On High Court's 1st-Sale Ruling," Law360 (March 19, 2013)
  • Co-author, "More Regulations to Come," The Recorder (February 22, 2013)
  • Quoted, "EU Cybersecurity Proposal Grows Divide With US," Law360 (February 11, 2013)
  • Quoted, "EU Data Rules Would Spur Class Action Abuse, Chamber Says," Law360 (January 2013)
  • Quoted, "Myriad Patent Case Tees Up 2 Key Issues For High Court," IP Law360 (December 2012)
  • Quoted, "High Court to Decide if Genes Can Be Patented," The Recorder; article also in AmLaw Litigation Daily (November 2012)
  • Quoted, "High Court 1st-Sale Case May Make Waves Across Industries," Law360 (October 2012)
  • Quoted, "Human gene patents, biotech industry face Supreme Court scrutiny," Daily Journal (April 12, 2013)
  • Quoted, "Human gene patents, biotech industry face Supreme Court scrutiny, " Daily Journal (April 12, 2013)
  • Quoted, "Supreme Court to hear oral arguments in Myriad case," World Intellectual Property Review(April 15, 2013)
  • Quoted, "Fate of gene tests in the hands of the Supreme Court," Boston Business Journal (April 12, 2013)
  • Co-author, "Data privacy, beyond compliance," The Recorder (July 2012)
  • "Supreme Court Torches Prometheus Patents," The Recorder (April 2012)

Presentations

  • Speaker, "Webinar: Handling & Protecting Sensitive Data by Colleges & Universities: Beyond HIPAA & FERPA," Ropes & Gray Webinar, June 2014
  • Panelist, "Mobile and Social Media Marketing and Promotions, Geo-location Privacy and Do-Not-Track," 11th Annual Stanford E-Commerce Best Practices Conference, Stanford, CA, June 2014
  • Moderator, "Insider Trading: Key 2014 Cases & Trends," Ropes & Gray West Coast Lunchtime Legal Briefing Teleconference, May 2014
  • Moderator, "From the Trenches: Corporate Governance Update for Directors, Officers, GCs, and Investors," Ropes & Gray West Coast Lunchtime Legal Briefing Teleconference, April 2014
  • Panelist, "Big Data and Privacy Law: Classifications, Segmentation, and Fairness," 3rd Annual Berkeley Law Privacy Forum: Silicon Valley, March 2014
  • Speaker, "Medical and Lifestyle Devices and Apps: Who Says You Can't Collect That Data?," IAPP Global Privacy Summit, Washington DC, March 2014
  • Panelist, "Big Data is You - Opportunities and Pitfalls of Data Collection, Protection & Use in the Modern Ecosphere," Ropes & Gray and Stanford Program in Law, Science & Technology Panel Program, February 2014, This session was recorded for broadcast by C-SPAN
  • Panelist, "Who's Watching? Global Perspectives on Privacy," Berkeley Journal of International Law Symposium, February 2014
  • Moderator, "When it Happens to You: How to Navigate a Payment Card Breach," Ropes & Gray West Coast Lunchtime Legal Briefing Teleconference, February 2014
  • Speaker, "Privacy and Security Concerns: The Bring Your Own Device Policy," Knowledge Congress Webinar, February 2014
    Speaker, "Understanding the FTC's Updated Guides in Digital Advertising," Knowledge Congress Webinar, February 2014
  • Panelist, "Big Data is You - Opportunities and Pitfalls of Data Collection, Protection & Use in the Modern Ecosphere," Ropes & Gray and the Stanford Program in Law, Science & Technology Panel, February 2014
  • Speaker, "Social Media, Ethics & Other Things Or How to Like the Law Without Losing Your Head in the Cloud," Ropes & Gray West Coast Lunchtime Legal Briefing Teleconference - Special Ethics Edition, January 2014
  • Moderator, "Riding the New Wave: How to Prepare Your Life Sciences Company for Compliance and Success in the Face of China's Recent Regulatory Changes," Ropes & Gray West Coast Lunchtime Legal Briefing Teleconference, January 2014
  • Moderator, "The EU Unitary Patent System: A New World For U.S. Companies,"  Ropes & Gray West Coast Lunchtime Legal Briefing Teleconference, December 2013
  • Moderator, "Changing Enforcement Landscapes: Class Action Waivers in Arbitration Agreements & Issues in International Investigations," Ropes & Gray West Coast Lunchtime Legal Briefing Teleconference, November 2013
  • Moderator, "Raising Your Fundraising IQ: Deciding How to Fund Your Idea," Ropes & Gray West Coast Lunchtime Legal Briefing Teleconference, October 2013
  • Speaker, "Tech Transfer Roundtable," Ropes & Gray Seminar, October 2013
  • Speaker, "Navigating the TCPA - When can you make that call or send that text?," Ropes & Gray West Coast Lunchtime Legal Briefing Teleconference, September 2013 
  • Moderator, "Patents & the Supreme Court: What Myriad and Monsanto Mean for Life Sciences Technologies," Ropes & Gray West Coast Lunchtime Legal Briefing Teleconference, August 2013
  • Moderator, "Patent Challenges at the USPTO: What You Need to Know to Make Effective Use of Post-Grant Challenges," Ropes & Gray West Coast Lunchtime Legal Briefing Teleconference, July 2013
  • Moderator, "Negotiating the Pressure Points in a Life Sciences University License Agreement," Ropes & Gray West Coast Lunchtime Legal Briefing Teleconference, June 2013
  • Speaker, "Privacy and Data Security- It's a Supply Chain Issue Too," Ropes & Gray Tokyo & China/Taiwan Morning Briefings, June 2013
  • Speaker, "China, the Internet & Your Business: Navigating Deals in the World’s Largest and Most Complicated Internet, Market," Licensing Executives Society - Silicon Valley Chapter seminar, June 2013
  • Speaker, "Data Security and Handling Risks for Asset Management Firms," Ropes & Gray Webinar, June 2013
  • Moderator, "Social Media Enforcement: FDA, FTC, and National Advertising Division Case Studies and Practical Advice for Handling an Investigation or Enforcement Action," Ropes & Gray West Coast Lunchtime Legal Briefing Teleconference, May 2013
  • Panelist, "PCI - DSS in the Cloud: Practical Guide for Cloud Computing Security and Compliance," The Knowledge Congress webcast, April 2013
  • Speaker, “Disclosing Cybersecurity Risks and Data Handling Practices: Keeping up with the SEC and FTC Guidance for Shareholders, Sponsors and Children,” Ropes & Gray West Coast Lunchtime Legal Briefing Teleconference, April 2013
  • Moderator, "Patent Litigation Before The ITC: Recent Developments And Trends," Ropes & Gray West Coast Lunchtime Legal Briefing Teleconference, March 2013
  • Speaker, "What the SEC Needs You to Know Now," IAPP Global Privacy Conference, Washington, DC, March 2013
  • Panelist, "Technology and Privacy by Design: Help From Empirical Evidence," 2nd Annual Berkeley Law Privacy Forum: Silicon Valley, March 2013
  • Moderator, "Higher Tax Burdens and New Compliance Challenges for Companies Doing Business in California," Ropes & Gray West Coast Lunchtime Legal Briefing Teleconference, February 2013
  • Panelist, "Social Media & Ethics: Avoiding Costly Mistakes," The Recorder Roundtable, January 2013
  • Moderator, "Navigating China's Complicated Life Sciences Regulatory System for Commercial Success," Ropes & Gray West Coast Lunchtime Legal Briefing Teleconference, January 2013
  • Moderator, "How Companies Can Use Antitrust to Fight Back Against Patent Aggression," Ropes & Gray West Coast Lunchtime Legal Briefing Teleconference, December 2012
  • Speaker, "Monetizing Patents by NPEs and PEs," Law Foundation of Silicon Valley's 3rd Annual Silicon Valley General Counsel Convergence, November 2012
  • Moderator, "The Impact of Market Dynamics on Health Care and Pharmaceutical Acquisitions," Ropes & Gray West Coast Lunchtime Legal Briefing Teleconference, November 2012
  • Moderator, "M&A Trends: The Impact of Recent Delaware Case Law & Market Uncertainty," Ropes & Gray West Coast Lunchtime Legal Briefing Teleconference, October 2012
  • Speaker, "By Design – Why Smart App Developers Don’t Wait Until Launch Before Thinking About IP and Data Privacy Matters," Ropes & Gray West Coast Lunchtime Legal Briefing Teleconference, September 2012
  • Panelist, "What You Need To Know About Mobile Patent Wars," Association of Corporate Counsel - Bay Area Chapter, July 2012
  • Speaker, "An Overview on Patents, Trademarks, and Cross Border Investment Strategies in Today’s Environment," Japan In-House Counsel Network, April 2012