James S. DeGraw
Jim DeGraw is a corporate technology partner who works with clients to anticipate and handle the legal issues ever-changing technologies present. He regularly leads transactions for which technology or IP assets are key drivers, provides clients with strategic advice on protecting and maximizing their investments in technology, and advises clients on handling and securing the data their businesses collect and process. Jim brings to any representation his computer science background and his experience of having spent years working for firm clients on technology matters while based in Asia.
In addition to technology-focused mergers & acquisitions, Jim’s transactional work includes working with clients to structure complicated and strategic technology relationships, including cross-border joint ventures, complex business licensing transactions and strategic business process outsourcing relationships. His experience in dealing with international technology, intellectual property and data issues helps clients to structure these transactions for success.
Jim also provides strategic advice to clients on handling and protecting data, technology, intellectual property assets of their businesses. This includes helping clients develop and protect businesses built on data, technology and intellectual property assets, whether through targeted marketing campaigns by consumer product companies or portfolio licensing programs by academic research centers, and navigating myriad intellectual property issues to put together comprehensive protection strategies. It also includes advising clients on their collection, handling and protection of data by their organizations, and for navigating the opportunities and concerns raised by changes to data privacy and security laws and by the growth of social media.
Jim also has significant litigation experience, which includes coordinating client responses to US government investigations, leading ADR proceedings, and handling complicated patent litigation matters, such as Affymetrix v. Incyte, Data General v. IBM, and State Street v. Signature.
Jim is a founding member and former Managing Partner of the firm’s first international office in Tokyo.
- 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.
- 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
- 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)
- Co-author, "Data privacy, beyond compliance," The Recorder (July 2012)
- "Supreme Court Torches Prometheus Patents," The Recorder (April 2012)
- 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)
- Speaker, “Ropes & Gray West Coast Lunchtime Legal Briefing - Disclosing Cybersecurity Risks and Data Handling Practices: Keeping up with the SEC and FTC Guidance for Shareholders, Sponsors and Children,” April 2013
- Panelist, "Technology and Privacy by Design: Help From Empirical Evidence," 2nd Annual Berkeley Law Privacy Forum: Silicon Valley, March 2013
- Moderator, "Ropes & Gray West Coast Lunchtime Legal Briefing Teleconference - Higher Tax Burdens and New Compliance Challenges for Companies Doing Business in California," February 2013
- Panelist, "Social Media & Ethics: Avoiding Costly Mistakes," The Recorder Roundtable, January 2013
- Moderator, "Ropes & Gray West Coast Lunchtime Legal Briefing Teleconference - Navigating China's Complicated Life Sciences Regulatory System for Commercial Success," January 2013
- Moderator, "Ropes & Gray West Coast Lunchtime Legal Briefing Teleconference - How Companies Can Use Antitrust to Fight Back Against Patent Aggression," 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, "Ropes & Gray West Coast Lunchtime Legal Briefing: The Impact of Market Dynamics on Health Care and Pharmaceutical Acquisitions," November 2012
- Speaker, "Ropes & Gray West Coast Lunchtime Legal Briefing: By Design – Why Smart App Developers Don’t Wait Until Launch Before Thinking About IP and Data Privacy Matters," 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
- Panelist, "PCI - DSS in the Cloud: Practical Guide for Cloud Computing Security and Compliance," The Knowledge Congress webcast, April 2013