James R. Myers
Partner
Jim Myers works with clients on complex civil litigation, especially patent litigation involving a wide range of technologies, particularly financial services, insurance, banking, and computer systems software patent litigation. Since 1997, Jim has been representing major financial services companies, including property & casualty insurance, life insurance, banking, credit card, money management, e-commerce, IT and Wall Street companies in patent disputes with sums at stake in amounts ranging from ten million to over one billion dollars. Jim helps clients harmonize patent litigation choices with their business objectives, executing tailored, multi-faceted plans of action based on the deep and ongoing experience of a team of domain specialists assembled from client personnel and outside law firms. These plans include: nationwide federal district court litigation, patent reexaminations, Federal Circuit appeals, Supreme Court and Federal Circuit amicus briefs, collaborative patent defense efforts, multi-district litigation, patent licensing, and patent strategy. Jim enables clients to address tough patent challenges from a multi-dimensional perspective by triggering and supporting the team’s creativity, persistence, and competence.
Experience
- Progressive Insurance v. Liberty Mutual Insurance (N.D. Ohio) - Defending major insurance company against assertions of patent infringement involving financial services patents addressing insurance underwriting based on vehicle operating data (“telematics”). A certificate of reexamination has been issued cancelling all the original financial services patent claims. Filed ten covered business method patent reviews for financial services patents (insurance) on or after September 16, 2012.
- Maxim Integrated Devices v. BB&T Corporation (E.D. North Carolina, E.D. Texas, W.D. Pennsylvania) – Defending major bank against patent assertions involving mobile banking applications, including declaratory judgment and MDL proceedings.
- Phoenix /LPL Licensing, LLC v. Liberty Mutual Insurance Company (E.D. Texas, District of Columbia) – Defended major insurance company in assertion of patent portfolio directed to targeted mass marketing of financial services, especially insurance, including declaratory judgment proceedings.
- Unified Messaging Solutions LLC (an Acacia Research entity) v. BB&T Corporation (N.D. Illinois) – Defending major bank against patent assertions involving web-based messaging services via bank website.
- Value-Security v. AEGON Direct/Transamerica Life Insurance Company (D. Maryland) - Obtained dismissal for insurance company of insurance patent and trade secret misappropriation claims related to insurance underwriting.
- Leveraged Innovations v. ProShare Advisors et al. (S.D. New York) - Defended ProShare Advisors LLC, ProShares Trust, and ProShares Trust II against financial services patent infringement allegations involving geared exchange-traded funds (ETFs), including grant of partial summary judgment removing 98.5% of ETF assets from this capital markets patent dispute.
- Pi-Net International v. Sovereign Bank (D. Delaware) – Defended major bank against patent assertions involving software and computer systems administration of bank accounts, web apps, use of web for banking applications and bank back-end systems.
- EMG v. Liberty Mutual Holding Company (E.D. Texas) – Defended insurance company against assertion of patents associated with operation of websites accessed by mobile devices.
- Bright Response v. SAS Institute (E.D. Texas) – Defended major software company against assertions of patents related to data analytics software and automated responses to email messages.
- Progressive Insurance v. Liberty Mutual Insurance Company (N.D. Ohio) -Defending major insurance company Liberty Mutual against assertions of financial services patent infringement involving two patents related to an automated insurance underwriting system.
- Bilski v. Kappos (Federal Circuit / U.S. Supreme Court) - Authored amicus briefs filed at the Federal Circuit and the Supreme Court on behalf of the insurance industry, regarding Section 101 (patent eligible subject matter), business method patents, and patents addressing computerization of financial services.
- Lincoln National Life Insurance v. Transamerica & other Major Life Insurance Companies (N.D. Iowa, N.D. Indiana, Federal Circuit) - Represented Transamerica at trial and on appeal to Federal Circuit resulting in finding of non-infringement of one of Lincoln’s variable annuity patents. Represented multiple life insurance companies in a variety of ongoing proceedings before the PTO, Indiana, and Iowa federal district courts, Federal Circuit, and the Supreme Court concerning Lincoln's portfolio of financial services patents addressing variable annuities.
- Stanford v. Roche (U.S Supreme Court) - Co-authored amicus brief in support of cert petition filed at the Supreme Court on behalf of 50 universities and university associations related to the disposition of patent rights under the Bayh-Dole Act.
- BNP Paribas v. Russian Standard Bank (U.K., Bermuda, BVI, Russia) - Devised strategy for major Russian financial services company, consumer bank (largest Russian issuer of credit cards), implemented by local litigation counsel for claims involving misappropriation of trade secrets, breach of contract, and trade defamation filed in London, Russia, Bermuda, BVI, and ICC arbitration; positive result enabled client to frustrate forced sale.
- CyberSource v. Retail Decisions, Inc. (N.D. California) - Defended patent infringement claim involving patent directed to credit card fraud detection; successfully narrowed and stayed suit pending ex parte reexamination of asserted patent, where plaintiff amended all of its claims; and authored motion for summary judgment of invalidity based on Bilski test which was granted by district court (N.D. Cal) and affirmed by Federal Circuit finding financial service patent invalid based on Bilski challenge.
- DataTreasury v. Major Financial Services Company (E.D. Texas) - Represented Fortune 100 bank in settlement negotiations with DataTreasury regarding banking patent assertions involving bank check clearing operations.
- Russian Standard Bank and Russian Standard Corporation (U.S., Russia, Poland) – Represented bank, alcohol, and distribution companies in strategic investment into Central European Distribution Corporation (NASDAQ: CEDC).
- Phoenix /LPL Licensing, LLC v. Major Financial Services Company (E.D. Texas) - Defended pre-litigation assertion of patent portfolio directed to targeted marketing of financial services, especially credit cards, including patent reexaminations; and devised MDL strategy in response to E.D. Texas complaint.
- Microlog v. Cisco Systems, Inc. & Stonebridge Life Insurance Company (E.D. Texas) – Defended a life insurance company against assertion of a patent related to use of a router to enable customer service calls.
- Joao Bock Transactions Systems v. Silicon Valley Bank (C.D. California) – Represented Silicon Valley Bank in settlement negotiations involving a financial services patent that allegedly addressed a banking computer system limiting or restricting a business banking customer’s use of a business banking account or a business credit card account.
- Net MoneyIN v. Major Financial Services Institution (D. Arizona) - Represented a major bank regarding financial services patents alleged to cover Internet authorization of bank credit cards. The case was dismissed without prejudice after the bank won a motion for definite statement.
- Katz Patent Matters (E.D. Pennsylvania) - Assisted approximately 12 Fortune 500 financial services companies (banks and insurance companies) adverse to the Ronald A. Katz Technology Licensing, L.P. (telephone call center with 50+ patent portfolio) in Pennsylvania district court litigation and PTO Director-ordered patent reexaminations.
- Instabook Corporation v. Publish America LLP, et al (D. Maryland) - Defended Publish America in a patent infringement action related to electronic publishing and e-commerce.
Awards
- Washington, D.C. Super Lawyers, Intellectual Property Litigation (2013)
- IAM Patent 1000 – The World’s Leading Patent Practitioners (2013)
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Euromoney's Guide to the World's Leading Patent Law Experts (1999-present)
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Who's Who in America (1994 – present)
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Who's Who in American Law (1996 – present)
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Who's Who in the World (2005 – present)
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Fellow, American Bar Foundation (2012)
- Texas’ Top Rated Lawyers (2013)
Insights
Presentations
Amici Brief
- Amicus Brief in the matter of Bernard L. Bilski and Rand A. Warsaw, Petitioners v. David J. Kappos, Under Secretary of Commerce for Intellectual Property and Director, Patent and Trademark Office, Respondent (October 2009)
- Amicus Brief in the matter of Board of Trustees of the Leland Stanford Junior University, Petitioner v. Roche Molecular Systems, Inc., et. al. (December 2010)
Reported Opinions
- Lincoln National Life Insurance v. Transamerica Life Insurance, 609 F.3d 1364 (Fed. Cir. 2010)
Intellectual Property Master Class
- Challenging Patent Invalidity at the PTO Post-AIA (November 2012)
- Challenging Patents at the PTO: The Clock is Ticking (July 2012)
- Mayo v. Prometheus (April 2012)
- Use of Judge Rader's Model Order for E-Discovery (March 2012)
- Trends in Trade Secret Litigation: Keeping Secrets (February 2012)
- The Aftermath of Stanford v. Roche (June 2011)
- Financial Services Roundtable (April 2011)
- Stanford v. Roche: Case Update Discussion With University Amici (February 2011)
- Protecting Title to Institutional Patents Arising from Federal Funding (November 2010)
- Strategies for Limiting Potential Exposure to Damages Claims (October 2010)
- Thinking Outside the (Jury) Box: The Strategic Use of Ex Parte and Inter Partes Patent Reexaminations in Infringement Disputes (September 2010)
Seminar/Conferences
- 9th Annual Patents for the Financial Services Industry Conference (July 25-26, 2012)
- 8th Annual Patents for the Financial Services Industry Conference (July 27-28, 2011)
ALI-ABA Audio Seminars
- Willful Blindness after Global-Tech v. SEB: What’s Good for the Criminal is Good for the Patent Infringement Inducer (July 12, 2011)
- Bilski v. Kappos: The Supreme Court Weighs in on Business Methods Patents (Or Did It?) (July 27, 2010)