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For more than 30 years, Jim Myers has worked with clients on complex civil litigation, especially patent litigation involving a wide range of technologies, particularly financial services, banking and insurance patent litigation. Since 1997, Jim has been representing major financial services companies, including 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.
- 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.
- Phoenix /LPL Licensing, LLC v. Liberty Mutual Insurance Company (E.D. Texas) - Defending assertion of patent portfolio directed to targeted mass marketing of financial services, especially insurance.
- 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) - Defending 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.
- EMG v. Liberty Mutual Holding Company (E.D. Texas) – Defending insurance company against assertion of patents associated with operation of websites accessed by mobile devices.
- Progressive Insurance v. Allstate Insurance, et al. (N.D. Ohio) - Defending major insurance company Liberty Mutual against assertions of financial services patent infringement involving two patents related to an on-line insurance servicing system. A stay has been granted pending resolution of reexaminations we prepared and filed asserting new prior art.
- 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.
- 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 LLLP, et al (D. Maryland) - Defended Publish America in a patent infringement action related to electronic publishing and e-commerce.
Honors & Awards
Professional & Civic Activities
- Director/Member of the ALI-ABA Board and Committee on Continuing Professional Education (2002-2007)
- Master in the Giles S. Rich American Inn of Court for intellectual property litigators (1989-2007, 2011)
- Editorial Board, Practical Lawyer
- 8th Annual Patents for Financial Services Summit, July 2011 (Speaker)
- 9th Annual Patents for Financial Services Summit, July 2012 (Speaker)
- Automotive Coalition for Traffic Safety, Inc. (ACTS) - For a group of the world’s largest automobile manufacturers obtained an exemption from NHTSA to federal acquisition regulations governing intellectual property rights to facilitate the public/private funding of prototype technologies to inhibit drunk driving. Then negotiated intellectual property license provisions with Tier 1 suppliers involving multiple tiers of licensees world-wide using future prototypes. The Driver Alcohol Detection System for Safety has the estimated potential to save 8,000 lives a year in the United States alone.
- Association of American Universities (U.S. Congress) - Registered as lobbyist for research universities related to patent law reform resulting in the America Invents Act which was signed into law on September 16, 2011.
©1996-2012 Ropes & Gray LLP. All rights reserved.
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Education
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JD, Harvard Law School, 1975
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BA, cum laude, Harvard University, 1972
Bar Admissions
- Virginia, 1992
- District of Columbia, 1976
- Massachusetts, 1975
Courts
- Supreme Court of the United States
- U.S. Court of Appeals for the Federal Circuit
- U.S. Court of Appeals for the Fourth Circuit
- U.S. Court of Appeals for the District of Columbia Circuit
- U.S. District Court for the District of Columbia
- U.S. District Court for the Eastern District of Virginia
- U.S. District Court for the Eastern District of Michigan
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