James R. Myers

Partner

Contact

  • JD, Harvard Law School, 1975
  • BA, cum laude, Harvard University, 1972

Qualifications

  • District of Columbia, 1976
  • Massachusetts, 1975
  • Virginia, 1992

Court Admissions

  • 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
  • U.S. District Court for the Western District of Pennsylvania
  • Member, American Law Institute Continuing Legal Education, Intellectual Property Law Advisory Panel (2010-present)
  • 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-present)
  • Hosts Intellectual Property Master Class, monthly webinars focusing on financial services patent litigation, insurance patent litigation and bank patent litigation.
  • 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.

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. Starting on September 16, 2012--the first day the Patent Trial and Appeal Board (PTAB) permitted filings under the American Invents Act, his clients began filing patent invalidity challenges before the PTAB as part of coordinated patent litigation strategies.  Final Written Decisions by the PTAB cancelled all challenged claims in all five patents. 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, invalidity challenges before the PTAB, 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 CompanyRepresenting Liberty Mutual Insurance before the Federal Circuit as Progressive Insurance appeals the Final Written Decisions of the PTAB canceling all claims of three Progressive Insurance vehicle telematics patents.
  • Liberty Mutual Insurance Company v. Progressive Insurance (CBM2012-00002, CBM2012-00003, CBM2012-00004, CBM2013-00003, CBM2013-00004, CBM2013-00009). The PTAB cancelled every claim of three Progressive vehicle telematics insurance patents. We filed six petitions for covered business method review in defending Liberty Mutual Insurance against assertions of three different patents relating to determining a cost of insurance based on vehicle monitoring in Progressive Casualty Insurance Co. v. Safeco Insurance Co., et al. After our ex parte reexamination of the originally asserted patent resulted in Progressive’s amendment of every remaining claim while litigation was stayed, we filed CBM petitions challenging the amended claims and two later-asserted patents. The PTAB initiated CBM trials on every claim of these three patents, and we successfully stayed the related district court litigation – one of the first litigation stay decisions involving CBM proceedings.
  • 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.
  • Progressive Insurance Company v. Liberty Mutual Insurance  – Representing Liberty Mutual before the Federal Circuit as Progressive Insurance appeals the Final Written Decisions of the PTAB canceling all claims of two Progressive Insurance patents addressing an automated insurance underwriting system using an Internet website.
  • Liberty Mutual Insurance Company v. Progressive Insurance Company (CBM2012-00010, CBM2012-00011, CBM2013-00001, CBM2013-00002). The PTAB cancelled every claim of two Progressive Insurance patents addressing an automated insurance underwriting system using an Internet website.
  • 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 leveraged  exchange-traded funds (ETFs). On April 20, 2012, we won partial summary judgment for our client, i removing from the case 98.5% of the assets subject to plaintiff’s patent infringement claims. Following this result, all remaining claims involving the ProShares defendants were confidentially settled and dismissed with prejudice in very favorable terms.  
  • 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 annuity patents.
  • 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 Bank (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 Bank (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 Bank (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

  • Financial Times “Innovative Lawyers” Report (2013)
  • Washington, D.C. Super Lawyers, Intellectual Property Litigation (2013-2014)
  • IAM Patent 1000 – The World’s Leading Patent Practitioners (2013-2014)
  • Euromoney's Guide to the World's Leading Patent Law Experts (1999-present)
  • Who's Who in America (1994 – present)
  • Who's Who in American Law (1996 – present)
  • Who's Who in the World (2005 – present)
  • Fellow, American Bar Foundation (2012)
  • Texas’ Top Rated Lawyers (2013)
  • Washington, DC Top Rated Lawyer, Intellectual Property (2013)

Insights

Publications

Presentations

Amici  Brief

Reported Opinions

Intellectual Property Master Class

Seminar/Conferences

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)