James L. Davis, Jr.
James L. Davis, Jr. focuses his practice on intellectual property litigation in federal courts, as well as before the ITC and the PTAB. Applying his background in electrical and computer engineering, Jim has served as lead counsel in district court, Federal Circuit and PTAB proceedings and represented clients across a broad range of technologies including semiconductors, analog circuits, wireless technology, consumer electronics, internet services, and medical devices.
In litigating numerous cases from filing to resolution, Jim has devised and executed winning strategies for both intellectual property holders and accused infringers. Following through on these analyses, Jim has presented and cross-examined witnesses at trial, argued claim constructions, taken key depositions, obtained critical admissions and evidence, and drafted briefs that have led to victories and favorable settlements on behalf of his clients.
Before the PTAB and the USPTO, Jim has also litigated over 125 post-grant proceedings, including inter partes reviews and covered business method reviews, both on behalf of petitioners and patent owners. Jim’s efforts have resulted in favorable resolutions, including quick settlements after filing.
Jim also advises clients concerning intellectual property strategies, including acquisitions, enforcement, due diligence, and licensing.
- Emerson Electric (USITC, N.D. Ga., PTAB, CAFC, SCOTUS, Mannheim Regional Court, EPO): On behalf of Emerson, won findings of non-infringement and invalidity of SIPCO’s asserted claims before the USITC, PTAB, and the Regional Court of Mannheim, Germany, and the EPO (in conjunction with German counsel), as well as appeals before the Federal Circuit and Supreme Court, as part of an ongoing multi-jurisdictional dispute concerning mesh network technology.
- Samsung Electronics v. Advanced Touchscreen (PTAB, CAFC): Represented Samsung in multiple inter partes review proceedings and appeals where all challenged claims spanning four patents related to touchscreen technology were found unpatentable.
- Activision Blizzard, Electronic Arts, et al. (PTAB, CAFC): Representing three global computer gaming companies in appeals from inter partes review challenges to three patents relating to broadcasting information in computer networks.
- NXP Semiconductors N.V. v. NFC Technology (PTAB, CAFC): Litigated multiple inter partes review petitions challenging patents relating to near field communication, resulting in 29 claims being found unpatentable.
- Packet Tread v. Samsung Electronics (E.D. Tex.): As litigation counsel for Samsung Electronics, obtained favorable early resolution of a lawsuit involving echo cancelation technology.
- Dell v. NXP Semiconductors N.V. (PTAB): Defended patents in multiple inter partes review proceedings relating to near field communication and Bluetooth technology and favorably resolved the matters.
- A Major Cloud-Based Services Company (W.D. Wa.): Defeated motion for preliminary injunction and successfully resolved matter after order denying the injunction required plaintiff to show cause why claims not invalid under §101. The case involved cloud-based email migration.
- A Global Leader in Medical Technology, Services, and Solutions (D. Del.): Defended a global leader in medical technology, services, and solutions in patent litigation related to pill cameras used for endoscopy.
- A Global Leader in Medical Technology, Services, and Solutions (N.D. Cal.): Defended a global leader in medical technology, services, and solutions in patent litigation related to self-defense systems.
- Spansion v. Macronix et al. (USITC, N.D. Cal., E.D. Va., PTAB): Trial counsel for Spansion in a large set of multi-patent cases related to flash memory technology, of which Jim litigated two investigations before the USITC, a case in the Eastern District of Virginia, which was transferred to the Northern District of California, and three inter partes review proceedings before the Patent Office. The dispute was successfully settled.
- A Leading U.S. Consumer Electronics Company and two Film Studios (N.D. Ill., N.D. Cal.): Successfully resolved a patent infringement action involving electronic distribution of pre-theatrical release movies after winning a motion to transfer to the Northern District of California.
- RR Donnelley & Sons Company v. Xerox Corporation (N.D. Ill.): Represented RR Donnelley in a patent infringement case involving ten patents relating to various technologies including variable data printing and raster image processing.
- A Leading U.S. Consumer Electronics Company (PTAB): Filed multiple petitions for covered business method review challenging litigated patents relating to storing and paying for data.
- A Major Medical Device Company (E.D. Pa., PTAB): Litigation counsel for a fast-growing medical device company in patent infringement suit relating to spine pedicle screws. The dispute was successfully resolved after filing a petition for inter partes review.
- A Leading Medical Device and Pharmaceutical Company (D.N.J., CAFC, USPTO): Represented the company in two multi-patent actions relating to drug-eluting stent systems by successfully securing summary judgment of invalidity on all asserted claims, which was affirmed on appeal. Also participated in inter partes reexaminations parallel to the litigation.
- A Leading Gaming Company (D. Del.): Successfully secured a dismissal with prejudice in a multi-defendant action relating to electronic displays.
- One of the World’s Largest Automobile Companies (E.D. Tex.): Successfully formulated strategies that led to summary judgment of non-infringement as counsel for one of the world’s largest automobile companies in a multi-defendant action related to automotive electronics.
- A Major IT Security Company (C.D. Cal., E.D. Tex.): Successfully secured a dismissal with prejudice in a multi-defendant action relating to email filtering and another multi-defendant action relating to security software.
- Cited, “Fed. Circ. Says Thryv Bars Appeals Of CBM Determinations,” Law360 (November 17, 2020)
- Cited, “SCOTUS ruling changes Fed. Circuit’s view of CBM appeals in Sipco, Emerson patent fight,” Reuters (November 17, 2020)
- Cited, “Supreme Court PTAB Ruling Applies to Business Method Review (1),” Bloomberg Law (November 17, 2020)
- Cited, “PTAB H1 Filing Rankings: Top Petitioners, Owners and Law Firms” Managing Intellectual Property (July 23, 2020)
- Cited, “Skilled in the Art,” Law.com (May 1, 2020)
- Profiled, “California’s Top Intellectual Property Lawyers” The Daily Journal (March 18, 2020)
- Co-author, “Protecting intellectual property in the rapidly evolving age of AI,” The Daily Journal (June 26, 2019)
- Featured, “Top Intellectual Property Lawyers: James L. Davis, Jr.,” The Daily Journal (April 17, 2019)
- Cited, “PTAB Nixes Sipco Wireless Communication Patent Under Alice,” Law360 (January 16, 2018)
- Cited, “Sipco Defends Wireless Network Patent To PTAB,” Law360 (November 13, 2017)
- Cited, “PTAB Says Sipco Communication Patent Eligible for Review,” Law360 (January 23, 2017)
- Co-author, “Patent Litigation Developments to Watch in 2016,” Today’s General Counsel (February/March 2016)
- Note, “Is Interoperability Just for Those Who Can Hack It? The Application of the DMCA Interoperability Exceptions in the Consumer Electronics Industry,” University of Illinois, Technology & Policy Publications Online, 141 (2005)
- Speaker, “Patent Infringement Litigation and Damage Calculation Practice,” 2020 Korea IP Summer Forum (August 27, 2020)
- Speaker, “Strategies for Litigating the Changing Environment of PTAB,” MIP PTAB Forum (May 8, 2018)
- Speaker, “The Evolution of PTAB Practice,” Ropes & Gray Webinar (March 28, 2018)
- Speaker, “Adapting Strategies as the PTAB Pendulum Continues to Swing,” ACC-SFBA PTAB Conference (December 5, 2017)
- Speaker, “Year in Review and Supreme Court Update: Oil States and SAS Institute,” ACC-SFBA PTAB Conference (December 5, 2017)
- Speaker, “Divided Infringement Is Dead; Long Live Divided Infringement?,” UC Berkeley Center for Law & Technology and Berkeley Technology Law Journal Speaker Series (February 25, 2016)
- Speaker, “Strategies for Coordinating Parallel Proceedings: PTAB, District Court and ITC,” Ropes & Gray and the ACC on Post-Grant Patent Challenges at the Patent Trial and Appeal Board Conference (January 13, 2016)
- Speaker, “Top Ten Famous IP Disputes,” UC Berkeley Center for Law & Technology and Berkeley Technology Law Journal Speaker Series (April 2, 2015)
- JD, magna cum laude, University of Illinois College of Law, 2005; note editor, Journal of Law, Technology and Policy
- BS (Computer Engineering), honors, University of Illinois, 2002