James L. Davis, Jr.
Jim Davis focuses his practice on high stakes intellectual property litigation. Applying his background in electrical and computer engineering, Jim serves as lead counsel in Federal Circuit, district court, and PTAB proceedings.
Before the Federal Circuit, Jim has argued and litigated multiple precedent-setting matters relating to claim construction, certificates of correction, and covered business method proceedings, among other issues.
In over a dozen district courts across the country as well as the ITC, Jim has represented plaintiffs and defendants across a broad range of technologies including semiconductors, analog circuits, wireless technology, consumer electronics, network security, and medical devices. Most recently, Jim and his team won findings of non-infringement and invalidity before the ITC in a four-patent investigation relating to mesh networks.
As one of the most active PTAB practitioners in the country, Jim has litigated over 150 post-grant proceedings, including inter partes and covered business method reviews and ex parte reexaminations, both on behalf of petitioners and patent owners. In 2020, Jim was ranked in the top 10 most active attorneys for petitioners by Managing IP.
Jim also advises clients concerning intellectual property strategies, including acquisitions, enforcement, due diligence, and licensing.
- SIPCO v. Emerson Electric (ITC, NDGA, PTAB, CAFC, SCOTUS, Mannheim Regional Court, EPO): As trial counsel for Emerson, won every case and appeal that has reached a final decision across over 30 separate proceedings, as part of an ongoing multi-jurisdictional dispute concerning mesh networking technology.
- Samsung Electronic v. Cellect (PTAB, USPTO): Representing Samsung in multiple inter partes reviews and ex parte reexaminations concerning patents asserted by Cellect in district court relating to image sensors.
- Express Mobile v. SAP SE (NDCA): Representing SAP in a multi-patent suit brought by Express Mobile relating to database, user interface, and website generation technology.
- A Global Leader in Medical Technology, Services, and Solutions (PTAB): Representing a global leader in medical technology, services, and solutions in multiple IPRs relating to trans-catheter replacement heart valves.
- A Leading Global Provider of Information and Communications Technology Infrastructure and Smart Devices (PTAB): Obtained denials of institution regarding four IPRs filed by a competitor relating to optical networking standards.
- A Global Content Delivery Network, Cybersecurity, and Cloud Service Company (NDIL): Successfully obtained a dismissal prior to service for a global content delivery network, cybersecurity, and cloud service company.
- F2VS Technologies v. Emerson Electric (EDMO): Successfully obtained a dismissal for Emerson before responding to the complaint in a multi-patent case relating to meters communicating via a mesh network.
- Circuit Ventures v. Emerson Electric (WDTX): Successfully obtained dismissal for Emerson before responding to the complaint in a multi-patent case relating to circuit monitoring devices.
- A Leading Global Provider of Information and Communications Technology Infrastructure and Smart Devices (EDTX, D. Del., PTAB): Successfully obtained dismissal defending a leading global provider of information and communications technology infrastructure and smart devices in a multi-patent and multi-jurisdiction dispute relating to networking, LTE, and Power-Over-Ethernet technologies.
- A Global Leader in Medical Technology, Services, and Solutions (PTAB): Defending the patents of a global leader in medical technology, services, and solutions, successfully resolved multiple IPRs relating to controlled stent-graft deployment systems and medical devices formed from stress-induced martensite (SIM) alloy elements.
- 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): Successfully represented three global computer gaming companies in appeals from inter partes review challenges to three patents relating to broadcasting information in computer networks.
- A Global Leader in Medical Technology, Services, and Solutions (D. Del.): Successfully defended a global leader in medical technology, services, and solutions in a multi-patent litigation related to pill cameras used for endoscopy.
- 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 (EDTX): 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.
- Bittitan v. Skykick (WDWA): Defeated motion for preliminary injunction and successfully resolved matter after order denying the injunction required plaintiff to show cause why the asserted claims were not invalid under §101. The case involved cloud-based email migration.
- A Global Leader in Medical Technology, Services, and Solutions (NDCA): Defended a global leader in medical technology, services, and solutions in patent litigation related to self-defense systems.
- Spansion v. Macronix et al. (ITC, NDCA, EDVA, 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 ITC, 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 (NDIL, NDCA): 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(NDIL): 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): Won multiple covered business method reviews challenging litigated patents relating to storing and paying for data.
- A Major Medical Device Company (EDPA, 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 (DNJ, 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 (EDTX): 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 (CDCA, EDTX): Successfully secured a dismissal with prejudice in a multi-defendant action relating to email filtering and another multi-defendant action relating to security software.
- Co-author, “A new era at the PTAB? Director Vidal issues new guidance on discretionary denials of institution,” Westlaw Today (July 22, 2022)
- Cited, “Fed. Circ. Sends Sipco Radio Patent Back To PTAB Again,” Law360 (May 17, 2022)
- Cited, “Fed. Circ. Upholds PTAB Ax Of Sipco Patent,” Law360 (May 3, 2022)
- Profiled, “Top Intellectual Property Lawyers in California 2022” Daily Journal (April 20, 2022)
- Profiled, “California’s “Top Intellectual Property Lawyers 2021,” The Daily Journal (April 21, 2021)
- Cited, “Sipco Loses Fed. Circ. Appeal In Emerson Electric Patent Row”, Law360 (January 21, 2021)
- Cited, “PTAB 2020 rankings: top petitioners, patentees and law ﬁrms,” Managing Intellectual Property (January, 11, 2021)
- 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, “Justices Tell Fed. Circ. To Rethink CBM Appeals Post-Thryv,” Law360 (June 15, 2020)
- Cited, “Skilled in the Art,” Law.com (May 1, 2020)
- Cited, “PTAB Chops SIPCO Remote Monitoring Patent On Remand,” Law360 (April 13, 2020)
- Profiled, “California’s Top Intellectual Property Lawyers,” The Daily Journal (March 18, 2020)
- Cited, “PTAB Says Certificate Of Correction Can't Apply Retroactively,” Law360 (January 27, 2020)
- Co-author, “Protecting intellectual property in the rapidly evolving age of AI,” The Daily Journal (June 26, 2019)
- Cited, “Fed. Circ. Upholds PTAB Nix Of Wireless Network Patent,” Law360 (May 9, 2019)
- Featured, “Top Intellectual Property Lawyers: James L. Davis, Jr.,” The Daily Journal (April 17, 2019)
- Cited, “Samsung Electronics v. Advanced Touchscreen and Gesture Technologies, LLC,” Global Legal Chronicle (January 9, 2019)
- Cited, “Fed Circ. Cites Conflicting PTAB Rulings In Vacating Case,” Law360 (August 29, 2018)
- 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, “Fighting Fire with Fire: Effectively Using Motions, Discovery & Experts to Make Your Case,” IP Watchdog PTAB Masters Symposium (January 24-27, 2022)
- Speaker, “Exploring the Exercise of Discretionary Denial and Other New Developments in Parallel Proceedings at the ITC and PTAB,” ACI’s Practitioners' Think Tank on ITC Litigation and Enforcement (July 27, 2021)
- 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
Admissions / Qualifications
- California, 2015
- Illinois, 2005
- Federal Circuit Court of Appeals, 2017
- U.S. District Court for the Northern District of California, 2017
- U.S. District Court for the Eastern District of Texas, 2015
- U.S. District Court for the Northern District of Illinois, 2008
- U.S. Patent and Trademark Office, 2005
- IAM Patent 1000: The World’s Leading Patent Professionals (2022)
- Daily Journal: Top Intellectual Property Lawyers in California (2019-2022)
- Northern California Super Lawyers, Rising Star in Intellectual Property Litigation (2016-2020)
- Illinois Super Lawyers, Rising Star in Intellectual Property Litigation (2012-2015)