James Mack litigates complex patent, trade secret, and copyright matters in district courts, arbitration, the International Trade Commission, and the Patent Trial and Appeal Board. James works in a range of fields including semiconductors, consumer electronics, imaging, light emitting diodes (LEDs), microelectromechanical systems (MEMS), wireless communications, medical devices, aerospace, and automotive.
Prior to joining Ropes & Gray, James worked in research and development in the semiconductor capital equipment industry. James obtained a Ph.D. from Stanford University in Mechanical Engineering with a minor in Electrical Engineering, focusing on semiconductor manufacturing processes, and a M.S. from Stanford in Aeronautics and Astronautics.
Experience
- The Leading U.S. Consumer Electronics Company (W.D. Tex.): Defended the client in a six-patent suit relating to biometrics.
- The Leading U.S. Consumer Electronics Company (E.D. Tex.): Represented the client in a two-patent suit relating to Bluetooth technology.
- Exactech v. Zimmer Biomet (S.D. Cal., M.D. Fla., PTAB): Represented Exactech in trade secret, copyright, and patent litigation relating to allegations that a Zimmer patent relating to a medical device incorporated Exactech’s trade secrets, resulting in settlement and assignment of the patent at issue to Exactech.
- Solar Junction Corp. v. IQE plc (London Court of International Arbitration (LCIA), S.D.N.Y.): Defended IQE in arbitration relating to allegations that the client’s patent incorporated trade secrets, resulting in the arbitral tribunal holding that no misappropriation of trade secrets occurred. The technology related to manufacturing processes for compound semiconductors.
- Samsung Electronics v. Cellect (PTAB): Represented Samsung in PTAB proceedings involving eleven patents, twenty inter partes reviews (IPRs), and eight ex parte reexaminations, related to CMOS image sensor technology.
- Pictos v. Samsung Electronics (ITC): Represented Samsung in an ITC investigation related to imaging technology.
- BorgWarner v. Schaeffler (E.D. Mich., PTAB): Defended the validity of BorgWarner’s asserted patent in IPR proceedings, represented BorgWarner in U.S. litigation, and coordinated with worldwide litigation in Germany and China involving automotive cam phaser technology.
- Target v. Proxicom (PTAB): Represented Target in IPR proceedings involving nine patents related to mobile location tracking and Bluetooth technology.
- Vizio v. Nichia (PTAB): Represented Vizio in five IPR proceedings involving three patents related to LED packaging technology.
- Intercurrency v. A Major U.S. Bank (E.D. Tex.): Represented the client in a three-patent suit related to currency conversion for security transactions, resulting in an early favorable settlement.
- Advised Exactech regarding trade secrets matters.
- Counseled Roku in patent, copyright, and software licensing matters.
- Counseled a major aerospace corporation in patent matters.
- Counseled a U.S. telecommunications company regarding allegations of infringement by Intellectual Ventures.