James R. Myers
James R. (“Jim”) Myers is Chairman of the AIPLA USPTO Inter Partes Patent Proceedings Committee (PTAB) 2014-16 and was the Co-Chair of the Inaugural AIPLA USPTO PTAB Bench & Bar Conference on June 18, 2015. 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. The Federal Circuit affirmed the cancellation of all claims of the challenged five patents on August 24, 2015, vindicating an innovative tactic of filing two petitions challenging each of the five patents. See Tony Dutra, Liberty Mutual KOs Progressive Insurance Patents, Pat. Trademark & Copyright J. (BNA) (Aug. 24, 2015). Jim is one of a very small set of attorneys that have successfully represented clients from preparation of a PTAB petition through arguing at the Federal Circuit.
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. “The group is at the cutting edge of the developing ‘fintech’ area. Nobody knows more about litigating patents in the financial services sector than James R. Myers, whose ‘practical, defence-minded approach’ is much admired.” (IAM Patent Guide 1000 (2015)). 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, patent strategy and doxing (aka doxxing) defense. 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 Company – Represented Liberty Mutual Insurance before the Federal Circuit on the briefs and at oral argument as the Federal Circuit affirmed the Final Written Decisions of the PTAB canceling all claims of three Progressive Insurance vehicle telematics patents. Progressive Casualty Inc. Co. v. Liberty Mutual Insurance Company, No. 14-1466, 2015 WL 5004949 (Fed. Cir. Aug. 24, 2015)
- 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) – Defended 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) – Defended major bank against patent assertions involving mobile banking applications, including declaratory judgment and MDL proceedings.
- Major Consumer Electronics Company v. Enterprise Systems S.a.r.l. (IPR2015-00935). Represented challenger in PTAB petition seeking invalidity of a patent addressing message services in a communications system. Dispute settled before institution decision.
- NJOY, Inc. v. Fontem Holdings 1 B.V. (IPR2014-01289, IPR2014-01529, IPR2014-1300). Represented challenger in PTAB proceedings seeking to invalidate three electronic cigarette patents. Dispute settled after PTAB instituted trials on every claim of the three challenged patents.
- Progressive Insurance Company v. Liberty Mutual Insurance – Represented Liberty Mutual before the Federal Circuit on the briefs and at oral argument as the Federal Circuit affirmed 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. Progressive Casualty Inc. Co. v. Liberty Mutual Insurance Company, No. 14-1466, 2015 WL 50d4949 (Fed. Circ. Aug. 24, 2015)
- 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) – Defended 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 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.
- Quoted, “Federal Circuit supports patent office on standard used in proceedings,” Inside Counsel (February 5, 2015)
- Quoted, “Reaction to the Federal Circuit’s Cuozzo Opinion,” Managing Intellectual Property (February 5, 2015)
- Quoted, “Fed. Circ. Signoff on PTAB Rules Boosts Patent Challengers,” Law360 (February 4, 2015)
- Quoted, “Eligibility, Post-Grant Opposition, Litigation Legislation Will Be Top Patent issues in 2015,” Bloomberg BNA Patent, Trademark & Copyright Journal (January 23, 2015)
- Co-author, “Coordinating PTAB and District Court Litigation,” Practical Law The Journal (December 2014/January 2015)
- Co-author, “Versata Software, Inc. v. Callidus Software, Inc.: Move Quickly to File CBM and Stay District Court Litigation,” Patent, Trademark & Copyright Journal (December 5, 2014)
- Quoted, “Patent Troll Bill Just Part of the Fix, App Group Head Says,” Law360 (November 18, 2014)
- Quoted, “They Tried to Make Me Go to PTAB…” Managing Intellectual Property (October 2014)
- Quoted, “America Invents Act Post-Grant Oppositions After Two Years: A Case End-to-End: What Wins? What Loses?” Patent, Trademark & Copyright Journal (Sept. 23, 2014)
- Quoted, “'Transformational' Change to Patent System, 3 Years In,” Corporate Counsel (September 16, 2014)
- Quoted, “America Invents Act Post-Grant Oppositions After Two Years: Benefit or ‘Death Squad’?" Patent, Trademark & Copyright Law Journal Daily Bulletin (Sept. 16, 2014)
- Quoted, “5 Surprises From The First 2 Years Of AIA Reviews,” Law360 (September 11, 2014)
- Quoted, “5 Tips For Killing Patents In AIA Reviews,” Law360 (April 17, 2014)
- Quoted, “A New Weapon in Corporate Patent Wars,” The Wall Street Journal (March 10, 2014)
- Quoted, “Progressive's Business Method Patent Obvious, PTAB Told,” Law360 (November 13, 2013)
- Quoted, “Progressive's Biz Method Patents Obvious, PTAB Hears,” Law360 (October 28, 2013)
- Cited, “Patent Court Sets the Pace,” National Law Journal (October 21, 2013)
- Quoted, “BB&T Challenges Mobile Banking Patent,” Bank Systems & Technology (September 20, 2013)
- Mentioned, “Ropes & Gray Represents Major Bank in One of the First Covered Business Method Patent Reviews,” IPFrontline Magazine (September 19, 2013)
- Quoted, “BB&T Strikes Back on Patent Suit,” American Banker (September 18, 2013)
- Quoted, “US bank files covered business method review” World IP Review (September 18, 2013)
- Quoted, “USPTO Gets 2nd Biz Method Review Bid By Major Bank,” Law360 (September 17, 2013)
- Amicus Brief in the matter of Bernard L. Bilski and Rand A. Warsaw, Petitioners v. David J. Kappos, Under Secretary of Commerce for Intellectual Property and Director, Patent and Trademark Office, Respondent (October 2009)
- Amicus Brief in the matter of Board of Trustees of the Leland Stanford Junior University, Petitioner v. Roche Molecular Systems, Inc., et. al. (December 2010)
- Progressive Casualty Inc. Co. V. Liberty Mutual Insurance Co., No. 14-1466, 2015 WL 5004949 (Fed. Circ. Aug. 24, 2015)
- Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co., Case CBM2013-00004, Paper 53, March 13, 2014 (Pat. No. 8,090,598)
- Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co., Case CBM2012-00010, Paper 59, February 24, 2014 (Pat. No. 7,124,088)
- Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co., Case CBM2013-00002, Paper 59, February 24, 2014 (Pat. No. 7,877,269)
- Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co., Case CBM2012-00003, Paper 78, February 11, 2014 (Pat. No. 8,140,358)
- Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co., Case CBM2013-00009, Paper 68, February 11, 2014 (Pat. No. 8,140,358)
- Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co., Case CBM2012-00002, Paper 66, January 23, 2014 (Pat. No. 6,064,970)
- Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co., Case CBM2012-00004, Paper 60, January 23, 2014 (Pat. No. 6,064,970)
- Progressive Cas. Ins. Co. v. Safeco. Ins. Co. of Ill., 2013 U.S Dist. LEXIS 54899 (N.D. Ohio Apr. 17, 2013)
- Lincoln National Life Insurance v. Transamerica Life Insurance, 609 F.3d 1364 (Fed. Cir. 2010)
Intellectual Property Master Class
- Host and Speaker, Ropes & Gray IP Master Class Financial Services Roundtable, “Intellectual Ventures: Emerging Patterns of Resistance,” “PTAB: Coming Innovations & Gold Plated Patents” and “Section 101: Repair & Replace Your Portfolio” (April 2015)
- Using PTAB Proceedings to Challenge Life Sciences Patents (May 2014)
- Update on Financial Services Patent Litigation (April 2014)
- Challenging Patent Invalidity at the PTO Post-AIA (November 2012)
- Challenging Patents at the PTO: The Clock is Ticking (July 2012)
- Mayo v. Prometheus (April 2012)
- Use of Judge Rader's Model Order for E-Discovery (March 2012)
- Trends in Trade Secret Litigation: Keeping Secrets (February 2012)
- The Aftermath of Stanford v. Roche (June 2011)
- Financial Services Roundtable (April 2011)
- Stanford v. Roche: Case Update Discussion With University Amici (February 2011)
- Protecting Title to Institutional Patents Arising from Federal Funding (November 2010)
- Strategies for Limiting Potential Exposure to Damages Claims (October 2010)
- Thinking Outside the (Jury) Box: The Strategic Use of Ex Parte and Inter Partes Patent Reexaminations in Infringement Disputes (September 2010)
- Speaker, “Building and Hardening a Patent Portfolio for the PTAB,” Ropes & Gray and the ACC on Post-Grant Patent Challenges at the Patent Trial and Appeal Board Conference (January 13, 2016)
- Panelist, “Harnessing the Power of Covered Business Method Patent Review,” ACI Post-Grant PTO Proceedings Conference (March 25-26, 2015)
- 12th Annual Patents for Financial Services Summit (July 22-23, 2015)
- 11th Annual Patents for Financial Services Summit (July 23-24, 2014)
- 10th Annual Patents for Financial Services Summit (July 24-25, 2013)
- 9th Annual Patents for Financial Services Summit (July 25-26, 2012)
- 8th Annual Patents for the Financial Services Summit (July 27-28, 2011)
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)