Jim Davis litigates high stakes intellectual property disputes serving as lead counsel in district court, ITC, Federal Circuit, and USPTO proceedings.

In district courts across the country as well as the ITC, Jim represents intellectual property owners and challengers in matters spanning a broad range of technologies including semiconductors, analog circuits, wireless technology (including standard essential patents (SEPs)), consumer electronics, network security, and medical devices. Jim recently led a team to a favorable resolution in the Eastern District of Texas following dispositive motions after winning multiple issues before the court as well as institution of IPRs against all asserted claims—which included claims from five alleged SEPs. Before the ITC, Jim and his team most recently won findings of non-infringement and invalidity in a four-patent investigation relating to mesh networks.

Jim has argued and litigated multiple precedent-setting matters before the Federal Circuit, including issues related to claim construction, certificates of correction, and covered business method proceedings, among other issues. Jim has recently obtained findings of vacatur and reversal before the court in multiple PTAB appeals.

As one of the most active PTAB practitioners in the country, Jim has litigated over 200 post-grant proceedings, including inter partes and covered business method reviews as well as ex parte reexaminations. Jim led the strategy that resulted in the Federal Circuit’s precedent-setting decision concerning obviousness-type double patenting in In re Cellect.

Jim also advises clients concerning intellectual property strategies, including acquisitions, enforcement, due diligence, and licensing. As many of his matters involve litigation in jurisdictions around the world, Jim also coordinates global litigation strategies and disputes.

Experience

  • Samsung Electronics v. Cellect (PTAB, USPTO, CAFC, SCOTUS): Representing Samsung in multiple inter partes reviews and ex parte reexaminations concerning 11 patents asserted by Cellect in district court relating to image sensors.
  • Bishop Display v. LG Electronics, LG Display (EDTX): Representing LG Electronics and LG Display in two cases involving 12 patents relating to LCD technology.
  • SIPCO v. Emerson Electric (ITC, NDGA, D. Del., N.D. Tex., PTAB, CAFC, SCOTUS, Mannheim Regional Court, EPO): As trial counsel for Emerson, won every case and appeal that reached a final decision across over 30 separate proceedings, as part of a multi-jurisdictional dispute concerning mesh networking technology. 
  • A Global Content Delivery Network, Cybersecurity, and Cloud Service Company (D. Del., PTAB, USPTO): Defending the company against allegations of infringement concerning three patents relating to media delivery; asserting an infringement claim against an entity related to the plaintiff for infringement of another patent.
  • Pantech v. LG Electronics (EDTX, PTAB): Successfully resolved a seven-patent case involving alleged cellular SEPs after the parties filed dispositive motions and the PTAB instituted IPRs against all claims asserted in the case.
  • Proxicom v. Target (M.D. Fl., PTAB, CAFC): Defended Target against Proxicom’s assertion of nine patents against Target’s app and in-store Bluetooth beacon technology. After invalidating over 100 of Proxicom’s claims before the PTAB and winning reversal and vacatur of the PTAB’s only adverse findings before the Federal Circuit, Proxicom dismissed its claims with prejudice.
  • The Leading U.S. Consumer Electronics Company (CAFC): Serving as lead counsel in three appeals before the Federal Circuit in matters relating to e-payment technology.
  • A Leading Audio Electronics Company (PTAB): Representing the client in ten IPRs challenging patents relating to audio processing that are also asserted in district court.
  • The Leading U.S. Consumer Electronics Company (CAFC): Serving as lead counsel in six appeals before the Federal Circuit in matters relating to beacon technology.
  • A Global Leader in Medical Technology, Services, and Solutions (PTAB, CAFC): Successfully defending a patent relating to catheter-based renal denervation against an IPR challenge, which is pending on appeal.
  • Express Mobile v. SAP (NDCA, PTAB, CAFC): Representing SAP in a multi-patent suit brought by Express Mobile relating to database, user interface, and website generation technology.
  • Bladeroom v. Emerson Electric (NDCA): Represented Emerson on remand after a prior adverse jury verdict and a successful appeal in a matter relating to alleged trade secret misappropriation concerning data center construction.  
  • A Leading Climate Control Company (WDTX, EDMO, PTAB): Defending Copeland in a two-patent case relating to thermostat devices after successfully transferring the case to E.D. Mo. from W.D. Tex., obtaining a stay, and winning two IPRs challenging all asserted claims. 
  • A Leading Networking Company (EDTX): Successfully resolved a dispute involving six patents related to mesh networking. 
  • Emerson Quiet Kool v. Emerson Electric (D. Del.): Successfully moved to dismiss breach of contract and other related allegations concerning trademarks in the US and China by raising arguments concerning plaintiff’s failure to state a claim and international comity relating to co-pending litigation in China.
  • EcoFactor v. Emerson Electric (D. Del., ITC): Successfully obtained withdrawal of EcoFactor’s ITC complaint and voluntarily dismissed Emerson’s declaratory judgment action relating to five patents concerning smart thermostats.
  • A Global Leader in Medical Technology, Services, and Solutions (PTAB, CAFC): Represented the company 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 dismissal without settlement 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 without settlement 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 without prejudice of 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): Defended patents relating to controlled stent-graft deployment systems and medical devices formed from stress-induced martensite 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 v. Acceleration Bay (PTAB, CAFC): Successfully represented global computer gaming companies in inter partes review challenges and appeals relating to three patents concerning broadcasting information in computer networks.
  • A Global Leader in Medical Technology, Services, and Solutions (D. Del.): Successfully defended and resolved a multi-patent litigation related to pill cameras used for endoscopy.
  • NXP Semiconductors 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): Obtained a favorable early resolution of a lawsuit involving echo cancelation technology.
  • Dell v. NXP Semiconductors (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 (ITC, NDCA, EDVA, PTAB): Trial counsel for Spansion in a large set of multi-patent cases related to flash memory technology, which involved multiple ITC investigations and district court proceedings as well as IPRs. The dispute was successfully settled.
  • The 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.
  • The 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): Successfully resolved a dispute involving spine pedicle screws after filing an IPR petition.
  • 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 led to a precedent-setting decision on appeal affirming the win.
  • A Leading Gaming Company (D. Del.): Successfully secured a dismissal with prejudice in a multi-defendant action relating to electronic displays in slot machines.
  • One of the World’s Largest Automobile Companies (EDTX): Successfully formulated strategies that led to summary judgment of non-infringement 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.

Areas of Practice