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James T. Wilson

Partner

phone  (571) 222-1022
email   [email protected]

Jim Wilson litigates complex intellectual property cases and appeals with a focus on patent infringement and trade secret misappropriation claims. He represents both plaintiffs and defendants in federal district courts and before the Court of Appeals for the Federal Circuit, petitioners and patent owners before the U.S. Patent Trial Appeal Board (PTAB), as well as complainants and respondents before the U.S. International Trade Commission (ITC). His trial experience includes multiple district court cases, more than 70 inter partes reviews (IPR) and numerous ITC disputes concerning telecommunication devices and systems, optical networking components, computer software, light emitting diodes (LED) and packaging, semiconductor lasers and digital image storage and retrieval devices.

Jim’s expertise has been honed by his education in electrical engineering and by his experience working at large and small patent boutiques. Jim has dealt with whatever issue may arise in an intellectual property dispute, from routine claim construction, infringement and validity issues in patent cases to more esoteric issues such as inventorship, ownership and enforceability.

Jim’s knowledge of patent and intellectual property law stems from his work as a patent examiner with the U.S. Patent and Trademark Office (PTO), years obtaining patents as a patent prosecutor and study of court opinions involving patent law and intellectual property. Jim routinely authors articles analyzing precedential Federal Circuit decisions.

Education

  • Penn State University, B.S. Electrical Engineering, 1990, with distinction
  • American University, J.D., 1999, magna cum laude

Court & Bar Admissions 

  • Supreme Court of the United States
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Patent and Trademark Office
  • District of Columbia
  • Virginia

    Representative Matters: U.S. Patent and Trademark Office

    • Google LLC v. Dialect LLC: Defended patents relating to voice recognition technology inInter Partes
    • Unified Patents, LLC & ecobee Tech. ULC v. Causam Enterprises, Inc.: Defended patents relating to energy management in Inter PartesReviews and handled subsequent Federal Circuit appeals.
    • Various entities v. Oyster Optics, LLC: Defended more than ten patents relating to optical communications technology for a top research, development and engineering company against twenty-plus Inter PartesReviews and prevailed in each subsequent Federal Circuit appeal.
    • Various Entities v. BiTMICRO LLC: Defended patents related to solid state drives for a top research, development and engineering company Inter Partes
    • MolecuLight Corp. Swift Medical, Inc.: Challenged patent relating to medical imaging device for a leading medical company in a Post Grant Review.
    • Various Entities v. Document Security Systems, Inc.: Defended various patents relating to light emitting diode and semiconductor packaging in  Inter Partes
    • Dataspeed, Inc. Sucxess LLC: Challenged patents relating to retrofit unit for adding vehicle features for a leading autonomous vehicle control company in Inter PartesReviews.
    • Apple Inc. Longitude Flash Memory Systems S.a.r.l.: Defended numerous patents for a top research, development and engineering company involving solid state drives in Inter PartesReviews.
    • Samsung Electronics America, Inc. Imperium (IP) Holdings, Inc.: Defended patents relating to camera and imaging technologies in Inter PartesReviews.

    Representative Matters: U.S. International Trade Commission

    • Light Emitting Diodes and Products Containing Same: Developed noninfringement and invalidity positions, conducted depositions, managed preparation of expert reports, cross-examination of expert witness, developed strategy for cross-examining inventor and participated in U.S. International Trade Commission hearing involving LED semiconductor packaging technology.
    • Wireless Communication Devices and Systems: Developed case strategy, studied source code to develop noninfringement positions, worked on expert reports and deposed inventor in U.S. International Trade Commission hearing involving camera and display technologies.
    • Integrated Repeaters, Switches, Transceivers and Products Containing Same: Developed case strategy, participated in discovery, cross-examined inventor and participated U.S. International Trade Commission hearing involving networking equipment.
    • Certain Video Games Machines and Related Three-Dimensional Pointing Devices: Participated in assertion of patents, developed responses to attack on patents, cross-examined expert witness and participated in U.S. International Trade Commission hearing involving gaming consoles.
    • Short Wavelength Semiconductor Lasers and Products Containing Same: Implemented case strategy, collaborated with expert witnesses to develop technical theory of case in U.S. International Trade Commission hearing involving LED technologies.
    • Nikon Corp. ITC: Identified winning issues for appeal and participated in appellate briefing in Federal Circuit appeal involving optics for semiconductor fabrication.
    • Integrated Circuit Chipsets, Components Thereof and Products Containing Same: Developed technical theories of noninfringement to prepare expert reports in U.S. International Trade Commission hearing involving personal computer core logic.
    • Zero-Mercury-Added Alkaline Batteries, Parts Thereof, and Products Containing Same: Furthered defense against importation ban in U.S. International Trade Commission hearing concerning battery technology.

    Representative Matters: Patent litigation in U.S. district courts

    • ThreatModeler Software, Inc. IriusRisk Inc.: Defeated motion to dismiss based on 35 U.S.C. § 101 for threat modeling patents.
    • Worlds Inc. Activision Blizzard, Inc.: Asserted patents for a major metaverse developer in the U.S. District Court for the District of Massachusetts, handled a subsequent Federal Circuit appeal and a petition for certiorari to the U.S. Supreme Court.
    • Telcordia Technologies, Inc. Cisco Systems, Inc. Prevailed in a jury trial after preparing expert reports and preparing inventors to provide testimony in Delaware federal district court case involving telecommunications equipment.
    • SPH America, LLC Acer, Inc.: Evaluated complex signaling technology to develop and implement legal and technical theories of the case in a Southern California federal district court case involving cellular communications technologies.
    • Utstarcom Inc v. Starent Networks Corp: Moved a trade secret and patent case to resolution after participating in e-discovery and preparing motions and briefing in a Northern Illinois federal district court case involving cellular base station technologies.
    • S. Phillips Corp. v. Infodisc Technology USA Inc: Advanced licensing enforcement program in federal district courts involving optical disc technologies.
    • Tektronix, Inc. LeCroy Corp.: Addressed substantive motions in Oregon federal district court case involving oscilloscope technology.
    • Choice-Intersil Microsystems, Inc. Agere Systems, Inc.: Developed case theory relating to trade secret misappropriation and implemented theory using strategic depositions in Eastern Pennsylvania federal district court case involving wireless networking equipment.
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