Jim Wilson litigates complex intellectual property cases and appeals, focusing on resolving 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.
- Defended more than ten patents for a top research, development and engineering company against twenty-plus Inter Partes Reviews and prevailed in each subsequent Federal Circuit appeal.
- 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.
- 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.
- 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.
- Developed case strategy, participated in discovery, cross-examined inventor and participated U.S. International Trade Commission hearing involving networking equipment.
- 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.
- Prepared strategy for invalidating patent in inter partes reexamination proceeding involving internet gambling technology.
- Prevailed in a jury trial after preparing expert reports and preparing inventors to provide testimony in Delaware federal district court case involving telecommunications equipment.
- 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.
- 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.
- Implemented case strategy, collaborated with expert witnesses to develop technical theory of case in U.S. International Trade Commission hearing involving LED technologies.
- Identified winning issues for appeal and participated in appellate briefing in Federal Circuit appeal involving optics for semiconductor fabrication.
- Advanced licensing enforcement program in federal district courts involving optical disc technologies.
- Successfully defended prosecuting attorney during deposition for federal district court trial involving cardiac pacemaker technology.
- Addressed substantive motions in Oregon federal district court case involving oscilloscope technology.
- 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.
- Developed technical theories of noninfringement to prepare expert reports in U.S. International Trade Commission hearing involving personal computer core logic.
- Furthered defense against importation ban in U.S. International Trade Commission hearing concerning battery technology.
- Penn State University, B.S., 1990, with distinction
- American University, J.D., 1999, magna cum laude
- District of Columbia
- U.S. Court of Appeals, Federal Circuit
- U.S. Patent and Trademark Office
- U.S. Supreme Court