James Glass is the Chair of Quinn Emanuel’s Post-Grant patent practice. He holds a degree in Computer Engineering and has devoted his 20-year career to patent litigation, including litigation in Federal Courts, the US Patent and Trademark Office and at the International Trade Commission.
Jim devotes a significant portion of his practice to representing clients in post-grant proceedings at the United States Patent and Trademark Office (“PTO”). These proceedings, which are mini-trials at the PTO—complete with depositions, experts, and live argument—provide unique opportunities for litigants to advance strategic interests rapidly and cost-effectively.
Jim has been lead counsel on nearly 200 proceedings in front of the PTAB. Patexia has ranked him as one of the most active and best performing attorneys at the PTAB in 2018 and 2019 and Docket Navigator has ranked him as the second most active attorney in the country. His practice has included representing clients such as Alacritech, Bio-Rad, BlackBerry, IBM, Memjet, Mercedes-Benz, Parrot Drones and Samsung.
Jim has secured significant wins for both patent owners and petitioners. For patent owners, he was most recently lead counsel on a series of 14 IPRs filed by 10x Genomics; the PTAB denied institution of all 14 petitions. On the petitioner side, he most recently argued at trial for clients Mercedes-Benz and Parrot drones, securing rulings in both cases that all asserted claims were unpatentable.
Jim has extensive litigation experience. He has successfully argued many Markman and Summary Judgment motions, and has represented clients at trial in both the district court and at the International Trade Commission. He has litigated cases involving a variety of complex technologies, including smartphone technologies, WIFI systems, semiconductor fabrication and circuitry, inkjet printers, LCD technology, networking technology, graphical user interfaces, on-line trading systems, and fiber optic gyroscope systems.
Jim has been recognized as a “Super Lawyer” in multiple years by Super Lawyers Magazine.
- Activision Publishing, Inc.
- Alacritech, Inc.
- Bio-Rad Laboratories, Inc.
- Daimler AG
- Everlight Electronics Co., Ltd.
- Memjet Technology Limited
- Northrop Grumman Systems Corporation
- Parrot S.A.
- royalblue, plc.
- TCL Multimedia Technology Holdings Limited
- Lead counsel for Daimler North America, Mercedes-Benz USA, and Mercedes-Benz U.S. International challenging U.S. Patent Nos. 8,209,705 and 8,566,843, which are owned by Stragent LLC. The patents relate generally to sharing information in a distributed embedded network. Jim presented Mercedes-Benz’s arguments at the PTAB trial. The Board issued a ruling finding claims in both patents unpatentable.
- Lead counsel for Bio-Rad in a series of fourteen IPRs filed by 10X Genomics that challenged a family of patents Bio-Rad was asserting against 10X in parallel litigation. Jim led the filing of Preliminary Responses on behalf of Bio-Rad, challenging 10X’s primary positions that Bio-Rad’s patents were simple combinations of inventions that were already known. The PTAB agreed and denied institution of all petitions, thus preventing 10X from challenging the validity of the patents Bio-Rad was asserting against it.
- Lead counsel defending Memjet Technology Limited in a series of 11 petitions for IPR filed by HP Inc. HP’s IPRs related to patents Memjet asserted against HP in a litigation in the Central District of California. Only one of the 11 petitions reached a decision and was an unqualified win for Memjet, as the PTAB refused to institute HP’s IPR. Soon after that denial, the parties settled their dispute, and HP agreed to voluntarily dismiss all remaining IPRs.
- Lead counsel for Parrot S.A. on IPR petitions filed against U.S. Patent Nos. 7,931,239 and 9,073,532. The patents generally relate to flying hovercrafts that are controlled by the user through a remote unit. Jim presented arguments at the PTAB trial. The Board found all challenged claims unpatentable. In addition, Jim was lead counsel for Parrot challenging a third related QFO patent which was institued on all challenged grounds and was litigated through trial, with the Board’s decision pending.
- Lead counsel for Samsung on IPR petitions challenging U.S. Patent Nos. 7,746,916, 7,768,965, 7,881,236, 7,809,373, and 8,218,481, which are assigned to Evolved Wireless LLC. The patents relate generally to LTE wireless communications, a technology area in which Quinn Emanuel has litigated extensively in the ITC and in district courts. Four of the five petitions were instituted, and the PTAB held all challenged claims of those patents unpatentable after an oral argument on the merits.
- Lead counsel for Daimler-Benz challenging U.S. Patent No. 8,180,279, which is owned by Antennatech LLC. The patent relates generally to wireless internet hotspots. Soon after the IPR was filed, the district court action was dismissed.
- Jim was lead counsel defending Universal Secure Registry against four separate petitions for inter partes review filed by Apple Inc. and Visa, Inc, challenging USR’s U.S. Patent No. 8,856,539. The ’539 patent relates to computer systems that authenticate identities and selectively grant access to information and enable transactions. In two of the four proceedings, the Board found our arguments persuasive enough to deny institution of petitions outright, ensuring an early victory for our client. After fully considering the evidence and arguments we presented for the remaining two proceedings, the PTAB again held that all challenged claims were not unpatentable resulting in a complete sweep in our client’s favor.
- Lead counsel for Daimler-Benz challenging U.S. Patent No. 7,241,034, which is owned by Adaptive Headlamp Technologies, Inc. The patent relates generally to headlamps that rotate and incline in order to provide better illumination in front of a moving vehicle. The IPR settled before the PTAB rendered an institution decision.
- Lead counsel for Daimler AG challenging five patents owned by Carucel Investments, Inc. Secured institution decision on all challenged claims on four patents to date, with one decision pending.
- Lead counsel representing IBM in an IPR filed against a patent asserted against IBM by Trusted Knight Corporation. In a first-of-its-kind argument, IBM has alleged that the challenged patent is invalid based on its own grandparent, arguing that the challenged patent’s parent, a CIP, broke the priority chain. IBM also alleged invalidity based on a more traditional combination of prior art. An institution decision is expected in July.
- Jim is currently defending 44 petitions for Alacritech Inc., an innovation company in intelligent network card field. These petitions were filed by Intel Corporation. Among the 44 petitions, we defeated 10 of them at the institution stage. Seven of them resulted in a final decision with at least one claim patentable.
- Jim defended Universal Secure Registry against three separate petitions for covered business method review filed by Apple Inc., challenging USR’s U.S. Patent No. 8,577,813. The ’813 patent relates to computer systems that authenticate identities and selectively enable financial transactions. The PTAB denied institution for all three proceedings resulting in a complete victory for our client. In particular, the Board held that the ’813 patent claims were eligible patent subject matter under 35 U.S.C. § 101 because they were not directed to an abstract idea. The Board also found that the ’813 patent was directed to a technological invention and did not qualify for CBM review.
- Defending E. Mishan & Sons, Inc. in a litigation filed by Avenue Innovations, Inc., Jim argued the Markman hearing, securing a ruling that several of the asserted claims were indefinite and therefore invalid. The case is currently pending.
- Represented TCL Multimedia Technology Holdings Limited in a litigation filed by Nichia Corp. After filing several IPRs against Nichia’s patents, the case settled favorably.
- Represented Canon in a lawsuit related to WiFi technology. The case settled favorably for Canon.
- Represented Google in a patent infringement case involving its online advertising technology. The plaintiff sought damages in excess of $500 million. After a one-week trial, the jury returned a verdict of noninfringement and invalidity.
- Represented Activision in a declaratory judgment action seeking a declaration of noninfringement and invalidity against Gibson Guitar, Corp. The Court ruled on summary judgment that Gibson’s patents were not infringed.
- Represented Samsung in a case brought by Positive Technologies, Inc., involving LCD driving techniques. Case resulted in a favorable settlement for Samsung.
- Represented royalblue in a patent infringement suit relating to trading securities over multiple electronic exchanges. Case resulted in a favorable settlement for royalblue.
- Represented the Gillette Company in a patent infringement jury trial relating to the chemical coatings on Mach 3 razor blades, where the damages claim against Gillette exceeded $100 million.
- Hofstra University School of Law
- NYU School of Engineering (formerly Polytechnic University of New York)
(B.S., Computer Engineering, 1995)
- James M. Glass & Sean Gloth, Patentees Should consider Alternatives to IPR Amendments (February 25, 2020), https://www.law360.com/articles/1246865.
- James M. Glass & Richard Lowry, Use of Discretion at the PTAB, New York Law Journal (Jan. 17, 2020), https://www.law.com/newyorklawjournal/2020/01/17/use-of-discretion-at-the-ptab.
- “A Potential Source of Claims Construction Disharmony,” Daily Journal (Dec. 18, 2018), https://www.dailyjournal.com/articles/350487-a-potential-source-of-claims-construction-disharmony.
- “IPR Claim Amendments In The Wake Of Aqua Products,” Law360 (Mar. 05, 2018, 12:26 PM), https://www.law360.com/articles/1016309/ipr-claim-amendments-in-the-wake-of-aqua-products.
- “DSU Medical: Defining The Standard For Induced Infringement,” New York Intellectual Property Association Bulletin, March-April, 2007
- “Role of Specification Increasing in Claim Construction,” New York Law Journal, October 15, 2001
- “Non-Monetary Relief in Trade Secret Cases: A Legal and Strategic Overview,” American Conference Institute, June 6, 2001
- Member, American Intellectual Property Law Association
- Member, New York Intellectual Property Law Association