His cases have spanned a wide range of technologies, including:

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• oilfield services and equipment

• hydraulic fracturing equipment and chemicals

• mechanical devices

• electrical systems and methods

• chemical products and processes

• computer software

• computer hardware

• consumer products

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Patent Litigation and America Invents Act ("AIA") Post Grant Proceedings

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James has extensive experience helping both patent owners and accused infringers in patent litigation and post grant proceedings in the U.S. Patent and Trademark Office. He has been recognized as one of the top 50 best performing attorneys in inter partes review proceedings before the Patent Trial and Appeal Board.

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Other Intellectual Property Litigation

 

James also represents clients in state and federal court cases involving:

• trade secrets

• copyrights

• trademarks

• trade dress

• unfair competition

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Intellectual Property Counseling

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James also provides his clients with strategic intellectual property counseling and analysis, including:

• patent invalidity/non-infringement opinions

• freedom-to-operate opinions

• patent licensing and related negotiations

• due diligence in mergers and acquisitions

• pre-suit investigation and analysis

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Complex Commercial and Civil Litigation

 

James possesses broad based experience in other areas of complex commercial and civil litigation, including:

• product liability

• breach of contract

• insurance coverage

• fraud

• groundwater contamination and related environmental exposure

• class action defense

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Education

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University of Houston J.D., summa cum laude 2003

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University of Arkansas B.S.Ch.E., magna cum laude  1995

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Admissions

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Federal District Courts:

• Eastern District of Texas

• Western District of Texas

• Southern District of Texas

• Northern District of Texas

• District of Colorado

 

Federal Courts of Appeals:

• 3rd Circuit 

• 11th Circuit

• Federal Circuit

 

United States Patent & Trademark Office

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Representative Matters

      Note: All identifying information has been withheld to protect client confidentiality.

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• Oilfield Products & Services​​

  • Successfully defended accused infringer against infringement claims on multiple patents directed to plunger lift technology used in oil and gas production. After evaluating the plaintiff’s case, we determined the quickest path to a full resolution was through the inter partes review process. We prepared and filed three petitions, all of which were granted. The parties entered a confidential settlement after the deposition of the patent owner’s expert.

  • Successfully prosecuted patent infringement action for our client, whose patented subsea oil and gas flow line assembly appeared to have been copied by a competitor. After filing suit seeking a preliminary injunction, we sought and received an expedited trial setting five months from filing. After a successful Markman hearing, the parties agreed to a confidential settlement.

  • After our client’s infringement suit was transferred to the Southern District of Texas, we were asked to take over from its original counsel. The defendant filed four petitions for inter partes review against the originally asserted patents. After we analyzed our clients’ patents and the accused products, we amended the complaint to assert additional patents and claims. After we filed the patent owner’s preliminary responses in the IPR proceedings, the parties entered a confidential settlement of all disputes. 

  • Successfully prosecuted multiple IPR petitions on behalf of a client being sued for infringement of patents related to desanding technology, resulting in a confidential settlement after institution of trial.

  • Resolved a potential claim for infringement of a patent directed to oilfield equipment used in hydraulic fracturing operations. Our client was already defending claims outside the United States by the patent holder. Before importing its potentially infringing products, our client asked us for help fighting the U.S. patent. We devised an aggressive strategy to kill all claims relevant to our client’s products, including a declaratory judgment action of non-infringement and a petition for inter partes review. Just before filing the completed petition, we informed the plaintiff of the impending filing, resulting in an immediate global settlement.

  • Successfully defended suit alleging infringement of a patent directed to the design of a downhole circulation sub-assembly and related activation device. After assessing the plaintiff’s case, we determined that the most cost-effective approach for the client was a focused petition for inter partes review. The PTAB granted our petition and issued a final written decision finding all challenged claims unpatentable. After the Federal Circuit affirmed the PTAB’s decision, the plaintiff agreed to dismiss all claims with prejudice.

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• Wireless Networks

  • Resolved, at minimal cost to our client, a suit by a non-practicing entity alleging infringement of a patent directed to a wireless network control protocol and related products. Our client was one of a number of entities sued in the plaintiff’s final efforts to monetize the patent before expiration. After analyzing the facts and issues, we determined that the plaintiff could not establish any infringing activities by our client. Instead of filing a motion to dismiss requiring costly briefing and potentially resulting in unnecessary discovery, we engaged in extensive negotiations with plaintiff’s counsel, eventually resulting in dismissal of all claims without the necessity of filing an answer.

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• Nanotechnology

  • Successfully prosecuted petitions for inter partes review seeking cancellation of a competitor’s patents directed to quantum dots. After oral argument, the PTAB issued final written decisions cancelling challenged claims from both patents.

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• Computer Hardware and Electronics

  • Defended our client in litigation brought by a non-practicing entity on a standards essential patent directed to Power over Ethernet, resulting in a favorable confidential settlement before trial.

  • Our client sued multiple companies for infringement of its patents directed to network security appliances. The defendants filed 19 separate petitions for inter partes review seeking to invalidate the asserted patents. We carefully analyzed the petitions and filed patent owner’s responses directed to technical and procedural flaws in each petition, winning a denial of institution in 8 of the 19 proceedings.

  • Successfully defended retaliatory infringement lawsuit brought by accused infringer over patents directed to data storage libraries. After we moved for summary judgment on plaintiff’s infringement case, and simultaneously moved to strike new infringement theories appearing for the first time in the plaintiff’s expert report, the parties entered into a confidential settlement resolving the case.

  • Our client’s competitor obtained a patent directed to an electronic sign controller, and began using the patent to chill competition in the marketplace. After analyzing the situation we filed suit seeking damages for violations of the Lanham Act, state unfair competition law, and for declaratory judgments of invalidity and non-infringement. After defeating several attempts by the defendant to dispose of the case, we helped our client successfully negotiate a favorable business resolution.

  • Semiconductor Manufacturing – Successfully sued client’s competitor alleging infringement of a patent directed to testing methods for integrated circuits. The defendant filed a petition for inter partes review challenging the patent. After we prepared and filed the patent owner's preliminary response in the IPR proceeding, the defendant entered a confidential settlement.

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• Consumer Products

  • Successfully defended suit by client’s competitor for infringement of a patent directed to a consumer hair styling device. After we identified multiple potentially invalidating prior art references, the plaintiff agreed to a favorable confidential settlement.

  • Sued national chain retailer on behalf of a leading manufacturer of eye care products for patent infringement, false advertising, and related unfair competition claims under the Lanham act related to the defendant’s store brand packaging. The parties agreed to a confidential settlement.

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• Pro Bono

  • Prepared and filed, on behalf of amicus curiae, a brief with the en banc Federal Circuit arguing that the PTO improperly assigned the burden of proof to the patent owner with respect to the patentability of amended claims during inter partesreviews. The Federal Circuit agreed with the position taken in our briefing, explaining that patent owners could not be required to prove patentability pursuant to the current rules (Aqua Prods. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017).

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Prior Experience

 

Prior to attending law school, Mr. Hall worked as a petroleum refinery process engineer, where he focused on optimizing refinery operations to maximize product yields and refinery profitability. He continues to bring the same focus to his client’s legal matters, and is dedicated to helping them achieve the best possible resolutions at the lowest possible costs.

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Outside the Firm

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James enjoys camping and hiking with his family and exploring national and state parks across the country. He is an active member of his church where he teaches a church school class for young adults.