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James Conley

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Education

  • University of Wisconsin (JD, 2001)
  • University of Wisconsin (BS, Mechanical Engineering, 1992)

Bar Admissions

  • California
  • Wisconsin
  • United States Patent and Trademark Office

Jim specializes in litigating intellectual property disputes and counseling clients on various patent and trademark matters, including global and domestic prosecution strategies, licensing, and due diligence relating to mergers, financing, and IPOs. 

In his more than 10 years of practice, Jim has successfully represented clients before federal district courts in Northern, Central, and Southern California, Delaware, and the Eastern District of Texas as well as before the Federal Circuit Court of Appeals and the International Trade Commission. In addition to patent litigation, Jim has substantial experience in litigating trademark and copyright disputes.

His practice also involves intellectual property counseling and prosecution. He works closely with his clients to develop and implement global IP strategies to meet business goals. He also manages his clients’ trademark portfolios and advises on IP licenses and other contracts touching on IP issues. Jim also performs competitive landscape analyses, drafts non-infringement opinions, and regularly presents his IP strategies to due diligence counsel to enable investments, acquisitions, or IPOs to move forward. 

Jim has broad technical experience in banking services, imaging, software/SAS, document processing, radio frequency identification, wireless communications, optics, and clean technology. He also represents many clients in the medical device arena, having experience with cryoablation catheters that cure heart arrhythmias, transcervically introduced fallopian tube contraceptive devices, cardiac defect closure devices, magnetic resonance imaging systems, radiation therapy devices, multi-focal contact lenses, artificial lungs, endometrial and fibroid ablation devices, dental implants, monoclonal antibodies, ionizing radiation sterilization technology, and femtosecond lasers for corneal surgery.

Jim has given lectures in Hong Kong and Taiwan and to clients on topics such as competitive patent review, IP due diligence, patent marking and the America Invents Act. He also co-authored a chapter on Discovery and Privilege in a Patent Litigation treatise published by the Practicing Law Institute.

Before joining the firm, Jim was a partner in the San Diego office of an international law firm. Prior to becoming an attorney, he gained experience in electrical and mechanical design, chemical processes, and emissions control while designing engines for six years at a division of Dresser Industries and at Cummins Engine Company. He also interned for two years designing space flight hardware for NASA and the Department of Energy, gaining additional experience with the thermal, mechanical, and fluids disciplines. Jim also was a judicial intern for the Honorable Barbara B. Crabb of the US District Court for the Western District of Wisconsin (2000 – 2001).

Representative Matters

  • Developed the non-infringement case for a client accused of infringing check processing patents in a billion-dollar lawsuit, facilitating a favorable settlement on the eve of trial.
  • Managed a complex patent action involving cryoablation catheters. This bet-the-company battle involved 16 patents and included concurrent patent infringement suits in the Delaware and Canadian Federal Courts, interference proceedings in the US Patent Office, and a Section 337 action in the International Trade Commission. In the end, Jim’s client was paid a royalty despite its competitor owning the majority of the asserted patents.
  • Successfully defended an RFID technology client by prevailing on the nation’s first summary judgment of invalidity under the Supreme Court’s KSR precedent and achieving a favorable settlement after putting on his client’s case at trial.
  • Successfully asserted claims on behalf of an inventor of contact lens technology, obtaining a favorable settlement after winning rulings on damages theories and patent validity just before trial.
  • Defended some of the world largest sunglass manufacturers against infringement allegations relating to coatings and optical distortion correction patents, achieving favorable settlements after developing strong grounds for invalidating the asserted patents.
  • Won summary judgment for his client in a landmark file-sharing copyright case.
  • Represented a client accused of infringing the Windows trademark, obtaining a preliminarily ruling that Microsoft’s mark was invalid, leading to a favorable settlement for his client.

Professional & Community Involvement

  • Member, Medical Device Committee, BIOCOM
  • Member, American Intellectual Property Law Association
  • Member, San Diego Intellectual Property Law Association
  • Member, Association of Business Trial Lawyers of San Diego
  • Member, San Diego County Bar Association
  • Member, American Bar Association
  • Member, American Health Lawyers Association
  • Member, Association of Corporate Counsel
  • Member, CommNexus
  • Member, CONNECT