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James J. Thomson

Associate

[email protected]

+1.617.348.3098

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James is an experienced intellectual property litigator with significant courtroom and trial experience in federal court and at the International Trade Commission. He handles all aspects of litigation, including e-discovery, motion practice, taking and defending depositions, and trial preparation. He has particular experience handling damages assessments involving complex technologies.

James represents clients in patent and trademark infringement cases and in trade secrets matters, with a focus on high technology innovations. He also has experience representing clients in the biotechnology, pharmaceutical, and medical device industries.  

Earlier James served as in-house counsel to one of the nation’s largest privately held real estate investment and property management companies. He advised the organization on litigation matters, asset purchases, real estate sales, and contract negotiations.

During law school, James was an articles editor on the Connecticut Journal of International Law. He also served as a judicial intern to the Honorable Alfred V. Covello in the US District Court for the District of Connecticut and held two internships with a Fortune 50 company.

After completing his undergraduate program, James worked in the complex litigation and controversy group at a large law firm, where he supported trial teams in disputes over blockbuster drugs, billion-dollar cellphone technology, and landmark intellectual property and pro bono matters.

viewpoints

To date, the Unified Patent Court (UPC) has not held a trial involving standard-essential patents (SEPs). However, the new forum’s Mannheim Local Division has now authored its first SEP-specific order in a case between Panasonic and Xiaomi

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On April 17, 2024, a second Texas jury assessed damages of $142 million against Samsung, more than doubling a previous jury award of $67.5 in a protracted standard essential patent (SEP) litigation brought by G+ Communications. 

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The UK has again demonstrated the ongoing trend against hold-out, approving an order forcing Apple to commit to take a license on FRAND terms, to be determined by the court, or face an injunction. This ruling is the latest in a line of decisions favorable to SEP holders across Europe and the United States that seem to be retilting SEP licensing towards more balance between innovators (patent owners) and implementers (alleged infringers). While there is more progress to be made, and the recognition of hold-out as a real problem continues to gain traction, this new UK decision reinforces basic principles of patent law: injunctions for SEPs are a real possibility.

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Avanci’s pool retains its 5th Circuit win, in a slightly different way, after an unusual turn of events where the panel rescinded its prior opinion and issued a new one. The new opinion  affirms the district court’s ruling that Continental failed to state a claim under the Sherman Act (antitrust laws) thereby dismissing the case.  The original opinion found that Continental lacked standing to pursue its claims because it was not a third party beneficiary of the standard setting organization contract. Although the new ruling leaves some questions unanswered in the long-running dispute between a would-be implementer (Continental) and holders of standard essential patents (SEPs), the opinion rejects applying the antitrust laws in the SEP/FRAND context.

 
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On June 8, 2022, the DOJ, USPTO, and the National Institute of Standards and Technology (NIST) (collectively, the Agencies) issued a new statement on FRAND licensing (2022 Statement) providing no set policy regarding Standards Essential Patents (SEPs), which should inure to the benefit of patent owners. By issuing this statement and declining to adopt their 2021 Draft Policy (2021 Draft Policy), the Agencies effectively neutralized their policy on SEP licensing and provide no guidance to parties in SEP licensing discussions. Even with no guidance, however, the Agencies are reserving the right to police negotiations and prosecute opportunistic behavior by either side in a case-by-case basis, creating a circumstance where negotiators may not know if they are raising the Agencies’ ire. Though knowledge of the evolving multinational case law related to SEP license negotiation provides reasonable understanding of the necessary procedure. 

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In two recent decisions, both issued on February 4, 2022, the United States Court of Appeals for the Federal Circuit (the “CAFC”) erased two huge patent damages awards because the underlying expert opinion on damages was untethered to the specific facts of each case.
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In its analysis of Cont’l Auto. Sys., Inc. v. Avanci, L.L.C.,, the Fifth Circuit made several interesting findings: (1) that potential pass-through non-FRAND royalties are too speculative to create an injury in fact; (2) that SEP holders can fulfill their obligations to SSOs, with respect to suppliers, by actively licensing SEPs to downstream OEMs; and (3) that not all implementers are intended beneficiaries entitled to FRAND licenses.
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The DOJ is requesting public comment on a new draft policy concerning licensing negotiations and remedies for standards-essential patents (SEPs) subject to voluntary F/RAND commitments recently jointly issued by the U.S. Patent & Trademark Office (USPTO), the National Institute of Standards and Technology (NIST), and the U.S. Department of Justice, Antitrust Division (DOJ)(collectively, “the Agencies”).  The Agencies have requested comment on eleven questions until the comment period closes January 5, 2022.
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Recent developments indicate that the UK is a favorable jurisdiction that owners of standard essential patents (“SEP”) can leverage to obtain appropriate SEP rates from what would otherwise be unwilling licensees. Demonstrating the point, a recent order from Justice Meade of the High Court in the sprawling Pan Optis/Unwired Planet SEP dispute with Apple provides an outline to the UK’s approach to handling SEP implementers who are unwilling to commit to court-determined FRAND licenses.
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News & Press

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Mintz Member and Chair of the Firm’s Intellectual Property Division Michael Renaud and Associate James Thomson were quoted in an article published by IPWatchdog discussing the recently released text of the “Restoring America Invents Act”, which would essentially end discretionary denial practice under precedential Patent Trial and Appeal Board (PTAB) cases and limit denial to petitions where “the same or substantially the same prior art or arguments previously were presented to the Office,” among other changes.
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Involvement

  • Member, American Bar Association
  • Member, Boston Intellectual Property Law Association
  • Member, Massachusetts Bar Association
  • Member of the Young Lawyer’s Editorial Board, The American Lawyer
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