Thomas A. James
“All human interactions are acts of translation; we seek to understand and be understood. Translating the thoughts and ideas of engineers and scientists is the core of what I do.”

Thomas A. JamesAssociate

Chicago
120 South LaSalle Street
Suite 2100
Chicago, IL 60603VCard
312.577.7000 
312.577.7007 fax
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Education

J.D., DePaul University College of Law, 2018
B.S., Electrical Engineering, University of North Dakota, 2010

Services

Technical Areas

Bar & Court Admissions

IllinoisU.S. Patent and Trademark OfficeU.S. District Court for the Northern District of IllinoisU.S. District Court for the Western District of Texas

Thomas A. James has a diverse IP practice with a particular focus on high-tech patent litigation and licensing. His experience includes litigating and monetizing patents in the semiconductor and telecommunications spaces, as well as conducting and overseeing pre-suit/pre-acquisition due diligence of patent portfolios. Tom also drafts responses and performs technical due diligence in patent post-issuance proceedings.

In addition, Tom prepares and prosecutes patent applications primarily related to the field of electrical engineering, advancing and protecting the value of the clients’ technologies. He also regularly conducts invalidity analysis.

Tom began his intellectual property law career at the U.S. Patent and Trademark Office where he served as a patent examiner in the field of electrical engineering for over four years. While there, he negotiated solutions to advance patentability and expedite prosecution of patent applications. After leaving the USPTO, Tom gained experience in the transactional IP space, where he helped advise clients regarding potential patent acquisitions and sales, identifying the strengths and weaknesses of their current patent portfolios.

Drawing on his electrical engineering background, Tom has served clients ranging from the individual inventor to Fortune 50 companies in a variety of industries and technologies, including these:

  • Semiconductors
  • Telecommunications
  • Computer software
  • Image analysis
  • Advanced automotive electronics
  • Streaming media
  • Biomedical technologies
  • E-commerce
  • RFID technologies
  • Fleet management
  • Watermarking and fingerprinting
  • Device connectivity


Tom’s experience at the USPTO, and previously as a teaching assistant helping undergraduates develop hardware and software solutions to engineering problems, honed his ability to effectively communicate complex technical information in easily understandable terms. Prior to passing the bar, Tom worked at Fitch Even as a licensed patent agent for over two years.



Currently supporting a worldwide licensing campaign in the telecommunications space. Enforcement actions related to this campaign are being adjudicated in China.

Represented a private company in the acquisition of a nationwide distributor of LED lighting products.

Brownmed, Inc. v. Medline Industries, Inc. (N.D. Iowa 2020). Member of team defending Medline in a patent infringement action.

Quartz Auto Technologies LLC v. Lyft, Inc. (W.D. Tex. 2020). Member of team representing Quartz in patent enforcement action related to ridesharing technologies.

Quartz Auto Technologies LLC v. Uber Technologies, Inc. (W.D. Tex. 2020–21). Member of team that represented Quartz in patent enforcement action related to ridesharing technologies. Settlement reached.

Quartz Auto Technologies LLC (PTAB 2020). Member of team representing Quartz in inter partes review proceedings related to ridesharing technologies.

Limestone Memory Systems LLC v. Micron Technology, Inc. et al. (C.D. Cal. 2015–20). Member of team that represented the plaintiff in enforcement actions related to DRAM memory design and implementation. Case settled shortly before trial.

Lone Star Silicon Innovations LLC v. Nanya Technology Corporation (N.D. Cal. 2016–20). Represented plaintiff in patent infringement action against Nanya Technology Corporation under multiple patents related to DRAM and NAND Flash memory and other large-scale integrated semiconductor devices. Actions against Micron, Toshiba, United Microelectronics Corporation, Renesas Electronics, Semiconductor Manufacturing International Corporation, and STMicroelectronics were resolved.

Voice2text LLC v. Mutare Inc.
(N.D. Ill. 2016). Member of team successfully defending Mutare from a patent infringement suit related to voice-to-text technology. Favorable settlement reached.

Pro Bono Cases

Craddock v. Pfister (N.D. Ill. 2017). Member of litigation team representing plaintiff in a Section 1983 action related to living conditions at an Illinois prison.

Martinez v. Walsh (N.D. Ill. 2018–21). Represented plaintiff in a Section 1983 action related to conditions of confinement for the purposes of settlement. Favorable settlement reached.

Martinez v. Dart (N.D. Ill. 2019–20). Represented plaintiff in a Section 1983 action related to healthcare for the purposes of settlement.

Presentations

  • “Trade Secrets Litigation at the ITC with ITC Judge Cameron Elliot,” Moderator, Intellectual Property Association of Chicago (IPLAC), April 8, 2021.
  • “Bill and Tabitha Make Decisions About Intellectual Property,” University of North Dakota College of Mines & Engineering, January 28, 2021.
  • "Trade Secret Misappropriation: When and How to Take Action,” with Joseph F. Marinelli, AIPLA Corporate Practice Committee, November 17, 2020.
  • “To Delete or Not to Delete? Minimizing the Landmines of Employees Who Bring Trade Secrets With Them,” AIPLA Corporate Practice Committee, September 29, 2020.
  • "Trade Secret Misappropriation: When and How to Take Action,” Fitch Even Webinar, with Joseph F. Marinelli, July 16, 2020.
  • “To Delete or Not to Delete? Minimizing the Landmines of Employees Who Bring Trade Secrets With Them,” Dallas Bar Association webinar, June 23, 2020.
  • "The Difficulties of Being Obvious: Practical Advice for Overcoming Obviousness Rejections," Fitch Even Webinar, with Stephen S. Favakeh, June 22, 2017.

Publications

  • Petti, Philip and Thomas A. James. “Trade Secrets: To Delete or Not to Delete.” Paper presented at the American Intellectual Property Law Association Spring Meeting, May 2020.
  • American Bar Association
    • Law Practice Division
    • Young Lawyers Division
  • American Intellectual Property Law Association
    • Patent Litigation Committee
      • Model Patent Jury Instructions Subcommittee
  • Intellectual Property Law Association of Chicago
    • Litigation Committee

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