James W. Dabney

James W. Dabney is co-head of the firm’s Intellectual Property and Technology practice group.  He specializes in contentious matters involving patents and other forms of intellectual property. Jim is also an Adjunct Professor of Law at Cornell Law School and a Life Member of the American Law Institute.

Articles

• "Broadening Judicial Review of Patent Grants," New York Law Journal, Jan. 20, 2009
• "KSR: It Was Not a Ghost," 24 Santa Clara Computer and High Tech Law Journal 131 (2007)

• TC Heartland v. Kraft Foods, No 16-341 (2017). Lead counsel for TC Heartland in winning reversal of patent venue judgment; successfully urged the Supreme Court to overturn decades of circuit precedent interpreting the patent venue statute, 28 U.S.C. § 1400(b).
• Already v. Nike, 568 U.S. 85 (2013). Lead counsel for Already in winning dismissal with prejudice of all claims for alleged infringement of purported trademark in athletic shoe configuration; successfully urged the Supreme Court to overturn decades of circuit precedent interpreting Article III post-commencement mootness doctrine.
• KSR v. Teleflex, 550 U.S. 398 (2007). Lead counsel for KSR in winning dismissal of all claims for alleged infringement of three patents claiming vehicle control pedal apparatus; successfully urged the Supreme Court to overturn decades circuit precedent interpreting the non-obvious subject matter condition for patentability prescribed in 35 U.S.C. § 103(a).
• Holmes v. Vornado, 535 U.S. 826 (2002). Lead counsel for Holmes in winning dismissal of all claims for alleged infringement of “trade dress” and patent claiming ducted fan apparatus; successfully urged the Supreme Court to overturn 12-year old circuit precedent interpreting 28 U.S.C. § 1295(a).
• Bosch v. Costco, 171 F. Supp. 3d 283 (D. Del. 2016). Lead counsel for Costco in winning summary judgment dismissing claims that Costco’s sale of “hybrid” wiper products allegedly infringed four Bosch patents; also won six parallel IPR proceedings holding asserted claims invalid.
• Arthrex Inc. v. Smith & Nephew Inc., No. 13-290 (U.S. Dec. 9, 2013). Lead counsel for Smith & Nephew in defeating a petition seeking review of judgment awarding Smith & Nephew more than $85 million in damages for infringement of patent disclosing a resilient suture anchor apparatus and methods for performing orthopedic surgery.
• Pregis v. Kappos, No.09-467 (E.D. Va. Aug. 10, 2010), aff’d, 700 F.3d 1348 (Fed. Cir. 2012). Lead counsel for Pregis in winning jury trial and dismissal of claims for alleged infringement of four patents claiming air pillow packaging machinery and films; all 23 asserted claims held invalid for obviousness, not infringed, or both.
• Rosenruist-Gestao e Servicos LDA v. Virgin Enters. Ltd., 511 F.3d 437 (4th Cir. 2007), cert. denied, 553 U.S. 1065 (2008).  Lead counsel for Virgin Enterprises in winning reversal of district court decision interpreting 35 U.S.C. § 24 and successfully opposing registration of VIRGIN GORDA as a purported trademark for clothing items; non-United States applicant held required to appear for in-person deposition in the United States.
• AB Electrolux v. Bermil, 481 F. Supp. 2d 325 (S.D.N.Y. 2007).  Lead counsel for Electrolux in winning TRO and preliminary injunction against exclusive distributor’s unauthorized use of trademark that was deceptively similar to an Electrolux-owned trademark for professional laundry equipment supplied to the distributor; case later settled.
• eSpeed, Inc. v. BrokerTec USA, LLC, 404 F. Supp. 2d 575 (D. Del. 2005), aff’d, 480 F.3d 1129 (Fed. Cir. 2007).  Lead counsel for BrokerTec in defeating application for preliminary injunction, obtaining dismissal of non-United States parent entity on jurisdictional grounds, and winning patent jury trial and dismissal of claims seeking more than $100 million for alleged infringement of patent claiming electronic trading methods; all four asserted claims held invalid for insufficient written description and unenforceable by reason of inequitable conduct.
• WE Media v. General Electric, 223 F. Supp. 3d 463 (S.D.N.Y. 2002), aff’d, 94 F. App’x 29 (2d Cir. 2004).  Lead counsel for Cablevision and co-defendants in winning summary judgment dismissing all claims for alleged trademark infringement  and related torts arising from re-branding of WE pay television network.