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.
Professional Activities
Adjunct Professor of Law, Cornell Law School
Member, American Law Institute
Member, American Bar Association (Sections of Antitrust Law, Business Law, Litigation and Intellectual Property Law)
Member, New York State Bar Association (Section of Intellectual Property Law)
Member, Association of the Bar of the City of New York (Patents Committee)
Member, William C. Conner Inn of Court
Panelist, World Intellectual Property Organization
Previous Experience
Law clerk to the Hon. James C. Hill, United States Court of Appeals for the 5th Circuit in Atlanta, Georgia
Partner, Fried Frank, 2003 – 2014
Partner, Pennie & Edmonds LLP, 1989 – 2003
Recognition
Recognized by The National Law Journal in 2016 and 2017 as an “IP Trailblazer”
Selected by peers for inclusion in 2017 edition of The Best Lawyers in America publication
Elected to membership in the American Law Institute at the age of 38
Recognized by Chambers USA as a leading individual in Intellectual Property: Patents
Recognized by Benchmark: Litigation as a National Litigation Star and a New York Litigation Star
AV Preeminent 5 out of 5 ranking in Martindale-Hubbell Peer Review Rating
Recognized by US News/Best Lawyers as a leading individual in the field of intellectual property law
Recognized by Super Lawyers as a leading individual in the fields of intellectual property litigation and business litigation
Highlighted Publications
Book
KSR: An Insider’s Perspective, Amazon Digital Services, July 2012. (KSR v. Teleflex is the groundbreaking case in which Jim served as arguing counsel for the prevailing defendant/petitioner in the Supreme Court of the United States and in both lower courts, winning reversal of a Federal Circuit decision and obtaining summary judgment of patent invalidity. This e-book discusses KSR in the context of the important lessons for the cost-effective handling of patent litigation in general.)
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)
Court Admissions
New York
New Jersey
Numerous Circuit and Federal District Courts throughout the country
Supreme Court of the United States
Highlighted Matters
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.
