MyHHR News Locations
EN | FR
Practices
People
Careers
Associate Recruiting Working At HHR Available Positions
Culture
About Us Diversity Pro Bono
Practices
People
Careers
Associate Recruiting Working At HHR Available Positions
Culture
About Us Diversity Pro Bono
MyHHR News Locations
EN | FR
Practices
People
News
View All Results >

James W. Dabney

Of Counsel

New York City

+1 (212) 837-6803

james.dabney@hugheshubbard.com
Download V Card
 
Saved To MyHHR

“James W. Dabney”

General Folder

View MyHHR
Share/Print
Email Print
   
Biography
Selected Matters
Client Advisories
News

James W. Dabney is 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.
UPDATE - COVID-19 Impact on IP Owners and Litigants in France and the EU – Deadlines, Extensions and Operations of Courts and IP Offices - Update as of June 12, 2020
Client Advisories
View News Article
L’impact du Covid-19 sur les titulaires de droits de propriété intellectuelle et les parties a des litiges de propriété intellectuelle en France et dans l’UE - délais, prorogations et fonctionnement des tribunaux et offices de propriété intellectuelle
Client Advisories
View News Article
COVID-19 Impact on Intellectual Property Filings and Proceedings
Client Advisories
View News Article

News

HHR Attorneys Included in Inaugural Lawdragon 500 Leading Litigators in America Guide
News & Events |
Awards
View News Article
Hughes Hubbard Strengthens IP Practice with Addition of Leading Litigator Andrew Kopsidas
News & Events |
People
View News Article
Hughes Hubbard Wins Dismissal of Trademark Suit for Grocery Wholesaler
News & Events
View News Article
Litigation Wrap: Third Quarter 2021
News & Events |
Awards |
People
View News Article
Hughes Hubbard Assists Cantor Fitzgerald SPAC in Proposed Merger With AEye
News & Events |
Deals & Matters
View News Article
Litigation Wrap: Second Half 2020
News & Events |
Awards |
Pro Bono
View News Article
Firm Leads Cantor Fitzgerald SPAC in Merger With View
News & Events |
Deals & Matters
View News Article
Litigation Wrap: Third Quarter 2019
News & Events |
Awards |
Deals & Matters
View News Article
Litigation Wrap: Second Quarter 2019
News & Events |
Awards |
Deals & Matters
View News Article
In Law360's Weekly Verdict: Firm Named Legal Lions
Articles & Press
View News Article
In Law360: One Sentence Ends Amgen Blockbuster's Reign, Judge Says
Articles & Press |
Deals & Matters
View News Article
Litigation Wrap: First Quarter 2019
News & Events |
Awards |
Deals & Matters |
Pro Bono
View News Article
Litigation Wrap: Fourth Quarter 2018
News & Events |
Awards |
Deals & Matters |
People
View News Article
Litigation Wrap: Third Quarter 2018
News & Events |
Awards |
Deals & Matters |
Event Recap |
Pro Bono
View News Article
Litigation Wrap: Second Quarter 2018
News & Events |
Awards |
Deals & Matters
View News Article
Litigation Wrap: First Quarter 2018
News & Events |
Awards |
Deals & Matters |
People
View News Article
Hughes Hubbard Wins Multiple Honors at 2018 Americas IP Awards
News & Events |
Awards
View News Article
Intellectual Property Team Named Among Law360 Practice Groups of the Year
Articles & Press |
Awards
View News Article
Litigation Wrap: Fourth Quarter 2017
News & Events |
Awards |
Deals & Matters |
People
View News Article
Firm Wins Venue Transfer Order in SNF Patent Case
News & Events |
Deals & Matters
View News Article
Jim Dabney Selected as One of Law360's 2017 MVPs
Articles & Press
View News Article
Hughes Hubbard Named to National Law Journal’s Appellate Hot List
News & Events |
Awards
View News Article
Hughes Hubbard Wins Permanent Ban on Sale of L&R Rival's Medical Device
News & Events |
Deals & Matters
View News Article
In Law360: TC Heartland And Its Aftermath - A Litigant’s View
Articles & Press
View News Article
Litigation Wrap: Second Quarter 2017
News & Events |
Awards |
Deals & Matters
View News Article
Jim Dabney of Hughes Hubbard Named to the National Law Journal's 2017 IP Trailblazers List
News & Events |
Awards
View News Article
Jim Dabney Featured in Bloomberg Q&A on Supreme Court Patent Victory
News & Events
View News Article
In Law360: James Dabney: Defender Of Supreme Court Patent Precedent
Articles & Press
View News Article
In Law360's Weekly Verdict: Firm Named Legal Lions 2017
Articles & Press
View News Article
Hughes Hubbard Wins Unanimous Supreme Court Decision in Patent Venue Case
News & Events |
Deals & Matters
View News Article
Firm Argues Patent Venue Case Before Supreme Court
News & Events |
Deals & Matters
View News Article
Litigation Roundup: Fourth Quarter 2016
News & Events |
Deals & Matters
View News Article
In Managing Intellectual Property: How patent case venue rules could change in TC Heartland
Articles & Press
View News Article
Hughes Hubbard Takes Patent Venue Reform to the Supreme Court
News & Events
View News Article
Hughes Hubbard Practice Leader Named 2016 'Intellectual Property Trailblazer' By The National Law Journal
News & Events
View News Article
Firm Wins Patent Infringement Jury Trial for France Telecom
News & Events |
Deals & Matters
View News Article
Firm Deepens Patent Litigation Team with Partners James W. Dabney and Stephen S. Rabinowitz
News & Events |
People
View News Article
Education
  • Cornell Law School, J.D., 1979, magna cum laude, Order of the Coif , Board of Editors, Cornell Law Review
  • Harvard University, B.A., 1976, magna cum laude
Bar Admissions
  • New Jersey
  • New York
Areas of Focus
Appellate
Asia Pacific
Intellectual Property & Technology
Life Sciences
Litigation
Meet James Dabney

Hughes Hubbard & Reed LLP

Copyright 2023


Legal Notices & Methodologies Attorney Advertising Sitemap
  • Locations
  • New York City
  • Kansas City
  • Los Angeles
  • Miami
  • Paris
  • Rio de Janeiro*
  • Tokyo
  • Washington, D.C.

*In cooperation with Saud Advogados

Privacy Policies and Notices

Careers
Associate Recruiting Working At HHR Available Positions
Culture
About Us Diversity Pro Bono
Contact