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James R. Klaiber

Counsel

New York City

+1 (212) 837-6125

james.klaiber@hugheshubbard.com
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James R. Klaiber is counsel in the firm's Intellectual Property & Technology practice group. He focuses on all aspects of patent law, including litigation, transactions and client counseling, and offers particular education and experience in electrical and mechanical technologies. 

Prior to joining Hughes Hubbard, Jim was a Research Engineer at Bell Labs, where he was responsible for the evaluation and design of high-energy density battery subsystems for underwater fiber-optic cable amplifiers. As an attorney, he has handled licensing and litigation efforts involving rechargeable batteries for automotive applications and power-saving circuitry for semiconductor chips. He has counseled clients on intellectual property aspects of cryptocurrency and other blockchain technology applications, and submitted a comment on New York’s proposed “bitlicense” regulations on behalf of a well-known investor in that space.

Jim represents a wide range of clients, from startups to multinationals. He has played a leading role in many large patent litigation cases and has litigated patent cases before the U.S. District Courts, the International Trade Commission and the U.S. Court of Appeals for the Federal Circuit. His cases have involved:

  • wireless and optical fiber telecommunications
  • electronic securities exchanges and financial transaction software
  • semiconductor design and manufacture
  • medical electrodes and prosthetic devices
  • plasma screen and cathode ray tube displays

Professional Activities

  • Chair of the New York City Bar Association, Intellectual Property Council, 2019 – 2022
  • New York State Bar Association Mass Shooting Task Force, 2019 – Present
  • Super Lawyers, 2017
  • Chair of the New York City Bar Association's Patents Committee, 2013 – 2016
  • Recipient of a 2013 Burton Award for Legal Achievement 
  • Chapter chair, Massachusetts Institute of Technology Enterprise Forum of New York City, 2011 – 2013
  • MIT Enterprise Forum, New York City: Chapter Chair for 2011 – 2012 term; Director, 2006 – Present
  • Scientific advisory board member of the National Science Foundation's sensor science research program, a program administered by the University of Maine, 2005 – 2012
  • Member, American Bar Association
  • Member, New York Intellectual Property Law Association

Previous Experience

  • Partner, Pryor Cashman LLP, 2012 – 2015 
  • Special associate (2004 – 2011), associate (1998 – 2004), Milbank, Tweed, Hadley & McCloy LLP 
  • Associate (1996 – 1998), summer associate (1995), Morgan and Finnegan LLP
  • Member of technical staff, AT&T Bell Laboratories (now Alcatel-Lucent), Whippany and Murray Hill, NJ (1989 – 1996)
  • Member of the Silicon Photo-Lithography group, AT&T Engineering Research Center (now Alcatel-Lucent), Princeton, NJ (Summer 1987)

Highlighted Publications

  • Impacts of Covid-19 on Intellectual Property in Multiple Jurisdictions: United States, International Bar Association Intellectual Property and Entertainment Law Committee News, July 2020, with Dr. Lynn M. Russo and Hong P. Lee
  • "Lexmark Court to Address International Patent Exhaustion and Unauthorized Imports," New York Law Journal (Aug. 3, 2015) 
  • "Applying US Intellectual Property Law to 3D Printing," International Foundation for Art Research Journal 15, nos. 3 and 4 (December 2014): 63-66 
  • Co-author, "IP: Supreme Court to Determine Patentability of Software-Implemented Inventions," InsideCounsel (March 2014)
  • Co-author, "How Supreme Court's Medtronic Ruling May Impact Licenses," Law360 (February 2014)
  • Co-author, "IP Lessons from the Smartphone Wars with Recent Developments at the ITC," InsideCounsel (January 2014)
  • Co-author, "The Supreme Court's Latest Ruling on Copyright Law First-Sale Doctrine," Fashion Manuscript (May 2013)
  • Co-author, "Limiting E-Discovery in Intellectual Property Litigation: The International Trade Commission Follows a Warmly Welcomed Trend," Bloomberg BNA: Patent, Trademark & Copyright Journal (December 2012)
  • Co-author, "Diagnosing Patent Ineligibility: The Supreme Court's Mayo v. Prometheus Decision and Computer-Implemented Claims," Bloomberg BNA: Patent, Trademark & Copyright Journal (May 2012) 
  • "Uncovering Enhanced Trademark Protections In The NDAA," Law360 (March 2012) 
  • Co-author, "The Future of 'Hot News' Misappropriation after Barclays v. TheFlyOnTheWall.com," Intellectual Property & Technology Law Journal (February 2012)
  • Co-author, "Seeking Disapproval: Presidential Review of ITC Orders," Law360 (Nov. 10, 2011)
  • Co-author, "Stanford v. Roche: Reaffirming the Inventor's Role in Patent Ownership," Westlaw Journal Intellectual Property (Sept. 21, 2011)
  • Co-author, "Federal Circuit Review," The Lawyers, ILS Publications Inc., Japan (August 2011, September 2010, July 2009 and September 2008)
  • Co-author, "Prosecution Laches: Defining an Equitable Doctrine of Patent Un-enforceability," Bloomberg Law Reports (June 6, 2011)
  • Co-author, "ITC Intellectual Property Investigations: An Exception to the Bankruptcy Code's 'Automatic' Stay?" Bloomberg BNA: Bankruptcy Law Reporter (Dec. 9, 2010) and Patent, Trademark & Copyright Journal (Dec. 10, 2010)
  • Co-author, "Predicting the Future of Patent Misuse Remedies," Bloomberg BNA: Antitrust and Trade Regulation Report (Sept. 3, 2010)
  • Co-author, "Predicting the Future of Patent Enforcement in the Renewable Energy Field," Proceedings of the American Intellectual Property Law Association (AIPLA) (October 2009)
  • Co-author, "Patent Exhaustion After Quanta and TransCore: Protecting Your Right to Sue Third Parties," Bloomberg BNA: Patent, Trademark & Copyright Journal (Aug. 21, 2009)
  • Co-author, "Chapter IP: Protecting Your Intellectual Property When Your Licensee (or Licensor) is Bankrupt," The Deal (April 20, 2009)
  • "Re-examination Amendments Made for an Improper Purpose: A New Basis for Invalidity Under 35 U.S.C. §305," Intellectual Property Today (October 2008)

Speaking Engagements

  • "Thinking Inside the Black Box: AI Due Diligence in M&A Transactions,” Panelist, American Bar Association’s Business Law Section CLE Program, April 1, 2022
  • “Patent Litigation Fundamentals,” Presenter, New York City Bar Association Patents Committee, November 9, 2021 
  • “AI, Patents, and Secrecy Orders," Panelist, The American Bar Association Public Contract Law Section's IP Committee and the New York City Bar Association Council on Intellectual Property, October 28, 2021 
  • “An Introduction to Intellectual Property Law for the Small Law Firm Practitioners: When Might Your Client Have an IP Issue and How to Start to Think About It," New York City Bar Association Webcast, April 2021
  • “No Bucks, No Buck Rogers: Negotiating IP Rights under USG Contracts to AI and Other Emerging Technologies,” Panelist, New York City Bar Association Webcast, March 22, 2021
  • “Fashion and Retail in 2021 and Beyond: Post-COVID Reality and Where to Go From Here," New York City Bar Association’s Fashion Law Committee and Council on Intellectual Property, February 2021
  • “Into the Wild: Leveraging Nature’s Own Designs to Rapidly Innovate for the Future,” Panelist, MIT Enterprise Forum of New York City, December 10, 2020
  • “Patent Litigation Fundamentals," New York City Bar Association Patents Committee, October 2019
  • “State Sovereign Immunity for Intellectual Property and Allen v. Cooper: Status and Predictions” New York City Bar Association’s Art Law Committee, October 2019
  • “Through the Looking Glass: Software Patents for Entrepreneurs” New York City Bar and MIT Enterprise  Forum Panel Discussion, March 2019
  • “Patents and Tribal Sovereign Immunity” American Intellectual Property Law Association (AIPLA), January 2019
  • “Blockchain IP: Innovation and the Distributed Ledger Revolution,” Patents Committee of the New York City Bar Association and MIT Enterprise Forum of NYC, November 2018
  • “Indian Tribal Immunity from Patent Proceedings,” American Intellectual Property Law Association, November 2018
  • “Patent Office Post Grant Proceedings - Inter Partes Review (IPR),” Patents Committee of the New York City Bar Association, October 2018
  • “Protecting the Art in ‘Useful’ Objects” New York City Bar Association, May 2018
  • “Litigation – Uncertain Future: Implications of Supreme Court Jurisprudence on Inter Partes Review,” Practising Law Institute 2018: Critical Issues & Best Practices, April 2018
  • “So Sioux Me: Native American Tribal Immunity From PTAB Proceedings & District Court Litigations,” New York State Bar Association’s 141st Annual Meeting: Food, Drug & Cosmetic Law Section, February 2018
  • “Shh! The Secrets of Protecting Trade Secrets” New York City Bar Association Webcast, February 2018
  • "Patents, the Constitution and Sovereign Immunity" New York City Bar Association, December 2017
  • "Patent Litigation Fundamentals" Patents Committee of the New York City Bar Association, November 2017 - 2019
  • "Protecting Virtual Reality Inventions Using the U.S. Patent System" New York City Bar Association, December 2016
  • "History and Structure of the U.S. Patent System: How Did We Get Here?" New York City Bar CLE "Patents 101" Seminar, April 2016
  • "Patents for Entrepreneurs – Crown Jewels or Shiny Objects?" MIT Enterprise Forum of NYC, November 2015
  • "Basics of 3-D Printing and Some Recent Applications," Annual Meeting, New York Intellectual Property Law Association, May 2015
  • "Ethics Issues in US Patent Law: Rule 11 Sanctions, Inequitable Conduct, and Induced and Willful Infringement," New York City Bar Association (NYCBA), April 2015
  • "3-D Printing Meets the Arts: Reproduction and Authenticity," The Art Law Society of NYU Law, March 2015
  • "How the AIA and Recent Supreme Court and Other Decisions Have Altered the Non-Practicing Entity Playing Field," NYCBA, November 2014
  • "Applying US Intellectual Property Law to 3-D Printing," 3-D Printing: Infinite Possibilities and New Challenges for the Art World, the International Foundation for Art Research, New York, July 2014
  • Roundtable, "Tremors or Earthquakes: Federal Circuit and Supreme Court Patent Law Cases and Congressional Response 2013 – 2014," NYCBA, June 2014
  • "Intellectual Property Considerations in China: Doing Deals and Enforcing Your Rights," NYCBA, May 2013
  • "The History and Structure of the Patent System, Patent Law for Non-Patent Lawyers," NYCBA, March 2013
  • "Intellectual Property Basics For Inventors and Entrepreneurs: Protecting Your Invention and Your Business," Bio & Health Tech Entrepreneurship Lab NYC, New York, February 2013
  • "Roadmap to Cleantech Commercialization," MIT Enterprise Forum of New York City, October 2012
  • "How to Resolve Critical Software License Disputes 2012," Practising Law Institute, New York, June 2012
  • "Patents vs. Antitrust Laws in the 21st Century," NYCBA, June 2012
  • "Patents Committee Roundtable: Patent Act Section 101 and the Federal Courts – Is More the Reason for the Morass? Patent Eligible Subject Matter in the Wake of Bilski and Mayo," NYCBA, May 2012
  • "A New Age in Patent Liquidity: New Opportunities for Entrepreneurs," MIT Enterprise Forum of New York City, February 2012
  • "Patent-Eligible Subject Matter After Bilski: The Patent Reform Act (And Other Developments)," NYCBA Patents Committee, January 2012
  • "Implications of Stanford v. Roche for Inventors and the Proposed First-to-File Aspects of Patent Reform; Supreme Court Update," NYCBA Patents Committee, October 2011
  • "What's Next For Wireless Broadband," MIT Enterprise Forum of New York City, May 2011
  • "Protecting IP in US Government Contracts: Update on Stanford v. Roche," NYCBA Joint Patents, Copyright and Information Technology Committees, May 2011
  • "Intellectual Property Basics for Students, Inventors and Entrepreneurs: Protecting Your Invention and Your Business," Conrad Foundation Spirit of Innovation Series, April 2011
  • "Connected Healthcare: Wellness and Emerging Technology," MIT Enterprise Forum of New York City, November 2011
  • "Intellectual Property Due Diligence in Business Transactions: Patent Due Diligence," NYCBA Joint Trademark and Unfair Competition Committees, February 2010
  • "Predicting the Future of Patent Litigation in the Renewable Energy Field," American Intellectual Property Law Association (AIPLA) Annual Meeting, Washington, DC, October 2009
  • "Current Issues in Patent Practice: Prefiling Strategy," NYCBA Patents Committee, October 2009
  • "Protecting Process Inventions: The Leading Edge of Patentability," University of Maine Sensor Science Institute, June 2009

Court Admissions

  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the Southern District of New York
  • U.S. District Court for the Eastern District of New York
  • U.S. Patent & Trademark Office

Highlighted Matters

  • Stanacard v. Rubard: Representing the plaintiff patentee against a competitor accused of copying a calling-card software code
  • Pi-Net v. Citizens Financial Group: Representing the defendant bank against a non-practicing entity asserting patents alleged to cover all forms of online electronic banking transactions
  • TC Heartland v. Kraft Foods: Represented the plaintiff in winning a reversal of patent venue judgment; successfully convinced the Supreme Court to overturn decades of circuit precedent interpreting the patent venture statute
  • Bosch v. Costco: Represented the defendant 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.: Represented the defendant in defeating a petition seeking review of judgment awarding Smith & Nephew more than $85 million in damages for infringement of a patent disclosing a resilient suture anchor apparatus and methods for performing orthopedic surgery
  • Lohmann & Rauscher GmbH & Co. Kg v. Crawford Healthcare Inc.: Represented plaintiff in winning a final judgment and permanent injunction restraining Crawford Healthcare from importing, selling or using any wound-cleaning products that embody the inventions defined in plaintiff's "Wound Cleaning Assembly" patent
  • SEC v. Matthew T. Mellon II et al.: Represented the defendant, a billionaire cryptocurrency investor and banking heir, in the SEC's investigation of shareholder fraud by the board of Medient Studios Inc., and in successfully settling an SEC administrative proceeding, unrelated to the fraud, charging Mellon with violating securities laws by failing to timely report his receipt of Medient stock
  • Free-Flow Packaging International Inc. v. Automated Packaging Systems Inc.: Represented defendant in securing a dismissal, with prejudice, of all claims for alleged patent infringement
  • BASF Corp.v. SNF Holding Co.: Represented the defendant and co-defendants in the Federal Circuit's ruling that the case had been filed in an improper venue and finding that a BASF patent was invalid and dismissed, in its entirety, a civil action for alleged patent infringement that the plaintiff brought against SNF and several affiliates
  • Google v. Oracle: Filed a brief for IBM and Red Hat in Google LLC v. Oracle America, Inc.
  • Cheetah Omni v. Fujitsu Network Communications: Represented the defendant telecommunications equipment manufacturer sued by a non-practicing entity patent holder
  • Advanced Technology Incubator v. Sharp et al.: Represented the defendant and LCD display manufacturer Dai Nippon Printing in a multi-defendant case brought by a non-practicing entity 
  • Renesas v. Samsung: Represented the semiconductor manufacturer patentee in US District Court and parallel International Trade Centre proceedings against a competitor
  • Papyrus Technologies v. New York Stock Exchange: Represented the leading financial exchange against a non-practicing entity; summary judgment on invalidity for obviousness affirmed by the US Court of Appeals for the Federal Circuit
  • Southwestern Bell et al. v. Arthur A. Collins Inc.: Represented the declaratory judgment plaintiff Fujitsu Network Communications; summary judgment of invalidity affirmed by the Federal Circuit
COVID-19 Impact on Intellectual Property Filings and Proceedings
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Education
  • Fordham University School of Law, J.D., 1996
  • University of California, Berkeley, M.Eng., Mechanical Engineering, 1989
  • University of Michigan, M.S., Mechanical Engineering, 1987
  • Massachusetts Institute of Technology, B.S., 1986
Bar Admissions
  • New York
Areas of Focus
Data Privacy & Cybersecurity
Digital Assets and Blockchain
Environmental, Social & Governance (ESG)
Intellectual Property & Technology
Life Sciences
Litigation
Renewable Energy

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