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.

James 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's Patents Committee
Chapter chair, Massachusetts Institute of Technology Enterprise Forum of New York City, 2011 – 2013
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
Recipient of a 2013 Burton Award for Legal Achievement

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

"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

"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 Virtual Reality Inventions Using the U.S. Patent System" New York City Bar Association, December 2016
"Patent Litigation Fundamentals" Patents Committee of the New York City Bar Association, November 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
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