A. James Isbester

Partner
Services: Litigation; Patent Litigation; Intellectual Property; Trademark & Trade Dress Litigation; Transactional Intellectual Property; Trade Secret; Alternative Dispute Resolution; Intellectual Property Litigation; Licensing & Procurement; Mergers & Acquisitions

James Isbester has been advising and representing clients in intellectual property and technology-related matters since 1987. Although his clients span the business world, most of his work is on behalf of high technology and medical device companies.

Mr. Isbester has represented both plaintiffs and defendants in jury trials, bench trials, various state and federal courts of appeal, and arbitrations. As a member of the Northern District of California’s panel of court-appointed mediators, Mr. Isbester has conducted mediations in more than three dozen patent, trademark, copyright and trade secret disputes. In addition to his work in the courts, Mr. Isbester is active in advising clients in mergers, acquisitions, new product introductions, and initial public offerings. Mr. Isbester frequently assists his clients avoid litigation through effective licensing efforts on behalf of both the IP owner and the licensee.

Mr. Isbester was recognized as a Northern California “Super Lawyer” in 2011 and 2012 for Intellectual Property Litigation and in 2013 and 2014 for Intellectual Property by Super Lawyers magazine and he is AV® rated by Martindale-Hubbell.*

*CV, BV, and AV are registered certification marks of Reed Elsevier Properties Inc., used in accordance with the Martindale-Hubbell certification procedure’s standards and policies.

Professional Organizations

American Bar Association, Member

Litigation Counsel of America, Member

Editorial Advisory Board, MX Update, Member

Advisory Council, IP Osgoode, Member

Education

Osgoode Hall Law School, LL.B. (1987)

University of California, Davis School of Law (1987)

Princeton University, B.S.E., Chemical Engineering (1983)

Bar Admissions

California

Washington

District of Columbia

Admissions

U.S. Patent and Trademark Office

U.S. District Courts for all Districts of California

U.S. District Court for the Western District of Michigan

U.S. District Court for the Eastern District of Texas

U.S. Court of Appeals for the Federal Circuit

U.S. Court of Appeals for the Ninth Circuit

Fujifilm Corporation v. Motorola Mobility LLC

Defended Motorola against Fujifilm’s assertion of five patents relating to digital cameras and the transmission of files through a cell phone. After summary judgment and a two week jury trial in San Francisco, Motorola prevailed on four of the five patents (proving two of the patents invalid and not infringed, one patent not infringed, and one patent invalid), limited damages on the fifth patent to less than 1/25th of plaintiff’s request, and excluded injunctive relief. The case is currently on appeal.

Fujifilm Corporation v. Motorola Mobility LLC, No. 3:12-cv-3587 (N.D. Cal. filed July 10, 2012).

Medtronic v. Edwards Lifesciences

Represented Edwards, the company that first developed prosthetic replacement heart valves, against Medtronic’s assertion of four patents related to mitral and aortic surgically implanted prosthetic valves and intra-aortic filters. Edwards counterclaimed for infringement of Edwards’ own patents in the area of annuloplasty – the surgical construction of diseased heart valves – and related products. Furthermore, the team initiated inter partes and ex parte reexaminations of five relevant Medtronic patents, successfully winning cancellation of all asserted claims in four of those reexaminations and dramatically narrowing the claims in the fifth. The case was resolved while Edwards’ motions for summary judgment of non-infringement were pending, as part of a global settlement between Medtronic and Edwards involving cross-licenses and Medtronic’s payment to Edwards of approximately $1 billion dollars.

Medtronic, Inc. et al. v. Edwards Lifesciences Corp, et al., No. 11-cv-01650 (D. Minn. filed June 24, 2011).

Open Text v. Alfresco

The firm served as lead counsel on behalf of Alfresco Software in a lawsuit involving allegations of patent infringement related to content management systems. The lawsuit involved nine patents from two distinct families of patents, each covering different subject matter. After successfully transferring the case from the Eastern District of Virginia to the Northern District of California, Alfresco invalidated two of the asserted patents at the 12(b)(6) stage under the Supreme Court’s Alice standard for patentable subject matter under 35 U.S.C. 101. The remainder of the case was settled shortly thereafter on confidential terms.

Open Text SA v. Alfresco Software Ltd., et al., 13-cv-04843 JD (N. D. Cal., filed October 18, 2013).

Comarco and ACCO

Led a team defending ACCO Brands USA and its subsidiary Kensington Microware against allegations that its universal laptop power supplies infringed Comarco’s patents. An aggressive strategy that used both a declaratory relief complaint and inter partes review, coupled with successful claim construction and summary judgment motions substantially reduced the value of Comarco’s claims. ACCO was then able to obtain releases and licenses with a payment of only $200,000.

ACCO Brands USA, LLC v. Comarco Wireless Technologies, Inc. Case No. C-11-03478 RS (N. D. Cal., filed September 1, 2011).

Abbott Medical Optics (fka Advanced Medical Optics) v. Alcon

Represented Abbott Medical Optics (AMO, fka Advanced Medical Optics), a supplier of advanced refractive technologies, as plaintiff in one action and as defendant in three other related actions and in reexamination of patents involving ophthalmic surgical products. Case settled with payment to AMO of $121 million and cross-licenses after AMO obtained jury verdict of infringement and judgment of $235 million and invalidated two of Alcon’s patents in reexamination.

Advanced Medical Optics, Inc. v. Alcon Inc., No. CIV.A. 03-1095-KAJ (D. Del., filed December 3, 2003)

Contract litigation for Taiwanese computer/NB manufacturer

Represented a Taiwanese computer/NB manufacturer in a contract related action before a U.S. District Court in California.

Video Enhancement Solutions v. Epson America

Represented Epson America Inc. as defendant in a patent infringement case related to the reduction of blocking artifacts in video displays. Succeeded in transferring case from the Eastern District of Texas to the Central District of California. The case settled soon after the transfer.

Video Enhancement Solutions, LLC. v. Denon Electronics (USA), LLC. et al., 2:10-cv-04370 (C.D. Cal. filed June 14, 2010).

In re Maxim Integrated Products Inc. MDL

Defended Union Bank, N.A. and Wells Fargo involving numerous patents relating to the security and encryption asserted against mobile banking apps. The cases, along with many others, were consolidated in multi-district litigation in the Western District of Pennsylvania. Obtained early settlements for both clients at less than cost of defense.

Maxim Integrated Prod. Inc. v. Union Bank N.A., No. 12-882 (W.D. Pa. filed June 27, 2012); Maxim Integrated Prod. Inc. v. Wells Fargo & Co., Case 4:12-cv-00623-RAS (E.D. Tx, filed October 1, 2012).

TecSec Inc. v. Oracle Corporation, et al.

Represents Oracle Corporation and Oracle America, Inc. in a patent infringement litigation in the Eastern District of Virginia. The plaintiff asserted 11 patents related to encryption and network hardware technology against Oracle and several other defendants. In connection with defending Oracle, we performed significant analysis of the network hardware and WSS and OASIS security standards at issue and encryption prior art. The case against Oracle is currently stayed.

TecSec, Inc. v. IBM Corp., et al., No. 1:10-cv-115 (E.D. Va, filed Feb. 5, 2010).

Lochner Technologies LLC v. Lenovo (United States) Inc., Hitachi America Ltd et al.

Represented Hitachi America Ltd. in a patent infringement action on a patent related to modular computer systems. We were successful in settling the case on behalf of Hitachi America Ltd., very early in the case, with no financial recovery for the plaintiff.

Lochner Technologies, LLC v. Lenovo (United States) Inc., et al., No. 10-00430 (E.D. Tex. filed October 12, 2010).

Surety v. Entrust

Co-counsel for defendant Canadian data security company accused of infringing patent relating to encryption techniques used in creating verifiable time stamps. Conducted the liability-related examinations at trial. Won jury verdict of patent invalidity.

Surety Technologies Inc. v. Entrust Technologies Inc., 1:99-cv-00203-TSE (E.D. Va, filed February 2, 1999).

Resonate Inc. v. Nortel Networks Corporation

Lead counsel for Alteon Web Systems, which was acquired by Nortel Networks, in patent infringement action relating to switching in large Internet server sites. Won summary judgment of non-infringement. On appeal, certain claim terms were redefined and the matter remanded. Won a second motion for summary judgment, affirmed on appeal.

Resonate Inc. v. Alteon Web Systems, et al, 4:00-cv-03307-CW (N. D. Cal., filed September 12, 2000).

Molecular Probes v. Texas Fluorescence Laboratories

Lead counsel for plaintiff in patent infringement case involving fluorinated xanthene fluorophores. After district court accepted our client’s position on all disputed claim terms, the defendant took a license and the parties settled.

Molecular Probes, Inc. v. Texas Fluorescence Laboratories, Inc., 3:02-cv-00461-SI (N. D. Cal., filed January 25, 2002)

Pulse-Link Inc. v. Tzero Technologies Inc.

Represented Tzero Technologies in patent infringement actions relating to ultra wideband communications technologies. The case settled following discovery.

Schreiber Foods Inc. v. Saputo Cheese Inc.

Lead counsel for food products company accused of infringing U.S. patent relating to enzymes used in cheese manufacture. Won summary judgment of non-infringement.

Diligence in IP: Yahoo as a Case Study, A Practical Overview, 2016 Patent Law Forum, October 28, 2016, Tokyo, Japan

Diligence in IP: Yahoo as a Case Study, A Practical Overview, Intellectual Property Law Seminar, October 25, 2016, Shanghai, China

Defending Against NPEs: Updates to Case Law and Strategies, December 2013

Defending Against the NPE, August 2011

Updates on Patent Reform 2011, March 2011

Exploring the Changing Patent Litigation Landscape, October 2010

Early Case Evaluation and Pre-Litigation Counseling, August 2010

What Bilski Means for E-Commerce Patents, July 2010

Trade Secrets: Cost Effective Protection for Valuable Business Information, June 2009

The Ethics of IP Litigation, April 2009

Preventatives and Alternatives in IP Disputes – A View of IP Litigation from an Expert Witness and Neutral, December 2008

National Standards for Patentability, October 2007

As the Supreme Shake Up The Patent World, New Strategies Emerge, July 2007

Issues in International IP Management, April 2007

The Uncomfortable Role of the Advocate in Claim Construction, January 2007

Negotiating Licenses Under The Threat Of Litigation, December 2006

“Congress Is Considering Big Patent System Change,” San Francisco Business Times, April 2011

“Selecting A Forum From Among The District Courts and The International Trade Commission,” Practicing Law Institute, Patent Litigation 2010, November 2010

“A Patently Good Idea,” MX: Medtech Executive, August 2010

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James Isbester has been advising and representing clients in intellectual property and technology-related matters since 1987. Although his clients span the business world, most of his work is on behalf of high technology and medical device companies.

Mr. Isbester has represented both plaintiffs and defendants in jury trials, bench trials, various state and federal courts of appeal, and arbitrations. As a member of the Northern District of California’s panel of court-appointed mediators, Mr. Isbester has conducted mediations in more than three dozen patent, trademark, copyright and trade secret disputes. In addition to his work in the courts, Mr. Isbester is active in advising clients in mergers, acquisitions, new product introductions, and initial public offerings. Mr. Isbester frequently assists his clients avoid litigation through effective licensing efforts on behalf of both the IP owner and the licensee.

Mr. Isbester was recognized as a Northern California “Super Lawyer” in 2011 and 2012 for Intellectual Property Litigation and in 2013 and 2014 for Intellectual Property by Super Lawyers magazine and he is AV® rated by Martindale-Hubbell.*

*CV, BV, and AV are registered certification marks of Reed Elsevier Properties Inc., used in accordance with the Martindale-Hubbell certification procedure’s standards and policies.

Professional Organizations

American Bar Association, Member

Litigation Counsel of America, Member

Editorial Advisory Board, MX Update, Member

Advisory Council, IP Osgoode, Member

Education

Osgoode Hall Law School, LL.B. (1987)

University of California, Davis School of Law (1987)

Princeton University, B.S.E., Chemical Engineering (1983)

Bar Admissions

California

Washington

District of Columbia

Admissions

U.S. Patent and Trademark Office

U.S. District Courts for all Districts of California

U.S. District Court for the Western District of Michigan

U.S. District Court for the Eastern District of Texas

U.S. Court of Appeals for the Federal Circuit

U.S. Court of Appeals for the Ninth Circuit

Fujifilm Corporation v. Motorola Mobility LLC

Defended Motorola against Fujifilm’s assertion of five patents relating to digital cameras and the transmission of files through a cell phone. After summary judgment and a two week jury trial in San Francisco, Motorola prevailed on four of the five patents (proving two of the patents invalid and not infringed, one patent not infringed, and one patent invalid), limited damages on the fifth patent to less than 1/25th of plaintiff’s request, and excluded injunctive relief. The case is currently on appeal.

Fujifilm Corporation v. Motorola Mobility LLC, No. 3:12-cv-3587 (N.D. Cal. filed July 10, 2012).

Medtronic v. Edwards Lifesciences

Represented Edwards, the company that first developed prosthetic replacement heart valves, against Medtronic’s assertion of four patents related to mitral and aortic surgically implanted prosthetic valves and intra-aortic filters. Edwards counterclaimed for infringement of Edwards’ own patents in the area of annuloplasty – the surgical construction of diseased heart valves – and related products. Furthermore, the team initiated inter partes and ex parte reexaminations of five relevant Medtronic patents, successfully winning cancellation of all asserted claims in four of those reexaminations and dramatically narrowing the claims in the fifth. The case was resolved while Edwards’ motions for summary judgment of non-infringement were pending, as part of a global settlement between Medtronic and Edwards involving cross-licenses and Medtronic’s payment to Edwards of approximately $1 billion dollars.

Medtronic, Inc. et al. v. Edwards Lifesciences Corp, et al., No. 11-cv-01650 (D. Minn. filed June 24, 2011).

Open Text v. Alfresco

The firm served as lead counsel on behalf of Alfresco Software in a lawsuit involving allegations of patent infringement related to content management systems. The lawsuit involved nine patents from two distinct families of patents, each covering different subject matter. After successfully transferring the case from the Eastern District of Virginia to the Northern District of California, Alfresco invalidated two of the asserted patents at the 12(b)(6) stage under the Supreme Court’s Alice standard for patentable subject matter under 35 U.S.C. 101. The remainder of the case was settled shortly thereafter on confidential terms.

Open Text SA v. Alfresco Software Ltd., et al., 13-cv-04843 JD (N. D. Cal., filed October 18, 2013).

Comarco and ACCO

Led a team defending ACCO Brands USA and its subsidiary Kensington Microware against allegations that its universal laptop power supplies infringed Comarco’s patents. An aggressive strategy that used both a declaratory relief complaint and inter partes review, coupled with successful claim construction and summary judgment motions substantially reduced the value of Comarco’s claims. ACCO was then able to obtain releases and licenses with a payment of only $200,000.

ACCO Brands USA, LLC v. Comarco Wireless Technologies, Inc. Case No. C-11-03478 RS (N. D. Cal., filed September 1, 2011).

Abbott Medical Optics (fka Advanced Medical Optics) v. Alcon

Represented Abbott Medical Optics (AMO, fka Advanced Medical Optics), a supplier of advanced refractive technologies, as plaintiff in one action and as defendant in three other related actions and in reexamination of patents involving ophthalmic surgical products. Case settled with payment to AMO of $121 million and cross-licenses after AMO obtained jury verdict of infringement and judgment of $235 million and invalidated two of Alcon’s patents in reexamination.

Advanced Medical Optics, Inc. v. Alcon Inc., No. CIV.A. 03-1095-KAJ (D. Del., filed December 3, 2003)

Contract litigation for Taiwanese computer/NB manufacturer

Represented a Taiwanese computer/NB manufacturer in a contract related action before a U.S. District Court in California.

Video Enhancement Solutions v. Epson America

Represented Epson America Inc. as defendant in a patent infringement case related to the reduction of blocking artifacts in video displays. Succeeded in transferring case from the Eastern District of Texas to the Central District of California. The case settled soon after the transfer.

Video Enhancement Solutions, LLC. v. Denon Electronics (USA), LLC. et al., 2:10-cv-04370 (C.D. Cal. filed June 14, 2010).

In re Maxim Integrated Products Inc. MDL

Defended Union Bank, N.A. and Wells Fargo involving numerous patents relating to the security and encryption asserted against mobile banking apps. The cases, along with many others, were consolidated in multi-district litigation in the Western District of Pennsylvania. Obtained early settlements for both clients at less than cost of defense.

Maxim Integrated Prod. Inc. v. Union Bank N.A., No. 12-882 (W.D. Pa. filed June 27, 2012); Maxim Integrated Prod. Inc. v. Wells Fargo & Co., Case 4:12-cv-00623-RAS (E.D. Tx, filed October 1, 2012).

TecSec Inc. v. Oracle Corporation, et al.

Represents Oracle Corporation and Oracle America, Inc. in a patent infringement litigation in the Eastern District of Virginia. The plaintiff asserted 11 patents related to encryption and network hardware technology against Oracle and several other defendants. In connection with defending Oracle, we performed significant analysis of the network hardware and WSS and OASIS security standards at issue and encryption prior art. The case against Oracle is currently stayed.

TecSec, Inc. v. IBM Corp., et al., No. 1:10-cv-115 (E.D. Va, filed Feb. 5, 2010).

Lochner Technologies LLC v. Lenovo (United States) Inc., Hitachi America Ltd et al.

Represented Hitachi America Ltd. in a patent infringement action on a patent related to modular computer systems. We were successful in settling the case on behalf of Hitachi America Ltd., very early in the case, with no financial recovery for the plaintiff.

Lochner Technologies, LLC v. Lenovo (United States) Inc., et al., No. 10-00430 (E.D. Tex. filed October 12, 2010).

Surety v. Entrust

Co-counsel for defendant Canadian data security company accused of infringing patent relating to encryption techniques used in creating verifiable time stamps. Conducted the liability-related examinations at trial. Won jury verdict of patent invalidity.

Surety Technologies Inc. v. Entrust Technologies Inc., 1:99-cv-00203-TSE (E.D. Va, filed February 2, 1999).

Resonate Inc. v. Nortel Networks Corporation

Lead counsel for Alteon Web Systems, which was acquired by Nortel Networks, in patent infringement action relating to switching in large Internet server sites. Won summary judgment of non-infringement. On appeal, certain claim terms were redefined and the matter remanded. Won a second motion for summary judgment, affirmed on appeal.

Resonate Inc. v. Alteon Web Systems, et al, 4:00-cv-03307-CW (N. D. Cal., filed September 12, 2000).

Molecular Probes v. Texas Fluorescence Laboratories

Lead counsel for plaintiff in patent infringement case involving fluorinated xanthene fluorophores. After district court accepted our client’s position on all disputed claim terms, the defendant took a license and the parties settled.

Molecular Probes, Inc. v. Texas Fluorescence Laboratories, Inc., 3:02-cv-00461-SI (N. D. Cal., filed January 25, 2002)

Pulse-Link Inc. v. Tzero Technologies Inc.

Represented Tzero Technologies in patent infringement actions relating to ultra wideband communications technologies. The case settled following discovery.

Schreiber Foods Inc. v. Saputo Cheese Inc.

Lead counsel for food products company accused of infringing U.S. patent relating to enzymes used in cheese manufacture. Won summary judgment of non-infringement.

Diligence in IP: Yahoo as a Case Study, A Practical Overview, 2016 Patent Law Forum, October 28, 2016, Tokyo, Japan

Diligence in IP: Yahoo as a Case Study, A Practical Overview, Intellectual Property Law Seminar, October 25, 2016, Shanghai, China

Defending Against NPEs: Updates to Case Law and Strategies, December 2013

Defending Against the NPE, August 2011

Updates on Patent Reform 2011, March 2011

Exploring the Changing Patent Litigation Landscape, October 2010

Early Case Evaluation and Pre-Litigation Counseling, August 2010

What Bilski Means for E-Commerce Patents, July 2010

Trade Secrets: Cost Effective Protection for Valuable Business Information, June 2009

The Ethics of IP Litigation, April 2009

Preventatives and Alternatives in IP Disputes – A View of IP Litigation from an Expert Witness and Neutral, December 2008

National Standards for Patentability, October 2007

As the Supreme Shake Up The Patent World, New Strategies Emerge, July 2007

Issues in International IP Management, April 2007

The Uncomfortable Role of the Advocate in Claim Construction, January 2007

Negotiating Licenses Under The Threat Of Litigation, December 2006

“Congress Is Considering Big Patent System Change,” San Francisco Business Times, April 2011

“Selecting A Forum From Among The District Courts and The International Trade Commission,” Practicing Law Institute, Patent Litigation 2010, November 2010

“A Patently Good Idea,” MX: Medtech Executive, August 2010

CONTACT ME

Eighth Floor Two Embarcadero Center
San Francisco, California, 94111
415 273 4335

DISCLAIMER


While we are pleased to have you contact us by telephone, surface mail, electronic mail, or by facsimile transmission, contacting Kilpatrick Townsend & Stockton LLP or any of its attorneys does not create an attorney-client relationship. The formation of an attorney-client relationship requires consideration of multiple factors, including possible conflicts of interest. An attorney-client relationship is formed only when both you and the Firm have agreed to proceed with a defined engagement.

DO NOT CONVEY TO US ANY INFORMATION YOU REGARD AS CONFIDENTIAL UNTIL A FORMAL CLIENT-ATTORNEY RELATIONSHIP HAS BEEN ESTABLISHED.

If you do convey information, you recognize that we may review and disclose the information, and you agree that even if you regard the information as highly confidential and even if it is transmitted in a good faith effort to retain us, such a review does not preclude us from representing another client directly adverse to you, even in a matter where that information could be used against you.

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CONTACT US

DISCLAIMER

While we are pleased to have you contact us by telephone, surface mail, electronic mail, or by facsimile transmission, contacting Kilpatrick Townsend & Stockton LLP or any of its attorneys does not create an attorney-client relationship. The formation of an attorney-client relationship requires consideration of multiple factors, including possible conflicts of interest. An attorney-client relationship is formed only when both you and the Firm have agreed to proceed with a defined engagement.

DO NOT CONVEY TO US ANY INFORMATION YOU REGARD AS CONFIDENTIAL UNTIL A FORMAL CLIENT-ATTORNEY RELATIONSHIP HAS BEEN ESTABLISHED.

If you do convey information, you recognize that we may review and disclose the information, and you agree that even if you regard the information as highly confidential and even if it is transmitted in a good faith effort to retain us, such a review does not preclude us from representing another client directly adverse to you, even in a matter where that information could be used against you.

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