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.
American Bar Association, Member
Litigation Counsel of America, Member
Editorial Advisory Board, MX Update, Member
Advisory Council, IP Osgoode, Member
Osgoode Hall Law School, LL.B. (1987)
University of California, Davis School of Law (1987)
Princeton University, B.S.E., Chemical Engineering (1983)
District of Columbia
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