James H. Hall

Biography

James Hall concentrates his practice on intellectual property disputes and related matters. James has extensive experience in all aspects and phases of litigation, including appeals. James approaches his cases by focusing on providing sound counsel that makes sense from both a legal and strategic business perspective. He knows that intellectual property litigation is viewed as a potentially enormous expense, and views his most successful representations as those that resolved his client’s problems as efficiently and inexpensively as possible. His cases have spanned a wide range of technologies, including:

  • oilfield services and equipment
  • hydraulic fracturing equipment and chemicals
  • mechanical devices
  • electrical systems and methods
  • chemical products and processes
  • computer software
  • computer hardware
  • consumer products

Patent Litigation and AIA Post Grant Proceedings

James has extensive experience helping both patent owners and accused infringers in patent litigation and post grant proceedings in the U.S. Patent and Trademark Office. He has been recognized as one of the top 50 best performing attorneys in inter partes review proceedings before the Patent Trial and Appeal Board.

Other Intellectual Property Litigation

James also represents clients in state and federal court cases involving:

  • trade secrets
  • copyrights
  • trademarks
  • trade dress
  • unfair competition

Intellectual Property Counseling

James also provides his clients with strategic intellectual property counseling and analysis, including:

  • patent invalidity/non-infringement opinions
  • freedom-to-operate opinions
  • patent licensing and related negotiations
  • due diligence in mergers and acquisitions
  • pre-suit investigation and analysis

Complex Commercial and Civil Litigation

James possesses broad based experience in other areas of complex commercial and civil litigation, including:

  • product liability
  • breach of contract
  • insurance coverage
  • fraud
  • groundwater contamination and related environmental exposure
  • class action defense

Prior Experience

Prior to attending law school, Mr. Hall worked as a petroleum refinery process engineer, where he focused on optimizing refinery operations to maximize product yields and refinery profitability. He continues to bring the same focus to his client’s legal matters, and is dedicated to helping them achieve the best possible resolutions at the lowest possible costs.

Outside the Firm

James enjoys camping and hiking with his family and exploring national and state parks across the country. He is an active member of his church where he teaches a church school class for young adults.

Experience

  • Oilfield Products & Services—Successfully defended suit alleging infringement of a patent directed to the design of a downhole circulation sub-assembly and related activation device. After assessing the plaintiff’s case, we determined that the most cost-effective approach for the client was a focused petition for inter partes review. The PTAB granted our petition and issued a final written decision finding all challenged claims unpatentable. James successfully defended the PTAB’s decision at the Federal Circuit. Back in district court, the plaintiff agreed to dismiss all claims with prejudice.
  • Wireless NetworksResolved, at minimal cost to our client, a suit by a non-practicing entity alleging infringement of a patent directed to a wireless network control protocol and related products. Our client was one of a number of entities sued in the plaintiff’s final efforts to monetize the patent before expiration. After analyzing the facts and issues, we determined that the plaintiff could not establish any infringing activities by our client. Instead of filing a motion to dismiss requiring costly briefing and potentially resulting in unnecessary discovery, we engaged in extensive negotiations with plaintiff’s counsel, eventually resulting in dismissal of all claims without the necessity of filing an answer.
  • Oilfield Products & ServicesResolved a potential claim for infringement of a patent directed to oilfield equipment used in hydraulic fracturing operations. Our client was already defending claims outside the United States by the patent holder. Before importing its potentially infringing products, our client asked us for help fighting the U.S. patent. We devised an aggressive strategy to kill all claims relevant to our client’s products, including a declaratory judgment action of non-infringement and a petition for inter partes review. Just before filing the completed petition, we informed the plaintiff of the impending filing, resulting in an immediate global settlement.
  • NanotechnologySuccessfully prosecuted a petition for inter partes review seeking cancellation of a competitor’s patents directed to quantum dots. After oral argument, the PTAB issued final written decisions canceling challenged claims from both patents.
  • Prepared and filed, on behalf of amicus curiae, a brief with the en banc Federal Circuit arguing that the PTO improperly assigned the burden of proof to the patent owner with respect to the patentability of amended claims during inter partes reviews. The Federal Circuit agreed with the position taken in our briefing, explaining that patent owners could not be required to prove patentability pursuant to the current rules (Aqua Prods. v. Matal?, 872 F.3d 1290 (Fed. Cir. 2017).
  • Power over EthernetDefended our client in litigation brought by a non-practicing entity on a standards essential patent directed to power over Ethernet, resulting in a favorable confidential settlement before trial.
  • Computer Networks, Network SecurityOur client sued multiple companies for infringement of its patents directed to network security. The defendants filed 19 separate petitions for inter partes review seeking to invalidate the asserted patents. We carefully analyzed the petitions and filed patent owner’s responses directed to technical and procedural flaws in each petition, winning a denial of institution in eight of the 19 proceedings. We also successfully defended a retaliatory infringement lawsuit brought by one of the accused infringers over patents directed to data storage libraries. After we moved for summary judgment on plaintiff’s infringement case, and simultaneously moved to strike new infringement theories appearing for the first time in the plaintiff’s expert report, the parties entered into a confidential settlement resolving the case.
  • Oilfield Products & ServicesSuccessfully defended accused infringer against infringement claims on multiple patents directed to plunger lift technology used in oil and gas production. After evaluating the plaintiff’s case, we determined the quickest path to a full resolution was through the inter partes review process. We prepared and filed three petitions, all of which were granted. The parties entered a confidential settlement after the deposition of the patent owner’s expert.
  • Electronic SignsOur client’s competitor obtained a patent directed to an electronic sign controller, and began using the patent to chill competition in the marketplace. After analyzing the situation we filed suit seeking damages for violations of the Lanham Act, state unfair competition law, and for declaratory judgments of invalidity and non-infringement. After defeating several attempts by the defendant to dispose of the case, we helped our client successfully negotiate a favorable business resolution.
  • Oilfield Products & Services, Offshore ProductionSuccessfully prosecuted patent infringement action for our client, whose patented subsea oil and gas flow line assembly appeared to have been copied by a competitor. After filing suit seeking a preliminary injunction, we sought and received an expedited trial setting five months from filing. Although the defendant filed an IPR petition, due to the expedited trial setting, the parties elected to enter a confidential settlement resolving all disputes.
  • Semiconductor ManufacturingSuccessfully sued client’s competitor alleging infringement of a patent directed to testing methods for integrated circuits. The defendant filed a petition for inter partes review challenging the patent. After we prepared and filed the patent owner’s preliminary response in the IPR proceeding, the defendant entered a confidential settlement.
  • Consumer ProductsSuccessfully defended suit by client’s competitor for infringement of a patent directed to a consumer hair styling device. After we identified multiple potentially invalidating prior art references and disclosed them to plaintiff, the parties entered a confidential settlement.
  • Consumer Products, Ophthalmic ProductsOur client, a leading manufacturer of eye care products, asked for help in stopping its competitors from using false and deceptive advertising on their private label and store brand packaging. We determined that a lawsuit against one of the leading competitors would probably eliminate the need for litigation against the rest. We sued that competitor for false advertising and related unfair competition claims under the Lanham Act, resulting in a confidential settlement. No additional lawsuits against the remaining competitors were required.
  • Oilfield Products & ServicesAfter our client’s infringement suit was transferred to the Southern District of Texas, we were asked to take over from its original counsel. The defendant filed four petitions for inter partes review against the originally asserted patents. After we analyzed our clients’ patents and the accused products, we amended the complaint to assert additional patents and claims. After we filed the patent owner’s preliminary responses in the IPR proceedings, the parties entered a confidential settlement of all disputes.
  • Oilfield ServicesResolved a potential claim for infringement of a patent directed to oilfield equipment used in hydraulic fracturing operations. Our client was already defending claims outside the United States by the patent holder. Before importing its potentially infringing products, our client asked us for help fighting the U.S. patent. We devised an aggressive strategy to kill all claims relevant to our client’s products, including a declaratory judgment action of non-infringement and a petition for inter partes review. Just before filing the completed petition, we informed the plaintiff, resulting in an immediate global settlement.

News & Views

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Recognitions

2017, IPR Intelligence Report (Patexia): Top 50 Best Performing Attorneys in IPR Representing Patent Owners

Affiliations

Memberships

  • Houston Bar Association
  • Houston Intellectual Property Law Association
  • State Bar of Texas
Professional Activities

James writes and speaks on a variety of topics related to patent litigation and inter partes review practice.

In July 2018, James presented “Practice Points for Handling Nuanced and Cutting Edge Areas in PTAB Practice” at the 4th Annual Post-Grant PTO Proceedings Conference: Practical Strategies and Insights on IPR, PGR, and CBM Review, in Washington, D.C.

James also co-authors the chapter “Confronting Discovery Problems” in Bloomberg BNA’s Patent Litigation Strategies Handbook.

James is an active participant in Blank Rome’s pro bono program. He currently focuses on assisting indigent clients in obtaining guardianship over their special needs children who are becoming adults. He has also represented clients in appealing the denials of veteran’s benefits.

Credentials

Admissions

  • United States Court of Appeals for the Third Circuit
  • United States Court of Appeals for the Eleventh Circuit
  • U.S. District Court - Colorado
  • U.S. District Court - Northern District of Texas
  • Texas
  • U.S. District Court - Eastern District of Texas
  • U.S. District Court - Southern District of Texas
  • U.S. District Court - Western District of Texas
  • U.S. Patent and Trademark Office
  • United States Court of Appeals for the Federal Circuit

Education

  • University of Arkansas, BS, magna cum laude
  • University of Houston Law Center, JD, summa cum laude