Crain Caton & James

Overview

Jim is an intellectual property lawyer, with emphases on mechanical technology and trademarks.  Jim has extensive experience in securing and protecting technology and trademark rights before federal and state offices and courts and is registered Patent Attorney.  Jim has protected client’s rights in patents, trade secrets and trademarks and the right to bring goods and services to market before trial and appellate courts across Texas and the nation, including the Federal Circuit and Fifth Circuit Courts of Appeal and has been involved in administrative attacks on patents and trademark registrations before the Patent Trial and Appeal Board and before the Trademark Trial and Appeal Board.

Jim is experienced in all aspects of intellectual property litigation for plaintiffs and for defendants, including pre-filing investigations, discovery fact gathering after filing, working with fact and expert witnesses, preparing and presenting the case for dispositive motions and trial, and through appeal.  He has handled patent-specific matters including Infringement Contentions, Invalidity Contentions, and Markman hearings.

With the knowledge of pitfalls in intellectual property enforcement, Jim counsels clients on preventative measures to strengthen patent, trademark and trade secret rights while avoiding detrimental actions.  As a Patent Attorney, he is licensed to represent clients before the United States Patent and Trademark Office in obtaining U.S. patent rights and, working with counsel in other countries, acts to secure parallel patent rights abroad or in the U.S.  Jim works with Corporate Technology Officers to build company technology development plans and disclosure systems.  He likewise works with corporate personnel to develop trademarks and secure trademark registration in the US and abroad.

Jim also works with clients to license intellectual property.  These may be exclusive, sole, or non-exclusive licenses intended to provide a revenue stream or avoid potential disputes over intellectual property rights.

Jim was selected by his peers for inclusion in the 2021-2022 editions of The Best Lawyers in America (BL Rankings) in the area of Litigation-Patent.

Prior to joining Crain Caton, Jim was a principal in a small IP boutique representing privately owned companies.  He continues to represent many of those same companies and has been engaged by additional similarly sized companies at Crain Caton.

Jim serves his community as a member of the Advisory Board of the Sam Houston Area Council of the Boy Scouts of America and as a Cubmaster for Pack 1040 and is an active member of organizations which promote the history of the Republic of Texas and which support the Texas A&M Corps of Cadets.

Experience

Intellectual Property Enforcement and Defense

• Defended privately-held defendant company in trademark dispute.  Case resolved on favorable terms.
• Assisted trial team in defending wellhead manufacturing company in trade secret misappropriation claim, including leading successful summary judgment arguments to dispose of one plaintiff and of the non-trade secret claims of the remaining plaintiff.    Case resolved on favorable terms.
• Led trial team in defense of construction product company in patent infringement case involving eight (8) patents, including obtaining stay pending administrative attacks, presenting claim construction arguments at Markman Hearing, and arguing summary judgment motions.  Case resolved on favorable terms.  https://www.newenglandipblog.com/2015/04/joint-defendants-succeed-on-motion-to-stay-pending-reexam/
• Assisted in defense of oil field technology company in patent infringement case, including assisting in discovery and argument of claim construction terms.
• Defended franchisor service company in patent infringement case having largest joint defense effort in the history of the Eastern District of Texas (over 400 defendants), including leading one summary judgment motion joined by numerous co-defendants.
• Represented construction product company in ex parte reexamination of patents asserted against it, resulting in narrowing of claim scope and giving rise to assertion of intervening rights.
• Represented construction product company in Post Grant Review of two patents owned by plaintiff, including patents filed pre-AIA, noted as path-for-attack by other law firms.  https://www.brinksgilson.com/dealing-with-the-aia-trap-for-transition-applications
• Assisted in defense of sanitary sewer product manufacturer in trademark infringement dispute.  Case resolved on favorable terms.
• Represented trademark owner in amicably persuading various trademark infringements by start-ups using trademark on collegiate-themed products.
• Represented company in pre-issuance challenges to competitor’s patent applications to inform Patent Office of limits to patentability.
• Represented company in pre-issuance challenges to competitor’s trademark applications, resulting in limitation of scope of competitor’s trademark rights.

Securing Intellectual Property Rights through prosecution and acquisition

• Drafted applications to secure patents domestically, in Europe, China, Australia, New Zealand, Japan, and Brazil in various mechanical technologies, including offshore marine cranes, golf products, chromatography, grain sorting and milling, expansion joint seals, medical devices, aircraft transportation vehicles, and pump components, after assessment of patentability in view of identified prior art.
• Completed transactions for sales and for purchases of existing patents.
• Drafted and prosecuted applications to secure trademark rights domestically and in numerous countries after assessment of registerability and potential third party issues.
• Completed transactions for sales and for purchases of existing trademarks.
• Drafted applications to obtain registration of copyright rights.
• Completed transactions for sales and for purchases of existing copyrights.

Constructing corporate safeguards

• Coordinated with corporate officers development and implementation of program to protect corporate intellectual property rights and to limit the ability of competitors to seek protection of interfering product lines, including identification of potential patent applications.
• Worked with corporate marketing leaders to develop and protect brands.
• Assisted business with employment protocols to protect trade secrets and other proprietary information, including non-disclosures, non-competes, and corporate security measures.

Affiliations

• Houston Bar Association

Publications & Presentations

• The Intellectual Property in Your Practice, presenter, Crain Caton & James Continuing Legal Education Series, 2014
• Introduction to Trademarks, presenter, Crain Caton & James Continuing Legal Education Series, 2013
• Introduction to Trademarks, presenter, Houston Association of Legal Professionals Continuing Legal Education Series, 2012
• Intellectual Property for Businesses: Types and Underlying Issues, presenter, Crain Caton & James Continuing Legal Education Series, 2008
• Advanced Patent Litigation: Strategies and Tactics, speaker, State Bar of Texas – CLE Committee, 2006
• A Survey of the Texas Unfair-Competition Tort of Common-Law Misappropriation, author, 1998
• The U.S.-Japan Agreement for Eighteen Month Publication of U.S. Patent Applications: How Should It Be Implemented?, author, 1996