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James M. Glass

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Glass, James M.
Glass, James M.
James M. Glass
jimglass@quinnemanuel.com
Biography Recent News Practices Representations

James Glass is the Chair of Quinn Emanuel’s Post-Grant patent practice. He has been lead counsel on well-over 400 proceedings on behalf of both Petitioners and Patent Owners and has been ranked as one of the top ten most active and one of the best performing attorneys at the PTAB each year since 2018. IAM has ranked Quinn’s Post Grant group as the most successful among the top-ten firms with the heaviest caseloads, having the highest win rate for petitioners.

Jim’s practice focuses on representing clients in post-grant proceedings at the United States Patent and Trademark Office (“PTO”). These proceedings, which are mini-trials at the PTO—complete with depositions, experts, and live argument—provide unique opportunities for litigants to advance strategic interests rapidly and cost-effectively.

Jim has also been recognized for his experience arguing at the Court of Appeals for the Federal Circuit. He has been ranked repeatedly as one of the top performing and most active appellate attorneys at the Federal Circuit and has been ranked as one of the top ten attorneys in each category. He has successfully defended wins at the Federal Circuit for Vivint, EMSON, Nant Holdings, Voxer and other clients.

His practice has included representing clients such as Alacritech, Bio-Rad, BlackBerry, IBM, Juniper Networks, Memjet, Mercedes-Benz, Samsung, TSMC, PLR Worldwide, among many others.

Jim has secured significant wins for both patent owners and petitioners. For patent owners Jim was lead counsel on a series of six IPR petitions filed by Bank of America against NantWorks, Jim defended NantWorks as lead counsel. Two of those petitions were denied institution, and the remaining four were found patentable after a full trial. Jim successfully defended that win at the Federal Circuit Jim was also lead counsel for Voxer on four IPRs filed by Facebook. All four were denied institution and the denial was affirmed by the Federal Circuit. That win was recognized in The American Lawyer “Litigator of the Week” report. Jim was also lead counsel on a series of 14 IPRs filed by 10x Genomics; the PTAB denied institution of all 14 petitions. On the petitioner side, he most recently argued at trial for clients Mercedes-Benz and Parrot drones, securing rulings in both cases that all asserted claims were unpatentable. Jim has is also lead counsel for PLR Worldwide in a series of five IPRs against Flip Phone games. While one was denied, Jim’s team sought director review, and in a rare decision, the Director reversed the PTAB and remanded for further consideration. The PTAB instituted the previously denied IPR on remand.

Jim has extensive litigation experience. He has successfully argued many Markman and Summary Judgment motions and has represented clients at trial in both the district court and at the International Trade Commission. He represented Emson in a patent infringement case filed by Avenue innovations, where he argued at Markman that two of the claims were invalid as indefinite – the Court agreed. The Court subsequently ruled at summary judgment that none of the remaining claims were infringed. Jim successfully defended that win on appeal at the Federal Circuit. Jim has also litigated cases involving a variety of complex technologies, including smartphone technologies, WIFI systems, semiconductor fabrication and circuitry, inkjet printers, LCD technology, networking technology, graphical user interfaces, on-line trading systems, and fiber optic gyroscope systems.

Practice Areas

Notable Representations

Post-Grant Proceedings

  • Lead counsel for Daimler North America, Mercedes-Benz USA, and Mercedes-Benz U.S. International challenging patents owned by Stragent LLC. The patents relates generally to sharing information in a distributed embedded network.  Jim presented Mercedes-Benz’s arguments at the PTAB trial.  The Board issued a ruling finding claims in both patents unpatentable.
  • Lead counsel for SurgeTech LLC in a series of three IPR petitions filed by Uber.  The Board denied institution of all three.
  • Lead counsel for NantWorks and its subsidiary Nant Holdings in a series of six IPR Petitions filed by Bank of America challenging patents directed to image processing and object recognition.  Two of the IPR petitions were denied institution. After a full trial, the Board found the remining for patents patentable, preserving all challenged claims.  In its final written decisions, the Board held that Bank of America had not established that its two primary references would have been obvious to combine. 
  • Lead counsel for Voxer in a series of IPRS brought by Facebook.  The PTAB denied institution on all IPRs, and the Federal Circuit affirmed that ruling in a subsequent appeal.
  • Lead counsel for Bio-Rad in a series of fourteen IPRs filed by 10X Genomics that challenged a family of patents Bio-Rad was asserting against 10X in parallel litigation.  Jim led the filing of Preliminary Responses on behalf of Bio-Rad, challenging 10X’s primary positions that Bio-Rad’s patents were simple combinations of inventions that were already known.  The PTAB agreed and denied institution of all petitions, thus preventing 10X from challenging the validity of the patents Bio-Rad was asserting against it.
  • Lead counsel defending Memjet Technology Limited in a series of 11 petitions for IPR filed by HP Inc.  HP’s IPRs related to patents Memjet asserted against HP in a litigation in the Central District of California.  Only one of the 11 petitions reached a decision and was an unqualified win for Memjet, as the PTAB refused to institute HP’s IPR.  Soon after that denial, the parties settled their dispute, and HP agreed to voluntarily dismiss all remaining IPRs.
  • Lead counsel for Parrot S.A. on IPR petitions filed against U.S. Patent Nos. 7,931,239 and 9,073,532. The patents generally relate to flying hovercrafts that are controlled by the user through a remote unit. Jim presented arguments at the PTAB trial.  The Board found all challenged claims unpatentable.  In addition, Jim was lead counsel for Parrot challenging a third related QFO patent which was instituted on all challenged grounds and was litigated through trial, with the Board’s decision pending.
  • Lead counsel for Samsung on IPR petitions challenging U.S. Patent Nos. 7,746,916, 7,768,965, 7,881,236, 7,809,373, and 8,218,481, which are assigned to Evolved Wireless LLC.  The patents relate generally to LTE wireless communications, a technology area in which Quinn Emanuel has litigated extensively in the ITC and in district courts.  Four of the five petitions were instituted, and the PTAB held all challenged claims of those patents unpatentable after an oral argument on the merits.
  • Lead counsel for Daimler-Benz challenging U.S. Patent No. 8,180,279, which is owned by Antennatech LLC.  The patent relates generally to wireless internet hotspots.  Soon after the IPR was filed, the district court action was dismissed.
  • Jim was lead counsel defending Universal Secure Registry against four separate petitions for inter partes review filed by Apple Inc. and Visa, Inc, challenging USR’s U.S. Patent No. 8,856,539.  The ’539 patent relates to computer systems that authenticate identities and selectively grant access to information and enable transactions.  In two of the four proceedings, the Board found our arguments persuasive enough to deny institution of petitions outright, ensuring an early victory for our client.  After fully considering the evidence and arguments we presented for the remaining two proceedings, the PTAB again held that all challenged claims were not unpatentable resulting in a complete sweep in our client’s favor.
  • Lead counsel for Daimler-Benz challenging U.S. Patent No. 7,241,034, which is owned by Adaptive Headlamp Technologies, Inc.  The patent relates generally to headlamps that rotate and incline in order to provide better illumination in front of a moving vehicle.  The IPR settled before the PTAB rendered an institution decision.
  • Lead counsel for Daimler AG challenging five patents owned by Carucel Investments, Inc.  Secured institution decision on all challenged claims on four patents to date, with one decision pending.
  • Lead counsel representing IBM in an IPR filed against a patent asserted against IBM by Trusted Knight Corporation.  In a first-of-its-kind argument, IBM has alleged that the challenged patent is invalid based on its own grandparent, arguing that the challenged patent’s parent, a CIP, broke the priority chain.  IBM also alleged invalidity based on a more traditional combination of prior art.  An institution decision is expected in July.
  • Jim is currently defending 44 petitions for Alacritech Inc., an innovation company in intelligent network card field.  These petitions were filed by Intel Corporation.  Among the 44 petitions, we defeated 10 of them at the institution stage.  Seven of them resulted in a final decision with at least one claim patentable.
  • Jim defended Universal Secure Registry against three separate petitions for covered business method review filed by Apple Inc., challenging USR’s U.S. Patent No. 8,577,813.  The ’813 patent relates to computer systems that authenticate identities and selectively enable financial transactions.  The PTAB denied institution for all three proceedings resulting in a complete victory for our client.  In particular, the Board held that the ’813 patent claims were eligible patent subject matter under 35 U.S.C. § 101 because they were not directed to an abstract idea.  The Board also found that the ’813 patent was directed to a technological invention and did not qualify for CBM review. 

Litigation

  • Defending E. Mishan & Sons, Inc. in a litigation filed by Avenue Innovations, Inc., Jim argued the Markman hearing, securing a ruling that several of the asserted claims were indefinite and therefore invalid.  Jim subsequently obtained a ruling on summary judgment that the remaining claims were not infringed.  Jim successfully defended that win on appeal at the Federal Circuit.  
  • Represented TCL Multimedia Technology Holdings Limited in a litigation filed by Nichia Corp. After filing several IPRs against Nichia’s patents, the case settled favorably.
  • Represented Canon in a lawsuit related to WiFi technology.  The case settled favorably for Canon.
  • Represented Google in a patent infringement case involving its online advertising technology.  The plaintiff sought damages in excess of $500 million.  After a one-week trial, the jury returned a verdict of noninfringement and invalidity.
  • Represented Activision in a declaratory judgment action seeking a declaration of noninfringement and invalidity against Gibson Guitar, Corp.  The Court ruled on summary judgment that Gibson’s patents were not infringed.
  • Represented Samsung in a case brought by Positive Technologies, Inc., involving LCD driving techniques.  Case resulted in a favorable settlement for Samsung.
  • Represented royalblue in a patent infringement suit relating to trading securities over multiple electronic exchanges.  Case resulted in a favorable settlement for royalblue.
  • Represented the Gillette Company in a patent infringement jury trial relating to the chemical coatings on Mach 3 razor blades, where the damages claim against Gillette exceeded $100 million.  

Representative Clients

  • Activision Publishing, Inc.
  • Alacritech, Inc.
  • Bio-Rad Laboratories, Inc.
  • Daimler AG
  • Everlight Electronics Co., Ltd.
  • Google
  • IBM
  • Marvell
  • Memjet Technology Limited
  • Mercedes-Benz
  • Motorola
  • Northrop Grumman Systems Corporation
  • Parrot S.A.
  • Rovi
  • royalblue, plc.
  • Samsung
  • TCL Multimedia Technology Holdings Limited

Education

  • Hofstra University School of Law
    (J.D., 1998)
  • NYU School of Engineering (formerly Polytechnic University of New York)
    (B.S., Computer Engineering, 1995)

Admissions

  • The State Bar of New York
  • United States Court of Appeals:
    • Federal Circuit
  • United States District Court:
    • Eastern District of New York
    • Southern District of New York
  • Admitted to practice before the United States Patent and Trademark Office

Publications and Lectures

Professional Activities

  • Member, American Intellectual Property Law Association
  • Member, New York Intellectual Property Law Association
  • Member, PTAB Bar Association