Dowd_James

James M. Dowd

Jim Dowd is a first chair trial lawyer and skilled appellate advocate with nearly 25 years’ experience helping clients resolve complex intellectual property and commercial disputes. Mr. Dowd has conducted jury trials in federal and state courts throughout the country, including in California, New York, Texas, Virginia and Wisconsin, among other jurisdictions. He has argued before the US Courts of Appeals for the Federal and Ninth Circuits, and has appeared before the US Supreme Court and numerous other appellate courts. Mr. Dowd has conducted bench trials in 11 US International Trade Commission (ITC) Section 337 investigations since 2002, with the Commission ruling for his clients each time, and he has arbitrated patent disputes before the American Arbitration Association’s International Centre for Dispute Resolution. He is well versed in litigating post-grant review proceedings before the US Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB).

Mr. Dowd has extensive experience resolving multinational “patent wars,” assisting clients in coordinating legal strategy across Europe, Asia, Australia and South America, as well as the United States, including in matters with well over $1 billion in controversy. He has litigated disputes at the intersection of patent and antitrust law, as well as disputes involving copyright, Lanham Act, trade secret and unfair competition claims. His cases have involved a diverse array of technologies, including wireless communications, semiconductor manufacturing, biologics, both analog and digital circuit design, medical devices, gaming, computer instruction set architectures, power management, GPS, solid-state memories, satellites, relational databases, bicycle rims, IOT, and more. Representative past cases are noted below.

Experience

  • Intellectual Pixels Ltd. v. Sony Interactive Entertainment LLC

    (Case Nos. 8:19-cv-01432 and 8:20-cv-01422 (C.D.Cal))
    Opposing counsel: Susman Godfrey LLP

    Defending Sony Interactive Entertainment LLC in two related matters against allegations by Intellectual Pixels Ltd. (IPL) that Sony’s PlayStation game consoles infringe five IPL patents directed to on-line streaming technology. Achieved claim construction in the -01432 matter that resulted in IPL stipulating in September 2020 that three of its patents were not infringed. Then achieved pre-institution stays of litigation on IPL’s two remaining patents pending the outcome of inter partes review (IPR) proceedings before the PTAB.

  • Certain Movable Barrier Operator Systems and Components Thereof

    (Inv. No. ITC-337-TA-1118 and Case No. 3:17-cv-02412 (S.D.Cal.))
    Opposing counsel: Perkins Coie

    Represented The Chamberlain Group, Inc. in two related matters asserting patent infringement by its competitor Nortek Security & Control LLC (NSC). Chamberlain is a leader in the smart, Wi-Fi enabled garage door opener (GDO) market and holds a number of patents covering technologies that make such products safer and more energy efficient. When NSC launched competing GDOs with infringing features, Chamberlain retained Mr. Dowd to protect its intellectual property. In December 2020, the ITC found NSC’s accused GDO products infringed Chamberlain’s valid patent claims and issued an exclusion order barring these products from the US market. Related litigation in the Southern District of California remains ongoing.

  • DivX, LLC v. Hulu, LLC

    (Case No. 2:19-cv-01606 (C.D. Cal.))
    Opposing counsel: Robins Kaplan LLP, Brown Rudnick LLP

    Defending Hulu against allegations that its video streaming service infringes seven DivX patents. After Hulu filed six petitions for IPR covering nearly all of DivX’s asserted patent claims, Judge Philip S. Gutierrez granted Hulu’s pre-institution motion to stay the litigation pending the outcome of Hulu’s IPRs. As a result, this case is presently stayed.

  • Certain Mobile Electronic Devices and Radio Frequency and Processing Components Thereof

    (Inv. Nos. 337-TA-1065)
    Opposing counsel: Adduci Mastriani & Schaumberg, Cravath Swaine & Moore, Jones Day, Morgan Lewis & Bockius, Norton Rose Fulbright, Quinn Emanuel Urquhart & Sullivan

    Represented both Apple and Intel in a patent infringement lawsuit Qualcomm brought before the ITC asserting 88 claims of six patents. By this lawsuit, Qualcomm sought to exclude from the US market all iPhones that did not contain a Qualcomm-brand baseband chipset (i.e., iPhones with Intel chipsets). Intel and Apple retained Mr. Dowd to defend against these claims, and in March 2019 the Commission reached a final determination concluding that no valid patent claim had been infringed. The Commission terminated the investigation with a finding that there had been no violation of Section 337, thus permitting Apple’s continued importation of iPhones with Intel chipsets.

  • Wisconsin Alumni Research Foundation v. Apple Inc.

    (Case No. 3:14-cv-00062 (W.D. Wisc.))
    Opposing counsel: Irell & Manella LLP

    Represented Apple against claims made by the Wisconsin Alumni Research Foundation (WARF) that Apple’s A7 and A8 processors infringed a WARF patent directed to out-of-order execution of microprocessor instructions. Following a two-week bifurcated jury trial that had resulted in a verdict for WARF, Apple appealed arguing that the claim’s requirement to “produce a prediction associated with the particular [load] instruction” cannot be met by a prediction associated with more than one load instruction. In September 2018, The Federal Circuit agreed with Apple, adopted Apple’s reading of the claims’ “particular” requirement, and on that basis vacated the jury’s verdict holding “that no reasonable juror could have found literal infringement in this case.”

  • Certain Laser-Driven Light Sources, Subsystems Containing Laser-Driven Light Sources, and Products Containing Same

    (Inv. No. 337-TA-983 and Case No. 1:15-cv-10240 (D.Mass.))
    Opposing counsel: Kirkland & Ellis; Proskauer Rose

    Achieved a favorable settlement for clients ASML Netherlands B.V., ASML US Inc. and Qioptiq Photonics GMBH & Co. KG. against allegations of infringement by Energetiq Technology.  Energetiq initially sued in the District of Massachusetts asserting infringement of three patents related to semiconductor manufacturing technology and seeking a preliminary injunction. ASML and Qioptiq retained Mr. Dowd to defend against these claims. When Mr. Dowd convinced the District Court to deny preliminary injunctive relief, Energetiq then turned to the ITC asserting the same patent claims it had presented to the District Court and moving to stay the District Court action. Mr. Dowd successfully opposed this stay, and filed 29 IPR petitions broadly challenging Energetiq’s patent portfolio. As these petitions were being instituted by the PTAB, the parties reached a settlement resolving all litigation.

  • MediaTek Inc. v. Freescale Semiconductor, Inc.

    (Case No. 4:11-cv-05341 (N.D. Cal.))
    Opposing counsel: Cadwalader Wickersham & Taft LLP; Morrison and Foerster LLP

    Represented MediaTek in a two-week jury trial against Freescale asserting three patents directed to microprocessor technology. In advance of trial, Mr. Dowd won summary judgment that MediaTek’s patent claims were valid. At the close of evidence, he won judgment as a matter of law that MediaTek’s patent claims were infringed. On the eve of closing arguments, with only the question of the amount of damages remaining for the jury to decide, the parties then reached a favorable global settlement of all lawsuits pending between them.

  • Certain Electronic Devices, Including Wireless Communication Devices, Portable Music and Data Processing Devices, and Tablet Computers

    (Inv. No. 337-TA-794)
    Opposing counsel: Quinn Emanuel Urquhart & Sullivan, Sheppard Mullin Richter & Hampton, Steptoe & Johnson, Williams & Connolly

    Achieved an historic victory for Apple Inc. in its litigation with Samsung Electronics Co. Ltd. when the President vetoed a Commission order that otherwise would have excluded certain Apple products. Following an extensive evidentiary hearing, in September 2012, Administrative Law Judge E. James Gildea issued an Initial Determination finding no violation with respect to each of four asserted Samsung patents. Samsung sought review by the Commission, which then requested further briefing on the effect on the public interest if the Commission were to issue an exclusion order. In June 2013, the Commission reversed the judge's findings as to one patent and issued exclusion and cease and desist orders directed to Apple’s iPhone 4 (GSM version) and iPad 2 3G (GSM version). In August 2013 however, citing significant public interest concerns with the Commission’s issuance of an exclusion order on the basis of a patent Samsung declared essential to a standard, the President—through the United States Trade Representative—disapproved the Commission’s orders in their entirety. In May 2014, the Federal Circuit affirmed the Commission’s determination of no violation on the only other patent still at issue.

  • Smith & Nephew Inc. v. Arthrex Inc.

    (Case No. 2:07-cv-00335 (E.D. Tex.))
    Opposing counsel: Young & Susser; Albritton Law Firm

    Represented Smith & Nephew in protecting its revolutionary “EndoButton” anterior cruciate ligament fixation technology against infringement by Arthrex’s “RetroButton” device. Following a five-day trial, the jury found Smith & Nephew’s patent claims valid and infringed, and awarded Smith & Nephew a multimillion-dollar damages verdict.

  • Certain Integrated Circuits, Chipsets, and Products Containing Same Including Televisions

    (Inv. Nos. 337-TA-786)
    Opposing counsel: Bracewell

    Achieved a significant trial victory for MediaTek that predecessor counsel had all but lost. Before Mr. Dowd took on the case, Administrative Law Judge Paul J. Luckern had ruled that MediaTek’s chips infringed valid patent claims asserted by Freescale Semiconductor, Inc., but declined to find a Section 337 violation because Freescale had failed to properly authenticate the MediaTek product manual on which this ruling was based. When Freescale refiled its complaint, MediaTek turned to Mr. Dowd. Trying the case to Administrative Law Judge Robert K. Rogers, Mr. Dowd proved that Freescale had no domestic industry, that the asserted claims were invalid, and that MediaTek’s same chip did not infringe—winning on every issue that predecessor counsel had lost.

  • Certain GPS Chips, Associated Software and Systems, and Products Containing the Same

    (Inv. Nos. 337-TA-596)
    Opposing counsel: MacPherson Kwok Chen and Heid, Miller & Chevalier, Orrick Herrington & Sutcliffe

    Represented respondents Broadcom Corporation and Global Locate, Inc. in this investigation initiated by complainant SiRF Technology, Inc. SiRF alleged infringement of more than 100 claims of four patents related to global positioning system technology. After an evidentiary hearing, Administrative Law Judge Paul J. Luckern determined that there was no violation of Section 337, finding that the respondents did not infringe the asserted patents and that one patent’s claims also were invalid. The Commission adopted Judge Luckern’s determination.

  • Certain Baseband Processor Chips and Chipsets, Transmitter and Receiver (Radio) Chips, Power Control Chips, and Products Containing Same, Including Cellular Telephone Handsets

    (Inv. Nos. 337-TA-543)
    Opposing counsel: DLA Piper, Howrey Simon Arnold & White

    Successfully asserted patents on behalf of Broadcom Corporation covering baseband processors used in smartphones. After an evidentiary hearing, Chief Administrative Law Judge Charles E. Bullock determined that Qualcomm violated Section 337 by infringing Broadcom’s technology. The Commission adopted the finding of a violation and issued an exclusion order. The case then settled on favorable terms during enforcement proceedings against Qualcomm.

  • Certain NAND Flash Memory Circuits and Products Containing Same; Certain NOR and NAND Flash Memory Devices and Products Containing Same

    (Inv. No. 337-TA-526); (Inv. Nos. 337-TA-560)
    Opposing counsel: Wilson, Sonsini, Goodrich and Rosati, Finnegan, Henderson, Farabow, Garrett & Dunner, Bingham McCutchen

     Won back-to-back trials for STMicroelectronics against SanDisk before Administrative Law Judges Paul J. Luckern and Charles E. Bullock on flash memory patents that SanDisk had earlier successfully asserted against the other major industry player. In the first case, Judge Luckern agreed that ST’s accused flash memory chips did not infringe the asserted patent on multiple independent grounds. When SanDisk doubled down by filing a second complaint—asserting the same patent against a second group of products and a second patent against a range of additional products—Judge Bullock again found no violation based on no infringement, invalidity of numerous claims, and a complete failure of proof on domestic industry economic prong. In reaching his decision, Judge Bullock cautioned that no further judicial resources should be spent on SanDisk’s patents. Both Initial Determinations were affirmed by the full Commission and by the Federal Circuit.

  • Certain Microlithographic Machines and Components Thereof

    (Inv. Nos. 337-TA-468)
    Opposing counsel: Oliff and Berridge, Miller and Chevalier, Finnegan, Henderson, Farabow, Garrett & Dunner

    Represented respondents ASML Holding N.V., ASML Netherland, B.V., and ASML US Inc. in this investigation initiated by complainants Nikon Corporation, Nikon Precision Inc., and Nikon Research Corporation. Nikon claimed that ASML’s photolithography tools used in the manufacture of semiconductor chips infringed fifteen claims of five patents. After an evidentiary hearing before Administrative Law Judge Charles E. Bullock, the Commission determined that Nikon’s patents were not infringed, invalid, and in one case had been procured by inequitable conduct. As a result, the Commission determined that respondents did not violate Section 337 and terminated the investigation.

Recognition

  • Named a 2020 and 2021 leading litigator in California by IAM Patent 1000: The World's Leading Patent Practitioners. The guide notes, “A doyen among ITC lawyers, Dowd can connect with clients’ technical experts as peers and present resonant, thematically accessible arguments to administrative law judges; he is also a master at coordinating concurrent litigations on multiple continents.”
  • Selected as a "Future Star" in the 2012–2015 editions of Benchmark Litigation
  • Named to the Los Angeles Daily Journal's "Top 75 IP Litigators in California" list in 2009

Insights & News

Credentials

  • Education

    • JD, Boston University School of Law, 1997

      cum laude Articles Editor, Boston University Law Review; Honors in Appellate Practice and Procedure and in Federal Courts
    • BA, Political Science, Saint Michael's College, 1994

      Member, Omicron Delta Epsilon (International Honors Society for Economics)
    • Harvard Business School, 2019

      Credential of Readiness (CORe) with Honors, Business Analytics, Financial Accounting, and Economics for Managers
  • Admissions

    • California

    • District of Columbia

    • US Court of Appeals for the Federal Circuit

    • US Court of Appeals for the Fourth Circuit

    • US Court of Appeals for the Ninth Circuit

    • US Supreme Court

    • Virginia

Credentials