James R. Barney

Partner

James Barney focuses on patent litigation and appeals. He has handled numerous litigation and appellate matters in a variety of technologies, including the medical, pharmaceutical, chemical, financial, amusement, and automotive fields.

Mr. Barney has broad experience in all aspects of patent litigation, including drafting and arguing claim-construction and summary-judgment motions, examining and cross-examining fact and expert witnesses at trial, and managing day-to-day litigation activities. He has tried cases before juries, judges, and arbitrators and has been involved in private mediation and other alternative dispute resolution (ADR) proceedings. He has also tried cases in several U.S. district courts and before the U.S. International Trade Commission (ITC).

In addition to his litigation practice, Mr. Barney advises clients on a wide variety of patent matters, including licensing and patent procurement strategies. He has written opinions of counsel and has assisted clients in settling disputes without litigation.

Mr. Barney devotes a portion of his time to pro bono matters. He has represented criminal defendants in the Superior Court of the District of Columbia. He has also worked extensively with military veterans and has argued several veterans’ appeals before the U.S. Court of Appeals for the Federal Circuit.

Highlights

• Defended Toyota Motor Corp. in an ITC investigation involving Toyota’s hybrid engine technology, examining the main technical experts and securing a finding that the Complainant’s patent is invalid and not infringed.
• Represented Tate & Lyle in an ITC investigation involving methods of manufacturing sucralose, an artificial sweetener, including cross-examining several fact and expert witnesses.
• Represented Guidant Corp. and Abbott Labs in several litigations involving coronary stents, including arguing the Markman hearing and examining several fact and expert witnesses in a jury trial that resulted in a favorable verdict of infringement for Guidant.
• Defended ProSlide Inc. in an infringement action involving amusement-park rides, including arguing and winning summary judgment of noninfringement and arguing the appeal at the Federal Circuit and securing summary affirmance.
• Served as lead trial counsel in a first degree murder case in D.C. Superior Court, representing the defendant pro bono.
• Argued three veterans’ appeals before the Federal Circuit concerning the issue of equitable tolling, resulting in an precedential decision that significantly expanded the rights of disabled and mentally ill veterans.
• Law clerk to the Honorable Raymond C. Clevenger III of the U.S. Court of Appeals for the Federal Circuit, 1999-2000.
• Served as a submarine officer in the U.S. Navy, where he gained extensive experience in the practical application of electrical, mechanical, and nuclear engineering.
• Served as an operational test director for submarine communications systems and designed and executed a number of complex operational tests, 1995-1996.

Professional Recognition

• Two-time recipient of the Dr. Joseph Rossman Memorial Award for his articles “In Search of ‘Ordinary’” Meaning,” 2003; and “The Prior User Defense,” 2000.

Professional Activities

• Federal Circuit Bar Association
• American Intellectual Property Law Association
• American Bar Association
• District of Columbia Bar Association
• Virginia State Bar Association

Select Publications

• "Intellectual Property in the Attractions Industry," FUNWORLD, Jan. 1, 2011.
• Coauthor. "An Empirical Analysis of District Court Claim Construction Decisions, January to December 2009," Stanford Technology Law Review, 2011.
• "In Search of 'Ordinary Meaning'," Journal of the Patent and Trademark Office Society, Feb. 2003.
• "The Prior User Defense: A Reprieve for Trade Secret Owners or a Disaster for the Patent Law?" Journal of the Patent and Trademark Office Society, 2000 (selected for West's 2001 Intellectual Property Law Review).
• Coauthor. "The Division of Rights Among Joint Inventors: Public Policy Concerns After Ethicon v. U.S. Surgical," IDEA Journal of Law & Technology, 1999.
• Coauthor. "Uncorrectability as an Affirmative Defense Against Patent Infringement: Managing the Burden of Proof," Federal Circuit Bar Journal, 1999.
• Coauthor. "Trademarks as Metatags: Infringement or Fair Use?" AIPLA Quarterly Journal, 1998.