James D. Stein
James Stein focuses his practice on post-grant proceedings before the U.S. Patent and Trademark Office (USPTO), and currently represents clients in numerous inter partes reviews (IPR) and inter partes reexaminations. In these proceedings, he develops strategies for validity and claim construction in complex matters where the patent is involved in litigation; prepares petitions, briefs, and motions; works with expert witnesses to prepare expert reports; assists in preparation and deposition of opposing experts; and assists with discovery strategy and related issues.
Mr. Stein counsels clients on various types of patent matters, including portfolio development and strategic prosecution. As part of this practice, he has prepared many applications and assisted in the prosecution of hundreds of patents. He conducts patent clearance, validity, and competitor/landscape analyses, and provides opinions of counsel on patent infringement and validity. Mr. Stein also assists clients with patent monetization, including patent sales and licensing transactions.
Mr. Stein's litigation experience before the U.S. International Trade Commission (ITC) includes conducting pre-trial preparations, assisting in discovery, working with expert witnesses to prepare expert reports, assisting in witness preparation, and preparing briefs regarding infringement and validity.
- Assisted AOL in $1 billion sale of a portion of its patent portfolio to Microsoft.
- Served as a USPTO patent examiner, reviewing U.S. and international patent applications related to optical devices, 2004-2006.
- Former process engineer for an electronics assembly and testing facility.
- Successful in helping patent owners obtain key non-institution victories in IPR cases.
- Successful in helping clients obtain discovery in IPR cases.
- Regular contributor to Finnegan's Federal Circuit IP blog.
- Coauthor. The Practitioner's Guide to Trials Before the Patent Trial and Appeal Board, Second Edition, American Bar Association, Section of Intellectual Property Law, 2016.
- Coauthor. "3 Challenges for Internet-of-Things Patents," Law360, June 10, 2016.
- Coauthor. "Could Cuozzo v. Lee Open the Door to Appellate Relief for Unlucky AIA Petitioners?" IP Litigator, March/April 2016.
- Coauthor. "Wait, There's a Second Issue in Cuozzo?" BNA's Patent, Trademark & Copyright Journal, Feb. 5, 2016.
- Coauthor. "Spotlight on Claim Construction Before PTAB," Buffalo Intellectual Property Law Review, Dec. 4, 2015.
- Coauthor. "Does the "Broadest Reasonable Interpretation" Claim Construction Standard Apply to Means-Plus-Function Claim Terms in AIA Trials?" IP Litigator, Nov./Dec. 2015.
- Coauthor. "The Computer-Readable Medium Claim: The Best of the Apparatus and Method Worlds After Williamson?" IP Litigator, Sept./Oct. 2015.
- Coauthor. "10 Ways to Avoid or Limit Institution in an AIA Proceeding," Law360, November 24, 2014.