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James Juo Custom

James Juo

James Juo

Location:
Louisville, Colorado
Phone:
303-665-9845
Fax:
303-665-9847
Email:

Background

JAMES JUO is an experienced intellectual property attorney who has successfully litigated patents and trademarks, and counseled clients on the scope and validity of patent and trademark rights. A registered patent attorney, as well as a former patent examiner, he also advised the American Inventor television program on patent issues. Before moving to Colorado, he was a partner at Fulwider Patton LLP, one of the oldest intellectual property law firms in Los Angeles, where he worked on a range of IP matters and technologies, including medical devices such as electrode catheters and stents, as well as electronic ballasts, color compression, aerospace, and consumer products. In addition to his patent and trademark practice, he also handles UDRP disputes over domain names.

Litigation Experience

Mr. Juo has litigated cases at both the trial and appellate level, including motions to dismiss, summary judgment, Markman claim construction hearings, and jury trials in several U.S. District Courts, including the Central District of California. And he has appeared in several Federal Circuit appeals. Mr. Juo helped obtain a multi-million dollar settlement for one of his litigation clients. He has represented individuals, small companies, and large Fortune 500 corporations. Mr. Juo is admitted to a number of jurisdictions, including the U.S. District Court for the District of Colorado.

Intellectual Property Litigation Matters

• Won dismissal of a declaratory judgment action based on a trademark opposition for lack of subject matter jurisdiction.
• Won summary judgment of no cybersquatting in favor of the purchaser of a domain name that was registered before the asserted trademark was first used by the plaintiff.
• Awarded attorney fees against opposing party who filed a frivolous design patent infringement claim in violation of Rule 11.
• Successfully settled a computer fraud and abuse act case involving allegations of screen scraping between competing electronic dating services.
• Successfully enforced trademarks for a mobile phone carrier against unauthorized distributers and dealers.
• Prevailed on summary judgment against a claim of trade libel for issuing safety warnings to customers concerning crib covers.
• Successfully settled a design patent infringement lawsuit in view of YouTube evidence that supported an on-sale bar defense under Section 102.
• Successfully settled a lawsuit involving claims of trademark infringement against yoga-inspired health food snacks.
• Won summary judgment limiting damages based on the trademark owner’s failure to mark its goods with notice of the registered trademark. Coach, Inc. v. Asia Pacific Trading Co., 676 F. Supp. 2d 914 (C.D. Cal. 2009).
• Won dismissal of a patent action seeking declaratory judgment of non-infringement based on a licensee’s comments.
• Achieved favorable settlement of a 337 action before the ITC based on a successful design-around solution.
• Successful reexamination invalidating a reissued patent-in-suit asserted by a competitor.
• Successfully overturned an adverse summary judgment in a trade secret case appealed to the Ninth Circuit.
• Won a reversal of adverse claim construction in a patent appeal involving cardiac stent technology. Advanced Cardiovascular Systems, Inc. v. SciMed Life Systems, Inc., 261 F.3d 1329 (Fed. Cir. 2001).
• Won affirmance of judgment as a matter of law finding no patent infringement on appeal from by the U.S. District Court for the District of Minnesota. Medtronic, Inc. v. Advanced Cardiovascular Systems, Inc. , 248 F.3d 1303 (Fed. Cir. 2001).
• Successfully overturned an adverse summary judgment of inequitable conduct on appeal. Origin Medsystems, Inc. v. General Surgical Innovations, Inc. , No. 98-1416, 1999 WL 507160 (Fed. Cir. 1999).

Bar Admissions

  • California
  • Virginia
  • U.S. Patent and Trademark Office
  • U.S. District Court for the District of Colorado
  • U.S. District Court for the Northern District of California
  • U.S. District Court for the Central District of California
  • U.S. District Court for the Southern District of California
  • U.S. Court of Appeals for the Ninth Circuit
  • U.S. Court of Appeals for the Fourth Circuit
  • U.S. Court of Appeals for the Federal Circuit

Education

  • George Washington University
    • J.D. - 1993
  • Clarkson University
    • B.S. - 1989
    • Major: Electrical Engineering

Selected Published Works

Selected Presentations

  • "Patent Law" , Panelist, Colorado Emerging Medical Devices, Denver, CO, December 2017
  • "Declaratory Judgment: Patently Clear Jurisdiction" , Presenter, Boulder County Bar Association, Boulder, CO, October 2017
  • "IP in Estate Planning" , Presenter, Boulder County Bar Association, Boulder, CO, February 2017
  • "Current Landscape of Means-Plus-Function Claims" , Panelist, 2016 Washington In The West, Los Angeles Intellectual Property Law Association, Los Angeles, CA, January 2016
  • "Patent Prosecution Bars in Protective Orders" , Presenter, 30th Annual Institute on Intellectual Property Law, 30th Annual Institute on Intellectual Property, University of Houston Law Center & Houston Intellectual Property Law Association, Galveston, TX, October 2014
  • "Design Patent Prosecution" , Panelist, Design Patents In The Modern World Conference, Stanford Law School, Stanford, CA, April 2013
  • "Design Patent Law for Visual Artists and Fashion Designers" , Co-Presenter, California Attorneys For The Arts, Santa Monica, CA, June 2011
  • "How Design Patents Overlap with Copyright and Trade Dress" , Co-Presenter, Los Angeles Copyright Society, Los Angeles, CA, March 2010.

Professional Associations and Memberships

  • Colorado IP Inn of Court
  • Society of Physician Entrepreneurs
  • Asian Chamber of Commerce

Office Locations

Thomas P. Howard, LLC
842 West South Boulder Road, Suite 100
Louisville, CO 80027
Phone: 303-665-9845
E-mail: [email protected]
Fax: 303-665-9847
Map and Directions

Thomas Howard is an experienced trial lawyer practicing with an emphasis in intellectual property disputes (including copyright, trademark, trade dress, trade secret, Web site infringements and other Internet-related disputes) as well as complex civil litigation (including breach of contract, interference with contract, breach of fiduciary duty, conspiracy, fraud, fraudulent transfer, trespass, negligence and nuisance).
In addition to representing clients involved in litigation, Thomas Howard frequently negotiates and drafts intellectual property-related agreements, including nondisclosure and license agreements. He has drafted and negotiated such agreements on behalf of his clients with parties as diverse as Microsoft, Best Buy, Phillips and Hyperion. MORE