A REPUTATION OF SUCCESS IN INTELLECTUAL PROPERTY LAW AND BUSINESS LITIGATION

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James Juo

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Practice Areas:

  • Patents
  • Trademarks

Biography

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 distributors 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).

Education

  • George Washington University National Law Center, Washington, District of Columbia
    • J.D. - 1993
  • Clarkson University
    • Bachelor of Science - 1989
    • Major: Electrical Engineering

Bar Admissions

  • California
  • Virginia
  • U.S. District Court Northern District of California
  • U.S. District Court Central District of California
  • U.S. Court of Appeals Federal Circuit
  • U.S. Court of Appeals 9th Circuit
  • U.S. Patent and Trademark Office

Honors

  • Selected as a Southern California Super Lawyer
  • Named as a Southern California Super Lawyer Rising Star

Classes & Seminars

  • Patent Law Panel, Colorado Emerging Medical Devices
  • Declaratory Judgment: Patently Clear Jurisdiction, Boulder County Bar Association
  • IP in Estate Planning, Boulder County Bar Association
  • Patent Prosecution Bars in Protective Orders, Houston Intellectual Property Law Association
  • Design Patents In The Modern World Conference, Stanford Law School
  • How Design Patents Overlap with Copyright and Trade Dress, Los Angeles Copyright Society

Published Works

  • A Prosecution Bar In Patent Litigation Should Be The Exception Rather Than The Rule, (co-author) Virginia Journal of Law and Technology, 2010
  • Responding to a Cease-and-Desist Leeter, MX: Medtech Executive, 2010
  • "Egyptian Goddess: Rebooting Design Patents And Resurrecting Whitman Saddle", Federal Circuit Bar Journal, 2009
  • "A Quantum Of Originality In Copyright", (co-author) Chicago-Kent Journal of Intellectual Property, 2009
  • "Advising Against Active Inducement of Infringement", New Matter-the Journal of the Intellectual Property Section of the Calfornia Bar, 2009
  • How "Thin" Is Your Copyright?, Los Angeles Daily Journal, 2009
  • "Eye of the Beholder: Design Patent Infringement", Los Angeles Lawyer, 2009
  • "A Matter of Opinion: Efficacy of Patent Opinions,", Los Angeles Lawyer, 2009
  • "Patently Clear: Declaratory Relief in Patent Cases,", Los Angeles Lawyer, 2008
  • "Unauthorized Acts in Declaratory Judgement,", New Matter-the Journal of the Intellectual Property Section of the California Bar, 2008

Representative Cases

  • Coach, Inc. v. Asia Pacific Trading Co., No. 09-35, 2009 WL 3808550, 2009, C.D. Cal.
  • ACCO Brands USA, LLC v. Accentra, Inc., No. 07-1401, 2008, N.D. Ill.
  • Cordelia Lighting, Inc. v. American Flourescent Corp., No. 02-7343, 2007, C.D. Cal.
  • Advanced Cardiovascular Systems, Inc. v. SciMed Life Systems, Inc., 261 F.3d 1329, 2001, Fed. Cir.
  • Medtronic, Inc. v. Advanced Cardiovascular Systems, Inc., 248 F.3d 1303, 2001, Fed. Cir.
  • Origin Medsystems, Inc. v. General Surgical Innovations, No. 98-1416, 1999 WL 507160, 1999, Fed. Cir.

Professional Associations

  • Colorado IP Inns of Court
  • Asian Chamber of Commerce

Past Positions

  • U.S. Patent and Trademark Office, Patent Examiner