James S. Blank is a partner in the Intellectual Property Department who focuses his practice on patent litigation. Jim represents major international technology companies, including Nintendo, Nexans and QinetiQ. His experience covers litigating patent cases involving high-speed data communications cables, liquid crystal displays, stereoscopic (3D) image capture and display devices, video game systems and controllers, optical components, and encryption technology, among many other technologies. Jim has been lead counsel in numerous patent litigations at every significant level – he has argued before the Federal Circuit, tried cases to juries and judges in district courts, litigated inter partes reviews (IPR) to conclusion before the PTAB, and conducted arbitrations. While his practice largely focuses on patent litigation, he also has experience litigating trademark, trade dress, false advertising, unfair competition and trade secrets cases.
One of Jim’s greatest victories was a result of his pro bono work. Jim obtained the release from Texas death row and exoneration of Ernest Willis in October 2004 in state and federal habeas corpus proceedings – at the time, only the seventh prisoner released from Texas death row since the death penalty was reinstituted in Texas in 1976. Jim’s more than a decade-long work as lead counsel on this matter has been featured in numerous publications and broadcast reports, including ABC News’ Nightline, the January 2005 edition of The American Lawyer and the September 7, 2009 edition of The New Yorker. For this representation, the Association of the Bar of the City of New York awarded Jim the Thurgood Marshall Award.
Representative Patent Litigations
- For the past decade, Jim has been lead counsel for Nexans, a leading designer and manufacturer of high speed data communication cables, in all of its U.S. patent litigations, including:
- Nexans Inc. and Berk-Tek LLC v. Belden Inc.: leading the defense of Nexans and affiliate Berk-Tek in the Federal Circuit, the District of Delaware, the Southern District of Indiana and before the PTAB against a competitor asserting four patents in the field of high speed telecommunications cables. Following successful IPRs invalidating 79 of the 81 asserted claims of the patents-in-suit, the Federal Circuit, in two separate opinions, affirmed the PTAB’s invalidity findings of the asserted claims and reversed the PTAB’s validity findings as to the remaining two claims, thus achieving a complete victory for Nexans and Berk-Tek. The Federal Circuit’s reversal of the PTAB’s validity findings represents the first time that the Federal Circuit reversed a PTAB validity finding in an AIA review.
- Nexans Inc. v. General Cable Technologies Corp.: lead counsel in this declaratory judgment suit in the Eastern District of Pennsylvania in which Nexans’ Category 5e, 6 and 10G high speed data communications cables were alleged to infringe competitor General Cable’s patent. General Cable sought in excess of $50 million in compensatory damages. Following the Court’s Markman ruling, the case settled favorably with Nexans making no monetary payment to General Cable.
- Throughout his career, Jim has represented video game company Nintendo in many matters, including:
- Tomita Technologies Int’I Inc. v. Nintendo: Lead counsel in Southern District of New York case relating to 3D image capture and display technology patent against the Nintendo 3DS handheld gaming device. The case is on remand following the Federal Circuit’s reversal in Nintendo’s favor of the district court’s claim construction.
- Anascape, Ltd. v. Microsoft Corp. and Nintendo of America Inc.: Trial counsel in this action in the Eastern District of Texas claiming that Nintendo’s Wii and GameCube video game controllers infringed five patents. Following a favorable Markman ruling, the plaintiff stipulated to non-infringement of one of the patents-in-suit. The Court also granted Nintendo’s motion for summary judgment of no willful infringement. Following trial, the jury returned a verdict of no infringement with respect to the Wii Remote and Wii Nunchuk controllers. On appeal, the Federal Circuit found the remaining patent-in-suit invalid and reversed the district court’s judgment of infringement and $28 million damages award with respect to the Wii Classic and GameCube controllers, thus achieving a complete victory for Nintendo.
- General Electric Co. v. Nintendo: Obtained summary judgment of non-infringement of three patents relating to electronic control circuitry in the District of New Jersey, which was affirmed by the Federal Circuit.
- Fairchild Semiconductor Corp. v. Nintendo: Obtained summary judgment of non-infringement in the Western District of Washington, which was affirmed by the Federal Circuit.
- Rackman v. Nintendo: Obtained summary judgment of non-infringement of patent relating to video game software encryption technology in the Southern District of New York.
- Alpex Computer Corp. v. Nintendo: Obtained Federal Circuit reversal of $253 million jury verdict.
- For more than a decade, Jim has been lead counsel for U.K.-based defense, aerospace and security company QinetiQ Group PLC in all of its U.S. patent litigations, including:
QinetiQ v. Samsung: Lead trial counsel in case involving super-twisted nematic (STN) liquid crystal display technology in the Eastern District of Texas. After obtaining a favorable Markman ruling, defendants conceded liability. After a bench trial on damages, the Court entered a non-appealable $20 million judgment in QinetiQ’s favor.
QinetiQ v. Oclaro, Inc. (N.D. Cal.); Mednovus, Inc. v. QinetiQ (C.D. Cal.); Sumco Corp. v. QinetiQ (D. Ariz.): Achieved successful settlements, as both patent owner and accused infringer, in actions involving optical semiconductor components, ferromagnetic object detection technology, and silicon crystal growing technology.
- Jim’s additional patent litigations include:
TouchTunes Music Corp. v. Rowe International Corp. et al.: Obtained summary judgment of non-infringement for TouchTunes of seven patents relating to digital downloading jukebox technology in the Southern District of New York. The Court subsequently found the case to be “exceptional” and awarded TouchTunes $2.7 million in attorneys’ fees.
Wang Laboratories, Inc. v. America Online, Inc.: Obtained summary judgment of non-infringement for AOL of patent relating Internet browser technology in the Eastern District of Virginia.
Rexall Sundown, Inc. v. Weider Nutrition International, Inc. and Leiner Health Products, Inc.: On behalf of Weider, obtained dismissal of patent infringement claims relating to tablet making methods after uncovering invalidating prior art in the Western District of Wisconsin.
DoubleClick, Inc. v. Sabela Media, Inc. and 24/7 Media, Inc. v. DoubleClick, Inc.: Achieved successful settlement of patent infringement claims relating to Internet ad serving technology in the Southern District of New York.
NetRatings, Inc. v. WebSideStory, Inc. and WebSideStory, Inc. v. NetRatings, Inc.: Following favorable Markman ruling, achieved successful settlement of patent infringement claims relating to Web analytics technology in the Southern District of California and the Southern District of New York.
R2 Technology, Inc. v. iCAD, Inc.: Achieved successful settlement following arbitration of the parties’ patent claims relating to computer-aided detection for digital and film-based mammography technology.
Representative Other IP Litigations
- Joint Stock Company Lomonosov Porcelain Plant v. Ross-Simons, Inc. and Home Essentials & Beyond Inc.: Obtained preliminary injunction on trademark, trade dress, and false advertising claims relating to porcelain tableware in the Southern District of New York.
- Robot Wars LLC v. Battlebots, Inc.: Defeated motion for preliminary injunction on trade dress and unfair competition claims involving robotic combat events in the Southern District of New York.
- Blue Brew Corporation v. Ecko Complex LLC: Obtained summary judgment of non-infringement of design patent, trade dress and copyright claims relating to reversible denimwear in the Southern District of New York.
- Cable Satisfaction International Inc. v. Rothschild Inc. et al.: Defeated motion for preliminary injunction in trade secrets case in New York Supreme Court.
In The Market
- Kaye Scholer Secures Non-Infringement Judgment for Nintendo in Patent Battle... May 11, 2016 • Client Successes
- Managing IP Interviews Blank on Berk-Tek Victory and Key Takeaways November 25, 2015 • Media Mentions
- Kaye Scholer Achieves First-Ever Federal Circuit Reversal of an AIA Validity Determination November 9, 2015 • Client Successes