Intellectual Property
Hon. James L. Warren (Ret.) has extensive experience handling intellectual property disputes. Prior to working at JAMS and before being appointed to the San Francisco Superior Court, Judge Warren practiced with Pillsbury Winthrop (formerly Pillsbury, Madison & Sutro), for nearly twenty years, where he was the founding Chair of the firm’s Intellectual Property Specialty Group, while also specializing in handling antitrust and complex commercial matters.
Judge Warren is respected by his clients for his comfort with complex cases, his ability to analyze facts quickly, and his knack for picking up details of complicated technology. He has handled a wide variety of IP cases, including matters related to multi-level licensing transactions, the development and licensing of Magnetic Resonance Imaging (MRI) technology, and the ownership and royalty distribution of patented, copyrighted, and trademarked properties.
Representative Matters
Successfully mediated $800 million patent infringement dispute with issues related to trade secrets and competition regarding EPROM, EEPROM, and NAND flash disk technology
Settled theft of trade secrets and fraud case between two leading semiconductor providers where the allegations related to theft of computer chip code and other trade secrets
Mediated theft of trade secret/unfair competition case involving national restaurant supply company
Settled multimillion dollar trademark infringement and copyright violations litigation between two Silicon Valley companies that also included allegations of the Digital Millennium Copyright Act (DCMA) and violation of the Computer Fraud and Abuse Act (CFAA)
Resolved dispute between a managing partner and the board of a venture capital investment firm with allegations relating to ownership of intellectual property assets
Successfully mediated trade secrets and breach of contract and cross licensing dispute involving a computer services company and their computers and software
Settled trade secret violation and breach of contract dispute involving a leading provider of mobile gaming and related applications, with claims of unfair competition as well
Settled complex patent licensing and breach of contract case involving flash drives and multilevel cell technology, with issues related to license agreements, patent claims, contract interpretation, "best efforts" clauses, international tax treaties, and statutes of limitations
Arbitrated patent infringement case involving claimed damages of $15 million in case involving resistant spring devices in athletic equipment; issue resolution required patent interpretation, infringement analyses, liability and damages, and prevailing party attorneys’ fees
Arbitrated patent infringement and breach of licensing agreement matter with issues related to atomic layer deposition chip technology
Chair of three arbitrator panel in two companion international cases involving creation, sale and licensing of patented ocular devices; claimant sought damages in excess of $60 million
Served as Chair of three arbitrator panel that resolved a three quarter billion dollar dispute flowing from a search engine company’s acquisition of intellectual property assets; the allegations included breach of the acquisition and licensing agreement and claims of bad faith relating to the earn out period
Served as Chair of three arbitrator panel in International Chamber of Commerce (ICC) case involving patent infringement and licensing issues relating to the creation and sales of toric contact lenses
Served as Court appointed Discovery Referee in a patent infringement dispute where the assignment related to e-discovery issues, royalty rates, interpretation of license agreements, the production of stored computer data, the identification of searchable databases, the recovery of metadata, and international production of documents
