Hon. James L. Warren (Ret.)

T: 415-982-5267
F: 415-982-5287
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

Honors, Memberships, and Professional Activities

  • Recipient, Champion of Justice Award, Bar Association of San Francisco, 2006
  • Recipient, The Barristers Choice Award (Judge of the Year), The Barristers Club of the Bar Association of San Francisco, 2006
  • Recipient, Award For Outstanding Service to the Legal Community, Bay Area Lawyers for Individual Freedom, 2005
  • Judicial Advisor, Executive Committee, Litigation Section of the California Bar Association
  • Professor, Mediation, University of San Francisco Law School
  • Member, San Francisco Superior Court's Alternative Dispute Resolution Committee
  • Member, California Judicial Council Task Force on Complex Civil Litigation
  • Member, California Judicial Counsel Continuing Education Committee
  • Member, California Judges Association; Faculty Member, Judges College and New Judge Orientation Program
  • Judicial Fellow, Association of Trial Lawyers of America
  • Lifetime Member, Fellows of the American Bar Foundation
  • Member, American Bar and California Bar Associations
  • Member and Officer, Edward J. McFetridge American Inn of Court
  • Admitted to practice: U.S. Supreme Court; Court of Appeals for Second, Fifth, Ninth, and Federal Circuits; all District Courts for California and New York; Northern District of Texas; all State Courts in California and New York
  • ADR Profile, "Neutral by Nature," Daily Journal, May 13, 2011
  • "Effective Law and Motion Practice," ABTL Reporter, Fall/Winter 2012
  • Co-author with Judge Ann Kough (Ret.), "Judicial Reference, A Forgotten Tool," The Recorder, October 7, 2013

Background and Education

  • Judge, San Francisco County Superior Court, 1994-2006 (Law & Motion Department, 2003-2006)
  • Senior Counsel, Pacific Bell, 1993-1994
  • Partner, Pillsbury Winthrop (formerly Pillsbury, Madison & Sutro), 1980-1993 (Associate, 1975-1980)
  • Associate, Clifford Chance (formerly Rogers & Wells), 1973-1975
  • J.D., Hofstra University School of Law, 1973; Recipient of University's First Most Distinguished Alumnus Award, 1983
  • B.A., University of California, Berkeley, 1966

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