Hon. James Robertson (Ret.)

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Intellectual Property

Hon. James Robertson (Ret.) presided over a docket that included a broad range of complex federal civil cases during his 15 years of service as a United States District Judge for the District of Columbia. He has handled all types of IP disputes, including patent, copyright and trademark infringement, trade secret theft disputes, and trade dress disputes. He has earned a well-deserved reputation for fairness, integrity, courage, intelligence, decisiveness, compassion, and fair play.

A progressive thinker and innovator, Judge Robertson served on the Judicial Conference Committee on Information Technology for eight years and was its chair from 2003 through 2005, presiding over the introduction of electronic filing in the federal judiciary and initiating an on-line system for receiving and reviewing clerkship applications. While an active federal judge, he served on the Foreign Intelligence Surveillance Court.

Representative Matters

  • Dow Jones & Co., Inc. v. Ablaise Ltd, 632 F.Supp.2d 23 (D.D.C. 2009), aff’d (as to invalidity ruling) 606 F.3d 1338 (Fed. Cir. 2010), cross-claims of infringement, non-infringement and invalidity as to method for using computer server to send personalized content and format over the World Wide Web in the form of dynamically generated HTML page
  • Wyeth v. Dudas, 580 F.Supp.2d 138 (D.D.C. 2008), aff’d 591 F.3d 1364 (Fed.Cir. 2010), administrative review of PTO rules for calculating extensions of patent terms for PTO delay
  • Innovatit Seafood Systems v. Commissioner for Patents, 573 F.Supp.2d 96 (D.D.C. 2008), review of PTO denial of patents for mollusk pressure-pasteurization process and for “pressure-shucked oysters”
  • Adhesives Research v. Minnesota Mining & Mfg. Co., 2003 WL 25548427 (D.D.C. 2003), consideration of evidence offered in interference proceeding relating to transdermal drug delivery device, to refute finding of abandonment, suppression or concealment
  • Morphosys AG v. Cambridge Antibody Technology Ltd, 193 F. Supp 2d 125 (D.D.C. 2002), jury trial (no verdict) and subsequent summary judgment proceedings as to method for obtaining antibodies to specific human self antigens by use of phage display libraries
  • Novamedix Distribution Ltd v. Dickinson, 175 F.Supp.2d 8 (D.D.C. 2001), review of PTO obviousness rejection of patent application for appliance that promotes venous pump action in the foot
  • Ahlstrom Machinery, Inc. v. Clement, 13 F.Supp.2d 45 (D.D.C. 1998), infringement action involving waste paper recycling plants
  • Markman v. Lehman, 987 F. Supp. 25 (D.D.C. 1997), judicial review of PTO rejection for obviousness of claims for bar-coded inventory control and reporting system
  • Cylink Corp. v. Schnorr, 939 F.Supp. 39 (D.D.C. 1996), dismissing claim for declaratory judgment of non-infringement as to patented digital signature algorithm

Honors, Memberships, and Professional Activities

  • Mississippi for Justice "Mississippi on the Potomac" 2013 honoree for a distinguished career in promoting equality and civil rights
  • Member, International Bar Association, 2010-present
  • Fellow, American College of Trial Lawyers, 1984-present
  • Fellow, American Bar Foundation, 1987-present
  • Member, American Law Institute, 1996-present
  • President-elect and President, District of Columbia Bar, 1990-1992
  • Lawyers’ Committee for Civil Rights Under Law
    • Board Member, 1973-1990
    • Co-Chair of D.C. affiliate, D.C. Lawyers’ Committee for Civil Rights Under Law, 1982-1984
    • National Co-Chairman, 1985-1987
  • President, Southern Africa Legal Services and Legal Education, Inc. (President, 1989-1994; Board Member, 1987-1997)
  • U.S. District Court Committee on Grievances, 1988-1992 (Vice Chair, 1990-1992)

Background and Education

  • Mediator and Arbitrator, JAMS, 2010-present
  • U.S. District Judge for the District of Columbia, 1994-2010
  • Partner, Wilmer, Cutler & Pickering (now Wilmer Hale), 1973-1994
  • Lawyers’ Committee for Civil Rights Under Law, 1969-1972
    • National Director, Washington, D.C.
    • Chief Counsel, Mississippi Litigation Office
  • Associate, Wilmer, Cutler & Pickering, 1965-1969
  • Lieutenant, U.S. Navy (USS Turner 1959-1962, Office of Naval Intelligence 1962-1964)
  • LL.B., George Washington University, 1965 (Editor-in-Chief, George Washington Law Review, vol. xxxiii, 1964-1965)
  • A.B., cum laude, Woodrow Wilson School of Public and International Affairs, Princeton University, 1959

Disclaimer

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