James N. Willi

Jim Willi focuses on civil, commercial, and intellectual property litigation and appeals. He also has considerable experience with business transactions, contracts, intellectual property licensing, business entity formation, real property transactions and litigation, probate and probate litigation, family law, wills, trusts, estate planning, asset protection, and collections. He has represented clients at all levels of Texas courts including County Courts, District Courts, Courts of Appeals, and the Texas Supreme Court. He has also represented clients at all levels of federal courts including District Courts, Courts of Appeals, and the United States Supreme Court.

Mr. Willi has been practicing law since 1996. He is licensed to practice law in Texas, registered to practice law in the United States Patent and Trademark Office, and admitted to practice law before the United States Supreme Court, the Court of Appeals for the Federal Circuit, and the United States District Courts for the Northern, Southern, Eastern, and Western Districts of Texas. Mr. Willi is a member of the College of the State Bar of Texas, the Austin Bar Association, and the Austin Intellectual Property Law Association.

Before practicing law, Mr. Willi was an electrical engineer for 10 years involved in system operations and planning of electrical power distribution and transmission systems. He has been a Licensed Professional Engineer in Texas since 1990.

Education

Master of Laws in Intellectual Property and Information Law, University of Houston Law Center (2005)

Doctor of Jurisprudence, Cum Laude, South Texas College of Law (1995)

Master of Business Administration, University of Houston (1989)

Bachelor of Science in Electrical Engineering, University of Texas at Austin (1985)

Publications

James N. Willi, Proposal for a Uniform Federal Common Law of Attorney-Client Privilege for Communications with U.S. and Foreign Patent Practitioners, 13 Texas Intellectual Property Law Journal 279 (Spring 2005)

Representative Cases

Innovative Automation LLC v. Audio and Video Labs, Inc. d/b/a Disc Makers et al. Represented Iowa-based defendant, CD Technical, Inc., in a patent infringement lawsuit, which was filed in the U.S. District Court for the Eastern District of Texas, Tyler Division, against multiple defendants. The patent in suit related to computer-implemented methods and a system for digital data duplication systems using networks to fully automate the process from customer order processing to delivery. After Willi Law Firm demonstrated to the plaintiff that CD Technical's digital duplication equipment did not infringe the plaintiff's patent, the plaintiff agreed to voluntarily dismiss the case against CD Technical.

Patent Group LLC v. ET Industries, Inc. Represented ET Industries, a Canadian corporation, in a false patent marking lawsuit filed in the U.S. District Court for the Eastern District of Texas, Marshall Division. The case against Willi Law Firm's client was dismissed with prejudice to the mutual satisfaction of the parties.

Allied Home Mortgage Capital Corporation v. Thomas. Represented Virginia defendants in a lawsuit involving allegations of cyberpiracy, contributory cyberpiracy, trademark infringement, and civil conspiracy filed in the U.S. District Court for the Southern District of Texas, Houston Division. The case was dismissed after a favorable settlement in which Willi Law Firm's clients received cash.

Patent Group LLC v. McCullough Corporation d/b/a Microframe Corporation. Represented Microframe, an Oklahoma corporation, in a false patent marking lawsuit filed in the U.S. District Court for the Eastern District of Texas, Marshall Division. The case against Willi Law Firm's client was dismissed with prejudice to the mutual satisfaction of the parties.

Patent Group LLC v. Power Caster, Inc. Represented Power Caster, Inc., a California corporation, in a false patent marking lawsuit filed in the U.S. District Court for the Eastern District of Texas, Marshall Division. The case against Willi Law Firm's client was dismissed voluntarily by the relator with no settlement payments being made by Power Caster.

ION Geophysical Corporation & INOVA, Ltd. v. Sigmar. Represented ION Geophysical and INOVA, world leaders in seismic acquisition technology for land and marine exploration in a patent case involving seismic sensor packaging and assembly filed in the U.S. District Court for the Western District of Texas, Austin Division. Sigmar, a former officer and director of Input/Output, Inc. (now ION Geophysical), who was one of 20 named inventors on the patent in suit, refused to assign his rights to the invention unless he was paid a very high "consulting" fee. ION Geophysical and INOVA filed a declaratory judgment action requesting the Court to declare that the invention had automatically been assigned by Sigmar pursuant to his employment agreement, or in the alternative, that Sigmar held his rights to the invention in a constructive trust for ION Geophysical due to Sigmar's contractual and fiduciary duties to assign the invention. Sigmar executed the assignment after the lawsuit was filed. Willi Law Firm's clients paid no "consulting" fees or any other kind of payment to Sigmar.

Samsung Electronics, Inc. v. Ericsson AB & Sony Ericsson, Inc. Patent matter involving rights to 3G telecommunications hardware and software technology. The litigation was resolved with a worldwide cross-licensing agreement reached between the telecommunications giants. The litigation was pending in two parallel investigations before the International Trade Commission, as well as district court proceedings in the United States, United Kingdom, Germany and the Netherlands. The resolution of the litigation and the agreement between the companies earned international press coverage in the business and technology media outlets, including The Wall Street Journal, and The New York Times.

IAP Intermodal, L.L.C. v. Northwest Airlines, et al. Represented a number of domestic and international airlines in a patent infringement case in the Eastern District of Texas. The plaintiff stipulated to non-infringement following a claim construction ruling favorable to the airline defendants. The district court's claim construction was affirmed by the U.S. Court of Appeals for the Federal Circuit.

Trilogy Software v. Selectica, Inc. Represented Trilogy in a patent infringement case involving complex pricing and configuration software patents resulting in a favorable settlement for Trilogy.

Sun Microsystems, Inc. v. Versata Enterprises, Inc. et al. Represented the Versata defendants in a patent infringement case involving seven U.S. patents relating to various methods, systems, processes, and apparatuses for managing different types of website user-generated data.

OPTi Inc. v. Apple Inc. Patent matter involving core logic chipset technology filed in the Eastern District of Texas that resulted in a favorable jury verdict for plaintiff OPTi, Inc.

Visto Corporation v. Seven Networks, Inc., Visto Corp. v. Microsoft Corp., Visto Corp. v. Good Technologies, Inc., Visto Corp. v. Research in Motion (RIM). Multiple patent infringement suits involving mobile email synchronization technology resulting in a favorable jury verdict for plaintiff Visto against Seven Networks and favorable settlements with all defendants including a business combination with Good and a publically disclosed favorable settlement with RIM.

FotoMedia Technologies, LLC v. AOL, LLC. et al. Patent action in the Eastern District of Texas involving photo sharing technologies against multiple defendants resulting in favorable settlements for plaintiff FotoMedia.

Ciena Corp. v. Nortel Networks, et al. Represented Nortel in a patent infringement case involving multiple patents related to hardware and software for long-haul and metro WDM (wavelength division multiplexed) fiber optic networks and associated network equipment including multiplexers, demultiplexers, service channels and error-control coding used therein. The case resulted in a favorable settlement for defendant Nortel.

Edwards Lifesciences LLC v. Medtronic, Inc. Represented plaintiff Edwards Lifesciences in a patent infringement case in the District of Delaware involving heart valve repair and replacement techology. The case resulted in a favorable settlement for plaintiff Edwards Lifesciences.

Edwards Lifesciences LLC v. St. Jude Medical, Inc. Represented plaintiff Edwards Lifesciences in a patent infringement case in the Central District of California involving heart valve repair and replacement techology. The case resulted in a favorable settlement for plaintiff Edwards Lifesciences.