Overview

James Carpenter protects the intellectual property of organizations operating in the computer, electrical and internet technology industries. Informed by 15 years of patent experience, he advises on all aspects of patents, including drafting, prosecuting, assessing validity and infringement of utility and design patents, forming right-to-use opinions, conducting due diligence as part of presuit investigations, and evaluating licensing opportunities in connection with and outside of litigation. James also manages numerous patent portfolios for startups, growing industrial companies and publicly traded consumer companies.

In addition to securing and protecting patents, James litigates contentious matters before U.S. district courts all around the country, experience that equips him with insight into developing and defending patent portfolios and evaluating third-party patents. James also litigates in administrative tribunals, such as the U.S. International Trade Commission and the Patent Trial and Appeal Board. He has litigated cases in various technology fields, including pharmaceuticals, mechanical engineering, electrical engineering, computer engineering and computer science.

For example, James represented a head unit maker in a patent infringement matter before the U.S. International Trade Commission. The client was defending against the complainant’s request for exclusion of a large segment of automobiles from the U.S. based on allegedly infringing use of global navigation satellite systems chips and System-on-Chips (SoCs).

Technical Experience

James has particular experience with inventions relating to display and semiconductor production, including circuitry design and layout, lithography, processor and memory optimization, and back-end packaging. He also has extensive experience with hardware and software inventions relating to artificial intelligence (AI), operating systems, graphics processing, cloud computing, Big Data, data mining, Internet security and authentication, e-commerce, user interfaces, global navigation satellite systems, and nanotechnology. James can program in multiple languages, including assembly, C, C++, Perl and Java, among others.

In-House and International Experience

Prior to joining the firm, James worked for Infineon Technologies AG in Munich, Germany, where he gained in-house, European Patent Office (EPO) and German patent experience, which included:

  • Evaluating invention disclosures to determine the value of obtaining a patent
  • Drafting and enforcing patent licensing agreements to protect market share and to defend against patent infringement lawsuits
  • Conducting opposition proceedings in the EPO to defend and invalidate allowed patent applications
  • Drafting and responding to infringement and invalidity contentions to determine the likelihood of infringement and the value of a portfolio

Credentials

Bar Admissions

District of Columbia
New York
U.S. Patent and Trademark Office

Court Admissions

U.S. Court of Appeals for Veterans Claims
U.S. Court of Appeals for the Federal Circuit

Education

American University Washington College of Law
J.D. cum laude (2008)

Louisiana State University
B.S. cum laude (2003)

Leadership & Community

Pro Bono

While in law school, James was a member of the Glushko-Samuelson Intellectual Property Law Clinic.

Professional Associations

  • American Intellectual Property Law Association

Honors

  • American University, Washington College of Law — Betty Southard Murphy Award for Alternative Dispute Resolution Writing

Awards Methodology

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