Skip to the content

James N. Willi

James-N-Willi-2008

James N. Willi

jwilli@willi.com

Texas Attorney at Law
United States Patent Attorney
Texas Professional Engineer

 

online at
Super Lawyers

visit superlawyers.com  

James Norman Willi


View Jim Willi's profile on LinkedInView Jim Willi's Profile

Jim Willi has over 18 years of civil, commercial, and intellectual property litigation and appellate experience with particular focus on patent infringement litigation, trademark infringement litigation and prosecution, copyright infringement litigation, and trade secret misappropropriation litigation.  He also has considerable experience with business transactions, contracts, patent infringement opinions, patent reexaminations, intellectual property licensing, Texas business entity formation, and real property transactions and litigation.  He has represented clients at all levels of federal courts including District Courts, Courts of Appeals, and the United States Supreme Court, and at all levels of Texas courts.

Mr. Willi is licensed to practice law in Texas and Colorado, 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, the Austin Intellectual Property Law Association (Austin IPLA), and the Institute of Electrical and Electronics Engineers (IEEE).

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

Goodman v. ON Semiconductor Corp.  Willi Law Firm was lead counsel representing Arizona-based ON Semiconductor Corporation in a patent infringement lawsuit filed in the U.S. District Court for the Southern District of Texas, Houston Division. The patent in suit, U.S. Patent No. 6,243,315, relates to computer memory systems with a low power down mode. The case was settled to the mutual satisfaction of the parties.

7-Eleven, Inc. v. Getagadget, Inc.  Willi Law Firm represents Austin-based Getagadget, Inc. in two trademark opposition proceedings in the United States Patent and Trademark Office before the Trademark Trial and Appeal Board (TTAB).  Getagadget sells BIG BITE™ bottle openers and beach toys to mass merchandisers (such as Wal-Mart, Walgreens, and CVS pharmacy), convenience stores, vacation resort gift shops, surf shops, souvenir stores, restaurants, bars, nightclubs, promotional companies, marinas, theme parks, water parks, yacht clubs, and golf clubs in the United States and foreign countries.  7-Eleven sells its BIG BITE® hot dogs in 7-Eleven convenience stores.  7-Eleven alleged that consumers will be confused, mistaken, or deceived into believing that Getagadget's BIG BITE™ bottle openers and beach toys, which were not sold in 7-Eleven convenience stores, are somehow related to or originate from 7-Eleven.  Alternatively, 7-Eleven alleged that Getagadget's use of the BIG BITE™ mark for bottle openers and beach toys would somehow dilute 7-Eleven's trademark for hot dogs. The cases settled to the mutual satisfaction of the parties, and the trademark opposition proceedings were dismissed.

Mavrix Photo, Inc. v. Popscreen, Inc.Willi Law Firm represented Houston-based Popscreen, Inc. in a copyright infringement lawsuit filed in the United States District Court for the Southern District of Texas, Houston Division.  The case against Willi Law Firm's client was voluntarily dismissed by the Plaintiff with no settlement payments being made by Popscreen.

CAO Group, Inc. v. Dentlight, Inc.  Willi Law Firm was local counsel for Utah-based CAO Group, Inc., a leading OEM company in dental devices and materials for the last 10 years.  CAO Group pioneered the LED curing light and diode laser technologies in dentistry.  CAO Group sued Dentlight, Inc. for infringement of eleven of its U.S. Patents in the U.S. District Court for the Eastern District of Texas, Tyler Division. The case was settled to the mutual satisfaction of the parties.

Uniloc Luxembourg S.A. et al. v. OriginLab Corporation.  Willi Law Firm was lead counsel for Masschusetts-based OriginLab Corporation in a patent infringement lawsuit filed in the U.S. District Court for the Eastern District of Texas, Tyler Division. The patent in suit, U.S. Patent No. 5,579,222, relates to distributed license administration system using a local policy server to communicate with a license server and control execution of computer programs.  OriginLab is a licensed user of Flexera Software, LLC's FlexNet Licensing and FlexNet Publisher software.  The case against Willi Law Firm's client was dismissed with prejudice after Flexera obtained a license to the patent in suit.

Cerium Laboratories LLC v. Semi Analytics & Reid Powers.  Willi Law Firm represented Cerium Laboratories LLC in an action for suit on a sworn account, breach of contract, breach of fiduciary duty and misappropriation of trade secrets, fraud, unjust enrichment, and constructive trust, and a declaratory judgment to declare the rights and other legal relations by and between Plaintiff and Defendants filed in the U.S. District Court for the Western District of Texas, Austin Division.  The case was settled to the mutual satisfaction of the parties.

ICON Health & Fitness, Inc. v. Johnson Health Tech North America, Inc.  Willi Law Firm is local counsel for Utah-based ICON Health & Fitness, Inc., one of the world’s largest developers, manufacturers, and marketers of fitness equipment with brands that include NordicTrack, ProForm, Weider, Reebok and Gold’s Gym, in a patent infringement lawsuit filed in the U.S. District Court for the Eastern District of Texas, Marshall Division.  The patents in suit, U.S. Patent Nos. 7,702.719 and 8,298,123 relate to improved methods, systems, and programs for controlling exercise machines.

Warner Bros. Home Entertainment Inc. v. Fannix, Inc. et al.  Willi Law Firm represented the Texas-based defendants in a copyright infringement case filed in the U.S. District Court for the Central District of California.  Willi Law Firm's clients were accused of distributing, promoting, offering for sale, and selling counterfeit copies of various copyrighted works owned by the plaintiff on Amazon.com.

InNova Patent Licensing, LLC v. Ipswitch, Inc.  Willi Law Firm was local counsel for Massachusetts-based Ipswitch, Inc. in a patent infringement lawsuit filed in the U.S. District Court for the Eastern District of Texas, Marshall Division. The patent in suit, U.S. Patent No. 6,018,761, relates to a system for adding information obtained from sources external to an electronic mail transport process to electronic email messages.  The case was settled to the mutual satisfaction of the parties.

Uniloc Luxembourg S.A. et al. v. Ipswitch, Inc.  Willi Law Firm is local counsel for Masschusetts-based Ipswitch, Inc. in a patent infringement lawsuit filed in the U.S. District Court for the Eastern District of Texas, Tyler Division. The patent in suit, U.S. Patent No. 7,024,696, relates to a method and a system for prevention of piracy of software applications via a communications network, such as the Internet.

Innovative Automation LLC v. Audio and Video Labs, Inc. d/b/a Disc Makers et al.  Willi Law Firm represented Formats Unlimited, Inc., Kunaki LLC, U.S. Digital Media, Inc., and Vervante Corporation 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.  Willi Law Firm filed a request for ex parte reexamination of the patent in suit, U.S. Patent No. 7,174,362, and for a continuation of the patent in suit, U.S. Patent No. 7,392,283, on February 14, 2012, in which Willi Law Firm requested the U.S. Patent and Trademark Office to reexamine all claims of the '362 and '283 patents in view of ten different prior art U.S. patents.  On March 1, 2012 and on May 11, 2012, the U.S. Patent and Trademark Office determined that a substantial new question of patentability affecting all claims of the '362 and '283 patents, respectively, was raised by Willi Law Firm's request for ex parte reexamination and, therefore, granted Willi Law Firm's request for ex parte reexamination of the '362 and '283 patents.  On May 17, 2012, the U.S. Patent and Trademark Office issued an office action rejecting claims 1, 2, 4, 7 and 8 of the '362 patent in view of the submitted prior art.  On May 31, 2012, U.S. Magistrate Judge John D. Love issued a report and recommendation that the motion to dismiss pursuant to Federal Rules of Civil Procedure 12(b)(2) and 12(b)(3) filed by Willi Law Firm on behalf of its client, Formats Unlimited, Inc., should be granted and that that the patent infringement lawsuit against Willi Law Firm's client should be dismissed for improper venue.  On September 27, 2012, Judge Leonard Davis adopted the recommendation of Magistrate Judge Love and ordered the patent infringement case against Willi Law Firm's client, Format's Unlimited, dismissed for improper venue.  The case against Willi Law Firm's remaining clients was settled to the mutual satisfaction of the parties.  On February 20, 2013, the U.S. Patent and Trademark Office issued an office action rejecting all 14 claims of the '283 patent in view of the submitted prior art.  During the reexamination proceedings for the '283 patent, the patent amended calism 1 and 3-4 and added calism 15-19 and 21-25.  On August 29, 2013, the U.S. Patent and Trademark Office issued a final office action rejecting all claims of the '283 patent in view of the submitted prior art.

Quanta Services, Inc. et al. v. Liveline Solutions, Inc. et al.  Willi Law Firm represented the Canadian defendants in a patent infringement lawsuit, which was filed in the U.S. District Court for the Southern District of Texas, Houston Division.  The patent in suit, U.S. Patent No. 5,538,207, involved a rotating and telescoping robotic arm operable by remote control for temporarily supporting and repositioning energized power lines to enable repair or replacement of transmission or distribution poles, crossarms, insulators, insulator pins and the like, or to relocate conductors to facilitate their replacement.  The case against Willi Law Firm's clients was settled to the mutual satisfaction of the parties.

GPS Industries LLC v. Expresso Satellite Navigation, Inc. et al.  Willi Law Firm represented Expresso Satellite Navigation, Inc. in a patent infringement lawsuit, which was filed in the U.S. District Court for the Western District of Texas, Austin Division, against multiple defendants.  The patent in suit related to a portable GPS-based distance tracking system for use by a golfer on a golf course.

Innovative Automation LLC v. Audio and Video Labs, Inc. d/b/a Disc Makers et al.  Willi Law Firm 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.  Willi Law Firm 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.  Willi Law Firm 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.  Willi Law Firm 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.  Willi Law Firm 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.  Willi Law Firm 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.