Photograph of James R. Sobieraj

Education

  • University of Michigan, B.S. Electrical Engineering (1979) magna cum laude
  • University of Michigan Law School, J.D. (1982)

Admissions

  • Supreme Court of the United States
  • U.S. Patent and Trademark Office (USPTO)
  • U.S. District Court, Western District of Texas
  • U.S. District Court, Western District of Michigan
  • U.S. District Court, Southern District of Indiana
  • U.S. District Court, Northern District of Illinois, Trial Bar
  • U.S. District Court, Eastern District of Texas
  • U.S. District Court, Eastern District of Michigan
  • U.S. District Court, District of Colorado
  • U.S. District Court, Central District of Illinois
  • U.S. Court of Appeals, Federal Circuit
  • U.S. Court of Appeals, Eighth Circuit
  • U.S. Court of Appeals, Sixth Circuit
  • U.S. Court of Appeals, Tenth Circuit
  • U.S. Court of Federal Claims

Professional Experience

  • IBM Corporation, Burlington, VT
    Engineering intern, 1979 and 1980

James R. Sobieraj

Partner
Chicago
jsobieraj@crowell.com
Phone: +1 312.321.4226
455 N. Cityfront Plaza Drive
Suite 3600
Chicago, IL 60611

Jim Sobieraj believes his litigation success for clients derives from being able to manage two apparently contradictory traits, the ability to both listen and lead. With more than 35 years of experience in more than 100 IP litigations and 20 IPRs, Jim excels at developing and executing on strategies that never lose focus of achieving his clients’ legal and business objectives.

Jim served as lead counsel in litigations involving the infringement, validity and ownership of patent rights, license agreements, misappropriation of trade secrets, trade dress infringement, unfair competition, false advertising, fraud, antitrust, and other commercial litigation. His experience includes bench and jury trials, temporary restraining orders, preliminary injunctions, Markman hearings, appeals, IPRs, arbitrations and mediations. He has represented companies in a variety of technologies, including in analog and digital electronics, telecommunications, software, medical devices, hydraulics, automotive components, and various consumer goods.

Jim does not take the trust that clients place in their outside counsel lightly. As both a legal and business advisor, seeing the full picture helps him align success for clients both in and out of the courtroom. For example, in a critical arbitration for a client, Jim was not only able to secure a $25 million judgment for his client, but he also used the rubric of the case to develop a plan for minimizing future litigation over similar claims, which included changing contracts and procedures for protecting the client’s most valuable trade secrets.

Through his active counseling practice, Jim advises clients on strategies for building, maintaining, enforcing, defending and commercializing patent portfolios. He works with clients in the U.S., Canada, Europe, Asia and Australia, and has developed a large global network of highly-regarded IP professionals.

Jim received his J.D. from the University of Michigan Law School and received a B.S. in electrical engineering (magna cum laude) from the University of Michigan. He was an engineering intern at IBM Corporation prior to entering law school. Before joining Crowell & Moring, Jim served as president of Brinks Gilson & Lione from 2012 through 2017. During his tenure, the firm opened a new office in China.



Recognition

  • The Best Lawyers in America, Litigation - Intellectual Property, Patent Law, 2011-2021
  • Martindale-Hubbell "AV Preeminent" rating
  • IP Star, Managing Intellectual Property magazine, 2013-2020
  • Leading Patent Practitioner, Intellectual Asset Management's "IAM Patent 1000 – The World’s Leading Patent Practitioners," 2012-2020 (Litigation and Transactions)
  • Leading Intellectual Property Strategist, Intellectual Asset Management magazine's "IAM 300 - A Guide to the World's Leading IP Strategists," 2014
  • Leading Patent Litigator, Intellectual Asset Management's "IAM Patent Litigation 250 - The World’s Leading Patent Litigators," 2011
  • Euromoney Patent Experts Guide (11th Edition)
  • Euromoney Expert Guide to the World's Leading Patent Law Practitioners, 2005, 2009, 2017
  • Leading Intellectual Property Strategist Intellectual Asset Management's “IAM 250 - A Guide to the World’s Leading IP Strategists,” 2009-2011
  • Guide to the World's Leading Patent Law Practitioners, published by Managing Intellectual Property, 2007, 2010
  • Legal Media Group's Guide to the World's Leading Patent Law Experts, 2005
  • BTI Client Service All-Star Team for Law Firms, 2004
  • Euromoney Guide to the World’s Leading Technology, Media and Telecommunications Lawyers, 2003
  • Euromoney Guide to the World’s Leading Information Technology Advisors, 1999


Affiliations

  • Licensing Executives Society
    President, 2002-2003
    President-Elect, 2001-2002
    Secretary, 1998-2001
    International Delegate, 1997-2007
    Board of Trustees, 1996-2004
    Various other roles 1992-1996
  • Licensing Executives Society International
    Past President, 2016-2017
    President, 2015-2016
    President Elect, 2014-2015
    Treasurer, 2011-2014
    Counsel to the Board of Directors, 2008-Present
    Chair, 2008 LES International Conference
    Vice Chair, Dispute Resolution Committee, 2005-2007
    Various other roles 2000-2005
  • Intellectual Property Law Association of Chicago
    President, 2007
    President-Elect, 2006
    Vice President, 2005
    Judges Dinner Chair, 2004-2005
    Judicial Appointments Committee Chair, 2009-2011
    Patent Law Symposium Co-Chair, 2007-2011
  • National Inventors Hall of Fame
    Board of Directors, 2004-2010
  • IP Hall of Fame Academy, 2007-Present
  • The LES Standards Board, 2017-Present
  • The Licensing Foundation
    Board of Directors, 2003-2008
  • Certified Licensing Professionals, Inc.
    Board of Governors, 2007-2008
    President, 2008
    Counsel to the Board of Governors, 2008-2010
  • American Intellectual Property Law Association
    Chairman, Contracting for ADR Committee, 1990-1993
    Judge, Giles S. Rich Moot Court Competition

Admissions

Admitted to practice: Illinois, U.S. Patent and Trademark Office (USPTO), U.S. District Court for the Western District of Texas, U.S. District Court for the Western District of Michigan, U.S. District Court for the Southern District of Indiana, U.S. District Court for the Northern District of Illinois Trial Bar, U.S. District Court for the Eastern District of Texas, U.S. District Court for the Eastern District of Michigan, U.S. District Court for the District of Colorado, U.S. District Court for the Central District of Illinois, U.S. Court of Appeals for the Federal Circuit, U.S. Court of Appeals for the Eighth Circuit, U.S. Court of Appeals for the Sixth Circuit, U.S. Court of Appeals for the Tenth Circuit, U.S. Court of Federal Claims



Representative Engagements

  • Sysmex Corp., et al. v. Beckman Coulter, Inc. (D. Del.): Represent the plaintiffs in a case asserting infringement of two patents relating to analyzers with a distinct body fluid mode. The defendants have filed four IPRs on the asserted patents.  The case and IPRs are pending.
  • Beckman Coulter, Inc. v. Sysmex America, Inc. et al., (N.D. Ill.): Represent the defendants accused of infringing a patent relating to hematology analyzer systems.  The case is pending.
  • ABM International, Inc. v Juki America, Inc., et. al. (D.N.J.):  Represent the defendants accused of infringing three patents relating to electronic controls for industrial sewing machines.  The case was stayed pending the outcome of three IPRs. The three IPRs have been instituted.
  • Polaris Powered Technologies LLC v TCL Corporation, et. al. (C.D. Cal.):  Represent the defendants accused of infringing a patent relating to LED arrays.  The case was stayed pending the outcome of an IPR, which was instituted.  The litigation and IPR have been settled.
  • Composite Innovation Group, et. al. v. Michigan State University, et. al. (Michigan Court of Claims; Michigan Court of Appeal.):  Represent the defendants accused of breach of a patent license agreement.  The Court of Claims granted defendants’ motions to dismiss all counts.  The case is pending on appeal.
  • Fractus, S.A. v. ZTE (USA), Inc. (E.D. Texas; N.D. Texas): Represent the defendant accused of infringing seven patents relating to antennas used in mobile handsets.  The case was filed in E.D. Texas, and later transferred to N.D. Texas due to improper venue. The defendant filed seven IPRs on the asserted patents. The case settled.  
  • American Patents LLC v. ZTE Corporation, et al. (E.D. Texas): Represent the defendants accused of infringing seven patents relating to various aspects of cell phone technology.  The case settled. 
  • American Patents LLC v. Hisense Co. Ltd., et al. (E.D. Texas): Represent the Hisense defendants and Best Buy with respect to Hisense TVs accused of infringing five patents.  The case settled.
  • IPA Technologies Inc. v. ZTE (USA) Inc. (S.D. Cal.): Represented the defendant accused of infringing two patents relating to speech-based navigation of electronic data sources.  The case was dismissed without prejudice during the discovery phase. 
  • JSDQ Mesh Technologies, Inc. v. BelAir Networks Corp et al. (D. Del.): Defended Ericsson Inc. and several affiliates and customers (including AT&T and Comcast), which had been accused of infringing four patents relating to wireless communications networks.  Following the Markman hearing, the parties settled.
  • Endeavor Meshtech Inc. v. Ericsson Inc., et al. (S.D.N.Y.): Represented defendants that had been accused of patent infringement.  The plaintiff agreed to defendants’ request to dismiss the case without prejudice after defendants shared their evaluation of the plaintiff’s claims.
  • Alticor Inc. et al v. UMG Recordings Inc. et al. (M.D.Florida): Represented the plaintiffs in a breach of contract and copyright case against the three largest record companies in U.S. The case settled.
  • Quixtar Inc.v. Woodward et al. (Arbitration; E.D. Mich.): Represented Quixtar in an action relating to misappropriation of trade secrets, breach of contract and tortious interference. After a 16-day trial, the arbitrator awarded Quixtar more than $25 million, which was affirmed in federal court.
  • Cuno, Inc. v. Pall Corporation (E.D.N.Y.): Represented the plaintiff during a 5-week jury trial involving claims of patent infringement asserted by both parties. The patents were directed to nylon microporous membranes. The parties settled the case when the defendant agreed to pay the plaintiff $12 million and to provide additional consideration.
  • AMP Incorporated v. AT&T Corporation. (M.D.Pa.): Represented AMP in a patent infringement suit against AT&T. After a summary jury trial, the parties reached a settlement, with AT&T paying AMP $9 million and granting the company additional consideration.
  • Phi-Insul Corp. d/b/a IntegraSpec v. Reward Wall Systems, Inc. et al (E.D. Texas and Nebraska): Represented a Canadian company accused of infringing a patent relating to an insulated concrete form. The Eastern District of Texas granted a motion to transfer the case to the District of Nebraska. The Nebraska court granted summary judgment of non-infringement in favor of our client, which was affirmed by the Federal Circuit.
  • Progressive Casualty Insurance Co. v. Liberty Mutual Insurance Co. (Fed. Cir.): Represented the appellant in appeals of two of the first Covered Business Method Patent Reviews decided by the PTAB.
  • Tenneco Automotive Inc. v. Visteon Corp., (D.Del.): Defended Visteon, which was accused of infringing two patents on catalytic converters. One patent was dismissed prior to trial. Following a six-day jury trial on the second, the parties settled before the jury delivered a verdict.
  • Procter & Gamble v. Randy Haugen and Amway Corporation (D. Utah; 10th Cir.): Defended Amway against P&G’s claims based on the Lanham Act, defamation per se, tortious interference with business relations, unfair competition, negligent supervision and vicarious liability. All of P&G’s claims were dismissed at the pleading stage or by summary judgment, and the 10th Circuit affirmed.
  • Nitro Distributing et al. v. Alticor Inc., et al. (W.D.Mo.; 8th Cir.): Represented the defendants in an antitrust case. On the eve of trial, the Court granted defendants’ motion for summary judgment and dismissed all of the claims. The 8th Circuit Court of Appeals affirmed the dismissal of all claims. The U.S. Supreme Court denied plaintiffs’ petition for certiorari.
  • Wolverine World Wide Inc. v. Nike Inc., (W.D. Mich; Fed. Cir.): Defended Nike against a claim that one of its popular shoe lines infringed a patent owned by Wolverine. The Federal Circuit affirmed the lower court’s grant of summary judgment of non-infringement.
  • Nartron Corp. v. Amway Corp. (Michigan Circuit Court; W.D.Mich. Bankruptcy Court): Represented Amway in a lawsuit involving claims of ownership of patent rights, breach of contract, and misappropriation of trade secrets relating to end-of-life indicators for water filters. Following bench trials on liability and damages, the trial court awarded Amway all of the patent rights and damages for Nartron’s breach of contract and trade secret misappropriation. The Court of Appeals affirmed the award of patent rights, affirmed Nartron’s liability for several hundred thousand dollars of damages and interest, and remanded the case for further proceedings on Amway’s claim for additional damages. Nartron subsequently filed for bankruptcy protection. The parties settled with Nartron paying Amway $3.5 million.
  • New Medium Technologies LLC et al v. LG Philips LCD et al. (N.D.Ill.): Represented LG Philips LCD, which had been accused of infringing three patents relating to LCD panels. The parties settled.
  • JSDQ Mesh Technologies, Inc. v. BelAir Networks Corp et al. (D.Del.): Defended Ericsson Inc. and several affiliates, which had been accused of infringing four patents relating to wireless communications networks. The parties settled.
  • Oxford Gene Technology Limited v. Motorola, Inc., (N.D.Ill.): Defended Motorola, which had been accused of infringing a patent directed to DNA arrays. The parties settled.
  • Standard Oil v. Showa Entetsu (E.D. Mich.): Represented Standard Oil in a case asserting that the defendant that breached an exclusive trade secret license for an electroplating process. The court entered a temporary restraining order shortly after the lawsuit was filed, and issued preliminary injunction after an extensive evidentiary hearing.
  • AMP Incorporated v. Teradyne, Inc. (M.D.Pa.): Represented AMP, which had sued Teradyne for infringing two AMP patents and for misappropriating trade secrets related to high density/high speed electrical connectors. The case involved a two-day Markman hearing. The parties settled shortly after AMP filed its oppositions to Teradyne’s motions for summary judgment.
  • Alticor Inc. v. Ultra-Sun Technologies, Inc. (W.D.Mich; Fed. Cir.): Represented Alticor in an action based on claims of false advertising under federal and state law, and infringement of two patents relating to water treatment systems. The false advertising claims were settled before trial. The Federal Circuit ruled in Alticor’s favor on the patent claims, after which the parties settled.
  • Delta T Corporation v. Sun-North et al. (E.D.Ky., and AAA): Represented several Canadian corporations in an action removed from a Kentucky state court, and then ordered to arbitration. The plaintiff alleges patent infringement, extortion and breach of contract. The court declined to grant a preliminary injunction against our client after a 1-day trial. The parties then settled.
  • Nano-Proprietary Inc. v. Till Keesmann (N.D.Ill.): Defended a German inventor, Till Keesmann, in an action concerning the termination of an exclusive license agreement for a pioneer patent in the field of carbon nanotubes. The parties settled.
  • Maui Jim, Inc. v. Bargain Depot (C.D.Ill.): Represented Maui Jim, which sued Bargain Depot for infringing a design patent. The court granted Maui Jim’s motion for summary judgment of infringement and validity, and awarded sanctions and costs against defendant.

Representative Published Decisions

  • Nitro Distrib., Inc. v. Alticor Inc., 565 F.3d 417 (8th Cir. 2009)
  • Nitro Distrib., Inc. v. Alticor Inc., 453 F.3d 995 (8th Cir. 2006)
  • Alticor Inc. v. Ultra-Sun Technologies, Inc., 269 F.Supp. 2d 936 (W.D. Mich. 2003)
  • Procter & Gamble v. Haugen and Amway Corp., 317 F.3d 1121 (10th Cir. 2003)
  • Procter & Gamble v. Haugen and Amway Corp., 222 F. 3d 1262 (10th Cir. 2000)
  • Nike Inc. v. Wolverine World Wide, Inc., 43 F. 3d 644 (Fed. Cir. 1994)
  • Wolverine World Wide Inc. v. Nike Inc., 38 F. 3d 1192 (Fed. Cir. 1994)
  • Amway Corp. v. Nartron Corp., 29 USPQ 2d 1314 (Fed. Cir. 1993)
  • Amway Corp. v. Nartron Corp., 25 USPQ 2d 1944 (W.D. Mich. 1992)
  • Cuno Inc. v. Pall Corp., 729 F. Supp. 234 (E.D. N.Y.1989)
  • Michod v. Walker Magnetics Group Inc., 115 FRD 345 (N.D. Ill. 1987)
  • Dana Corp. v. American Precision Co., 221 USPQ 1098 (N.D. Ill. 1984)


Publications

  • "Feature Profile: Detroit Native Heads One of Chicago's Top IP Firms," Detroit Legal News (March 23, 2012). Author: James R. Sobieraj
  • "Know-How in the United States, Wurzer-Kaiser, ed. (Bundesanzeiger, Verlag: Koeln, 2007) Ch. 5." Praxishandbusch Internationaler Know-how-Schutz, Methoden - Instrumente Lösengun [Practical Handbook of International Know-How Protection] (2007). Author: James R. Sobieraj.
  • "International Litigation," Aspatore Books (2005). Author: James R. Sobieraj
  • "Current Issues and Future Trends for Large Corporate Licensing Programs," les Nouvelles, Journal of the Licensing Executives Society (June 2004). Author: James R. Sobieraj
  • "Protecting Your IP in Joint R&D Projects," Managing Intellectual Property (July 1, 2003). Author: James R. Sobieraj


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Aug.19.2021

The Best Lawyers in America 2022 Recognizes 53 Crowell & Moring Attorneys, One Selected as Lawyer of the Year