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James P. Naughton

Retired Partner

Overview

James P. Naughton is a retired partner with Crowell & Moring. Chief executives and patent counsel value and rely on the intelligence, depth of knowledge, and good judgment that Jim brought to bear on their patent problems. With over 40 years of experience in patent litigation, procurement, and counseling, Jim had created and managed several successful client teams and was focused on patent studies, portfolio analysis and management, and strategic advice. He had analyzed thousands of patents, written opinions on hundreds of patents, and been deposed several times on prosecution and opinion matters.

Jim had extensive experience in diverse technical fields, such as medical devices, software, vehicle navigation and audio, athletic footwear and apparel, e-commerce and financial services, LEDs, vehicle transmissions, machine tools, and printing equipment. Emphasizing client service, he understood the client’s business and provides high-value strategic analysis that meets the client’s practical business needs. Jim was also sensitive to client cost constraints and had partnered with clients to successfully implement creative alternative fee arrangements.

Jim was co-chair of Crowell & Moring’s Patent Prosecution Group. Prior to joining Crowell, he was a shareholder at Brinks Gilson & Lione, where he served on the board of directors and the firm’s executive committee.

Career & Education

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    • University of Illinois, B.S., with highest honors, electrical engineering, 1978
    • University of Illinois College of Law, J.D., 1981
    • University of Illinois, B.S., with highest honors, electrical engineering, 1978
    • University of Illinois College of Law, J.D., 1981
    • Illinois
    • U.S. Patent and Trademark Office (USPTO)
    • U.S. Court of Appeals for the Federal Circuit
    • Illinois
    • U.S. Patent and Trademark Office (USPTO)
    • U.S. Court of Appeals for the Federal Circuit
  • Professional Activities and Memberships

    • American Bar Association
    • American Intellectual Property Law Association
    • Chicago Bar Association
    • Institute of Electrical and Electronics Engineers

    Professional Activities and Memberships

    • American Bar Association
    • American Intellectual Property Law Association
    • Chicago Bar Association
    • Institute of Electrical and Electronics Engineers

Representative Matters

  • MercExchange v. Overture. Represented defendant in “rocket docket,” patent litigation involving Internet search engines.
  • Information International v. Adobe Systems and Apple Computer. Represented plaintiff in patent litigation involving electronic character generation, including five-week trial and Federal Circuit appeal. [Represented plaintiff in prior related cases, Information International v. Compugraphic and Rockwell International v. Allied]
  • A.G. für Industrielle Elektronik (AGIE) v. Sodick. Represented plaintiff in federal court patent infringement action and companion ITC action (In re Certain Wire Electrical Discharge Machining Apparatus and Components Thereof), including two-week ITC hearing. Technology involved electric discharge machine tools. [Represented AGIE in prior related cases, AGIE v. Mitsubishi Electric and Colt Industries v. AGIE]
  • Zenith v. AMP. Represented defendant in patent litigation involving computer touch screens.
  • London v. Samsonite. Represented plaintiff in Federal Circuit appeal; took over case following loss in the trial court.

Recognition

  • Best Lawyers in America: Patent Law, 2010–2021
  • Illinois Super Lawyers: Intellectual Property Law, 2005–2009, 2011–2013, 2016–2017
  • Leading Lawyers Network: Leading Intellectual Property Lawyer, 2004–2005, 2007, 2009–2014, 2016