• vcard
D 713.374.1631
F 713.374.1601
  • Education
    • M.B.A., University of Oxford, Hertford College, U.K., 2012
    • J.D., cum laude, South Texas College of Law, 2006
    • B.S., University of Texas at Austin, 2002, Electrical Engineering
  • Bar Jurisdictions
    • California, 2009
    • Texas, 2006
    • Admitted to practice before the United States Patent and Trademark Office, 2004
James Murphy has successfully represented clients in all facets of intellectual property with a focus on practice before the Patent Trial and Appeal Board (PTAB). James has been involved in hundreds of contested Patent Office proceedings including inter partes review, covered business method review, post-grant review and reexamination.  James has equally represented both patent owners and petitioners giving him unique insights into the process. 

By focusing his practice on Patent Office post-grant review proceedings and the complexities associated with those processes, James has developed and implemented numerous strategies to leverage these proceedings with regard to licensing, infringement litigation, Hatch Waxman, and International Trade Commission (ITC) proceedings.

In addition to his experience in post-grant proceedings, James has uses his combined legal and business background to assist in-house counsel and company executives in developing their IP and corporate strategies to help protect market share and minimize exposure to risk.

He has assisted clients in a variety of technical areas, including:
  • Smartphones
  • Computer networking
  • Video games
  • Semiconductors
  • Proteomics
  • Real time PCR
  • Single cell diagnostics
  • Smart grid and energy management
James also takes an active role in counseling start-up companies from helping with corporate structure and planning, to advising on intellectual property strategies and assisting them with funding rounds from seed to Series A and beyond.

  • Represented a Fortune 100 consumer device company in post grant proceedings before the Patent Trial and Appeal Board (PTAB), resulting in the cancellation of all claims asserted against client, despite multiple prior litigation decisions finding that claims were valid. This outcome significantly reduced the demand against my client leading to a settlement. 
  • Successfully defended portfolio of fourteen patents from eight different families related to networking technology in post grant challenges brought by direct competitor. Upheld claims were found to be infringed in companion litigation leading to a verdict over $100M for my client. 
  • Assisted in formulating and implementing strategy at publically traded bio-tech company to deal with influx of licensing demands through aggressive use of post grant proceeding. Results have substantially reduced client's expected licensing costs resulting in increased profitability for multiple product lines. 
  • Represented green energy start-up in a Covered Business Method Review (CBM) against a non-practicing entity seeking a license, while client was undergoing its initial public offering. After representing the client at an oral hearing before the PTAB, the opposing party consented to an adverse judgment.
  • Filed one of the first inter partes review (IPR) petitions for a large multi-national technology company that helped establish the case law for when a Petitioner was estopped from filing an IPR, due to prior service of infringement complaint. Case resolved with favorable settlement for client.
eAlerts Alerts
December 2017
text icon Publications & Presentations
An Upward Trajectory, the Meteoric Rise in Reexamination Filings
Co-author
Managing Intellectual Property America's Focus
September 2011
text icon Publications & Presentations
Concurrent Reexaminations as a Strategic Patent Litigation Defense Tool
Co-author
Practicing Law Institute Intellectual Property Course Handbook, at 818-23
September-November 2010
text icon Publications & Presentations
Ride the Reexamination Train
Co-author
Managing Intellectual Property America's Focus
October 2009
text icon Publications & Presentations
An Overview & Primer on the New Rules; The Caution Light at the Intersection of Prosecution & Litigation in the 21st Century
Co-author
The Sedona Conference
2007