Jim Kwak specializes in patent prosecution, litigation, counseling and appellate matters. He has represented various Fortune 100 companies in the procurement, licensing and enforcement of patent rights. Jim has extensive experience in prosecuting and litigating patents in the electrical, computer, and mechanical arts including telecommunications, financial processing, hybrid motor, flat-panel display, and interactive gaming technologies.
Jim's litigation experience includes representation of clients in all types of Intellectual Property cases including patent, trademark, copyright, and trade secret cases. Jim represented multiple defendants in the Central District of California in one of the largest multidistrict litigation patent cases in history. Jim has extensive experience litigating appeals and presenting oral arguments at the Court of Appeals for the Federal Circuit located at the historic Lafayette Square in Washington D.C. For example, in Duro-Last, Inc. v. Custom Seal, Inc., 321 F.3d 1098, 1109-10 (Fed.Cir.2003.), Jim successfully represented Custom Seal at the Court of Appeals for the Federal Circuit (CAFC) overturning the lower Court's JNOV ruling finding various patents related to roofing materials invalid as being obvious. The CAFC agreed with the argument that a patentee's pre-verdict motion for judgment as a matter of law (JMOL) directed to inequitable conduct and the on-sale bar was insufficient to preserve the right to bring a post-verdict JMOL motion directed to obviousness. Based upon the successful appeal, the CAFC reinstated the jury finding in favor of the client, Custom Seal. In the case of Info-Hold, Inc. v. Applied Media Techs, Corp., 783 F.3d 1262 (Fed. Cir. 2015), Jim successfully represented Info-Hold, Inc. as lead trial counsel overturning the lower Court’s claim construction ruling.
Jim has litigated IP cases in many Federal District Courts across the country, including the Southern District Court of Ohio, where Jim has been admitted to practice for over 20 years. Jim prides himself in his ability to manage a case efficiently to maximize results while keeping litigation costs down.
Jim’s practice also includes the preparation of patent applications and prosecution of those applications at the United States Patent and Trademark Office. Jim’s background in electrical engineering gives him the expertise to understand complex inventions and to communicate with inventors to get to the root of the invention and to prepare a thorough and accurate patent application.
Jim received his J.D. from The Ohio State University College of Law, where he was chosen as a member of the Journal of Alternative Dispute Resolution based on his article submission as a second year law student. Jim earned his Bachelor of Science in Electrical Engineering from Purdue University where he graduated with honors as a member of Eta Kappa Nu, the international electrical and computer engineering honor society of IEEE. Jim is admitted to practice before the United States Patent and Trademark Office. Prior to joining Standley Law Group, Jim worked for General Research Corporation as an engineering associate working with military implementation projects including military cockpit flat-panel display technology.