| Biography:
James H. Shalek is a partner in the Litigation and Dispute Resolution Department and is resident in the New York office of Proskauer Rose LLP.
Jim has extensive experience litigating patent, trademark, trade secret and contractual matters
in federal and state courts, before the International Trade Commission and before arbitration tribunals. He has a gift for explaining complex technology in simple terms, and a record of success in patent cases involving a broad
range of technologies that include: wireless communications and voice-over Internet protocols; computer hardware, software, transaction processing and graphical user interfaces; financial services; semiconductor electronics; medical device technology; bar code scanning; lasers; three-dimensional modeling; photopolymers; optical coatings; DNA sequencing; immunoassays; pharmaceutical capsules; and various forms of genetic engineering.
Jim currently is representing, or recently has represented, British Telecommunications plc, Church & Dwight, ConMed Endoscopic Technologies, Datalogic Scanning, Maytronics, Mitel Networks, NYSE and Shoretel in patent infringement litigation. He has represented numerous other well-known companies in patent infringement litigation, including American Honda, American Hospital Supply, Bay Networks, Genentech, Mitsubishi Electric, Raychem and Spectra-Physics. He has been involved in numerous matters in foreign courts and foreign patent offices, and frequently addresses his clients' intellectual property needs on a global basis.
Jim spent many years counseling Silicon Valley start-ups in relation to all their patent concerns. During that time, he represented Kleiner, Perkins, Caulfield & Byer, among other venture capitalists, and also represented a number of now well-known companies, such as Genentech and Cisco Systems, in their very early stages. He continues to provide strategic counseling on the development and maintenance of patent portfolios, market position, and transactions in which intellectual property issues are of central concern.
Jim also regularly handles opinion work regarding patentability and infringement, licensing matters and issues before the United States Patent & Trademark office, where he has been involved in numerous reexaminations, reissues, interferences, oppositions and cancellation proceedings. He is a member of the California and New York State Bars, is admitted to practice in a large number of federal courts and before the United States Patent & Trademark Office. He also is AV-rated in Martindale Hubbell and is listed as one of the 500 leading lawyers in this year’s LawDragon.
Jim graduated from the University of Pennsylvania in 1975, magna cum laude, with a degree in physics and the natural sciences. He graduated from Boston University Law School, cum laude, in 1978. He is a member of the New York Biotechnology Association.
Representative Patent Litigation Matters
Church & Dwight Co., Inc. v. Abbott (D. NJ)
Representing Church & Dwight (C&D) in a patent infringement action against Abbott relating to over-the-counter pregnancy tests, resulting in a $14.6 million jury verdict and a finding of willful infringement. Post-trial proceedings are pending.
Portfolio Technologies, Inc. v. Church & Dwight Co., Inc. (ITC)
Successfully defended C&D’s particular condom design marketed under the Trojan brand name in the United States in the U.S. International Trade Commission (ITC). The ITC ruled in favor of C&D on a patent challenge mounted by Portfolio Technologies, Inc. (PTI), which alleged that C&D and other condom manufacturers had infringed a condom patent of Dr. Alla Reddy. The decision of the ITC is being appealed by PTI and there is a co-pending district court action.
Church & Dwight v. Pfizer; Church & Dwight v. Quidel; and Inverness Medical Switzerland GmbH, Unipath Diagnostics, Inc., and Church & Dwight Co., Inc. v. Acon Laboratories, Inc. (D. NJ, S.D. Cal., D. MA)
Represented C&D in three additional litigations involving patents relating to a lateral flow test strip used in home pregnancy tests. All actions were settled successfully, one for a publicly reported settlement of $18 million. Another settled following summary judgment of infringement followed by a jury verdict of validity.
Pfizer, Inc., Warner-Lambert Co. and
Warner-Lambert Co, LLC v. Ajix, Inc. (d/b/a Farmacapsulas S.A.) (D. Ct.)
Defeated Pfizer while representing Ajix, the U.S. distributor of a South American manufacturer of hard gelatin capsules of the type commonly used in pharmaceuticals and dietary supplements. Pfizer sued Ajix, Inc., alleging that its gelatin capsule infringed a Pfizer patent related to intricate locking mechanisms present on the capsules. Obtained a summary judgment of noninfringement of Pfizer's patent, which was just summarily affirmed by the Federal Circuit, per curiam, the day following oral argument.
Conexant Systems, Inc. v. British Telecommunications PLC et al. (S.D. Cal.)
Represented British Telecommunications (BT) against Conexant Systems, Inc. in a patent infringement action in San Diego on a BT patent directed to a data compression algorithm used in transmitting data by fax modem, leading to a successful settlement.
Papyrus Technology Corporation v. New York Stock Exchange LLC (S.D. N.Y.)
Defending the New York Stock Exchange in a patent infringement action asserted by Papyrus Technology Corporation, in which a Markman hearing was conducted in December of 2007.
Maytronics v. Aqua Vac (S.D. Fla.)
Obtained a jury verdict in favor of Maytronics, an industry leader in pool cleaning technology, in a breach of contract action against Aqua Vac involving a covenant not to compete. The verdict and a seven figure award to Maytronics was affirmed on appeal by the Eleventh Circuit.
Aqua Products, Inc. v. Smartpool, Inc. and Richard Holstein, v Maytronics (Third Party Defendant)
(D. NJ)
Currently representing Maytronics in a patent infringement claim brought against Maytronics and a distributor in which robotic swimming pool cleaners manufactured by Maytronics are accused of infringement.
Medtech Products, Inc. v. Ranir, LLC et al. (S.D. N.Y.)
Currently representing DenTek Oral Care, Inc. in a patent, trademark, copyright and unfair competition case brought by Medtech Products, Inc. over a device used to treat bruxism.
Ossur North America, et al. v. Freedom Innovations, et al. (C.D. Cal.)
Obtained a favorable settlement in representing Ossur North America, et al., a leading manufacturer of prosthetic devices, in separately filed patent infringement and unfair competition actions respecting prosthetic feet.
Molnlycke Health Care AB et al. v. Medline Industries, Inc., Ossur N. Am. Inc. (N.D. GA.)
Currently defending Ossur North Amenca., in a patent litigation brought by Molnlycke Health Care AB, involving a silicone-foam wound care product which Molnlycke is asserting infringes its patent.
Datalogic Scanning, Inc. v. Metrologic Instruments, Inc. (D. Ore.)
Representing Datalogic Scanning, Inc., one of two leading manufacturers of bar code scanners of the type commonly seen at checkouts, in a patent infringement action and a trade secret action, each filed against Metrologic, Inc. in Eugene, Oregon. Previously represented Datalogic Scanning’s predecessor-in-interest, PSC Scanning in patent infringement brought by Metrologic in New Jersey on seven patents, which was settled in 2005, following a favorable result at a Markman hearing.
Symbol Technologies, Inc. v. PSC Scanning Systems (W.D. N.Y. and E.D. N.Y.)
Successfully represented PSC Scanning, Inc. in two patent infringement actions filed, one involving a preliminary injunction and Markman hearing leading to settlement.
Rates Technology Inc. et al. v. Mitel Networks (E.D. N.Y.)
Successfully represented Mitel Networks, a provider of Internet Protocol telecommunications systems, in this patent infringement action. The case was settled.
Rates Technology, Inc. v. Shoretel, Inc. (N.D. Cal.)
Successfully represented Shoretel, Inc., a provider of Internet Protocol telecommunications systems, in this patent infringement case which settled.
United States Endoscopy Group, Inc. v. Conmed Endoscopic Technologies, Inc. et al. (N.D. OH.)
Successfully defended ConMed, a Nasdaq-listed medical device company, in a patent infringement case relating to patents on endoscopic retrieval devices, in this action which settled.
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