James H. Shalek

Partner, Litigation Department at Proskauer Rose LLP

James H. Shalek

James H. Shalek

Partner, Litigation Department at Proskauer Rose LLP

Biography

James H. Shalek is a partner in the Litigation Department and head of the Patent Law Group.

Jim has extensive experience litigating patent, trademark, trade secret and contractual matters in federal and state courts, and 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: immunoassays, antibodies, genetic engineering, 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, and optical coatings.

Jim currently is representing, or recently has represented, British Telecommunications plc, Church & Dwight, Hospital for Special Surgery, ConMed Endoscopic Technologies, Datalogic Scanning, Depository Trust & Clearance Corp., ImClone, Maidenform, 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.

Representative Patent Litigation Matters:

*British Telecommunications PLC v. Valve Corp. (D. Del.) Representing British Telecommunications (BT) in a patent infringement action filed against Valve, an American video game developer and digital distribution company, for infringement of four U.S. patents owned by BT.

*
Hospital for Special Surgery v. Wright Medical Technology, Inc., et al (S.D.N.Y.) Represented Hospital for Special Surgery (HSS) in obtaining summary judgment of liability against two medical device manufacturers with whom HSS had entered a product development, patent and know-how license agreement related to prosthetic knee technology developed by HSS.

*
British Telecommunications PLC v. Google, Inc., C.A. (D. Del.) Represented British Telecommunications in a patent infringement action directed against Google’s pervasive infringement of British Telecommunications patents relating to navigation (Google Maps), location-based services, bandwidth management, and access to personalized services and content.

*
British Telecommunications PLC v. Texas Instruments (D. Del.); British Telecommunications PLC v. Freescale Semiconductor, Inc. (D. Del.); British Telecommunications PLC v. Broadcom Corp (D. N.J.); British Telecommunications PLC v. MediaTek Wireless (D. MA.); and British Telecommunications PLC v. STM Microelectronics (D. MA.) Represented British Telecommunications in a series of patent infringement actions involving patented technology directed to an improved Liv Zempel compression algorithm.

*
Church & Dwight Co., Inc. v. Abbott (D.N.J.) Represented Church & Dwight in obtaining a $14.6 million jury verdict in a patent infringement action against Abbott. The jury also found wilful infringement which subsequently resulted in enhancement of that award to $29.2 million. The court subsequently awarded in excess of $8.8 million in pre- and post-judgment interest, to bring the total award to more than $38 million.

*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 patent of Dr. Alla Reddy. The decision of the ITC was summarily affirmed by the Court of Appeals for the Federal Circuit on June 10, 2008.

*Church & Dwight Co., Inc. v. Pfizer; Church & Dwight v. Quidel Corporation; Inverness Medical Switzerland GmbH, Unipath Diagnostics, Inc., and Church & Dwight Co., Inc. v. Acon Laboratories, Inc; and Inverness Medical Innovations, Inc., Inverness Medical Switzerland GmbH, and Church & Dwight Co., Inc. v. Orasure Technologies, Inc. (D. N.J., S.D. CA, D. M.) Represented C&D in four additional litigations involving patents relating to a lateral flow test strip used in home pregnancy tests. Orasure remains pending. The other 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.

*Inverness Medical Innovations et al. v. Church & Dwight Co., Inc. (D.M.) Currently representing Church & Dwight Co., Inc. in a patent infringement action brought by Inverness Medical Switzerland GmbH, Inverness Medical Innovations, Inc. and SPD Swiss Precision Diagnostics. The suit involves features of immunoassays having digital readouts, as allegedly used in pregnancy tests. Also representing Church & Dwight Co., Inc. in a false marking case pending in the E.D. of Texas, Heathcote Holdings Corp v. Church & Dwight, and a patent infringement styled as Webvention v. Church & Dwight, which also is pending in the E.D. of Texas.

*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.

*Abbott Laboratories v. ImClone Systems, Inc. (D. M.) Represented ImClone in a patent infringement action directed to technology allegedly used to produce Erbitux®. The asserted patent was directed to the insertion of a vector into a cell to enhance production of an antibody of interest. The case was settled successfully shortly before hearings on motions for summary judgment.

*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. Subsequently represented British Telecommunications in three actions enforcing the same patent directed to data compression: British Telecommunications v. Texas Instruments (D. Del.), British Telecommunications v. Freescale (D. Del.) and British Telecommunications v. Broadcom (D.N.J.).

*Arris v. British Telecommunications (D. Ga.) Obtained dismissal of a declaratory judgment complaint filed by Arris against British Telecommunicatio

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James H. Shalek
Partner, Litigation Department at Proskauer Rose LLP
Education
JD, cum laude
Class of 1978

Boston University School of Law (BU Law) is the law school affiliated with Boston University. It is the second-oldest law school in Massachusetts and one of the first law schools in the country to admit students regardless of race or gender. It is also a member of the Association of American Law Schools and a charter member of the American Bar Association.

BA, magna cum laude
Class of 1975

The University of Pennsylvania (commonly referred to as Penn or UPenn) is a private, Ivy League university, located in Philadelphia, Pennsylvania, United States. Penn considers itself the fourth-oldest institution of higher education in the United States, as well as the first university in the United States with both undergraduate and graduate studies.

Memberships
Member
Current

American Bar Association provides legal services. It provides law school accreditation, continuing legal education, legal information and other services to assist legal professionals. The firm has members which include judges, court administrators, law professors, and non-practicing attorneys. The company was founded on August 21, 1878 and is headquartered in Chicago, IL.

Member
Current

The New York State Bar Association (NYSBA) is a voluntary bar association for the state of New York. NYSBA was founded in 1877 with the stated goal to cultivate the science of jurisprudence; to promote reform in the law; to facilitate the administration of justice, and to elevate the standards of integrity, honor, professional skill, and courtesy in the legal profession. Its first President was David B. Hill. Among the reforms in the legislation signed into law creating the association was the removal of the restrictions on the admission of women to the practice of law. In 1896, NYSBA proposed the first global means for settling disputes among nations, what is now called the Permanent Court of Arbitration in The Hague.

Member
Current

The mission of the Los Angeles County Bar Association is to meet the professional needs of Los Angeles lawyers and advance the administration of justice.

Career History
Partner, Litigation Department
Current

Proskauer Rose LLP is a law firm in New York, NY. It offers corporate finance, mergers and acquisitions, private equity, real estate transactions, bankruptcy and reorganizations, taxation, litigation, trusts and estates, intellectual property, and labor and employment law services. It serves the chemicals, entertainment, financial services, health care, hospitality, information technology, insurance, internet, manufacturing, media and communications, pharmaceuticals, real estate investment, sports, and transportation industries. The company was founded in 1875.

Political Donations
$1,200
2009

Minority Leader at Office of the Senate Minority Leader, Charles Schumer

$2,300
2007

Former President of United States

Other Affiliations

James H. Shalek is affiliated with Proskauer Rose LLP

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