James Stein

Mr. Stein has over a decade of experience in post-grant review procedures and nearly two decades of experience in patent law. He specializes in AIA trials before the PTAB, including inter partes review (IPR) and post-grant review (PGR), as well as patent reexamination. As a leading practitioner in this field, James has worked on over 120 IPRs since the inception of PTAB trials in 2012, and dozens of inter partes and ex parte reexaminations.

Mr. Stein has played key roles in many important cases—on behalf of both petitioners and patent owners—that established AIA trial precedent and shaped practice before the Board. For example, as lead counsel, James led a team that developed the Sand Revolution stipulation to undercut a patent owner's Fintiv challenge based on a parallel district court proceeding presenting overlapping validity issues. Shortly after the Board designated its institution decision informative, petitioners widely adopted this stipulation practice to improve their chances of institution. As other examples, James worked on early IPRs establishing the parameters of Section 315(b)'s one-year time bar for seeking IPR and the framework for determining who is a real party-in-interest or privy behind a listed IPR petitioner. 

Mr. Stein speaks and writes on PTAB topics. He co-authored the second edition of the ABA's Practitioner's Guide to Trials Before the Patent Trial and Appeal Board. James has been recognized by Managing Intellectual Property magazine for his experience in PTAB trials. James currently serves as vice chair of the PTAB Bar Association’s Communications Committee. 

Beyond his post-grant work, Mr. Stein has a broad practice that includes litigation, prosecution, counseling, and IP transactions. On the litigation front, James focuses on patent-heavy parts of cases, including invalidity, infringement, expert discovery, claim construction, and summary judgment. James also handles appeals to the Federal Circuit, including from PTAB decisions. 

As a former patent examiner, Mr. Stein also helps clients strategically prosecute patent applications in families involved in concurrent litigation and navigate the difficult issues that arise in these circumstances. In his counseling practice, he advises clients on the potential risks posed by third-party patents and applications, rendering invalidity and noninfringement opinions. James also has significant experience in IP transactions, including through his role on AOL’s patent technical team in its 2012 patent portfolio sale to Microsoft for $1.1B.

With a background in electrical engineering and experience as a patent examiner in optical waveguide technology, James is comfortable across a wide range of technologies. On the electrical and computer side, he handles network security, consumer electronics, content management, telecommunications, Internet and social media, software, clean energy, data storage, power systems, and robotics, as well as semiconductor cases. On the mechanical side, James works with 3D printing, medical devices, parts and hardware, heavy equipment, oil and gas, aerospace, optics, 3D printing, and other technologies.

Representative engagements:

• On behalf of 3D printing company Continuous Composites, secured institution denials in six IPR petitions filed by competitor MarkForged
• On behalf of oil and gas company Sand Revolution II, obtained institution of IPR despite Fintiv challenge by developing Sand Revolution stipulation, with PTAB designating the decision informative, influencing the future of PTAB practice
• On behalf of patent owner VirnetX in various IPRs filed by Apple, Microsoft, New Bay Capital, RPX Corporation, and others, obtained institution denials that shaped 315(b) time-bar and real party-in-interest practice
• On behalf of patent owner Pratt & Whitney, defended validity of aerospace patent in IPR filed by General Electric, developing key teaching-away argument that survived appeal to the Federal Circuit
• Represented AOL in $1.1B patent sale to Microsoft.