IP Attorney James Juo

Biography

James Juo is an experienced intellectual property attorney who has successfully litigated patents and trademarks, and counseled clients on the scope and validity of patent and trademark rights. A registered patent attorney, as well as a former patent examiner, he also advised the American Inventor television program on patent issues. Mr. Juo has represented individuals, small companies, and large Fortune 500 corporations. In addition to his patent and trademark practice, he also handles copyright matters, trade secret disputes, and UDRP proceedings over domain names. He also has been published in a number of law reviews covering patents, trademarks, copyrights, and other intellectual property issues.

Litigation Experience

Mr. Juo has litigated cases at both the trial and appellate level, including motions to dismiss, summary judgment, Markman claim construction hearings, and jury trials in several U.S. District Courts. He also has handled in several Federal Circuit appeals. Mr. Juo is admitted to a number of jurisdictions, including the U.S. District Court for the District of Colorado.

Intellectual Property Litigation Matters

  • Won summary judgment of no cybersquatting over <visitqatar.com> domain name, and dismissal of Qatar Airways from same lawsuit as an improper third-party intervenor.
  • Successfully moved to have an out-of-state plaintiff post a security bond for litigation of dubious copyright claim.
  • Won dismissal of a copyright DMCA lawsuit based on lack of personal jurisdiction.
  • Prevailed in UDRP proceeding where opposing party was found to be a reverse domain name hijacker.
  • Won dismissal of a declaratory judgment action based on a trademark opposition for lack of subject matter jurisdiction.
  • Awarded attorney fees against opposing party who filed a frivolous design patent infringement claim in violation of Rule 11.
  • Won dismissal of cybersquatting claim in favor of the purchaser of a domain name that was registered before the asserted trademark was first used by the plaintiff.
  • Successfully settled a computer fraud and abuse act case involving allegations of screen scraping between competing electronic dating services.
  • Successfully enforced trademarks for a mobile phone carrier against unauthorized distributors and dealers.
  • Prevailed on summary judgment against a claim of trade libel with respect to safety warnings to customers concerning crib covers.
  • Successfully settled a design patent infringement lawsuit in view of YouTube evidence establishing an on-sale bar under Section 102.
  • Successfully settled a lawsuit involving claims of trademark infringement against yoga-inspired health food snacks.
  • Won summary judgment limiting damages based on the trademark owner’s failure to mark its goods with notice of the registered trademark.
  • Won dismissal of a patent action seeking declaratory judgment of non-infringement based on a licensee’s comments.
  • Achieved favorable settlement of a 337 action before the ITC based on a successful design-around solution.
  • Successful reexamination invalidating a reissued patent asserted by a competitor.
  • Successfully overturned an adverse summary judgment in a trade secret case appealed to the Ninth Circuit.
  • Reversed adverse claim construction in appeal involving cardiac stent technology. Adv. Cardiovascular Sys., Inc. v. SciMed Life Sys., Inc., 261 F.3d 1329 (Fed. Cir. 2001).
  • Affirmed judgment as a matter of law finding no patent infringement. Medtronic, Inc. v. Adv. Cardiovascular Sys., Inc., 248 F.3d 1303 (Fed. Cir. 2001).
  • Vacated an adverse summary judgment of inequitable conduct on appeal. Origin Medsystems, Inc. v. Gen. Surgical Innovations, Inc. , No. 98-1416, 1999 WL 507160 (Fed. Cir. 1999).

Education

George Washington University National Law Center, Washington, District of Columbia
J.D. – 1993

Clarkson University
Bachelor of Science – 1989
Major: Electrical Engineering

Bar Admissions
California
Virginia
U.S. District Court District of Colorado
U.S. District Court Central District of California
U.S. District Court Northern District of California
U.S. District Court Southern District of California
U.S. Court of Appeals for the Federal Circuit
U.S. Court of Appeals for the 9th Circuit
U.S. Patent and Trademark Office

Honors
Selected as a Southern California Super Lawyer
Named as a Southern California Super Lawyer Rising Star

Classes & Seminars
IP in Estate Planning, Idaho State Bar Intellectual Property Section
Patent Law Panel, Colorado Emerging Medical Devices
Declaratory Judgment in Patent Cases, Boulder County Bar Association
Patent Prosecution Bars in Protective Orders, Houston Intellectual Property Law Association
Design Patents In The Modern World Conference, Stanford Law School
How Design Patents Overlap with Copyright and Trade Dress, Los Angeles Copyright Society

Published Works
Shifting Fees for Copyright Trolls, Colorado Lawyer, 2021
Exceeding Authorized Access, The Bencher, 2020
Split Over the Use of the CFAA Against Disloyal Employees, Federal Lawyer, 2014
The Reasonably Certain Ethics of a Minority Report, The Bencher, 2013
Beware the Witch’s Brew of Rhetorical Hyperbole, Orange County Lawyer, 2013
Notice That Registered Trademark In The Window?, John Marshall Review of Intellectual Property Law, 2011
A Prosecution Bar In Patent Litigation Should Be The Exception Rather Than The Rule, (co-author) Virginia Journal of Law and Technology, 2010
Responding to a Cease-and-Desist Letter, MX: Medtech Executive, 2010
Egyptian Goddess: Rebooting Design Patents And Resurrecting Whitman Saddle, Federal Circuit Bar Journal, 2009
A Quantum Of Originality In Copyright, (co-author) Chicago-Kent Journal of Intellectual Property, 2009
Advising Against Active Inducement of Infringement, New Matter-the Journal of the Intellectual Property Section of the California Bar, 2009
How “Thin” Is Your Copyright?, Los Angeles Daily Journal, 2009
Eye of the Beholder: Design Patent Infringement, Los Angeles Lawyer, 2009
A Matter of Opinion: Efficacy of Patent Opinions, Los Angeles Lawyer, 2009
Patently Clear: Declaratory Relief in Patent Cases, Los Angeles Lawyer, 2008
Unauthorized Acts in Declaratory Judgement, New Matter-the Journal of the Intellectual Property Section of the California Bar, 2008

Representative Cases
Mehdiyev v. Qatar Nat’l Tourism Council, No. 19-cv-3353, 2021 WL 1291143 (D. Colo. 2021)
Mondragon v. Nosrak LLC, 500 F. Supp. 3d 1175 (D. Colo. 2020)
Tyrrell v. Lexidan, Inc., No. 19-cv-1271, 2020 WL 996877 (D. Colo. 2020)
Flying Dog Brewery, LLLP v. WhoIs Privacy Protection Services, Inc. / Phil Allen, Flying Dog Enterprises, WIPO Case No. D2018-1683
Purely Driven Products, LLC v. Chillovino, LLC, 171 F. Supp. 3d 1016 (C.D. Cal. 2016)
HMS Stores, Inc. v. RGM Distribution, Inc., No. 14-cv-9730, 2015 WL 1299750 (C.D. Cal. 2015)
JAT Wheels Inc. v. JNC Wheel Collection, No. 14-4898, 2014 WL 4568323 (C.D. Cal. 2014)
Oliver & Tate Enters. v. Foundations Worldwide, No. 13-1683, 2014 WL 12595334 (C.D. Cal. 2014)
Golden Temple of Oregon v. Wai Lana Productions, No. 09-902, 2011 WL 6070385 (D. Or. 2011)
Coach, Inc. v. Asia Pacific Trading Co., 676 F. Supp. 2d 914 (C.D. Cal. 2009)
ACCO Brands USA, LLC v. Accentra, Inc., No. 07-1401 (N.D. Ill. 2008)
Cordelia Lighting, Inc. v. American Fluorescent Corp., No. 02-7343 (C.D. Cal. 2007)
Advanced Cardiovascular Systems, Inc. v. SciMed Life Systems, Inc., 261 F.3d 1329 (Fed. Cir. 2001)
Medtronic, Inc. v. Advanced Cardiovascular Systems, Inc., 248 F.3d 1303 (Fed. Cir. 2001)
Origin Medsystems, Inc. v. General Surgical Innovations, No. 98-1416, 1999 WL 507160 (Fed. Cir. 1999)

Professional Associations
Colorado IP Inns of Court (board member)
Asian Chamber of Commerce

Past Positions
U.S. Patent and Trademark Office, Patent Examiner