Jim Otteson

James-Otteson

Jim Otteson

Senior Counsel

Silicon Valley | 2440 W. El Camino Real, Suite 700, Mountain View, CA, United States of America 94040-1499
+1 650 813 4816 | +1 650 813 4848

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James “Jim” C. Otteson focuses his practice on intellectual property litigation, including patent, copyright, trade secret and trademark cases in both state and federal trial and appellate courts, as well as the U.S. International Trade Commission (ITC). He has over 25 years of experience representing clients in the following industries: consumer electronics, semiconductors, software, Internet and e-commerce, mechanical devices, nutritional supplements, medical devices, chemical products and footwear. 

Mr. Otteson has successfully tried more than a dozen patent and intellectual property cases in U.S. District Courts and the ITC, and has briefed and argued multiple winning appeals in the U.S. Court of Appeals for the Federal Circuit and the U.S. Supreme Court. Throughout his career, he has successfully represented both intellectual property owners and accused infringers.

Experience
  • TriReme Medical (accused infringer) v. Angioscore in a patent trial in in the Northern District of California over the use of angioplasty catheter technology. Jury returned verdict of non-infringement and obviousness of Angioscore’s patent in less than three hours of deliberation.
  • Phoenix Digital Solutions (patent holder) v. HTC in a jury trial in the Northern District of California over a patent involving microprocessor technology for clocking high speed chips. The jury ruled that HTC infringed and damages were owed. HTC did not appeal.
  • Phoenix Digital Solutions (patent holder) v. 14 consumer electronics companies in a trial in the Northern District of California over a patent involving microprocessor technology for clocking high speed chips. Two large consumer electronics companies each entered into seven figure settlements before ITC rendered adverse non-binding decision. District court cases against other defendants continued in the Northern District of California. 
  • Xiamen Kingdomway Group Co. (XKGC) (accused infringer) v. Kaneka in a patent case over the production of Coenzme Q-10 by microbial fermentation. ITC completely adopted XKGC’s non-infringement theory in finding no violation of Section 337.
  • Innovention Toys (patent holder) v. MGA Entertainment in a jury trial in the Eastern District of Louisiana over their chess-like laser board game. Subsequently represented Innovention in successful appeal in the U.S. Supreme Court. The jury verdict was willful infringement; district court awarded treble damages and attorney fees. Represented Innovention in MGA’s appeal to the Federal Circuit (initial victory by MGA), and in Innovention’s subsequent victory in the Supreme Court of the United States.
  • Nantong Foreign Trade (NFT) v. Cargill when Cargill filed a patent complaint for a patent relating to the production of non-shellfish/“vegan” glucosamine by microbial fermentation. After NFT filed two summary determination motions and deposed inventors of Cargill’s patent, Cargill withdrew complaint in June 2009.
  • Barracuda Networks adv. Trend Micro in a patent case filed by Trend Micro against Barracuda. Case settled on eve of trial in October 2008 on extremely favorable terms.
  • MediaTek adv. Sanyo in patent case filed by Sanyo in the Central District of California involving patents relating to optical drive controller chips and consumer DVD chips. After winning two key summary judgment motions that severely limited Sanyo’s damages claim, case settled a month before trial (in May 2007) for less than 1% of Sanyo’s expected recovery.
  • Broadcom v. Microtune in a patent case relating to a patent on electrostatic discharge technology for computer chips. The trial took place in November 2013 and the case ultimately settled in conjunction with other pending litigations against Microtune.
  • MediaTek adv. Zoran/Oak Technlogy in a patent case over patents involving optical drive controller chips and consumer DVD chips. After February 2005 trial, MediaTek won on half of accused products; exposure on other products was limited because counsel helped MediaTek develop a design-around; case ultimately settled in early 2006.
  • Tessera v. Sharp in Tessera’s first ITC patent case involving pioneering patents that covered chip scale packaging. The trial in 2001 resulted in complete victory against Sharp, which led to first major litigation-based license for Tessera’s CSP technology.
  • SanDisk v. Samsung in the Eastern District of Texas in a patent case filed by Samsung. Wrote venue transfer motion that court granted less than six weeks before trial (one of the first such motions granted in a patent case in the Eastern District of Texas); case settled shortly after.
  • UMC adv. Oak Technology  in a patent case filed by Oak Technology. The trial in 1999 led to a complete victory for UMC on multiple grounds (non-infringement; multiple grounds of invalidity). Briefed, argued and defeated Oak’s appeal in the Federal Circuit.

Includes matters handled at Dechert or prior to joining the firm.

Education
  • Brigham Young University, B.S., 1988
  • Yale Law School, J.D., 1991
Admissions
  • California
  • Supreme Court of the United States
  • United States Court of Appeals for the Federal Circuit
  • United States District Court for the Central District of California
  • United States District Court for the Eastern District of California
  • United States District Court for the Northern District of California
  • United States District Court for the District of Colorado
Memberships
  • ITC Trial Lawyers Association