James A. Collins
Shareholder

Jim Collins’s diverse patent practice includes prosecution, U.S. Patent & Trademark Office controversies, and district court litigation.  Deeply versed in all aspects of electrical engineering, Jim represents government, research and corporate clients that are leading the way in cell phone, automotive, Internet, insurance, energy and medical software innovation.

Jim collaborates closely with clients in harvesting and evaluating technology. With six years experience as an engineer and manager at Delco Electronics Corp., he has literally stood in his clients’ shoes. As a result, Jim understands the business issues as well as the law and science of innovation. He provides decision-critical advice on when to seek patents and how best to allocate resources for operational and shareholder benefit

An effective advocate in administrative fora, Jim has handled numerous reexamination and other proceedings before the U.S. Patent and Trademark Office. He was involved in some of the first post-grant proceedings before the Patent and Trademark Appeals Board following the adoption of the America Invents Act. In addition, Jim has represented clients in patent infringement cases in a variety of district courts.

Working with leading-edge innovators, Jim is constantly thinking forward. He makes it his business to anticipate new technologies and applications, and to develop novel strategies for their protection.

Education
  • J.D., magna cum laude
    Marquette University, 1996
  • M.B.A.,
    University of Wisconsin-Whitewater, 1997
  • B.S., Business Administration; Minor, Mathematics
    University of Wisconsin-Platteville, 1993
  • B.S., Electrical Engineering
    University of Wisconsin-Platteville, 1985
Bar Admissions
  • Illinois
  • Illinois Supreme Court
  • U.S. Dist. Court, E.D. Wisconsin
  • U.S. Dist. Court, N.D. Illinois
  • U.S. Dist. Court, S.D. Indiana
  • U.S. Patent & Trademark Office
  • Wisconsin
Area of Focus
Technical Background
  • Analog
  • Business Methods
  • Digital
  • Semiconductors
  • Signal Processing
  • Software
Experience | Overview
  • Liberty Mutual Insurance v. Progressive Casualty Ins. Co. (USPTO) Represented Progressive in several Covered Business Method Review (CBMR) proceedings before the Patent Trial and Appeal Board (PTAB), including the first action in which the PTAB confirmed patentability in the CBMR program.
  • Ex Parte Re-examination of U.S. Patent No. 7,124,088 and 7,877,269 Nos. 909/011,612, and 90/011,619 (USPTO). Represented patent owner in reexamination of patent directed to an automated on-line servicing system; patentability confirmed.
  • Ex Parte Re-examination of U.S. Patent No. 6,064,970 No. 90/011,252 (USPTO). Represented patent owner in reexamination of patent directed to insurance underwriting based on vehicle operating data (“telematics”); patentability confirmed.
  • Phoenix Licensing, LLP v. Progressive Casualty Ins. Co. (E.D. Texas) Represented defendant in a patent infringement matter asserting a portfolio directed to targeted mass marketing of financial and insurance services; settled before trial.
  • Charles E. Hill & Associates. v. Amazon.com (E.D. Texas). Defended Internet-based product offerings against patent infringement allegations concerning electronic catalogs; settled before trial.
  • eSpeed, Inc., et al. v. Board of Trade of the City of Chicago (N.D. Texas). Defended against patent infringement allegations involving electronic trading systems; settled through voluntary mediation.                    
Presentations
  • “Patent Claim Construction New Developments and Practical Tips for Successful Patent Litigation,” Law Seminars International, February 15, 2008
  • “Things to Avoid When Prosecuting Computer Related Applications,” Brinks Gilson & Lione Seminar, Chicago, July 2006
  • “Claim Drafting,” Brinks Gilson & Lione Seminar, Chicago, May 2005
Representative Matters
  • Progressive Casualty Ins. Co. v. HTI IP, LLC, No. 10 cv 2066 (N.D. Ohio). Represented plaintiff in action involving wireless diagnostic monitoring systems. Case settled on confidential terms.
  • Parallel Networks, LLC v. AEO, Inc., et al., No. 6:10 cv 275 (E.D. Texas). Represented defendant in a patent infringement matter involving website technology. Case reached early resolution on confidential terms.
  • Soverain Software, LLC v. J.C. Penney Corp., Inc. et al., No. 6:09 cv 274 (E.D. Texas). Represented defendant in a patent infringement matter involving website technology. The matter settled through court-ordered mediation.
  • Constellation IP, LLC v. Marriott Int'l, Inc., et al., No. 9:06 cv 162 (E.D. Texas). Represented defendant in patent infringement matter involving computer generated presentation systems. Reached early resolution on confidential terms.
  • Charles E. Hill & Associates, Inc. v. Amazon.com, et al., Case No. 1:03-CV-0263 2002 (E.D. Texas). Represented defendants' Internet based product offerings in patent infringement matter concerning electronic catalogs. Case settled on confidential terms.
  • eSpeed, Inc., et al. v. Board of Trade of the City of Chicago, et al., No. 3:99-CV-1016-M 2002 (N.D. Texas). Represented defendant in patent infringement matter involving electronic trading systems. Case settled before trial through voluntary mediation.
  • Tec Air, Inc. v. Denso Manufacturing Michigan and Denso Corporation, (N.D. IL), Chicago; Court of Appeals for the Federal Circuit). Represented plaintiff in patent infringement matter involving fan blades: Jury verdict for $25.2 million in favor of Tec Air that was increased to more than $40 million with prejudgment interest.
Press Releases & Events
October 23, 2014
CHICAGO—Gary M. Ropski, a shareholder at intellectual property law firm Brinks Gilson & Lione and the firm's past president, has been named the #1 Leading Intellectual Property Lawyer in Illinois by Leading Lawyers, and fifty-nine ...
Honors
  • Leading Intellectual Property Lawyer, Leading Lawyers Network, Law Bulletin Publishing Company, 2014-2016
  • Editor, Wisconsin State Bar Association: Intellectual Property Newsletter, Marquette University Law School, 1996
  • Director, Marquette University Intellectual Property Law Review, Marquette University Law School, 1996
Affiliations
  • American Bar Association
    Intellectual Property Law Section
    Litigation Section
  • American Intellectual Property Law Association
  • Intellectual Property Owners Association
  • Chicago Bar Association
  • Institute of Electrical and Electronics Engineers