James P. Naughton
Shareholder
Overview

“I give my clients practical, strategic advice. They want a direct answer to their real world questions.”

Jim Naughton is a senior shareholder with Brinks Gilson & Lione with over 35 years of experience in patent litigation, procurement and counseling. He has created and managed several successful client teams and currently focuses his practice on patent studies, portfolio analysis and management, and strategic advice. Jim has analyzed thousands of patents, written opinions on hundreds of patents and been deposed several times on prosecution and opinion matters. 

Jim has extensive experience in diverse technical fields such as medical devices, vehicle navigation and audio, athletic footwear and apparel, e-commerce and financial services, LEDs, vehicle transmissions, machine tools and printing equipment.  Emphasizing client service, he understands the client's business and provides high-value strategic analysis that meets the client's practical business needs. Jim is also sensitive to client cost constraints and has partnered with clients to implement creative alternative fee arrangements successfully. 

Education
  • J.D., cum laude
    University of Illinois College of Law, 1981
  • B.S., Electrical Engineering, with highest honors
    University of Illinois, 1978
Bar Admissions
  • Illinois
  • U.S. Court of Appeals, Fed. Cir.
  • U.S. Patent & Trademark Office
Technical Background
  • Analog
  • Business Methods
  • Semiconductors
  • Software
Experience | Overview
  • MercExchange v. Overture. Represented defendant in “rocket docket,” patent litigation involving Internet search engines.
  • Information International v. Adobe Systems and Apple Computer. Represented plaintiff in patent litigation involving electronic character generation, including five week trial and Federal Circuit appeal. [Represented plaintiff in prior related cases, Information International v. Compugraphic and Rockwell International v. Allied]
  • A.G. für Industrielle Elektronik (AGIE) v. Sodick. Represented plaintiff in federal court patent infringement action and companion ITC action (In re Certain Wire Electrical Discharge Machining Apparatus And Components Thereof), including two-week ITC hearing. Technology involved electric discharge machine tools. [Represented AGIE in prior related cases, AGIE v. Mitsubishi Electric and Colt Industries v. AGIE
  • Zenith v. AMP. Represented defendant in patent litigation involving computer touch screens.
  • London v. Samsonite. Represented plaintiff in Federal Circuit appeal; took over case following loss in the trial court.
Experience | Legal

Brinks Gilson & Lione, Chicago, Illinois
1993-Present

Roper & Quigg, Chicago, Illinois
Founding Partner, 1990-1993

Neuman, Williams, Anderson & Olson, Chicago, Illinois
1981-1990; Partner 1986-1990

Presentations
  • "Patent Fundamentals," Boston, Massachusetts, March 2016
  • "Current Topics In U.S. IP Law," Japan, September 2014
  • "Post-Grant Proceedings In The USPTO For Patent Correction And Validity Challenges," Japan, December 2013
  • "America Invents Act: Impact And Strategy," various venues, 2012-2013
  • Manufacturing and Clean Technology Luncheon, Chicago, Illinois, February 2012
  • "The America Invents Act -- It's Time For A Change!," October 2011
  • "Patent Specification Requirements Under 35 U.S.C. §112(1)," Presenter, Japan, October 2010
  • "What's Not Going to Work Anymore: Effective Pricing Strategies for the 'New' Economy," The 17th Annual Law Firm Marketing Partner Forum 2010, Palm Beach, Florida, January 2010
  • Midwest Clean Tech 2009 Conference and Exhibition, Chicago, Illinois, November 2009
  • Green Technology, The Nanotechnology Seminar & NanoBusiness Alliance Meeting, Chicago, Illinois, December 2009
  • “Adapting your IP Strategy to the New Economic Environment,” The 2009 NanoBusiness Conference, Panelist, Chicago, Illinois, September 2009
Representative Matters
  • MercExchange v. Overture. Represented defendant in “rocket docket,” patent litigation involving Internet search engines.
  • Information International v. Adobe Systems and Apple Computer. Represented plaintiff in patent litigation involving electronic character generation, including five week trial and Federal Circuit appeal. [Represented plaintiff in prior related cases, Information International v. Compugraphic and Rockwell International v. Allied]
  • A.G. für Industrielle Elektronik (AGIE) v. Sodick. Represented plaintiff in federal court patent infringement action and companion ITC action (In re Certain Wire Electrical Discharge Machining Apparatus And Components Thereof), including two-week ITC hearing. Technology involved electric discharge machine tools. [Represented AGIE in prior related cases, AGIE v. Mitsubishi Electric and Colt Industries v. AGIE]
  • Zenith v. AMP. Represented defendant in patent litigation involving computer touch screens.
  • London v. Samsonite. Represented plaintiff in Federal Circuit appeal; took over case following loss in the trial court. 
Press Releases & Events
August 15, 2017

CHICAGO—Fifteen attorneys at Brinks Gilson & Lione, one of the largest intellectual property law firms in the United States, have been selected by their peers for inclusion in The Best Lawyers in America 2018...

June 06, 2017

CHICAGO—Best Lawyers, a widely-respected peer review publication for the legal profession, recently recognized eleven attorneys at intellectual property law firm Brinks Gilson & Lione in its 2017 edition of Illinois’ Best Lawyers...

February 09, 2017

CHICAGO—Twenty attorneys at intellectual property law firm Brinks Gilson & Lione have been named to the 2017 ...

August 15, 2016

CHICAGO—Fifteen attorneys at Brinks Gilson & Lione, one of the largest intellectual property law firms in the United  ...

January 12, 2016

CHICAGO—Twenty-two attorneys at intellectual property law firm Brinks Gilson & Lione have been named to the 2016 ...

August 17, 2015
CHICAGO—Thirteen attorneys at Brinks Gilson & Lione, one of the largest intellectual property law firms in the United States, were recently listed in The Best Lawyers in America 2016.  Eleven of the honored attorneys are based in ...
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 ...
August 19, 2014
CHICAGO—Sixteen shareholders at Brinks Gilson & Lione, one of the largest intellectual property law firms in the United States, have been selected by their peers for inclusion in The Best Lawyers in America© 2015. Thirteen of the ...
January 22, 2013
CHICAGO – Brinks Gilson & Lione has announced its 2013 board of directors, a group headed by firm president James R. Sobieraj and including shareholders William H. Frankel, Howard S. Michael, James P. Naughton, Steven L. Oberholtzer, ...
October 05, 2012
CHICAGO – Eighteen attorneys from intellectual property law firm Brinks Gilson & Lione have been named as leaders in intellectual property law in the 2013 edition of The Best Lawyers in America, the oldest and most respected peer-review ...
September 20, 2012
CHICAGO – The 2012 Super Lawyers Business Edition has named 24 attorneys from Brinks Gilson & Lione in the categories of Intellectual Property and Intellectual Property – Litigation respectively. The following Brinks attorneys are ...
September 18, 2012
CHICAGO – Leading Lawyers Network has named 54 attorneys from Brinks Gilson & Lione, one of the largest intellectual property law firms in the United States, as 2012 Leading Lawyers in intellectual property in Illinois for 2012. The roster ...
Honors
  • Best Lawyers in America, 2010-2018
  • Illinois Super Lawyers, Intellectual Property Law, 2005-2009, 2011-2013, 2016-2017
  • Leading Intellectual Property Lawyer, Leading Lawyers Network, Law Bulletin Publishing Company, 2004, 2005, 2007, 2009-2014, 2016
Affiliations
  • American Bar Association
  • American Intellectual Property Law Association
  • Chicago Bar Association
  • Institute of Electrical and Electronics Engineers