Joshua James
Associate
Overview

“Constant, open communication between lawyer and client is the key to success.”

Energetic and committed, Josh James brings a strong background in biomedical and chemical engineering to helping clients strengthen and enforce their intellectual property rights. His practice focuses on patent litigation, particularly Hatch-Waxman pharmaceutical litigations in federal courts and inter partes review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB).

Josh’s scientific knowledge helps him hit the ground running, especially in cases involving highly complex chemical compounds. He easily meets technical experts on their own terms and uses that knowledge to take a key role on joint-defense groups. Thinking forward, Josh is able to use his training to help identify and prepare scientific experts for litigation.

Josh has been involved in multiple bench trials; arguing motions before judges in both federal courts and the PTAB; taking and defending depositions; drafting appellate briefs; drafting IPR and reexamination briefs; drafting pleadings on invalidity, noninfringement and claim construction issues; reviewing and producing documents; and leading coordination and strategy sessions among members of joint defense groups.

Practice Groups
Education
  • J.D., cum laude
    Indiana University Maurer School of Law, 2014
  • B.S., Biomedical Engineering, summa cum laude
    Illinois Institute of Technology, 2011
  • B.S., Chemical Engineering/Bio-Engineering, summa cum laude
    Illinois Institute of Technology, 2011
Bar Admissions
  • Illinois
  • U.S. Court of Appeals, Fed. Cir.
  • U.S. Patent & Trademark Office
Experience | Overview
  • Josh has participated in bench trials, drafted and argued a motion, and drafted substantive briefs in several Hatch-Waxman pharmaceutical litigations.

  • He has taken a deposition in federal district court and defended a deposition in an IPR proceedings.

  • Josh has drafted an IPR petition that invalidated 19 of 34 claims and drafted a request that instituted reexamination on the remaining claims.

Experience | Legal Experience

Brinks Gilson & Lione, Chicago, IL
Associate, September 2014-Present

Marshall Gerstein & Borun LLP, Chicago, IL
Summer Associate, July 2013-August 2013
 

Experience | Non-Legal Experience

Illinois Institute of Technology (IIT), Chicago, IL
Research Experience for Undergraduates, June 2010-August 2011
Inter-Professional Research Opportunity (IPRO), January 2011-May 2011
Biomedical Engineering Senior Design, August 2009-May 2010
Research Experience for Undergraduates, June 2009-August 2009

Rehabilitation Institute of Chicago, Chicago, IL
Research Experience for Undergraduates, June 2008-August 2008

Experience | Civic Activities
ACS Spike Out Cancer Participant, 2008-2010
Project Linus Blanket Day, 2007-2009
Forward Thinking
alert
April 14, 2017

On April 7, the U.S. Patent and Trademark Office (“USPTO”) announced its PTAB Procedural Reform Initiative...

blogpost
April 14, 2017
On April 7, the U.S. Patent and Trademark Office (“USPTO”) announced its PTAB Procedural Reform Initiative. Patent Trial and Appeal Board (“PTAB”) proceedings created under the America Invents Act (“AIA”) have ...
blogpost
November 22, 2016
On November 15, 2016, in Global Tel*Link Corp. v. Securus Techs., Inc. the PTAB sua sponte reconsidered institution and terminated the CBM review nearly one year after the review was instituted. CBM2015-00145, Paper 49 (PTAB November 15, 2016). The ...
alert
March 07, 2016

On March 1, 2016, the Federal Circuit, in Blue Calypso, LLC v. Groupon, Inc. ...

blogpost
March 07, 2016
On March 1, 2016, the Federal Circuit, in Blue Calypso, LLC v. Groupon, Inc. (Appeal Nos. 15-1391, -1393, and -1394), ruled that a document posted on a webpage did not qualify as prior art under the printed publication provision of 35 U.S.C. § ...
alert
December 08, 2015

On December 7, 2015, the Federal Circuit heard arguments in Blue Calypso, LLC v. Groupon, Inc. ...

alert
March 27, 2015
On March 27, 2015, the U.S. Patent and Trademark Office (PTO) announced a three-part roll-out plan. The first rule package of “quick fixes” will be released in full later this spring, but part of the first package is effective ...
publication
October 27, 2014
On October 20, 2014, the Federal Circuit, by a 7-4 vote, denied a petition for rehearing (en banc) a decision invalidating a Bristol-Myers Squibb (“BMS”) hepatitis B drug patent as obvious, which raised issues regarding the relevance of ...
in the media
October 06, 2014
On October 3, 2014, our new Fall Associates were mentioned in Chicago Daily Law Bulletin in the “In The News” section. “Brinks, Gilson & Lione added David Bernard, Craig C. Bradley Jr., Yongsok Choi, Jennifer Coronel, ...
Press Releases & Events
September 15, 2014
CHICAGO—In response to rising demand for its core intellectual property legal services, Brinks Gilson & Lione recently announced the hiring of nine new associates. Brinks' incoming associates have professional and educational ...
Honors
  • Biomedical Engineering Distinguished Undergraduate Alumnus, Illinois Institute of Technology, 2017
  • Dean’s Honors, Indiana University Maurer School of Law, Fall 2011 and Spring/Fall 2013
  • Camras Scholarship, Dean’s List, and Tau Beta Pi, Illinois Institute of Technology, 2007-2011
Affiliations
  • PTAB Bar Association, 2016-present
  • American Intellectual Property Law Association, 2011-present
  • Chicago Bar Association, 2015-present
  • Indiana Law Journal, Board Member, 2013-2014
  • Intellectual Property Association, 2011-2014
  • Phi Alpha Delta, Clerk, 2013
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