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James L. Reed
Senior Patent Counsel
James Reed advises clients on patent protection, defense and enforcement, with a majority of his practice devoted to drafting original patent applications and prosecution of those applications in the US, Europe, Japan and China. He also frequently conducts due diligence and freedom-to-use studies, mostly in connection with M&A. James’ technical areas include automotive and aeronautical/aerospace systems, electro-mechanical systems, machine learning/artificial intelligence (ML/AI) applied to decision support systems, security and business automation, medical devices, mechatronics and sensors.
James has an undergraduate degree in aerospace engineering, a master’s degree in applied mathematics and hands-on industry experience with mathematical modelling of complex aerospace systems, hardware testing and predicting on-orbit performance of spacecraft. Prior to entering the legal industry, James worked as an engineering consultant to NASA.
- Assisting a battery company with patent preparation and prosecution for machine learning methods implemented in a vehicle’s battery management system.
- Assisting a renewable energy company with patent portfolio management and patenting strategy for wind turbines servicing an electrical grid.
- Assisting an aerospace company with patent portfolio management and patenting strategy for a flight recorder ejection system.
- Assisting a medical device company with portfolio management and patenting strategy for bioresorbable stents, light emitting and needle catheters and sterilization methods.
- Assisting a medical device company with patent preparation and prosecution for image-tracking algorithm that tracks real-time motion of a tumor during radiotherapy.
- Assisting software companies with intellectual property counseling, patent preparation and prosecution for mobile device software relating to video compression and mobile enterprise accounts management.
- Assisting a medical services company with patent preparation and prosecution strategy for methods of identifying statistically significant genomic relationships among biological concepts.
- Conducting freedom-to-operate studies for patents covering automotive diagnostic and controller software, streaming data to mobile devices, endoscopes, catheters, public-private keys and encryption, video compression, semiconductor material and methods of manufacture of such materials used in microcircuits, solar cells and optical communication technologies.
- Patent litigation counsel for patentee, from initial filing of compliant through claim construction/Markman hearing and summary judgment motions on patent inventorship, ownership, infringement and invalidity, and conducted and defended expert-witness and fact-witness depositions for dispute between Asian companies (video displays/monitors).
Education
- American University, J.D., cum laude, 1999
- The Johns Hopkins University, M.S., 1994
- Boston University, B.S., 1988
Admissions
- California, 2010
- District of Columbia, 2000
- Maryland, 1999
- U.S. Patent and Trademark Office, 1999
Memberships and Affiliations
- San Francisco Bay Area Intellectual Property American Inn of Court, Director of Judicial Outreach, 2010 - 2012
- Member of Advisory Board for California Technology Council's California Cybersecurity Information Sharing Organization (CalCISO)
- Moderator, “Using AI to Drive Down Regulatory Compliance Costs in Lending and AML,” AI Fintech Forum, San Francisco, California, July 21, 2018.
- Moderator, “Accelerate Your Growth Strategy with Artificial Intelligence,” Access AI Breakfast Briefing, San Francisco, California January 25, 2018.
- Moderator, “Artificial Intelligence in Biopharma,” Access AI Breakfast Briefing, San Francisco, California, January 9, 2018.
- Moderator, “Examining the tangible business case for AI in enhancing the customer journey and increasing retention across financial services,” Access AI Breakfast Briefing, San Francisco, California, September 21, 2017.
- Moderator, “Enterprises Continue to Bet Big on AI: How Do You Get the Winning Hand?” Access AI Breakfast Briefing, San Francisco, California, July 13, 2017.
- Invited lecturer, “Software Patent Eligibility – Where Do Things Stand in the US?” New Energy and Industrial Technology Development Organization (NEDO) of Japan, Cupertino, California, June 16, 2017.
- Author, “Searching for Answers to Alice/Mayo: U.S. District Courts’ reliance on CAFC’s Enfish/McRO rule-based decisions signal a trend for software patent eligibility law?” AIPPI, Vol.62 No.5 (published in Japanese), May 25, 2017.
- Author, “Patent Eligibility and Fed. Circ. F-35 Helmet Case,” Law360, April 5, 2017.
- Speaker, “Exploring the Legal Contours of Patent Subject Matter Eligibility,” USPTO Roundtable 2, Stanford, California, December 5, 2016.
- Author, “Workable Abstract Idea Test Still Forthcoming,” San Francisco Daily Journal, December 1, 2016.
- Speaker, “Patent Prosecution and Defeating Abstractness: Minimizing the Risk of Sect. 101 Rejection,” Strafford Webinar, November 10, 2016.
- Author, “McRO v Bandai Namco Games America Inc: Surprise Section 101 survivor offers clues,” Intellectual Property Magazine, November 2, 2016.
- Author, “Why Did the Federal Circuit Treat Software Claims Differently in Enfish?” Law360, July 8, 2016.
- Author, “Taking Stock of Rule 101,” Intellectual Property Magazine, June 2, 2016.
- Speaker, “Comparing Data Privacy and Cybersecurity Regimes,” to the l'Institut des Hautes Etudes de l'Entreprise, San Francisco, April 2016.
- Volunteer lawyer for homeless and at-risk veterans, East Bay Stand Down, Alameda County, California, September 2016.
- Volunteer lawyer for homeless and at-risk veterans, Stand Down on the Delta, Contra Costa County, California, September 2015.