Overview

James Marina is a partner in Kirkland’s intellectual property litigation group. James focuses on complex patent matters in federal court and before the International Trade Commission, with an emphasis on disputes involving the electrical arts and computer software. In more than 20 years of practice, James has handled cases for numerous leading high-technology clients, including Samsung, Alcatel Lucent, Cisco, and IBM. James is also admitted to practice before the U.S. Patent and Trademark Office.

Recently, James led the efforts for Samsung in an offensive ITC investigation against Nvidia Corporation. Following trial, the Administrative Law Judge found that Nvidia’s graphics processors infringed all three asserted Samsung patents covering chip-miniaturization technology. The ALJ also upheld the validity of Samsung’s patents, rejecting Nvidia’s numerous challenges. This victory followed Kirkland’s earlier complete defense victory in an ITC investigation brought by Nvidia against Samsung. As reported by Bloomberg, Nvidia had been seeking as much as $2 billion in royalty payments from Samsung. The Commission declined to review the ALJ’s infringement and validity findings on the key patent asserted by Samsung, assuring that an exclusion order would issue against Nvidia’s entire product line, turning the tables on Nvidia. In May 2016, hours before issuance of the ITC’s exclusion order against Nvidia, the parties reached a settlement under which they terminated both investigations and Samsung paid $0 to Nvidia.

James also recently served as lead counsel for Alcatel Lucent in a patent infringement action brought by High Point SARL against Alcatel Lucent’s customer Sprint, based in large part on Sprint’s use of cellular network infrastructure equipment purchased from Alcatel Lucent. Alcatel Lucent intervened in the action on behalf of Sprint. The patents-in-suit were originally owned by Alcatel Lucent’s predecessor companies AT&T and Lucent, but were assigned to Avaya when it was spun-off from Lucent in 2000. Avaya later assigned the patents to High Point. In connection with the spin-off, Lucent retained a license to make and sell cellular network infrastructure products under the patents-in-suit. High Point argued that Lucent’s Delaware reverse-triangular merger with Alcatel in 2006 resulted in an impermissible assignment of the license to Alcatel Lucent, thereby terminating the license. On summary judgment, the U.S. District Court for the District of Kansas—relying on Delaware corporate law—held that Alcatel Lucent remained licensed to sell cellular network infrastructure products to Sprint following the merger.

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Memberships & Affiliations

New York Intellectual Property Law Association

National Hispanic Bar Association

Credentials

Admissions & Qualifications

  • 1996New Jersey
  • 1997New York

Courts

  • United States District Court for the District of New Jersey1996
  • United States District Court for the Southern District of New York1997
  • United States District Court for the Eastern District of New York1997
  • United States District Court for the Eastern District of Wisconsin1997
  • United States Patent and Trademark Office1998
  • United States Court of Appeals for the Federal Circuit1998
  • United States Court of Appeals for the Second Circuit2005

Education

  • New York University School of LawJ.D.1996
    Staff Editor, Journal of International Law & Politics
  • The Cooper UnionB.E., Mechanical Engineeringsumma cum laude1993

    Tau Beta Pi

    Pi Tau Sigma