James L. Day

Farella Braun + Martel LLP

San Francisco

Patent litigation

Day, an engineer-turned-lawyer, utilizes his technical background to break down complicated technology cases essential to his IP practice.

"The case really is about analyzing a patent and working with an expert to explain," Day said. "I think it gives me some advantage in just being able to communicate with people on technical details -- both because I understand it and also it gives them some confidence that we can get into the weeds."

In one such case, Day represented telecommunications company Comcast Cable Communications LLC against voice recognition technology company Promptu Systems Corp. Comcast challenged 21 claims that Promptu brought against the company, arguing Comcast violated Promptu's voice recognition patents.

The U.S. Patent Trial and Appeal Board invalidated all challenged claims against Comcast. A key factor of Day's success was his petition to review the patents under Covered Business Method procedures, a process that allowed Day to bring in other arguments not normally permitted.

"One of them was based on this recapture idea, which I think is the first time that the patent office has ruled in a CBM petition on that kind of argument because it doesn't come up very often," Day said.

The recapture argument said Promptu obtained a patent for certain technology and went back to the patent office for a modified patent on the same issue in a way that expanded the claims Promptu had in the initial patent, Day explained.

It was a challenging process but one that ultimately resulted in a big win, with the PTAB issuing a 97-page decision in favor of Comcast. Comcast Cable Communications LLC v. Promptu Systems Corp., IPR2018-00342, CBM2018-00034 (U.S. Patent Trial and Appeal Board, filed April 2, 2018).

"When we just told our story, I thought it was very clear and I thought persuasive that we were right and that it was really dealing with lots of different arguments, trying to raise questions here and there and a lot of different ways that became the challenge," Day said.

Beyond the work he does in courts and the patent office, Day chairs Farella Braun & Martel LLP's patent office litigation practice, something he built from the ground up. Farella hadn't jumped onto the new PTAB opportunities when it was created and Day saw himself as the firm's solution.

"It seemed like a really nice match because I could contribute that, and the firm could provide me place to do it with people who I like working with who are working at a very high caliber," Day said. "It was a good point in my career to take on that kind of challenge. Now five years in, I'm just really pleased with the way it's gone."

-- Nicole Tyau